Introduction of Precedent as to whether a Constituent Described In a Claim Preamble is Recognized as

Introduction of Precedent as to whether a Constituent Described In a Claim Preamble is Recognized as Prior Art


1. Introduction The Korean Supreme Court previously judged that a constituent described in a claim preamble or a matter described as a conventional technology in a specification is considered as having been published prior to the filing of the application, but there has been a recent en banc decision to modify such past judgment. Reviewing said decision, an applicant of a corresponding registered design received from the Examiner a notice of preliminary rejection for the reason that inventive step was denied and the applicant amended some constitutions in the form of a claim preamble and filed an argument regarding the intention of recognizing the constitution described in preamble form as a public disclosure. Consequently, the Examiner assumed that the constitution described in the preamble of the corresponding design fell under prior art. However, although the applicant recognized the constitution of a preamble as a public disclosure in the argument, as a result of actual confirmation, since the constitution in the preamble was misunderstood as having been published at the time of the filing of the design application, the applicant argued that the Examiner’s assumption must be reversed. Even though the applicant recognized through the argument misunderstanding the constitution of the preamble as a public disclosure, whether it would in fact be considered as prior art during the examination process and an invalidation trial was still a contentious issue. Recently, the Supreme Court made a notable decision clarifying its final position regarding this long outstanding issue under the agreement of the Supreme Court justices en banc. 2. Supreme Court Judgment In relation to the above-mentioned matter, the Korean Supreme Court finally judged as follows: “Since the description of a claim preamble has various objectives in its preparation or contents, there is no ground for recognizing prior-published status based only on the matter of describing some constitution in a preamble. Also, a described constituent can be described as background technology or conventional technology in a specification, but the background technology or conventional technology that the applicant described in the specification in question was existing technology that was to be helpful for understanding the technical meaning of the application and useful in prior art search and in the examination, and such is not a concept requiring that it was published before the filing of the application. Accordingly, despite being described as background technology or conventional technology in a specification, such description itself cannot inherently be considered as prior art. Then, considering the overall description of the specification and filing progress in total, in the case of recognizing that some constituents were described in a claim preamble only with the intention of reviewing prior art beyond simple background technology or conventional technology, it is reasonable to in fact assume that the constituents described in the preamble were published before the filing of the application without additional evidences. However, since such assumption is not absolute, in the case that there is any special situation such as a case of it coming out that an applicant wrongly described an unpublished prior-applied for application or technology that was only internally known in the applicant’s company at the time of the filing of the application, the assumption can be reversed.” (2013HU37, decided on January 19, 2017) 3. Discussion and Implication The purpose of this judgment is as follows: even though constituents are described in a preamble or as background technology or conventional technology, such description itself cannot be considered as prior art, and considering the overall description of a specification and filing progress in total, in the case of recognizing that an applicant describes a constitution of background technology or a claim preamble only with the intention of prior art, it is reasonable to in fact assume that the constituents described in the preamble were published before the filing of the application without additional evidences. However, if an applicant argues a special situation of such having been wrongly recognized due to a mistake and proves it, the ground for rejection based on said assumption should be considered to have been overcome. However, it is considered that this decision is limited to a judgment as to whether a constituent described in a claim preamble is recognized as prior art during the examination process, and there is a limitation in applying this to patent infringement cases limiting recognition range of infringement by equivalents based on an applicant’s conscious exemption that is revealed during the filing progress.

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