PATENT COURT DECISIONS 2017

PATENT COURT DECISIONS 2017

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2018-01-01
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TABLE OF CONTENTS
1. Patent Court Decision, 2016Heo4733, decided May 12, 2017
(Sorafenib Tosylate Case) / 1
Claim 1 in this case and Prior Art 1 were activators which were common
in the fact that they were pharmaceutical compositions to treat overgrowth
disorders including cancer which included refined insulin containing sorafenib
tosylate acid but they differed in the sense that Claim 1 in this case designated
inclusion of at least 55% sorafenib tosylate in terms of weight composition
while Prior Art 1 did not designate the content of sorafenib tosylate in 50mg
tablet which made it impossible to determine the weight ratio of sorafenib
tosylate in the entire composition.
But such designation of value above for Claim 1 in this case can be easily
conceived from prior arts by a person with ordinary skills and the significance
of such effect cannot be recognized which denies the inventiveness for Claim
1 in this case.


2. Patent Court Decision, 2016Heo7695, decided August 17, 2017 (Light
Control Film Case) / 30
The grounds argued by the Commissioner of the Korean Intellectual Property
Office in the procedure for revocation action of administrative decision for
dismissal of trial against rejection can be based on the trial decision limited
to when the grounds for rejection which was given an opportunity to submit
arguments and the primary purpose correspond which makes it just an
amendment of previously notified grounds for rejection. In order for the newly
argued grounds in the litigation procedures to correspond with the grounds
for rejection and primary purpose which were given an opportunity to submit
arguments during examination or trial stage, each element of the claimed
invention must be identical to the preceding technical documents being
suggested based on publication and be consistent throughout the critical parts
of the premises necessary for the process of determining inventiveness of
claimed invention from the preceding technical documents (level of
technology at the time of application, technical knowledge, basic tasks of
corresponding field of technology, etc.), elements as key factors of judgement,
and details of judgement (problem to be solved, technical method necessary
for resolution, purpose/suggestion of combination or obstacles, etc.) as well
as congruent with the opinion documents expected from the applicant to
resolve the grounds for rejection or the direction for attempted amendment
by the applicant which makes it seem that the practical opportunities for
submission of opinion documents and amendment were given to the applicant
regarding the newly argued grounds. Even if the newly argued grounds in
the litigation procedure is a simple argument for difference in combination
or relationship of combination with preceding invention which was suggested
as the basis for denial of inventiveness in the examination or trial stage, the
premises necessary in the process of determining inventiveness, elements as
key factors of judgement, and details of judgement may change and this
change may make the applicant unable to submit opinion documents or make
amendments during the examination or trial stage regarding the combination
of preceding inventions that was newly suggested which makes it new
grounds for rejection that does not correspond with the grounds for rejection
and primary purpose given opportunities to submit arguments during
examination or trial stage thus making it unpermitted.


3. Patent Court Decision, 2015Heo7889, decided February 3, 2016
(Tadalafil Formulation Case) / 65
It is determined that inventiveness is not denied if a specific administration
method or dosage maintains the medicinal effect while minimizing toxicity
and side effects yet has advantageous effect that came from the specific
administration method or dosage without any special circumstances which is
out of scope of predictability that a person with ordinary skills would not
conceive from preceding invention or publicly known inventions as optimizing
the dosage, administration cycle, and administration method within the scope
of no toxicity and side effect for desirable treatment effect to solve the task
of medicinal effect increase and reduction of side effect for publicly known
drugs belongs within the scope of creative ability of a person with ordinary
skills by principle.


4. Patent Court Decision, 2016Heo4498, decided March 16, 2017
(Overactive Bladder Remedy Patent Term Extension Case) / 111
Article 89(2) of the Patent Act excludes the period which has elapsed for
reasons attributable to the patentee, etc. from the period during which the
subject invention would not have been practiced. In this case, “the period
which has elapsed for reasons attributable to the patentee” means the period
during which approval under the Pharmaceutical Affairs Act, etc. was delayed
for reasons attributable to the patentee, i.e., the period during which a
considerable causal relationship is recognized between the reason attributable
to the patentee and the delay of the approval under the Pharmaceutical Affairs
Act.
In light of the process, etc. of Subject Approval, the period during which the
Subject Extended Invention would not have been practiced should be
calculated based on the period from June 23, 2010 (patent registration date)
to August 10, 2010 (clinical trial termination date) and the period from
January 31, 2013 (date of filing an application for the Subject Approval) to
December 31, 2013 (the date when the Subject Approval decision was notified
to the applicant).


