특허소송에서 출원경과금반언의 적용범위

The Applicable Scope of the Prosecution History Estoppel in a Patent Case

As to a determination of patent infringement, the prosecution history estoppel is to determine infringement on a patented invention in consideration of documents which an applicant or a patentee submits, and the opinions of the patent office or the courts through the entire process from a patent application to an extermination of patent right. In other words, the prosecution history estoppel is the principle that the Doctrine of Equivalents is inapplicable to elements consciously excluded from the invention by an applicant to be patented in an examination step even though the elements are the equivalents of the invention. In the latest decision of the Supreme Court, when an applicant amended claims by narrowing claims of the original application to avoid the reason for refusal on the ground of the description deficiency and the lack of the inventive step and filed a divisional application by dividing a part ofthe inventions from the original application, the Supreme Court did not admit the infringement by ruling that the divided inventions are deemed consciously excluded from the scope of the amended invention. As shown in the above precedent, the applicant or patentee can carry out various behaviors such as amendments, division of the application and modification of the application in the period from the patent application to the extermination of the patent. Also, the behaviors should be included in the legal purpose and scope prescribed in the law. However, the prosecution history estoppel is not applicable to all of the behaviors though the behaviors of the applicant or patentee are legal. If the amendment of the applicant or patentee corresponds to an amendment narrowing claims, the prosecution history estoppel is applicable to the amendment regardless of whether the amendment is to avoid precedent technologies or to solve the description deficiency.