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Regarding Prosecution History Estoppel and Conscious Exemption

2017/12/08

1. Introduction

 

The scope of a patent invention to be protected is fixed based on the description of the patent claims. However, since an invention is an abstract concept and there is the limitation that such conception is expressed as a literal description, interpretation by extracting the idea of an invention from the claims and adding a legal value judgment is required. Interpretation standards include a conscious exemption provision and a file wrapper estoppel rule that take prosecution history into consideration. In other words, there is an interpretation standard that through the process of from the filing of an application to granting, the protection range of a patent invention should be judged by considering the intention that the applicant expressed or opinions that KIPO expressed, and in the preparation of the specification, matter(s) that the applicant consciously excluded from claims should be excluded from the protection range of the patent invention.

 

In a trial decision regarding the Korean intellectual Property Tribunal of KIPO having judged, according to the doctrine of equivalents, in a recent defensive confirmation trial for the scope of right that the constitution of a confirmation subject invention was substantially the same or equal in relationship to the scope of a registered patent right, the Korean Supreme Court decided that the decision of the Patent Court to cancel the decision was legitimate for the reason that the corresponding constitution of the confirmation subject invention could not be considered to be equal since it had been consciously excluded from the claims of the registered patent through the process of the filing of the application (2014HU638 Decision of Supreme Court on April 26, 2017)

 

In the following, we will briefly go over the decision of Supreme Court and consider the meaning of the decision.

 

2. Example Supreme Court Decision

 

(1) Case summary (main points of the claims and the case filing process)

 

The ‘invention of Claim 1 of the subject case’ titled ‘a support for packaging steel sheet’ described a cross section shape of a bottom support as ‘a hollowed trapezoid’ in the claims when the invention was first filed, and the KIPO Examiner issued a notice of preliminary rejection on the ground that References 1 and 3 already disclose such cross section shape.

 

In relation to this, the applicant amended the cross section shapes of the bottom support and upper support in the above-mentioned Claim 1 by limiting it to ‘a cross section shape of a hollowed trapezoid whose bottom surface is larger than an upper surface’. In addition, the applicant filed an argument that in the case of the mounting fame (upper support) of Reference 1, a part wherein a groove part is formed is directed downwards and connected with a base frame (bottom support) whereas in the case of the upper support of the invention of Claim 1 of the subject case, a part wherein a groove part is formed is formed on an upper surface, so upon welding with a bottom support, the contact surface is broadened and accordingly linkage power is strengthened and structural stability is improved.

 

Meanwhile, the cross section shape of the bottom support of the confirmation subject invention is ‘a trapezoid whose upper surface is larger than a lower surface’ and a groove part of an upper support is formed on a bottom part.

 

The Korean Intellectual Property Tribunal judged that the patent invention and the confirmation subject invention are different in terms of bottom support shape and upper support shape but they have an equivalent relationship.

 

The Patent Court judged that they are not equivalent because the substituted constitution of the confirmation subject invention was consciously excluded from the claims through the process of filing the application.

 

(2) Judgment of Supreme Court

 

The Korean Supreme Court judged: the cross section shape of the ‘trapezoid whose upper surface is larger than a bottom surface’ of the bottom support of the confirmation subject invention, in a comparison of the constitution prior to reduction of the scope of claims with that after the reduction of the scope of claims, is the constitution that exists therebetween. However, this is not the constitution shown in References 1 and 3 presented in the notice of preliminary rejection. Accordingly, such reduction of the above-mentioned constitution is not considered to have been made for the purpose of avoiding the above References. However, ‘a cross section shape of a hollowed trapezoid whose bottom surface is larger than an upper surface’ in the detailed description of the invention of the specification of the subject case is described to obtain structural stability by broadening the support area between the bottom support and the ground, so this is the first premise of ‘a cross section shape of a hollowed trapezoid whose bottom surface is larger than an upper surface’. Also, the amendment to the claims of the subject case was made so as to be in accord with such detailed description of the invention. Synthesizing these points, it is considered that the applicant had the intention to exclude by amendment the constitution of the cross section shape of the ‘trapezoid whose upper surface is larger than a bottom surface’ of the confirmation subject invention from the invention of Claim 1 of the subject case.

 

Also, the Korean Supreme Court judged: in the case of the upper support, as the applicant of the patent invention argued through an argument that the groove of the upper support is formed at the upper part and broadens a combined area with the bottom support and accordingly strengthens linkage power, it is discriminated from Reference 1 wherein the groove of the upper support is formed at the bottom part. Considering this point, it can be evaluated that the applicant also excluded the constitution that ‘a groove is formed at the bottom part’ of the confirmation subject invention from the scope of invention of Claim 1 of the subject case.

 

To summarize, the Korean Supreme Court decided: whether any constitution is consciously excluded from the scope of claims in the process of the filing of an application should be judged by considering the specification as well as opinions presented by the Examiner from the filing of the application to granting and the applicant’s intention and reason for amendment shown in amendments and arguments, etc. submitted in the application filing process.

 

In addition, the Korean Supreme Court decided: based only on a reduction of the scope of claims in the process of the filing of the application, it should not be concluded that all constitutions that exist between the constitutions prior to reduction and those after reduction were consciously excluded from the scope of claims. Integrating the various circumstances shown in the application filing process, including the reason for amendment as in the case of excluding constitutions described in prior art for the purpose of avoiding prior art cited in a notice of preliminary rejection, when it is considered that the intention exists on the part of an applicant to exclude some constitutions from the scope of right, such exemption is recognized and such principle of law is also applied to cases stating an opinion through submission of an argument, etc. without a reduction of the scope of claims.

 

3. Meaning

 

This decision adheres to an existing position (2001HU171 Decision of Supreme Court on September 6, 2002) that for doctrine of equivalents requirements, any constitution that is consciously excluded from the scope of claims in the process of the filing of an application should be judged by considering the specification as well as opinions presented by the KIPO Examiner from the filing of the application to granting as well as the applicant’s intention as shown by amendment and argument, etc. submitted in the application filing process.

 

Meanwhile, in relation to the issue of whether deleted parts via amendment can be directly recognized to have been consciously excluded, here the Complete Bar Approach and the Flexible Bar Approach are competing. As the Korean Supreme Court decided that in spite of reducing the scope of claims, it is not concluded that reduced constitutions are inherently consciously excluded, such conscious exemptions should be applied according to whether the applicant’s intention to exclude some constitutions is sufficiently recognized, and in the meantime, such principle of law is also applied to cases stating only opinion through submission of an argument, etc. without reduction of the scope of claims, this decision further clarifies the Flexible Bar Approach. Therefore, it is considered that this means that the Korean Supreme Court has hereby presented a standard for  cautious judgment by sufficiently considering the applicant’s opinion in relation to conscious exemption that is easily mechanically applied according to whether or not there are amendments.

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