REQUIREMENTS OF PATENT REGISTRATION AND THE SCOPE OF PROTECTION

1. Standard to Determine �Inventive Step'

If a claimed or filed invention falls exactly upon a single prior art, the inven­tion is construed as lacking novelty, whereas if the constituent elements of the invention derive from two or more prior art materials, the novelty of the inven­tion is affirmed.

In evaluating inventive step, courts have generally employed a standard of a person with ordinary skill in the art to which the invention pertains and have construed the time of the filing as the controlling date. When comparing a filed invention to a prior art, if the former has difficulty in its element, remarkabil­ity in its effect, and uniqueness in its purpose, the inventive step element is confirmed.^[516] Specifically, the standard of �difficulty in its element, remarka­bility in its effect, and uniqueness in its purpose’ should involve an inquiry into whether or not a person of ordinary skill in the art to which the invention pertains could have easily predicted the invention, but in actual practice, if the �difficulty in its element, remarkability in its effect, and uniqueness in its purpose’ of the filed invention can be found when comparing the filed inven­tion with prior art material, the invention is considered to have the element of inventive step. There are, however, some differences to consider in different fields. For example in the fields of machinery, car manufacturing, electricity, electronics, and communications, the difficulty in its element is important, whereas in medicine, chemistry and biotechnology, remarkability in its effect is relatively more significant (Han 2007, p. 9).

In the event that only one single prior art exists, determining inventive step through directly comparing the elements, effect, and purpose of the two would yield the same result as determining whether a person with ordinary skill in the art to which the invention pertains could have easily made the invention because only the one prior art is compared to the filed invention.

2. A Prior Art's Teaching, Suggestion, and Motivation

As stated above, when two or more prior arts exist, it is not easy to compare differences in element, effect, and purpose. Even if differences are found, it is even more difficult and subjective to determine inventive step. Thus, in prac­tice, the patent office and courts determine whether a person with ordinary skill in the art to which the invention pertains could have easily made the invention often relying on examining any teaching, suggestion, and motivation of combining prior arts.

In the U.S., where much discussion and many court decisions on this subject exist, the Federal Court has adopted the �TSM test’ (teaching, sugges­tion, or motivation test) in order to prevent the dangers of hindsight; an inven­tion that was difficult for a person with ordinary skill in the art to which the invention pertains to create during the patent registration, in hindsight could be deemed easy to create during the trial or examination stage, thus negating inventive step.

The CAFC has been criticized for tightening the standards of the TSM test, thus loosening the boundaries of inventive step, which resulted in the exces­sive issuing of patents. Amidst such criticism, the Supreme Court reviewed and adjusted the TSM test. In KSR International Co. v. Teleflex Inc. the Supreme Court held that the CAFC’s application of the TSM test was too strict and that the test must be applied more flexibly to uphold the fundamental prin­ciple of determining obviousness.^[520] The Supreme Court’s decision indicated that it is more reflective of the basic notion of inventive step to deny an inven­tion of non-obviousness when an invention used in a certain industry can be easily modified due to demand in design or other market demands by a person having ordinary skill in the art to which said subject matter pertains. In other words, even though prior art documents do not explicitly show the teaching or motivation to combine two prior art references, if a person having ordinary skill in the art to which said subject matter pertains could have easily combined the prior art references considering market demand, the invention can be rejected on grounds of obviousness. The Supreme Court’s adjustment of the TSM test has led to an increased rejection on behalf of the CAFC on grounds of obviousness.^[521]

3.

The elements of inventive step and non-obviousness are central in both infringement and invalidation actions, which are separated under a two-tier system in Korea. The two-tier litigation system which involves the division of infringement actions in judicial courts and invalidation actions in the IP Tribunal has often led to time-consuming and high-cost dispute resolution processes.^[522] Thus, although the Patent Act, in essence, only negates the effects of a patent right through a patent invalidation trial, the courts have allowed the �publicly known or worked invention’ defense - where defendants argue that the allegedly infringing product derives from a publicly known or worked invention - to prove that their invention does not fall under the scope of plain­tiffs’ patent rights.^[523] A question arises whether this defense can also be used in civil or criminal proceedings, where infringement of rights is argued.

