특허출원인이 종래기술로 기재한 내용의선행기술로의 채택 가능 여부

Abstract

Regarding to the issue whether the information which was admitted by the applicantas existing art or which was located in preamble of a so-called Jepson claim could be referred to as prior art by the examiner without any further evidence, the Supreme Court recently released a positive holding and thereafter the Korean Intelectual Property Tribunal decided not to follow the Supreme Court precedent. With respect to that issue, I studied as basic knowledge (1) theory of in-court admission, (2) burden of proof and estoppel theory, (3) definition of relevant terminologies, such as existing art, publicly known art, prior art and (4) related cases in the U.S.A., Europe and Japan. Based on such study, I advocate (1) it is not theoreticaly logical to treat existing art directly as prior art because existing art comprises in-house knowledge as wel as prior art and further (2) notwithstanding the theoretical analysis it is reasonable to enhance administration efficiency by first allowing the examiner to treat existing as prior art and then allowing the applicant to prove the existing art not being prior art, because practicaly very rare is the case where existing art is in-house knowledge. This approach may apply to a Jepson claim : the examiner may first treat as prior art what was located in preamble of a Jepson claim and then the applicant may prove the art not being prior art. It is advised to refrain from using the ambiguous term, existing art, and to amend relevant provisions and forms to induce disclosure of prior art in the specification.