2006Hu138 Invalidity of Registration

by the Supreme Court of Korea

Justices Park Si-hwan (Presiding Justice), Park Il-hwan, Kim Neung-hwan (Justice in charge)

Main Issues

1. Whether it is allowed to determine progressiveness of the invention ex post facto on the presumption that a usual technician knows technology in the detailed statement of the pertinent invention (negative)
2. The case holding that in determining progressiveness of the eavesdropping mode, a major component of the patent invention, it is not allowed to determine easiness of invention using a "receipt of non-voice signals" as a comparison invention since such comparison presupposes knowledge of the contents of the patent invention and thus it amounts to an ex post facto decision as to progressiveness of the invention

Summary of Decision

1. Article 29 (2) of the former Patent Act (amended on March 3, 2006 into Act Number 7871, hereinafter referred to the same Act) stipulates that a patent shall not be granted to the inventions in Paragraph 1, which are, an invention that was disclosed or publicly conducted before the application for the patent, an invention that was included in a periodical distributed in and out of Korea, an invention that has been publicly available through electrical communication circuit (hereinafter referred to as the "advance notice invention") as well as an invention that can be easily invented by a person who has usual knowledge in the area of technology where the invention belongs (hereinafter referred to as the "usual technician"), so to judge whether an invention's progressiveness shall be denied or not in accordance with this provision, it shall be checked to see if the invention can be easily made from an advance notice invention at time of the application of the invention in the case of an usual technician, and the judgment shall not be made on whether a usual technician can easily make the invention afterwards on the premise that he knows the technology disclosed on the statement for the invention that has become the object of the judgment on whether progressiveness shall be denied or not.
2. The case holding that the patent invention of a "device to process emergency call using the mobile communication network and its method" has a characteristic of "controlling means that block the receipt of the receiving voice signals and only permit the transmission of the caller's voice by implementing the eavesdropping mode according to the emergency signal sent from an emergency contact"; however, in denial decision of progressiveness of the invention, it is not allowed to determine easiness of the invention from the components where a subscriber presses the emergency button on a Personal Handy-Phone System (PHS) terminal to record the sound of the situation, or the security center receives a non-voice signal onto a PHS terminal and records the sound of the situation because such determination presupposes knowledge of the contents of detailed statement for the patent invention and thus it amounts to an ex post facto decision as to progressiveness of the invention

Reference Provision

1. Article 29 (2) of the former Patent Act (amended by Law No. 7871 of March 3, 2006)

Article 29 of the former Patent Act (Requirements for Patents)

(2) Notwithstanding paragraph (1), where an invention could easily be made by a person having ordinary skill in the art to which the invention pertains, on the basis of an invention referred to in each subparagraph of paragraph (1), a patent shall not be granted for such invention. <Amended by Act No. 6411, Feb. 3, 2001>

• Plaintiff(Withdrawn): Plaintiff 1 and 1 other

• Succeeding Participant to Plaintiff, Appellant: Seo Telecom, Inc. (Patent lawyer Lee Jong-young and 3 others, Counsel for participant-appellant)

• Defendant, Appellee: LG Telecom, Inc.(Law Firm Kwangjang, Attorneys Kwon Kwang-jung and 7 others)

• Judgment of the court below: Patent Court Decision 2005Huh1554 delivered on Dec. 16, 2005

Disposition

The decision of the court below shall be reversed, and the case shall be remanded to the Patent Court.

Reasoning

This is to judge the Reasons for Appeal (for the supplemental Reasons for Appeal that was submitted after the due date for the Reasons for Appeal was passed, within the scope that complements the Reasons for Appeal).

1. Article 29 (2) of the former Patent Act (amended on March 3, 2006 into Act Number 7871, hereinafter referred to the same Act) stipulates that a patent shall not be granted to the inventions in Paragraph 1, which are, an invention that was disclosed or publicly conducted before the application for the patent, an invention that was included in a periodical distributed in and out of Korea, an invention that has been publicly available through electrical communication circuit (hereinafter referred to as the "advance notice invention") as well as an invention that can be easily invented by a person who has usual knowledge in the area of technology where the invention belongs (hereinafter referred to as the "usual technician"), so to judge whether an invention's progressiveness shall be denied or not in accordance with this provision, it shall be checked to see if the invention can be easily made from an advance notice invention at time of the application of the invention in the case of a usual technician, and the judgment shall not be made on whether a usual technician can easily make the invention afterwards on the premise that he knows the technology disclosed on the statement for the invention that has become the object of the judgment on whether its progressiveness shall be denied or not.

