[1] Whether it is permissible to interpret a registered device that can clearly understand the scope of a right only with its own description on the scope of a request for registration of a utility model in addition to the composition of an internal structure or the order of assembly that can be inferred from the specification (negative)

[2] Whether the inventive step of a device may be recognized solely on the ground that the device has commercially succeeded (negative)

[3] In the scope of a request for registration of a utility model, the criteria for the classification of independent and dependent claims, and whether part of the composition of the quoted claims may be omitted, or a claim converted into another composition may be viewed as an independent claim (affirmative)

[1] The scope of the right of a utility model right is determined by the matters indicated in the claim(s). Thus, in determining whether a utility model right can be granted, if the scope of the right is clearly specified only by the description of the claim, it is not allowed to supplement and interpret the claims by other description, such as a detailed description of the claim or a drawing. Therefore, it is not permissible to interpret the scope of the right by adding an internal structure or an assembly order, which can be inferred from the drawing, to the registered device that can clearly understand the scope of the right solely by the description of the claims itself, because it results in the limitation of the scope of the right in the registered petition(s) by the drawing.

[2] Although the commercial success of a device can be referred to as one of the materials that recognize the inventive step, the inventive step cannot be recognized only by the commercial success itself, and the determination of the inventive step of a registered device shall be based on the contents, i.e., the prior art, based on the purpose, composition, and effect of the device, and shall be based on whether a person with ordinary knowledge in the relevant technical field can easily make a device, and therefore, the inventive step of the device cannot be recognized solely on the basis of commercial success.

[3] In principle, in the scope of a claim for registration of a utility model, a claim that does not cite any other claim becomes an independent claim, and a claim that cites another independent or dependent claim to limit or add it, shall become a dependent claim. However, the division of an independent claim and a dependent claim shall not be determined only in accordance with the form of the statement in which the text of the claim is stated, and thus, the claim that omits part of the cited claim or is converted into another composition shall be deemed an independent claim.

[1] Article 9 (2) of the Utility Model Act / [2] Article 5 (2) of the Utility Model Act / [3] Article 2 (1) of the Enforcement Decree of the Utility Model Act

[1] Supreme Court Decision 9Hu734 delivered on September 7, 2001 (Gong2001Ha, 2194) / [2] Supreme Court Decision 2003Hu1512 Delivered on November 12, 2004

Plaintiff (Patent Attorney Han Sung-won et al., Counsel for the plaintiff-appellant)

Gsung Egypt Co., Ltd. (Attorney Lee Don-hee, Counsel for the plaintiff-appellant)

Patent Court Decision 2004Heo244 delivered on November 25, 2004

The appeal is dismissed. The costs of appeal are assessed against the defendant.

The grounds of appeal are examined.

1. As to the grounds of appeal Nos. 1 and 2

A. Since the scope of the right of a utility model right is determined by the matters described in the claims of utility model right, it is not allowed to limit and interpret the scope of the right by supplementing the claims in accordance with other descriptions, such as the detailed description of the claims or drawings, if the scope of the right becomes clear only in the description of the claims in determining whether the device is entitled to a utility model registration (see Supreme Court Decision 9Hu734, Sept. 7, 2001). Therefore, it is not permissible to interpret the scope of the right as a result of restricting the interpretation of the scope of the right in the registered petition because it is possible to clearly understand the scope of the right only by the description of the claims itself, and to interpret the additional composition of the internal structure or the order of assembly that can be inferred from the specification by the drawing.

B. According to the judgment below, the court below determined that the claims in the registered complaint in this case can be easily designed by a person with ordinary knowledge in this technology from 1 to 3 of the comparable complaint in this case based on the reasons stated in each of the judgment below. Although it can be inferred that the registered complaint in this case takes a four polar method in the internal structure, and it can be inferred that it is made by inserting permanent seat in the assembly order after the completion of melting the side cover board, it cannot be deemed that the claims in the registered complaint in this case additionally has the above composition. Thus, the court below's aforementioned determination is premised on the above legal principles, and in light of the records, it cannot be found that the court below erred in the misapprehension of legal principles or incomplete hearing in the process of determining the inventiveness in the registered complaint in this case based on the facts acknowledged.

C. The assertion that non-obviousness should be recognized because the registered device of this case has been commercially successful cannot be a legitimate ground for appeal against the judgment below because the defendant did not have asserted in the court below, and that the device has been commercially successful, it can be referenced as a single material that recognizes non-obviousness. However, the non-obviousness cannot be recognized only by the commercial success itself. The determination of the non-obviousness of the registered device should first be based on the prior art based on the contents, i.e., the purpose, composition, and effect of the device, the prior art in question can be easily designed (see, e.g., Supreme Court Decisions 98Hu2726, Jun. 12, 2001; 2003Hu1512, Nov. 12, 2004).

2. As to the third ground for appeal

In principle, a claim that does not cite any other claim in the scope of a claim for registration of a utility model becomes an independent claim, and is added to a claim that cites another independent claim or dependent claim to limit or add it. However, the division of independent and dependent claim is not determined only by the description form in which the text of the claim is stated (see Supreme Court Decision 96Hu1040 delivered on April 10, 1998), and a claim that omits part of the quoted claim or is converted into another composition shall be deemed an independent claim. In this case, the design of paragraphs 2 through 5 of this case contains both the dependent claims of the Claim 1 in the form of the statement, but in the content of the device, it shall be viewed as an independent claim since it is omitted to form the conclusion of the Claim 1 in the form of the independent claim, and therefore, it shall be viewed as an independent claim. However, according to the reasoning of the judgment of the court below, the court below did not err in the misapprehension of legal principles as to the independent device under paragraphs 2 through 5 of this case.

3. Conclusion

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Lee Hong-hoon (Presiding Justice)