출원경과 중 출원인이 공지기술이라는 취지로 전제부에 기재한 구성요소의 평가

Abstract

In the subject case, the key issues are “whether the elements indicated in the preamble of the patent claim should be regarded as publicly known art” and “whether the technologies indicated as background art or existing art in the specification should be regarded as publicly known art.” In previous rulings, the Supreme Court delineated that a technology indicated in the specification as existing art and indicated in the claim preamble as an element should be deemed a publicly known art (see Supreme Court Decision 2004Hu2031, Dec. 23, 2005), and expressed thereafter that elements of a patent claim indicated in the preamble should be considered publicly known (see Supreme Court Decision 2005Hu2052, Feb. 8, 2007). Such judicial precedents are deemed tenable to the effect that: (i) it raises the need to factor in an applicant’s intention, which can be expressed in a specification, when examining a patent application; and (ii) it induces an applicant to extensively conduct prior art research before preparing a specification. However, there is room for doubt on whether it accords with the practice of law or whether it constitutes an excessive demand without any legal basis. In the subject case, the Supreme Court overruled its established previous position by stating that, “[...] cannot be deemed a publicly known art solely on the grounds that an element, if any, was indicated in the preamble of a patent claim or indicated in the specification as either a background art or an existing art. Provided, however, in exceptional cases where an applicant is deemed to have indicated certain elements as publicly known art (rather than merely regarding it as either a background art or an existing art) in the preamble by having comprehensively taken into account the specification details and the prosecution history, it is tenable to presume, without any particular evidence, that the elements indicated in the preamble were publicly known prior to applying for a patent and that such presumption can be refuted by providing counter-evidence.” Moreover, the Supreme Court for the first time established the following legal principle in the subject case: “In cases where a patent invalidation trial is sought again by stating additional grounds for invalidation after a final judgment was rendered to dismiss the petition for an invalidation trial based on examining the initial ground, whether there exist any new evidence convincing enough to challenge the previous decision should be determined in light of the general rule against non bis in idem.” Herein, the focus lies on the following: (a) explore key issues of the subject case as described above not to mention the concept of publicly known art, prior art, existing art, and background art; meaning of indications in the preamble of a patent claim; and the requirements for a technology to be regarded as a background art to describe an invention as prescribed under the Korean patent law; (b) review related case studies of foreign policies; (c) understand the views of academics and legal scholars; (d) determine whether the principle of prosecution history estoppel is applicable to publicly known art; and (e) derive the details of the theoretical basis and background of the legal principles applied in the subject case.