Whether an owner of a prior registered utility model right may file an active claim against the owner of the utility model right after the prior registration (negative)

Confirmation of the scope of the right of a utility model right is confirmed to be that a non-registered utility model centered on a registered utility model falls actively or passively within the scope of the right of the registered utility model. Therefore, where the contents of the two registered utility model rights are identical or similar to those of the registered utility model, the owner of the prior-registered utility model right may file a petition for trial to confirm the scope of the right of the utility model right against the owner of

Article 25 (1) 2 of the former Utility Model Act (amended by Act No. 4209 of Jan. 13, 1990) (see current Article 35), Article 135 of the Patent Act

Supreme Court Decision 83Hu107 Decided May 15, 1984 (Gong1984, 1025), Supreme Court Decision 84Hu6 Decided March 25, 1986 (Gong1986, 705), Supreme Court Decision 96Hu375 Decided July 30, 1996 (Gong196Ha, 2675)

Korean Electrical Industry Co., Ltd. (Patent Attorney Chang-hee et al., Counsel for defendant-appellant)

Han-chul Co., Ltd. (Patent Attorney Lee Jae-in, Counsel for defendant-appellant)

Korean Intellectual Property Trial Office Decision 92DaDa3777 dated November 30, 1995

Each of the original decision and the original decision of the Korean Intellectual Property Office shall be reversed. The instant request for a trial shall be dismissed. All costs of a trial and lawsuit shall be borne by a claimant.

The grounds of appeal by the respondent are examined ex officio prior to examining the grounds of appeal by the respondent.

The confirmation of the scope of the right of a utility model right is confirmed to be that a non-registered utility model centered on a registered utility model falls within the scope of the right of the registered utility model or does not fall under the scope of the registered utility model actively or passively. Thus, where the contents of the two registered utility model rights are identical or similar to those of the registered utility model, the owner of the prior-registered utility model right is entitled to file a petition for trial to invalidate the scope of the right of the utility model right against the owner of the subsequent-registered utility model right, and may not file a petition for trial to confirm the scope of the right of the utility model (see, e.g., Supreme Court Decisions 83Hu107, May 15, 1984; 84Hu5, May 28, 1985;

According to the records, it can be known that the device (A) which the claimant claimed that the registered utility model of this case belongs to the scope of the right of the claimant (application on December 22, 1988, and registration No. 59931 of October 22, 1991) falls under the scope of the right of the registered utility model of this case (registration No. 59931 of October 22, 1991) is the same device as the registered utility model after the respondent filed the application on January 27, 1992 and completed the registration on December 15, 1995, and completed the registration on December 15, 1995. Thus, the request for a trial of this case eventually leads to the claim for confirmation that the registered utility model belongs to the scope of the right of the registered utility model of the claimant, and thus, the decision of the court below and the original trial decision of the Korean Intellectual Property Office (registration No. 9386 of this case) cannot be maintained.

Therefore, all of the original decision of the court below and the original decision of the Korean Intellectual Property Office are reversed, and this case is sufficient to be tried by party members, so it is dismissed in accordance with the reasons stated above by the party members, and all of the costs of the trial and the lawsuit are to be borne by the claimant, and it is so decided as per Disposition with the assent of all participating Justices

Justices Kim Jong-sik (Presiding Justice)