선택발명의 명세서상 '효과' 기재요건

The description requirements for a selective invention -Focused on the Supreme Court's Decision 2008Hu736, delivered on december 15th 2009-

This article relates to study on the description requirements for a selective invention focused on critical analysis of the Supreme Court's Decision 2008Hu736, delivered on december 15th 2009. The so-called selective invention is an invention that states the element of a preceding or already publicized invention as its superordinate concept and whose elements entirely or partly consist of subordinate concepts derived from the above superordinate concept. According to the Korean Supreme Court's Decision, a patent can be granted to a selective invention on the following conditions. First, a preceding invention has not yet disclosed subordinate concepts comprising a concrete selective invention; second, subordinate concepts possess either effects different in quality from the preceding invention or there exist conspicuous differences in effect as measured quantitatively between them. As to the description requirements for a selective invention, the Supreme Court's Decision 2008Hu736 reads that the specifications of a selective invention state explicitly the above mentioned kinds of effects compared to the preceding invention. In order to meet the description requirements for a selective invention, the specification of a selective invention has to comprise the specific statement confirming the different effects of a selective invention from the preceding invention in quality or statement confirming conspicuous differences in effect on quantitative base. This paper suggests better jurisprudence on the description requirements for a selective invention. After critical analysis of the Supreme Court's Decision 2008Hu736, I concluded that a selective invention application not having comparing data stating the effect's difference between selective invention and prior art in the specifications of it doesn't fail to meet the description requirements, even though the specification of a selective invention has to comprise the statement confirming conspicuous differences in effect on quantitative base in principle. Therefore, it is enough that the specifications of a selective invention state explicitly the above mentioned kinds of effects compared to the preceding invention and if doubts as to the selective invention's effects are raised, an applicant for a patent may allege and prove its effects after the date of the patent application by means of submitting specific comparative experimental data.