5. Patent Court Decision, 2016Heo8636, decided June 30, 2017
(Solifenacin Case) / 163
The validity of patent with its patent term extended affects not only the
medicine designated by the clause for manufacturing and import permit but
also the medicine regulated to receive permit for manufacturing and import
as they are practically treated as equivalents as well as the medicine which
does not require separate permit for manufacturing and import that are
practically equivalent to medicine that receive permits for manufacturing and
import.
The challenged inventions of the plaintiffs in this case had “solifenacin” in
common as active ingredient with the subject invention in this case and their
respective salts were altered from “succinic acid” to “fumaric acid” or “tartaric
aid” and according to ‘Regulation Regarding Safety and Validity Examination
for Medicine, etc.’, any medicine of new composition with new category of
effect or active ingredient with altered salts were designated as medicine
subject to manufacturing and import permit thus making these challenged
inventions neither eligible to be treated as practically equivalent items thus
making it able to receive manufacturing and import permit nor to be treated
as medicine that are already practically equivalent to a medicine that was
permitted for manufacturing and import which makes separate permit
unnecessary and therefore, these challenged inventions fall under the category
of medicine that must receive manufacturing and import permit separate from
the subject invention in this case. Therefore, the validity of patent for the
subject invention in this case with extended patent term does not affect these
challenged inventions.


6. Patent Court Decision, 2017Heo776, decided July 14, 2017 (Extended
Head Pile Case) / 206
The recognition of intentional exclusion of some element from the scope of
claim during the patent application process must be determined by taking not
only just the specification of the invention into consideration but also the
opinion suggested by the patent examiner from application until patenting as
well as the intent of patent applicant and grounds for amendment in
amendment and opinion documents. Therefore, rather than comparing the
composition before and after reduction because the scope of claim was
reduced during the patent application process and concluding that all
composition existing between the two scenarios were intentionally excluded
from the scope of claim and combining various circumstances revealed
throughout the application process, such exclusion can only be recognized
when the intent of exclusion from the scope of claim for some element is
clearly exhibited by the applicant. And such legal principle applies the same
for when there is an opinion testimony through submission of opinion
document and such without any reduction in scope of claim (Refer to Supreme
Court Decision, 2014Hu638, decided April 26, 2017).
But the patent application for ‘composition of head elements 1 and 2 being
extended equally left and right’ among element 2 of the subject invention in
this case was disclosed for the scope of claim but later deleted intentionally
by the applicant which should be recognized as intentional exclusion from
the scope of claim. Therefore, it cannot be said that the ‘extension line
featuring length of protrusion on exterior and exterior of main body at 25mm’
of the invention in question with such intentional exclusion of element is
equivalent to element 2.


7. Patent Court Decision, 2016Heo7947, decided June 16, 2017
(Window Frame Case) / 228
It can be said that the invention was executed due to the state of recognition
of technical composition of invention by unspecified number of people
including the transferee with the item being transferred with the technical
composition of the invention being easily understood by disassembly or
analysis of this item by a person with ordinary skills within the field of
technology that corresponds with this invention even when the technical
composition of the invention cannot be simply understood from the exterior
appearance as the same item as the invention was transferred for the purpose
of sale or subcontracting unless there are special circumstances such as
obligation of confidentiality for the transferee.
Meanwhile, the former Patent Act Article 29(1)(i) states that the practice of
invention which was publicly known or executed has to be argued and proved
by the party arguing for invalidation of patent but the existence of obligation
for confidentiality must be argued and proven by the patent owner.


8. Patent Court Decision, 2017Heo1304, decided August 25, 2017
(Detonation Device Case) / 240
Decision on whether the determination of solution principles for the
corresponding invention in a situation where the characteristic element that grants
inventiveness for the corresponding claim was disclosed very specifically
compared to other elements should be based on the corresponding element.
It may be regarded that the principle of solution based on specific means to
solve problem of claims 1 and 3 in this case lies in ‘easily and sturdily
connecting the shock tube and spark detonator through the connecting part’.
However, the connecting part of the challenged invention as well features a
structure for easily and sturdily connecting shock tube with spark detonator
and this is shared in common with the connecting part of claims 1 and 3
in this case. As shown above, the circuit which was practically equivalent
to the circuits of claims 1 and 3 in this case was disclosed in Prior Art 1
and the defendant has included the elements of the connecting part disclosed
in claim 5 incorporated in claim 1 to overcome the grounds for rejection of
acknowledgement of inventiveness and it can be seen that the composition
of this connecting part was very strict as disclosed above. However, if the
specific means to solve problem of claims 1 and 3 in this case determines
the solution principle as just ‘connecting structure to easily and sturdily
connect spark detonator with shock tube’ regardless of the specifically limited
connecting part as shown above, the scope of equivalence despite the
amendment of strictly limiting the scope of claim as shown above would
result in being a wider scope despite the amendment and reduction of claim
which would be unreasonable.


9. Patent Court Decision, 2017Heo2277, decided September 28, 2017
(Fish Scales Biomaterial Case) / 274
It is difficult to conceive the subject invention in this case from the preceding
invention as the subject invention in this case and the preceding invention
differ in terms of target product, applied technology, composition, and effect
even though it was initially viewed to be easily conceived from the
‘manufacturing process for collagen sheet for wound dressing by treating fish
scales with hydrochloric acid’ of the preceding invention as ‘decelluarization’
of fish scales were commonly present in both inventions in the decision of
rejection from the patent examiner and the decision of IPTAB.


