[1] Whether a part of the invention described in a claim claim is an invention under the Patent Act in a case where there are parts using rules of nature only (negative)

[2] The requirements to constitute a business method invention, its meaning, and the requirements to complete a business method invention as an invention

[3] The case holding that Article 29 (1) of the Patent Act is not an invention on the ground that the term "management method for the creation and management of an individual form on the Internet community (Methodation A mini-room inuse)" does not specifically realize data processing using hardware on the computer

[1] The issue of whether the invention used the law of nature is determined as a whole as a claim. Thus, if it is determined that the part of the invention described in the claim does not use the law of nature as a whole, it does not constitute an invention under the Patent Act, even if it is part

[2] In order to constitute a business method invention, data processing method by software must be specifically realized on a computer, using hardware. Here, “the data processing method by software must be specifically realized using hardware” means that software is not limited to simply read by computer, but software and hardware can be built by a unique data processing unit or its action corresponding to the purpose of use by realizing the smoke production or processing of information according to the purpose of use by using specific mutually collaborative means. In addition, in order to be completed as a business method invention, the information on the claim should not be included in the scope of the claim, and all essential elements for achieving the purpose of the invention should be specified specifically and clearly.

[3] The case holding that the patent application invention "management method for the creation and management of an individual type on the Internet community (Methodation A mini-room inuse)" is not an invention that can be used for industrial purposes under Article 29 (1) of the Patent Act, since it does not clearly state how software and hardware achieve the purpose of invention by cooperating with it, and it does not specifically state how software and hardware achieve the purpose of invention.

[1] Article 2 subparagraph 1 of the Patent Act and Article 29 (1) of the Patent Act / [2] Article 2 subparagraph 1 of the Patent Act and Article 29 (1) of the Patent Act / [3] Article 2 subparagraph 1 of the Patent Act and Article 29 (1) of the Patent Act

[2] Supreme Court Decision 2001Hu3149 decided May 16, 2003 (Gong2003Sang, 1369)

KS Communications Co., Ltd. (SPS Co., Ltd. prior to merger) (Patent Attorney Kim Young-gu, Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

November 9, 2006

1. The plaintiff's claim is dismissed.

2. The costs of lawsuit shall be borne by the Plaintiff.

The decision made by the Intellectual Property Tribunal on December 1, 2005 on the case No. 2004 Won5696 shall be revoked.

1. The grounds for rejection of a petition filed for a trial against the plaintiff's decision of rejection;

【Evidences Nos. 1, 2, and 1 through 5

A. The Plaintiff’s filing invention

The claims and drawings are as shown in the attached Table 1, which were filed by the Sypt Co., Ltd. with No. 10-2002-21391 for the application number of April 18, 2002, “the method of the creation and management of an individual room type on the Internet community (Method’s management method)”, and claims and drawings are as stated in the attached Table 1. The Sypt Co., Ltd was merged with the Plaintiff on August 2, 2003.

B. Plaintiff’s appeal against rejection of patent application and dismissal ruling

(1) On November 5, 2004, the Korean Intellectual Property Office examiner rendered a decision to refuse a patent application on the grounds that the method of realizing the stage of creating and managing the studio on a computer is not specifically stated, and thus cannot be established as an invention.

(2) On December 3, 2004, the Plaintiff filed a petition for a trial on an objection against the said decision of refusal, and submitted an amendment on December 30, 2004. However, the examiner decided to dismiss the amendment on the ground that the patent application is not patentable at the time of filing a patent application by the amended patent claim 3 (hereinafter “amended patent claim 3”) and maintained the original decision. The Plaintiff filed a petition for a trial on an objection.

(3) On December 1, 2005, the Korean Intellectual Property Trial and Appeal Board held that the amended claim 3 inventions did not meet the patent requirements as provided by Article 47(4)2 of the Patent Act, and the amended claim 1 (the date of submission of the evidence No. 4) appears to be the clerical error in the patent application No. 2004, May 27, 2004; hereinafter referred to as “the amended claim No. 1 invention”) prior to the amendment, did not apply to the natural law, and thus contravene the main sentence of Article 29(1) of the Patent Act, and thus, it violates the main sentence of Article 29(1) of the Patent Act, and a decision to dismiss the plaintiff’s request for a trial on the ground that the patent application No. 1 (the date of submission of the evidence No. 4) prior to the amendment is unlawful.

