발명의 동일성 판단 기준

Criteria for the Determination of the Identity of Inventions

Determination of the identity of the inventions acts as prerequisite for the determination of the novelty of the invention, first-to-file requirement, and so-called extended first-to-file requirement under the Korean Patent Law. The determination can also be regarded as a prerequisite for the inventive-step requirement in the sense that the inventive step requirement is generally reviewed only after the invention deemed to be novel. These points make the criteria for the determination of identity of inventions one of the most important standards throughout the jurisprudence of the patent law. This paper critically reviews the criteria introduced by the decisions delivered by the Supreme Court of Korea and the Korean Patent Court for the determination of the identity of the inventions under the first-to-file and the extended first-to-file requirements. According to the precedents, two inventions can be deemed to be substantially identical notwithstanding the differences in the constituents of the inventions so long as the differences are appraised to be simple modifications which could be adopted by the ordinary skilled man in the art so that there may not be much differences in the purposes and the results of the inventions. Determining the fulfillment of the extended first-to-file requirement, two inventions can be deemed to be equal when the differences are evaluated to be minor modifications in the sense that there can not be any new effects. Some precedents by the Korean Patent Court have used a standard seemed to be similar to that for the determination of the inventive-step. Recent decision by the Supreme Court, however, makes it clear that it is not the case. Two kinds of criteria are apparently different from each other, but the difference should not be interpreted to be intentionally introduced because historically the criteria were applied unto both requirements without any discrimination throughout the patent practices, and the otherwise interpretation would result in the prevention of the earlier examination of filed patent applications before the fixation of the earlier claims of the applications in the sense that the revision of the claims are not permitted. The recent precedent by the Supreme Court is highly appreciated in the sense that it effectively restricted the scope of the substantial identity which has been growing indefinitely without well-grounded legal basis. But the fact that the fate of the junior application is determined by the accidental length of the patent examination of the senior application is still to be resolved. Some revisions of the Patent Law are proposed to eliminate the demerits.