10. Patent Court Decision, 2016Heo6524, decided October 19, 2017
(Blood Coagulation Mutation Case) / 291
The technology to activate factor X into factor Xa outside of the body is a
well-known and commonly used art.
However, unless a person with ordinary skills has gone through confirmation
through specific experiment at the time of the priority date for the claimed
invention in this case, it is difficult to predict whether the usual change of
factor X would take place after activation of ‘preceding invention mutation’
and furthermore, it is even more difficult to predict what kind of activity
would be exhibited by the activated form of the blood coagulation factor. The
invention in Claim 1 has also confirmed that it has effect of long plasma
half-life through experiments in multiple phases. Also, it is difficult to say
that there was disclosure or hint of technical ideology of having long plasma
half-life as blood coagulation factors when ‘preceding invention mutation’ is
activated or to say that there was motivation to opt for such technical
ideology.
Therefore, it is difficult to assess that there was possibility of simply
attempting to invent or reasonable expectation for success beyond simple hope
for success in this case and the premise that a person with ordinary skills
applied well-known and commonly used art on preceding invention to
generate each mutation in this case and confirmed their effects easily is only
possible after already knowing the technical intent and effect of Invention
Claim 1 in this case thus making it impermissible.


11. Patent Court Decision, 2016Heo9196, decided August 18, 2017
(Gliatimin Case) / 320
Even if actual drugs consumers are general consumers, considering medical
doctors, pharmacists, etc. are involved in actual sales and trade relations, when
the registered trademark of this case and the previously registered trademarks
are used together for identical and similar products, the similarity thereof
should be determined not only by general consumers who are the final
consumers of drugs, but also by medical doctors, pharmacists, etc., and thus
the recognition of medical doctors, pharmacists, etc. should be considered
together with that of ordinary consumers or traders.
For the following reasons, the “GLIA” part that is a part of the registered
trademark of this case and the previously registered trademarks cannot be seen
to have no or weak distinctiveness.
① In general, the English word “GLIA”, or its Korean transliteration “글리아”,
means “neuroglia” or “glial cells” having important interactions between
neurons as non-neuronal cells other than the vasculature in the central and
peripheral nervous system. ② However, it seems that not only general
consumers, but also even experts such as medical doctors, pharmacists, etc.,
do not easily recognize that the “GLIA” part signifies “neuroglia” or “glial
cells”. ③ Furthermore, even if “GLIA” signifies neuroglia, the relationship
between glial cells themselves and brain dysfunction, such as memory decay
syndrome and degenerative cerebral syndrome, does not seem to be widely
known, and there are no materials to admit the relationship. Thus, it is
difficult to construe that the “GLIA” part of the registered trademark of this
case and the previously registered trademarks directly indicates the efficacy
and use of a therapeutic agent for brain diseases among the designated goods.
Furthermore, both marks are composed of 9 letters of the alphabet, and when
read in Korean, both marks have the same number of five syllables identically.
Also, the three syllables that are pronounced relatively strongly in light of
the emphasis position of the Korean language and have the most prominent
influence on the auditory sense are the same as “글리아”. Furthermore, the
initial sound of the fourth syllable of both marks are aspirated sounds
pronounced by strongly bursting air out in a “ㅌ(t)” sound, and the middle
sound “ㅣ(i)” and the final sound “ㄴ(n)” of the fifth syllable are the same.
Accordingly, in spite of the difference in the middle sound of the fourth
syllable and the initial sound of the fifth syllable, as both marks will be heard
to be similar as a whole, the name is determined to be similar.


12. Patent Court Decision, 2016Na1691 decided June 29, 2017 (Outback
Case) / 334
Each of the business marks of this case is a domestically well-known business
mark of the plaintiff and has acquired reputation and has strong
distinctiveness. Furthermore, each of the infringing marks of this case is
identical and similar to each business mark of this case, and the defendants
who are copiers are assumed to have intentional bad faith. However,
considering that the evidence presented alone does not prove that there is a
relationship between both services in terms of business competition and
contention by the duplication of a customer base, that the plaintiff's business
size is incomparably larger than the defendants' business size, and that the
plaintiff has maintained reputation and credence as a “family-centered and
nature-friendly family restaurant” with a strong reputation among consumers,
it is very unlikely that ordinary consumers or traders would be confused such
that automated accommodation having a negative image is believed to be run
by the plaintiff directly or by an individual or a legal entity having an intimate
relationship with the capital or organization of the plaintiff.
However, it is determined that the defendants have damaged the good image
and value of the mark by using the plaintiff's well-known business mark of
this case for services having a negative image, and also have damaged a
source indication function of the well-known business mark of this case.
Thus, the plaintiff is entitled to a claim for injunction under Article 4 of the
“Unfair Competition Prevention and Trade Secret Protection Act”(hereinafter,
referred to as the “Unfair Competition Prevention Act”) and a claim for
damages under Article 5 of the same act, against the defendants

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