Patent cases

Patent (특허/特許), one of the intellectual property rights (IPRs), is granted by the Korean Intellectual Property Office (KIPO, 특허청/特許廳) under the Patent Act (특허법/特許法) to a person who invents any new, useful, and non-obvious process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof, and claims that right in a formal patent application.

Generally speaking, a patent application must include one or more claims defining the invention which must meet the relevant patentability requirements such as novelty and non-obviousness. The exclusive right granted to a patentee in Korea is the right to prevent others from making, using, selling, or distributing the patented invention without permission.

Accordingly if any of the above elements of an invention or patentability requirements is missing, such patent may be disputable.

Key words
patent, patentability, invention, IPRs, claims

Judiciary system concerning IPRs
Any dispute over patentability requirements shall be filed with the trial board of KIPO - the Korean Intellectual Property Tribunal (KIPT, 특허심판원/特許審判院), established on March 1, 1998. KIPT handles such disputes as fall within the exclusive jurisdiction of the Patent Court under the Court Organization Act as amended on July 27, 1994.

Disputes before KIPT are settled by 3 Trademark Panels, 6 Patent Panels and one Design & Utility Model Panel. Each panel consists of three patent Commissioners. The affected party, who refuses the award of KIPT, may appeal to the Patent Court as the second instance. Any appeal of the Patent Court's decisions should be brought directly to the Supreme Court.

The Patent Court's subject matter jurisdiction is limited to determining the validity and the scope of a patent and other registered intellectual property rights. The category of so-called patent infringement cases, such as preliminary injunction, compensation for damages, injunctions of restitution of commercial credit, is referred to ordinary courts.

Patent cases
The following cases decided by the Supreme Court illustrate major issues concerning the above-mentioned invention or patentability requirements:

What becomes of an invention which fails to utilize rules of nature?
Article 2(1) of the Patent Act Article 2 of the Patent Act (Definitions)
 * The definitions of terms used in this Act shall be as follows:
 * 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:
 * 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"):
 * 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 Article 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). defines the term "invention" as the highly advanced creation of technical ideas utilizing rules of nature.

There is no ground for regarding Article 2(1) as a mere instructive provision. Thus, in a case where a patent application is for an invention that does not utilizing rules of nature, the application 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" under Article 29(1) of the Act.

What is a selective invention?
The so-called selective invention is an invention that states the element of a preceding or already publicized invention as its superordinate concept and whose elements entirely or partly consist of subordinate concepts derived from the above superordinate concept.

A patent can be granted to a selective invention on the following conditions:
 * First, a preceding invention has not yet disclosed subordinate concepts comprising a concrete selective invention;
 * Second, subordinate concepts possess either effects different in quality from the preceding invention or there exist conspicuous differences in effect as measured quantitatively between them.

In this case, it is enough that the specifications of a selective invention state explicitly the above mentioned kinds of effects compared to the preceding invention, and the results of comparative experiments verifying conspicuousness of its effects in concrete need not be stated. If doubts as to the selective invention’s effects are raised, an applicant for a patent may allege and prove its effects after the date of the patent application by means of submitting specific comparative experimental data.

What is industrial usability?
The legal principle that an invention for which a patent is applied satisfies the requirement of industrial usability under the Patent Act even if it is possible to use the invention for industrial purposes only at the future date, but not at the patent application date, means merely that an industrial exploitation of the pertinent invention may take place in the future.

It does not include situations where the industrial usability arises for the first time in the future by advances in the relevant technology.

How can the requirement of claims be satisfied?
To establish a medicinal use invention, an applicant must specify a use of medicine containing a specified material. Thus, it is a general principle that patent claims must clearly state the use of medicine containing a specified material with a targeted disease or the medicine's effect.

However, even though the use of medicine containing a specified material stated a pharmacological mechanism only, the specificity-of-claim requirement under Article 42 (4) 2 of the Patent Act is satisfied if the invention's specific medicinal use can clearly be determined through other statements in the specifications such as the detailed description of the invention, etc. or common technical knowledge.

What is the identical invention?
Article 11(1) of the former Patent Act (amended by Act No. 42307 of Jan. 13, 1990, hereinafter the same applies) provides that, as to the identical invention, only the earliest-filed patent application for patent can be patented by adopting the principle of first-to file rule to prevent dual registration as to the identical invention.

The case where both inventions for patent application are identical includes not only the case where entire technical components overlap, but also the cases where only part of them overlaps with differences in the scope, barring special circumstances. Although the composition of both inventions is different, if it is merely a modification ordinarily adopted by a person with ordinary knowledge in technical area, and there is no special difference in the purpose of invention and reaction effect, both inventions are also an identical invention.

As a premise for applying Article 11(1) of the former Patent Act, in determining whether two inventions are identical with each other, real entities of two inventions must be compared instead of difference in the expression form, and thus, just because they have different scopes of invention as one invention is about a thing and the other one is about a method respectively, we can not decide promptly that two inventions are not identical inventions.

If a registered patented invention was publicly known or publicly implemented domestically prior to patent application and thus, it is without novelty, its scope of right cannot be acknowledged even without a decision of invalidating a registration. As a ground of invalidity of patent, absence of novelty and a violation of the principle of first-to file rule are not different from each other in that both of them have the issue of identicalness between the patent invention or later-filed patent application invention and the earlier-filed invention or earlier-filed patent application invention, and thus, the above legal principle applies without modification to the case where the invalidity ground of a violation of the principle of first-to file rule exists in the later-filed patent application invention.

What does "production" in the context of patent infringement mean?
Article 127 subparagraph 1 of the Patent Act provides as to the indirect infringement is understood that even where an article having all components of invention is not implemented, if only the act prior to that stage is performed, and thus, the article having all components of invention is highly likely to be implemented, such an act can be considered as an infringement on the patent right in order to enhance effectiveness of relief in case of future infringement on the patent right, if certain requirements are met.

We are of the opinion that the above provision implies that such rule does not improperly expand the patent right. In light of the wording of the above provision and its purport, the "production" in this context means all kinds of acts that make new articles with all components of the invention by using articles lacking some components of invention. Thus, it is not limited to production by the manufacturing industry and includes the acts of processing, and assembling, etc.

Moreover, in order to constitute an article used "only" in the production of patented article, any other economic, commercial and practical usage accepted and approved under ordinary social norms should not exist, and if, contrary to the above, mere possibility of theoretical, experimental or temporary usage for other articles other than the patented article exists, it can not be said that there is other usage which can negate establishment of indirect infringement.

What is a confirmation subject invention?
A confirmation subject invention can be seen as falling under the scope of the patent right of a patented invention only when each element and the organic combination of these components as specified within the scope of the patent claim for the patented invention are intact within the confirmation subject invention.

Meanwhile, even in cases where a confirmation subject invention contains portions which replace or substitute elements included in the scope of a patent claim for a patented invention, if both inventions share the same solution principle, if such a replacement still makes it possible to achieve the purpose of the patented invention and enables an identical effect on an actual level, and if this replacement is self-evident to the extent that any person of ordinary skill in the pertinent field of technology could have easily conceived it, then the confirmation subject invention must be seen as equivalent in whole to the elements specified in the scope of the patent claim for a patented invention.

If a patented invention and confirmation subject invention both share identical solution principles this means that the element replaced within the confirmation subject invention is an inessential part of the patented invention and that the confirmation subject invention assumes the characteristic elements of the patented invention.

Therefore, in order to grasp the characteristic elements of the patented invention, the detailed descriptions within the specifications and prior art existing at the time of application must be taken into consideration to investigate the solution principle upon which the patented invention establishes a solution that is unique to the problem when compared to prior art.