2. According to the reasons for the decision by the court below, in judging the progressiveness of Paragraph 3 of the patent request scope that has been amended for the patent invention in this case (hereinafter referred to as the "invention in Paragraph 3 requested through amendment in this case") by comparing the comparison invention 1 and 2 stipulated in the decision by the court below with the patent invention in this case in the name of "device to process emergency call using the mobile communication network and its method" (applied on September 10, 2001 and registered on March 31, 2003 as Number 379, 946), the court below divided the invention in Paragraph 3 requested through amendment in this case into the premise and components 1 through 4, and judged that the premise has no technological uniqueness but is no more than the demonstration of the structure of an ordinary mobile communication terminal and that components 1 through 3 are easily predicted in comparison to the comparison invention 1 and 2 stipulated in the decision by the court below, and acknowledged that component 4 has a characteristic of the "controlling means that block the receipt of the receiving voice signals and only permit the transmission of the caller's voice by implementing the eavesdropping mode according to the emergency signal sent from an emergency contact," and judged that Demonstration 1 of the comparison invention 1 in the decision by the court below is a case where a subscriber presses the emergency button on a Personal Handy-Phone System (PHS) terminal to record the sound of the situation, while Demonstration 2 is a case where the security center receives a non-voice signal onto a PHS terminal and records the sound of the situation because the subscriber cannot work the terminal for reasons like he is not present in the situation, so Demonstration 1 is on the premise of the function that blocks the receiver's voice signals while Demonstration 2 has the function to receive a "non-voice signal" which means that it is sent to a PHS terminal from the security center, not only the calling sound but also the receiver's voice signals are blocked, and component 4 of the Paragraph 3 of the patent request scope that has been amended for the patent invention in this case is either identical or similar to the structure of Demonstration 2 of the comparison invention 1 that when "a signal input from the security center is distinguished as the order to be sent to a certain PHS terminal, it is sent to the designated PHS terminal with no sound, and that PHS terminal gathers and transmits the sound from the surrounding situation so that the recording device at the security center can record it" so it is difficult to deem that it has technological uniqueness, so the Paragraph 3 of the patent request scope that has been amended for the patent invention in this case shall be denied in its progressiveness by the comparison invention 1 and 2 in the decision by the court below thereby failing to have the independent patent requirements stipulated in Article 136 Paragraph 4 of the former Patent Act that are applied in Article 133-2 Paragraph 3 of the same Act, so the request to amend in this case shall not be permitted as a whole.

In addition, the court below judged that the Paragraph 1 of the patent request scope that has been amended for the patent invention in this case shall be denied in its progressiveness for the same reasons seen above, and the subordinate paragraphs 2 through 4, Paragraph 7, and Paragraph 9 that expresses Paragraph 1 as an invention of a method as well as its subordinate Paragraph 11, and Paragraph 14 shall be denied their progressiveness on its continuum.

However, such judgment by the court below is hard to accept for the following reasons.

According to the above legal reasoning and the record, the structure of the comparison invention 1 in the decision by the court below that the court below regarded as identical to Component 4 of the Paragraph 3 of the patent request scope that has been amended for the patent invention in this case demonstrates the receipt of a non-sound signal, but the principle to interpret the terms on the statement is to do so in ordinary meaning first, in which case the meaning in the dictionary of an arriving signal is "arriving of communication," so an arriving non-sound signal shall be nothing more than meaning "arriving of communication with no sound," and furthermore, the comparison invention 1 in the decision by the court below stipulates that it "sends signals including a direction to change the method of calling so that the call is made silently" and "without the intervention of a person or the notice of a person," which means that the structure of the comparison invention 1 only demonstrates the structure to connect the conversation without having other people notice it even though there is no human action such as pressing a button on the terminal, because the terminal cannot be worked for reasons like the owner of the terminal is absent from the situation, and does not demonstrate a structure to send voices only to the security center from a PHS while blocking the voice that is received on a PHS at the security center, so it is difficult to deem from the structure of the comparison invention 1 in the decision by the court below, just as to Component 4 of the Paragraph 3 of the patent request scope that has been amended for the patent invention in this case (upon an emergency call from the terminal owner) a control tool is demonstrated to perform the so-called eavesdropping mode that blocks the receipt of the receiver's voice signals and only permits the transmission of the caller's voice when there is an emergency call from an emergency contact, and no data has been submitted about an advance notice invention that implies an eavesdropping mode such as above before the application of the patent invention in this case, and in this case where there is no evidence to acknowledge the circumstances that a usual technician shall have no choice but to think of the above Component 4 from the above structure of the comparison invention 1 in the decision by the court below, unless a judgment is made afterwards on the premise that the content of the demonstration on the statement of the patent invention in this case, it shall not be deemed that a usual technician can easily invent the Paragraph 3 of the patent request scope that has been amended for the patent invention in this case through the comparison inventions in the decision by the court below (the same applies, for the same reasons seen above, to Paragraph 1 of the patent request scope that has been amended for the patent invention in this case before the request of amendment was made, as well as its subordinate Paragraphs 2 through 4, Paragraph 7, and Paragraph 9 that expresses Paragraph 1 as an invention of a method and its subordinate Paragraph 11, and Paragraph 14) which shall not be permitted.

Nevertheless, the court below judged that the Paragraph 3 of the patent request scope that has been amended for the patent invention in this case shall be denied in its progressiveness by the comparison invention 1 and 2 in the decision by the court below, which affected the result of the decision because it misunderstood the legal reasoning on the progressiveness of an invention, and the argument in the Reasons for Appeal that points out the above is reasonable.

3. Therefore, with no need to judge the rest of the Reasons for Appeal, the decision by the court below shall be reversed and the case shall be returned to the court below for another deliberation and judgment, and this decision is delivered with the assent of the Justices involved.

Source

• Supreme Court Decision 2006Hu138 Delivered on August 24, 2007, Supreme Court Library of Korea