특허정정의 인정범위: 실질적 변경 금지 요건

Abstract

According the Supreme Court Decisions and the Intellectual Property Trial and Appeal Board (IPTAB) practice, the determination whether to allow post-grant amendment of patent claims seems to be heavily dependent on the ‘no substantive change’ requirement. Assessing whether or not the amended claim narrows the scope of protection, based not on the overall comparison between the original claims and the amended claims but on the individual comparison between the original claim and the amended claim, may be one of the reasons for this practice. For example, amending the claim from a generic term to a specific term or adding a feature to the claim was simply regraded as narrowing amendment and ‘no substantive change’ requirement was decisive when determining whether to allow the amendment. As a result, the allowable scope of post-grant amendment seems more restrictive than those of European Patent Office (EPO) and Japan. For example, an addition of dependent claims or a change of claim category which may be allowable in EPO and Japan would not be allowed in Korea. The current standard of ‘no substantive change’ requirement is whether the amendment is within the limit of the content of the specification, and thus is not clearly different from the no new matter requirement. Two different requirements established for different purposes appear not to be differentiated from each other. Based on the case analysis and comparative study, this article proposes for the post-grant amendment system as follows. First of all, the standard for assessing whether or not the amended claim narrows the scope of protection should be the same as with those for assessing whether or not the amended claim extends or changes the scope of protection. In other words, the assessment needs to be done substantively based on the overall comparison between the original claims and the amended claims. This would make the allowable scope of post-grant amendment less restrictive than now. Next, ‘no substantive change’ requirement should be differentiated from the ‘no new matter’ requirement. To determine whether an amendment extends or substantively changes the scope of protection, the question to be asked is, whether it is possible to conceive of any act or apparatus which would infringe the amended claim but would not infringe any claim of the patent as it stands, without the proposed amendment. In addition, it needs to be considered to regulate correction of errors separately from other types of post-grant amendment, like the U.K, Patent Act. In order to make the allowable scope of post-grant amendment less restrictive than now, three methods may be adopted. The first is to abolish the ‘no substantive change’ requirement only. The second is to abolish the ‘no substantive change’ requirement and further to allow amendments without any extension of the scope of protection. The third is to allow even the extension of scope of protection. Among theses methods, it seems to be desirable to adopt the second because it broadens the allowable scope of post-grant amendment while basically maintaining the current post-grant amendment.