[1] The criteria for determining the inventive step of an invention under Article 29(2) of the former Patent Act, and whether a person with ordinary skill can easily make an invention after the premise that he/she knows the technology disclosed in the specification of the invention subject to the determination of inventive step (negative)

[2] The case holding that the inventive step is not denied on the ground that a person with ordinary skill could not easily derive comparable inventions, and thus, the claim claim 6 of the patent application invention named "the direction-setting met for the singing or ginging of organic products" does not allow its inventive step

[1] Article 29 (1) and (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Article 29 (1) and (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

[1] Supreme Court Decision 2006Hu138 decided Aug. 24, 2007 (Gong2007Ha, 1486), Supreme Court Decision 2007Hu3660 decided Nov. 12, 2009 (Gong2009Ha, 2112)

U.S. J. R.D. New Factoring, S.C. (Attorneys Son Ji-yol et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Intervenor Co., Ltd. (Law Firm Dakel, Attorneys Choi Ji-dam et al., Counsel for the intervenor-appellant)

Patent Court Decision 2007Heo5642 Decided August 22, 2008

The appeal is dismissed. The costs of appeal are assessed against the defendant supplementary intervenor, and the remainder are assessed against the defendant.

The grounds of appeal by the Defendant and the Defendant’s Intervenor (to the extent of supplement in case of any statement in the grounds of appeal submitted after the expiration of the submission period) are examined together.

1. Article 29(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) provides that an invention shall not be patentable in a case where a person with ordinary knowledge in the art to which the invention pertains (hereinafter “ordinary engineer”) can easily make an invention by means of an invention publicly known or publicly worked in the Republic of Korea or an invention published in a publication published inside or outside the Republic of Korea prior to the filing of a patent application (hereinafter “prior art”), prior to the filing of a patent application, prior to the filing of the patent application. In determining the inventive step of the invention in accordance with the aforementioned provision, the determination of whether the invention can be easily made by the prior art shall be based on the records, such as evidence, etc.

2. We examine the above legal principles and records.

(2) In light of the patent application number 202-701183 of the instant Claim No. 6 (hereinafter “instant Claim Nos. 6”) using the name “dispensing or galing an organic compound,” the basic nuclear structure is identical to that of the instant Claim No. 3 which is non-dispensiveed Invention No. 3, and the following specifications of comparable Invention No. 3, which are non-dispensived inventions of the instant Claim No. 6 (hereinafter “dispensive Invention No. 6”), and the following specifications of the instant Claim No. 3 are non-dispensived Invention No. 3. The chemical compounds of the instant Claim No. 6 are non-dispensived Invention No. 3, which are non-dispensived by the method of non-dispensived Invention No. 3, and thus, the following chemical compounds No. 3, which are non-dispensived by the method of non-dispuging technological compounds No. 3, namely.

Furthermore, the detailed description of the invention in the specification of the patent application invention in this case states that the chemical-type III compound of the patent application invention in this case stated that the chemical-type III compound of the patent application invention in this case is excellent melting, stability and resistance against the petroleum products due to the difference in the above composition compared to the chemical-type III compound of the comparable invention in this case. According to the reasoning of the judgment below, the above effect is recognized.

Therefore, the chemical formula Ⅲ of the instant Claim No. 6 invention is not denied inventive step compared with the cited invention, and furthermore, the chemical formula Ⅴ of the instant Claim No. 6 invention, which differs only from that of combining the chemical formula Ⅲ with the chemical formula Ⅲ in the R1 or R2 location, is not denied inventive step. Therefore, the court below is just in holding that the instant Claim No. 6 invention is not denied inventive step based on the comparable invention. In the same purport, there is no error in the misapprehension of legal principles as to the determination of inventive step of the invention, or in the misconception of facts or incomplete hearing due to the violation of the rules of evidence, as otherwise alleged in the grounds of appeal by the Defendant Intervenor, and it is not appropriate to apply the instant case as it is as it is, contrary to the case.

3. 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 on the bench.

Justices Park Si-hwan (Presiding Justice)