2. The Plaintiff’s assertion and issue of grounds for revocation

The main issue of this case is whether the decision to dismiss the correction of the corrected claim 3 inventions is legitimate, and whether the invention (or the corrected claim 3 inventions) of the first claim prior to the amendment corresponds to the invention under the main sentence of Article 29(1) of the Patent Act. The summary of the plaintiff's ground of revocation of the trial decision is as follows.

A. Revised claim 3 inventions are specifically realized using a computer, the hardware of which is a product processing, and thus, constitute an invention that can be used for industrial purposes under the main sentence of Article 29(1) of the Patent Act.

(b) the decision to dismiss the amendment of the amended claim 3 inventions is unlawful, and the amended claim 3 inventions must be registered with the patent;

3. Determination as to whether a decision to dismiss an amendment is justifiable

A. Legal principles as to the establishment of the business method invention

(1) Article 2 Subparag. 1 of the Patent Act defines the highly advanced creation of technical ideas utilizing rules of nature as “invention.” Therefore, if an invention in the patent application is not a use of rules of nature, it shall be refused on the ground that it does not meet the requirements of “an invention having industrial applicability” under the main sentence of Article 29(1) of the Patent Act. Whether an invention in the patent application is a use of rules of nature should be determined as a whole as a claim. As such, even if part of the invention in the claim is part of a claim that uses rules of nature, the invention does not constitute an invention under the Patent Act if it

(2) In particular, in order to constitute a business method that realizes a new business method using information technology, data processing using a software must be specifically realized by using hardware (see Supreme Court Decision 2001Hu3149, May 16, 2003). Here, the term “software is required to be specifically realized by using hardware” means that the software is not limited to simply read by computer, but is to be built by a unique data processing unit or its action corresponding to the purpose of use by realizing the smoke or processing of information in accordance with the purpose of use by using specific mutually collaborative means.

In addition, in order for BM invention to be completed as an invention, the descriptions of the claim should not stay at the level of creating a simple idea, and all indispensable elements for achieving the purpose of the invention should be specified specifically and clearly.

(b) Markets:

(1) Revised Claim 3 inventions constitute BM inventions with a view to expressing their identity and securing a new profit model at an online community activity space (No. 4, No. 6, No. 14 and No. 7, No. 8, No. 11 and No. 13).

Therefore, I first examine whether each disposal phase by software is specifically realized using hardware in the amended claim 3 inventions.

보정된 청구항 3 발명의 미니룸 생성 및 관리방법은 사람들이 온라인 커뮤니티에서 자신만의 공간을 만들고 그 공간에 자신만의 물건을 전시하고 꾸밈으로써 자기 정체성을 표현하고자 하는 욕구를 해결함을 목적으로 한다(을 제4호증 6쪽 5～16줄).

In order to achieve this objective, software means are the studio creation system that can make the studio easily, and the system that can deliver it to other members through the community bulletin board or the membership website, and the studio expression system that enables to keep the studio (No. 4, No. 6, No. 17 x 1).

In addition, hardware used for data processing using software is servers, membership terminals, Internet network, and studio storage space (10), furniture storage space (30), and studio furniture storage space (20) which can be inferred from the expression of online community.

Therefore, the revised claim 3 inventions include the software processing stage of the system of creation, transmission, and expression of luudio and the luud storage space, furniture storage space, and the hardware method of luud furniture storage space.

(2) However, the amended claims 3 inventions do not clearly state how the purpose of the invention is achieved by collaboration between software and hardware as follows.

