발명의 진보성 판단에 대하여

A Case Study Regarding Patent Appeal Board Case No. 2017WHON4569

The standard of nonbviousness is applied in three steps-(1) a survey of the scope and content of the prior art, (2) an examination of the differences between the invention and the prior art, and (3) a determination of the level of ordinary skill in the art. In the light of that three-stage process, one can decide whether the differences revealed in the second stage are nonobvious. The first step is to survey the scope and content of the prior art, defining which prior art is both applicable and relevant. The relevant, applicable, prior art must be that which is either pertinent to the invention or analogous to that which is clearly pertinent. Step two, an examination of the differences between the invention and the prior art, requires reconstructing the prior art. Reconstructing the prior art always is done from the perspective of hindsight. Reconstruction involves the application of a hypothetical standard-what the reasonable person skilled in the art would have known-as of an objective time in the past. The third step involves not only assessing the level of skill but applying it to the invention itself. This inquiry is neither mechanical nor structural but functional, applying to the invention as a whole. The prior art must be used to determine whether the invention’s new and useful function, not necessarily its construction, is nonobvious. In the subject decision of the Patent Appeal Board, the Board analyzed the claimed invention of claim 1 into five elements. The Board states that the five elements are disclosed in prior art reference 1 or 2, and concludes that the claimed invention is lack of inventive step over references 1 and 2. The Board never discussed about the technical features or synergistic results of the claimed invention compared to the cited references. The Written Opinion of WIPO states that the claimed invention has inventive step over reference 2. However, the Board never discussed about the Written Opinion. The counterpart applications were accepted for patent in U.S.A., Japan, China and EPO. Also, the Board never discussed about the counterpart patents.