특허법상 신규사항 추가 금지

Prohibition of New Matter under the Patent Law

An applicant may amend the description or drawings attached to a patent application in order to overcome the reasons for refusal; and a patentee may request a post-grant amendment to the description or drawings of a patented invention in order to overcome the grounds for invalidation or to clarify the scope of the patent. However, the amendment and pot-grant amendment is limited, because a change in the scope of the invention may affect the rights of a third party. Therefore, the extent and the requirements of allowable amendment and post-grant amendment are important. The extent of allowable amendment and post-grant amendment are governed by Articles 47, 136 of the Korean Patent Act respectively. This paper reviews requirements of the amendment and post-grant amendment, especially evaluates'new matter' requirement. Under Article 147(2), an amendment to a description or drawings shall be made within the scope of the matters disclosed in the description or drawings originally attached to the application, and under Article 136(2), a post-grant amendment to a description or drawings shall be made within the scope of the matters disclosed in the description or drawings of the patented invention. If an amendment does not meet the above-described requirements, an application falls under a reason for refusal or a ground for invalidation, and a trial for a post-grant amendment falls under a reason for refusal. The matters disclosed in the originally attached description or in the description of a patented invention are not only matters explicitly stated in the originally attached description or the description of a patented invention but also matters obvious from the statement in the originally attached description or the description of a patented invention.