(1) At the time of membership in the first-stage organization, the studio of a service provider server (10) is only an automatic creation, and it is not clearly indicated how a member can confirm the creation of the studio through a computer. ② The expression “explication” in the second-stage organization is premised on the condition that a member can see, but it is not clearly indicated how a household is displayed in the database (a household storage space (30) which is a means of memory), and how a member can approach and choose the list of households stored in the database for the selection of a purchasing household. ③ The third-stage organization does not clearly indicate how a member can access the database (20) and designate a household location in any way. ④ The fourth-stage organization does not clearly indicate how a member can access the database (the studio of a member) when writing is stored on the online bulletin board.

After all, the amended claims 3 inventions do not contain specific measures using the combination of software and hardware, and do not clearly state how the annual calculation or processing of information by phase according to the purpose of use is realized.

Therefore, since the revised claim 3 inventions are not specifically realized by using data processing hardware in a computer, it cannot be seen as an invention under the Patent Act as a whole, since the revised claim 3 inventions are not realized by software in a computer.

(3) The Plaintiff asserts that: (a) the Plaintiff’s offering of information related to studio to its members in an invention 3 inventions prior to the amendment is not an essential element; and (b) the Plaintiff’s offering of information related to studio to its members is not an essential element; and (c) the Plaintiff’s offering of information related to st

However, unlike computer programs designed to simply read on computer for the purpose of obtaining a specific result, BM invention is recognized only when a unique action method corresponding to the purpose of invention is realized through the mutual organic or cooperative relationship between hardware and software, and an additional increase effect occurs. Therefore, the claim should be clearly and clearly stated as to how the respective process of processing each information is to achieve the purpose of invention using hardware. The Plaintiff’s above assertion is without merit.

(c) Conclusion

Therefore, an amended claim 3 invention is not an invention for industrial use under the main sentence of Article 29(1) of the Patent Act, and it cannot be patentable at the time of the application pursuant to Article 47(4)2 of the Patent Act. The decision dismissing the Plaintiff’s amendment is justifiable.

4. Whether the invention prior to the amendment constitutes “invention” under the Patent Act

(a) Characteristics of one invention prior to the amendment;

Prior to the amendment, a claim 1 invention constitutes BM invention for the purpose of expressing its identity and securing a new profit model in online community (No. 4, No. 8, No. 11 and No. 13).

(b) Markets:

(1) We examine whether each stage of software processing in an invention 1 invention prior to the amendment is specifically realized using hardware.

In the invention 1 invention prior to the amendment, the processing stage by software for realizing the purpose of the invention is the stage of automatically creating the studio, and storing and posting the selected furniture.

In addition, hardware used for data processing using software is servers, membership terminals, Internet network, and studio storage space (10), furniture storage space (30), and studio furniture storage space (20) which can be inferred from the expression of online community.

Therefore, the invention 1 invention prior to the amendment contains only the literal meaning, software processing stage, such as creation, selective storage, and arrangement of households, and studio storage space, furniture storage space, and hardware of studio storage space.

(2) However, the invention prior to the amendment does not clearly state how the purpose of the invention is achieved by collaboration between software and hardware as follows.

① The studio is only a studio in a studio storage space (10) of a service provider server, and the member does not clearly state how to confirm the creation of studio through the computer. ② The expression “sudio furniture” at the stage of studio furniture storage is premised on the condition that the member can see it, but it does not specify how the household is displayed in the database (30) and how the member can choose a way to approach the list of households stored in the database for the selection of a purchasing household. ③ The member does not clearly state how to access the database (20) and how to designate a studio in any way.

Therefore, the claim 1 invention prior to amendment is not specifically realized by software using data processing hardware on a computer, and thus, it cannot be seen as an invention under the Patent Act as a whole.

(c) Conclusion

Ultimately, a claim 1 invention prior to amendment cannot be deemed to constitute an invention for industrial use under the main sentence of Article 29(1) of the Patent Act, and thus, cannot be patentable. In addition, where a number of claims are claimed, if there are grounds for rejection even one claim, the patent application should be refused.

5. Conclusion

If so, the Plaintiff’s patent application invention should be rejected as a whole without any need to further examine the remainder of claims. This conclusion is justified.

Therefore, the plaintiff's claim seeking the revocation of the trial decision of this case is dismissed as it is without merit. It is so decided as per Disposition.

Judges Cho Yong-ho (Presiding Judge)