Inventive Step in Korea AIPPI Forum October 11-12, 2009 Buenos Aires, Argentina Oct. 2009 Seong-Ki Kim, Esq. Seoul, Korea
1 - Contents - I. Statutory Scheme II. III. IV. Steps for Determining Inventive Step Determination of Easily Arriving At Scope of and Content of Prior Art V. Level of Ordinary Skill VI. VII. Considerations in Determining Inventive Step Comparison with Other Jurisdictions VIII. Inventive Step Cases
2 I. Statutory Scheme Art. 29, Patent Act (1) Inventions that have industrial applicability are patentable unless they fall under either of the following subparagraphs: (i) (ii) inventions publicly known or worked within or outside of the Republic of Korea before the filing of the patent application; or inventions described in a publication (2) Notwithstanding paragraph (1), where an invention referred to in each subparagraph of paragraph (1) could easily have been made before the filing of a patent application by a person with ordinary skill in the art to which the invention pertains, the patent for such an invention may not be granted.
3 II. Steps for Determining Inventive Step (Examination Guidelines) (1) Identifying the invention defined in claims; (2) Identifying the prior art; (3) Selecting the closest prior art; comparing the claimed invention and the prior art; and clarifying the differences between the two; (4) Assessing whether arriving at the claimed invention, overcoming the above differences, from the prior art would have been easy to the person skilled in the or not; and (5) Taking the following three factors in the above assessment: motivation exercise of ordinary creativity or not advantageous effect
4 III. Determination of Easily Arriving At A. Factors: Whether arriving at the claimed invention would have been easy is to be assessed by two principle factors : motivation; and exercise of ordinary creativity ; * also advantageous effect is taken into consideration.
5 III. Determination of Easily Arriving At B. Motivation strong ground for easily arriving at the claimed invention could be found from: a. suggestions in the prior art to the claimed invention b. same problem to be solved c. same function / operation d. close relationship in technical fields
6 III. Determination of Easily Arriving At C. Not an exercise of ordinary creativity of a skilled person a. selection of the claimed element among know materials for achieving a specific object b. optimization of numerical limitation c. replacement with an equivalent d. modification of design structure according to specific application of technology
7 III. Determination of Easily Arriving At D. Advantageous effect Remarkable effect is recognized when the object and effect of the claimed invention are qualitatively different from those of the prior art; or The object and effect of claimed invention are qualitatively prominent in comparison with those of the prior art. Unforeseeable effect may be taken into consideration in ascertaining inventive step.
8 <Selection Invention> In general, a mere selection of optimal or preferred technical features from prior art is an exercise of ordinary creativity and not patentable. A selection invention may be considered as involving an inventive step if it secures advantageous effects. * All the selected members must possess the required advantages.
9 <Invention with Numerical Limitation> In general, a claimed invention derived from experimental optimization of a numerical limitation is considered as an exercise of ordinary creativity. It may have inventive step when it secures remarkable advantageous effect in comparison with the prior art over all the selected range. * If the advantageous effect is of the same kind a in the prior art, a remarkable effect is required.
10 IV. Scope and Content of Prior Art A. A claimed invention is considered to involve an inventive step if a description in the cited publication precludes arriving at the claimed invention.
11 IV. Scope and Content of Prior Art B. Combining two or more sources is allowable if it is easy for a skilled person to combine then at the time of filing the claimed invention. A skilled person may easily arrive at combining two or more pieces of prior art when there is something in the prior art to suggest, or motivate the combination, or in light of the level of prior art, common general knowledge in technology, basic problem in the field of technology, trend in developments, and the demands from the industry.
12 IV. Scope and Content of Prior Art C. In combining prior art from different fields of technology, reasonableness of citation, such as similarity of problems to be solved, similarity of function, needs to be fully carefully reviewed.
13 IV. Scope and Content of Prior Art D. If the applicant admits the public availability of specific prior art in the description of patent application, it can be cited to examine the inventive step of the claimed invention.
