[1] Whether the detailed description or drawings of the invention submitted at the time of the initial application can be used again upon filing the divisional application (affirmative)

[2] Criteria to determine whether the original patent application invention and the divisional patent application invention are identical

[3] The case holding that the divisional invention is different from the initial invention, its technical idea and technical composition

[1] A divisional application is divided into two or more inventions under the principle of a single invention and a single application where two or more inventions are filed as one application, and the application is filed as one application for two or more inventions, including not only the case where two or more inventions are necessarily included in the scope of the patent claim, but also the case where the application is filed as described in the detailed description or drawings of the invention. Thus, a divisional application may be used again in the detailed description of the invention or drawings submitted at the time of the initial application.

[2] If a part of the original application is written in the detailed description of the practice, etc. and can be seen as a single invention different from the original application, it may be divided into two inventions. In this case, the determination of the identity shall be based on whether the technical composition of the two inventions described in the claim is identical, but its effects shall also be taken into consideration. Thus, even if the difference exists in the technical composition, if the difference is merely the degree of the absence of a new effect due to addition, deletion, modification, etc. of widely known and commonly used technology, both inventions shall be identical to each other.

[3] The case holding that the manufacturing process of a compound added to the original invention is a process that has a new effect that the divisional invention is not scheduled as an essential element of the invention, and it cannot be deemed that it is merely a mere well-known art, and thus the divisional invention, which does not include the manufacturing process as an essential element, is different from the original invention, its technical idea and technical composition

[1] Article 52 of the former Patent Act (amended by Act No. 4594 of Dec. 10, 1993) / [2] Articles 29(3) and 52 of the former Patent Act (amended by Act No. 4594 of Dec. 10, 1993) / [3] Articles 29(3) and 52 of the former Patent Act (amended by Act No. 4594 of Dec. 10, 1993)

[1] Supreme Court Decision 83Hu23, Jul. 26, 1983 (Gong1983, 138), Supreme Court Decision 83Hu20, Feb. 28, 1984 (Gong1984, 602), Supreme Court Decision 84Hu71, Sept. 9, 1986 (Gong1986, 1308) / [2] Supreme Court Decision 89Hu179, Jan. 23, 1990 (Gong190, 529), Supreme Court Decision 90Hu1154, Jan. 15, 1991 (Gong1991, 754), Supreme Court Decision 93Hu824, Nov. 11, 1994 (Gong1994, 1969, Jul. 26, 196)

C. Libya Daza Daza Bakikikiki (Attorneys Choi Young-ro et al., Counsel for the plaintiff-appellant)

International Pharmaceutical Industry Co., Ltd. and three others

Patent Court Decision 2002Heo161 delivered on October 25, 2002

The judgment below is reversed, and the case is remanded to the Patent Court.

1. The judgment of the court below

According to the reasoning of the lower judgment, the lower court determined that: (a) the patent application of this case (patent registration number omitted) was filed on the 3-I-H compound of the same invention as that of the instant 4-I-H compound using the same method as that of the instant patent application (patent registration number omitted); (b) it was registered on July 28, 194; and (c) the claim No. 1 of the instant patent invention (hereinafter referred to as “instant Claim No. 1”) is identical to that of the instant patent application No. 3-I-H compound using the same method as that of the instant patent application No. 4-I-H compound; (b) it is identical to that of the instant patent application No. 3-I-H compound using the same method as that of the instant patent application No. 4-I-H compound; and (c) it is deemed that all of the inventions were manufactured using the same method as that of the instant patent application No. 1-I-I-H compound without the general formula No. 1.

2. Judgment of the Supreme Court

A divisional application is divided into two or more inventions under the principle of a single invention and a single application. If two or more inventions are divided into one application, and one application is filed, it includes not only the case where two or more inventions are necessarily included in the scope of the patent claim, but also the case where an application is filed in the detailed description or drawing of the invention. Thus, a divisional application may be used again when it is filed (see Supreme Court Decisions 83Hu23, Jul. 26, 1983; 83Hu20, Feb. 28, 1984; 84Hu71, Sept. 9, 1986; 200, etc.), and if it is stated in the detailed description of the implementation of a part of the original application, etc., and if it can be seen as one invention different from the original application, it may be divided into two or more inventions, and if it is not deemed that the technical composition of the invention has the same effect as that of the invention, it shall be deemed that there is a new technical difference between the two.

In light of the above legal principles and records, paragraph 1 invention of this case and paragraph 1 invention of this case are partially identical to the implementation examples described in the detailed description. However, the scope of claims of this case is about the manufacturing method of a compound (VI) which is a final target substance through the IC compound of the intermediate body with new IB compound as a starting material, and there is a technical feature that its new compound IB is used as a starting material. On the other hand, the original invention is about the manufacturing method of a compound (V) which is a final target substance through the commercial process using X's chemical compounds as a starting material. The initial invention is about the manufacturing method of the first invention of this case, which is an "X" added to the original invention, and the intermediate X compound as a new material, and its detailed description of the invention is the most effective material in terms of the manufacturing rate, etc., and it is merely an essential element of the first invention of this case that does not have any technical effect different from the initial invention of this case, and it is merely an essential element of the first invention of this case.

Therefore, the judgment of the court below that the claim 1 invention of this case cannot be recognized as a divisional application on the ground that the difference between the technical composition of the claim 1 invention of this case and the claim 1 invention of this case is not well examined, and it is erroneous in the misapprehension of legal principles as to the divisional application, which affected the conclusion of the judgment. Thus, the ground of appeal pointing this out is with merit.

3. Conclusion

Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Hyun-chul (Presiding Justice)