There are two types of proceedings in infringement litigation: preliminary injunction proceedings, where a temporary injunction against the infringement is sought; and main proceedings, where a permanent injunction against the infringement or a claim for damages is sought. The Supreme Court has affirmed decisions dismissing temporary injunction motions because the need to enjoin an invention does not exist when an invention that includes a �publicly known and worked’ technology cannot win in the main proceed­ings.^[524] Although precedent granting a temporary injunction against the infringement of rights exists,^[525] where the invention in question has novelty but is perceived to possibly lack inventive step, it is interpreted that the Supreme Court can deny the motion because the patent right may be invalidated through the lack in inventive step.^[526]

During main proceedings stemming from patent infringement, the Supreme Court has ruled that �even before the patent invalidity trial is finalized, the court may determine whether an invalidating factor exists, and filing a motion seeking an injunction or damages when a patent right is clearly invalid is construed as an abuse of rights.’^[527] Within the same theoretical background in the recent case relating to a printer’s photo-sensitive drum, the Seoul High Court dismissed claims for injunction and damages given that when a patent/invention in question is clearly invalid due to lack of inventive step, claiming such injunction and damages is an abuse of rights.^[528]

Comparing this with the aforementioned Supreme Court decisions relating to the trial to confirm the scope of a patent right and the preliminary injunc­tion case, it is valid to deny motions for injunction and claims for damages when a patent right lacks inventive step even in the main proceedings of rights infringement cases.

In the same light, can the �publicly known or worked’ defense also be invoked in criminal trials?^[529] If an invalidation decision is finalized, thus retroactively invalidating the patent right, an infringement suit can no longer exist (Criminal Procedure Act, Art. 420, para. 6).^[530] The Supreme Court has decided as a matter of law that even before an invalidation decision is rendered, publicly known and worked inventions cannot fall under the scope of a patent right. This interpretation is also applied in criminal cases, and thus, if all or part of a patent’s scope is publicly known, the patent infringement suit is denied.^[531]

4. The Patent Right's Scope of Protection

In essence, the protected scope of a patent right is limited to what is written in the patent claim(s) section of a patent registration, and in the patent claim(s) �the matter for which protection is sought in one or more claims’, or �claim(s),’ must be concisely and clearly stated (Patent Act, Art. 42; Art. 97). Therefore, the �all elements rule’ - the elements of the patent claim(s) must all be present in the allegedly infringing product, or manufacturing process thereof, to constitute an infringement - governs patent right infringement as the basic standard. However, if the �all elements rule’ is applied too strictly, a slight modification or improvement can lead to circumventing infringement, and ultimately the patent right cannot be protected. To prevent this result, the doctrine of equivalents, an Anglo-American interpretation of law, has been introduced and used by the Supreme Court.^[532]

The doctrine of equivalents states that even though the allegedly infringing product is not completely identical to the literal elements of the patent claims, if the allegedly infringing product has a substantially identical process, acts through a substantially identical function and yields substantially identical results, patent infringement is deemed to have occurred. In determining equiv­alence by comparing difference in elements of the infringing device and the claimed invention, the standard applied is whether a person with ordinary skill in the art to which the invention pertains could have easily substituted the claimed invention with an equivalent device. Although the concept of easiness in substitution is not the same as inventive step, determining easiness ulti­mately derives from the degree of inventive step. Inventions that have a strong inventive step - basic inventions or pioneer inventions - are, in a broad sense, accepted as substantially identical or equivalent devices, whereas improve­ments are only accepted in a narrow scope. Therefore, the doctrine of equiva­lents must discretely and selectively be applied to devices pertaining to industries, such as the software industry, where inventions are usually created by modifying existing devices. The courts seem to concur with this argument.

In a case where an injunction applicant owned the patent right to �the method of providing game services via telecommunications devices’, the applicant argued that the respondents SK Telecom and LG Telecom had infringed its patent right by providing game services using a Wireless Application Protocol (WAP). The Seoul District Court dismissed the tempo­rary injunction motion stating that despite the applicant’s ownership of a valid, non-obvious patent/invention, (1) the game service provided by the respon­dents via LAN could not be seen as an equivalent substitute to the applicant patent/invention’s notion of the Internet, (2) the respondent’s WAP server was not an equivalent means to the applicant’s server, and (3) the applicant’s patent/invention and the respondent’s game service differed in their elements.^[533]

Also, when a patent applicant or patentee intentionally reduces the scope of patent claim(s), they are estopped from citing the doctrine of equivalents for the purpose of broadening the scope of their patent claim(s).^[534]

IV.