판례평석 - 캐논사건 무효심판의 부당성

A Case Study Regarding Patent Appeal Board Case No. 2012DANG2456 and Patent Court Case No. 2013HER82 for Invalidation of Patent

Both novelty and inventive step are a core in the patent system. Novelty is one patentability which is introduced from the concept that a claimed invention must not be identical with any prior art disclosed before, while inventive step is another patentability which is introduced from the concept that a claimed invention must not be obvious to a skilled person in the art over any prior art to which the claimed invention pertains. Inventive step should be determined along with assessment of the prior art in view of the objects, structure (composition), results and effects of the claimed invention. However, it is not necessary to assess the objects, structure, results and effects of the invention when novelty is discussed. The reason is because the prior art in inventive step is limited to the same or similar technology area as the claimed invention, and because the prior art in novelty encompasses all kinds of technology. This is a very fundamental and important principle in patentability. However, Patent Appeal Board Case No. 2012DANG2456 and Patent Court Case No. 2013HER82 for Invalidation of Patent determined novelty of the patented invention by assessing the objects, structure, and effects of the invention in view of the cited invention. The patented invention relates to a photosensitive drum for printers, while the cited invention relates to a drill apparatus, whose technical field is totally different each other. Both decisions, Patent Appeal Board Case No. 2012DANG2456 and Patent Court Case No. 2013HER82, shall be recorded as the worst decisions by assessing novelty with a test method of inventive step such as the objects, structure, results and effects of the invention.