14 V. Level of Ordinary Skill Person with ordinary skilled in the art is considered to have capability to make all of the prior art as his own knowledge. S. Ct. refused to set the level of ordinary skill as that skilled person in Korea.
15 VI. Considerations in Determining Inventive Step A. Hindsight : It needs a careful attention that knowledge obtained from specification of the patent application could render it looks easy to arrive at the claimed invention from prior art. For an invention based on clarification of causes (of problems), of which finding a solution is not difficult once the cause is known, the process of clarifying the cause should be counted on in assessing inventive step. Obviousness of the solution provided by the invention is not allowed to negate the inventive step.
16 VI. Considerations in Determining Inventive Step B. The claimed invention is to be considered as a whole; the inventive step of which is not negated because of obviousness of each element. Difficulty in structure of the invention as a whole as well as the unique advantages of the invention as a whole should be taken in to consideration.
17 VI. Considerations in Determining Inventive Step C. - Inventive step of a dependent claim is recognized, if independent claim from which the dependent claim depends is recognized to involve an inventive step. - Where a product claim involves an inventive step, process claims or use claims for the claimed products are considered to involve an inventive step in principle.
18 VI. Considerations in Determining Inventive Step D. A claims defining an invention by alternatives lacks inventive step when the claim with one selected alternative is found not to involve an inventive step, the claim lacks inventive step. The applicant, in response, may delete selected alternative from the claim and cure the lack of inventive step.
19 <Comparison with other jurisdictions> KR US EPO UK 1. The claimed invention 1. The scope and content of the prior art 1. The closest prior art 1. The inventive concept embodied in the patent 2. The prior art 3. Select the closest prior art; Compare the two; and articulate 4. Whether it would have been easy to arrive at the claimed invention from the prior art 2. Differences between the prior art and the claims 3. Level of ordinary skill in the pertinent art 4. Whether above 2. would have been obvious to 2. Objective technical problem to be solved 3. Whether the claimed invention starting from the closest prior art the objective technical problem would have been obvious 2. The mantle of the patent 3. The mantle of the normally addressee 4. The differences between the prior art and the invention 5. Whether those differences constitute steps which would have been obvious * KR: Examination Guidelines (2008) ** US : Graham v. Deere (1966) *** EPO : Guidelines for Exam. Part C **** UK : Windsurfing v. Tabar Marine (1985)
VII. Inventive Step Cases 20 A. Patent Invalidity cases decided by Patent Court (2002~ 06) 207 cases Found Valid (26.1%) 792cases Total Invalidity Challenge ( 02~ 06) 585 cases Found Invalid (73.9%) Lack of Inventive Step : 436 - Number of Cited reference(s) 1 : 130 2 : 230 3 : 76 Others : 149
21 VIII. Patent Invalidity cases decided by Patent Court (2002~ 06) 06) B. Recent Cases B-1. Supreme Court 2006 Hu 138 (2007) A lower court invalidated the claims based on lack of inventive step allowing modification of a known element No evidence showing that the added feature in the claims was known No evidence showing that the skilled person had no other ways but arriving at the modification of the known element
22 VIII. Patent Invalidity cases decided by Patent Court (2002~ 06) 06) The lower court has erred in deciding that the claimed invention could be easily made, which determination can not be arrived at without assuming the skilled person had the knowledge of the content of the patent specification at issue. * The lower court assumed the element, though not explicitly described in the prior art, corresponding to the distinguishing feature of the invention based on the object of the cited prior art.
23 VIII. Patent Invalidity cases decided by Patent Court (2002~ 06) 06) B-2. Patent Court 2006 Heo 6099 (2007) The lower court rejected patent claims for a bubble defector of fuel line in a motor vehicle, citing an apparatus for optical measurement of the concentration in a fluid. The lower court recognized some elements of the claims are not found a substantially the same elements by introducing a conceptual genus encompassing both the distinguishing feature and the element in the prior art.
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