발명의 진보성 판단에 대하여

• 영문명: A Case Study Regarding Patent Appeal Board Case No. 2017WHON4569
• 발행기관: 세창출판사
• 저자명: 최덕규(Dukkyu Choi)
• 간행물 정보: 『창작과 권리』2019년 겨울호 (제97호), 2~22쪽, 전체 21쪽
• 주제분류: 법학 > 법학
• 파일형태: PDF
• 발행일자: 2019.12.01

영문 초록

The standard of nonbviousness is applied in three steps-(1) a survey of the scope and content of the prior art, (2) an examination of the differences between the invention and the prior art, and (3) a determination of the level of ordinary skill in the art. In the light of that three-stage process, one can decide whether the differences revealed in the second stage are nonobvious. The first step is to survey the scope and content of the prior art, defining which prior art is both applicable and relevant. The relevant, applicable, prior art must be that which is either pertinent to the invention or analogous to that which is clearly pertinent. Step two, an examination of the differences between the invention and the prior art, requires reconstructing the prior art. Reconstructing the prior art always is done from the perspective of hindsight. Reconstruction involves the application of a hypothetical standard-what the reasonable person skilled in the art would have known-as of an objective time in the past. The third step involves not only assessing the level of skill but applying it to the invention itself. This inquiry is neither mechanical nor structural but functional, applying to the invention as a whole. The prior art must be used to determine whether the invention’s new and useful function, not necessarily its construction, is nonobvious. In the subject decision of the Patent Appeal Board, the Board analyzed the claimed invention of claim 1 into five elements. The Board states that the five elements are disclosed in prior art reference 1 or 2, and concludes that the claimed invention is lack of inventive step over references 1 and 2. The Board never discussed about the technical features or synergistic results of the claimed invention compared to the cited references. The Written Opinion of WIPO states that the claimed invention has inventive step over reference 2. However, the Board never discussed about the Written Opinion. The counterpart applications were accepted for patent in U.S.A., Japan, China and EPO. Also, the Board never discussed about the counterpart patents.

목차

Ⅰ. 머리말

Ⅱ. 특허심판원 심판 2017원4569 심결문

Ⅲ. 평석

Ⅳ. 결어

Abstract

키워드

신규성 진보성 3단계 판단방법 해당 기술분야 유사한 기술분야 예측하지 못한 효과 상승효과 집합체 기술적 사상 2차적 고려사항(보조증거) 상업적 성공 소비자의 욕구 발명의 개발과정 견해서 novelty nonobviousness (inventive step) three step test pertinent art analogous art unexpected results synergistic result aggregation technical idea secondary considerations commercial success long-felt-but-unfulfilled-need development history written opinion