선택발명에 대한 새로운 접근과 신규성 판단기준에 대한 연구

New Approach to the Selection Invention and its Standard of Novelty

In Korea, the selection invention is discussed on the premise that it falls under the double patenting. According to this discussion, even though double inventions are not eligible for patents, the necessity of such selection invention is exceptionally acknowledged in the context of industrial policies and therefore, the selection invention should be acknowledged as patents. The basis for acknowledging the selection invention as a patent is the significance of effects. The foregoing flow of discussions in Korea appears to have been affected by the Japanese precedents. In considering the genus-species relationship under the patent context, Germany and the United Kingdom are of the position that a patent application for all or a part of the subordinate concept(species) is assumed to have been disclosed, and as a result, the selection inventions were considerably restricted in the above jurisdictions. However, both of the countries have overcome the restrictions (the IG principle in case of the U.K) through the olanzapine judgment in Germany and the Dr. Reddy's Laboratories decision in the U.K. The U.S. uses the term of "selection inventions" but does not present any unique standards for it. The selection invention should be understood as a concept to avoid a series of the following ideas: In terms of the relationship between the super ordinate concept and the subordinate concept (the genus-species relationship), the selection invention is easily viewed as falling under the double patenting; the subordinate concept is deemed to have been disclosed by the disclosure of the super ordinate concept (for example, the IG principle discarded in the U.K); and the selection of the subordinate concept can be easily made. In contrary to the U.K court's ruling, even if we have seen the forest, it does not mean that we have also seen the leaves and we are able to know their shapes and efficacy. The selection invention is not an double patenting and if to argue the opposite, the selection invention should have been expressly disclosed or the prior invention should have contained any teachings or suggestions for it. In addition, we cannot infer from the existence of the genus-species relationship alone that an invention covering the subordinate concept has been disclosed by way of such simple references. The burden of proof as to the specific disclosure, namely, the grounds for invalidation or refusal of patents, should be borne by the party making the relevant claims. Further, like other inventions, the structure and effects of the selection invention should be specifically described and be easily reducible to practice. In sum, there is no need to handle the selection inventions in a different manner from other inventions. The characteristic of the selection invention is the difficulty in selection and the examination or judgments involving the selection invention should be made in consideration of such characteristic. However, it is doubtful whether the characteristic above justifies the different standards applicable to the examination or judgments involving the selection invention. Whether novelty, non-obviousness, or written descriptions requirement, the same criteria as is used to review the general patent other than selection invention should be applied. If turning our position to this direction is difficult, any invention that is found to have difficulty in selection should be at least taken care of in the same manner as the other general inventions. The Galapagos Syndrome is problematic not only when it is applied to the regulations but also when it is applied to the legislation. At this time, we are called upon to reconsider the theories of the selection invention.