2001Hu3149 Rejection Decision(Patent)

From Wikisource
Jump to: navigation, search

Justices Cho Moo-jeh(Presiding Justice), Yoo Ji-dam, Lee Kyu-hong(Justice in charge), Son Ji-yol


Main Issues[edit]

  1. Whether a patent application should be refused in case where a patent applied invention does not involve rules of nature (affirmative)
  2. The case holding that a patent applied invention titled as the "total management system for recycling household garbage" is not an invention utilizing rules of nature


Summary of Decision[edit]

  1. Article 2 Item 1 of the Patent Act defines the term "invention" as the highly advanced creation of technical ideas utilizing rules of nature, and there is no ground for regarding the above Article 2 Item 1 of the Patent Act as a mere instructive provision. Thus, in case where a patent is applied for an invention not utilizing rules of nature, a patent is refused pursuant to Article 62 of the Patent Act on the ground that an invention does not satisfy the element of "inventions having intellectual applicability" as stipulated by Article 29(1) of the Patent Act.
  2. The case holding that the patent applied invention cannot be viewed as "inventions having intellectual applicability" as stipulated by the main article 29(1) of the Patent Act on the grounds that the invention titled as "total management system for recycling household garbage" cannot be implemented by itself, considered as a whole, unless relevant regulations are provided; it does not utilize rules of nature as a mere man-made decision rendered by agreement, etc. among the pertinent authorities, garbage producers, and garbage collectors or as a follow-up judgment/man-made decision by the above pertinent authorities; each step is performed off-line, not on-line on the Web; also, it cannot be viewed as belonging to the category of a business model since the system linking softwares and hardwares is not yet specifically realized


Reference Provisions[edit]

  1. Item 2 of Article 2, Article 29(1), and Article 62 of the Patent Act
Article 2 of the Patent Act (Definitions)

The definitions of terms used in this Act shall be as follows: <Amended by Act No. 5080, Dec. 29, 1995>

1.The term "invention" means the highly advanced creation of technical ideas utilizing rules of nature;
2.The term "patented invention" means an invention for which a patent has been granted; and
3.The term "working" means any act falling under any of the following items:
(a) In the case of an invention of a product, acts of manufacturing, using, assigning, leasing, importing, or offering for assigning or leasing (including displaying for the purpose of assignment or lease) the product;
(b) In the case of an invention of a process, acts of using the process; and
(c) In the case of an invention of a process of manufacturing a product, acts of using, assigning, leasing, importing, or offering for assigning or leasing the product manufactured by the process, in addition to the acts mentioned in item (b).
Article 29 of the Patent Act (Requirements for Patents)
(1) Inventions having Intellectual applicability may be patentable unless they fall under any of the following subparagraphs: <Amended by Act No. 6411, Feb. 3, 2001>
1. Inventions publicly known or worked in the Republic of Korea prior to the filing of the patent application; or
2. Inventions described in a publication distributed in the Republic of Korea or in a foreign country prior to the filing of the patent application or inventions made accessible to the public through electric communication lines as prescribed by the Presidential Decree.
Article 62 of the Patent Act (Decision of Refusal of Patent)

The examiner shall make a decision to refuse a patent where the invention falls under any of the following subparagraphs (hereinafter referred to as "reason for refusal"): <Amended by Act No. 6411, Feb. 3, 2001>

1. Where the invention is not patentable under Article 25, 29, 31, 32, 36 (1) through (3), or 44;
2. Where the application is filed by a person who does not have the right to obtain a patent therefor or where the invention is not patentable under the proviso of Artcle 33(1);
3. Where it is in violation of a treaty;
4. Where it has not satisfied the requirements prescribed under Article 42 (3) through (5) or 45; or
5. Where the application is amended in violation of Article 47 (2).


Reference Case[edit]

  1. Supreme Court Decisions 98Hu744 delivered on September 4, 1998(Gong1998Ha, 2419)
  • Plaintiff, Appellant: Park In-ho (Patent lawyer Lee Duck-rok, Counsel for the plaintiff-appellant)
  • Defendant, Appellee: Head of the Korean Intellectual Property Office
  • Judgment of the court below: Patent Court Decision 2000Huh5438 delivered on September 21, 2001


Disposition[edit]

The appeal is dismissed. All costs of appeal are assessed against the plaintiff.


Reasoning[edit]

Article 2 Item 1 of the Patent Act defines the term "invention" as the highly advanced creation of technical ideas utilizing rules of nature, and there is no ground for regarding the above Article 2 Item 1 of the Patent Act as a mere instructive provision. Thus, in case where a patent is applied for an invention not utilizing rules of nature, a patent is refused pursuant to Article 62 of the Patent Act on the ground that an invention does not satisfy the element of "inventions having intellectual applicability" as stipulated by Article 29(1) of the Patent Act (see Supreme Court Decision 98Hu744 delivered on September 4, 1998).

According to the court below's reasoning, the court below decided to the purport that the invention of this case for which a patent is applied cannot be viewed as "inventions having intellectual applicability" as stipulated by the main article 29(1) of the Patent Act on the following grounds: each procedural step comprising the plaintiff's invention titled as "total management system for recycling household garbage" cannot be viewed as utilizing rules of nature according to the court below's grounds for judgment; although the patent applied invention of this case as a whole includes hardware and software means such as bar code stickers, calendar papers, garbage bags and bar code decoding, each of the above mentioned step comprising the patent applied invention of this case does not contain any specific way of combining the above mentioned hardware and software, and rather, it involves human mental activities using those means as instruments; the patent applied invention of this case providing a total management system for household garbage cannot be implemented by itself unless relevant regulations are provided, considered as a whole, and it does not utilize rules of nature as a mere man-made decision rendered by agreement, etc. among the pertinent authorities, garbage producers, and garbage collectors or as a follow-up judgment/man-made decision by the above pertinent authorities; each step is performed off-line, not on-line on the Web; also, it cannot be viewed as belonging to the category of a business model since the system linking softwares and hardwares is not yet specifically realized.

In light of the records and legal principles set out in the above, the court below's acknowledgment and judgment are justified, and there are no errors of misinterpreted legal principles with regard to Article 2 Item 1, Article 29(1) and Article 62 of the Patent Act as pointed out as the grounds for appeal.

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


This work is in the public domain because, according to Article 7 of the Copyright Act of South Korea, this work is not eligible for copyright. This following works are included:

  1. Constitution, laws, treaties, decrees, ordinances and rules;
  2. Notices, public notifications, directions and others similar to them issued by the state or local government;
  3. Judgments, decisions, orders, or rulings of courts, as well as rulings and decisions made by the administrative appeal procedures, or other similar procedures;
  4. Compilations or translations of works as referred to in Subparagraphs 1 to 3 which are produced by the state or local government; and
  5. Current news reports which transmit simple facts, and digital audio transmission