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Requirements for Description of Specification

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KH

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2010-05-14

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Requirements for Description of Specification
and Descriptive Level thereof


I. Trial for Invalidation of Patent Registration No. 123403

Patent Court’s Decision No. 2002HEO956 published on Aug. 14, 2003
Supreme Court’s Decision No. 2003HU2072 published on Nov. 24, 2006
- dismissed

1. Present patented invention

(1) Claim 1

A method of converting Korean (Hangul) into English which is applied to a text input unit including a CPU and memory, comprising:
a 1st step of receiving an input of at least one word;
a 2nd step of dividing the word into a free morpheme (for example, a noun) and a bound morpheme (for example, a postpositional article);
a 3rd step of determining whether the divided word is Korean or English; and
a 4th step of converting the free and bound morphemes into Korean if the word is determined as Korean, converting the free morpheme into English and the bound morpheme into Korean if the word is determined as English and there is the bound morpheme, and converting the morpheme into English if the word is determined as English and there is no bound morpheme.

(2) Claim 17

A method of converting Korean into English which is applied to a text input unit including a CPU and memory, comprising:
a 1st step of executing initialization;
a 2nd step of receiving an input of at least one key after the 1st step;
a 3rd step of checking the input key;
a 4th step of adding the key to a word if the input key is determined as a key corresponding to Korean or English;
a 5th step of determining whether the word is Korean or English after the 4th step;
a 6th step of converting a mode after the 5th step;
a 7th step of returning to the 2nd step after the 6th step;
a 8th step of determining whether the word is Korean or English if the input key at the 3rd step is determined as a key corresponding to no Korean or English; and
a 9th step of performing conversion of the word after the 8th step.

2. Supreme Court’s decision (2003HU2072)

(1) Requirements for description in the specification, and interpretation of scope of right

① Descriptive manner of claim(s) and interpretation thereof

Where a claim(s) of a patented invention includes a description of a method (a product) comprising a certain constituent(s), even if any other constituent than all the constituents explicitly described in the claim(s) is additionally worked, there is no change in the fact that the described constituents are all included. Therefore, the aforementioned working is within the scope of right of the patented invention and further, the claim(s) described in the aforementioned manner shall be construed to expect the working of the other additional constituent as well as the constituents explicitly described.

② Article 42 (4) of the Patent Law (description of claim(s))

According to Article 42(4) of the Patent Law, the claim(s) must describe the matter for which protection is sought in one or more claims, and the claim(s) must comply with each of the subparagraphs. This regulation should be interpreted as follows:

First, subparagraph (i) of the same paragraph requires that ‘the claim(s) must be supported by a detailed explanation of an invention. This means that, in view of any person skilled in the art, the contents described in the claim(s) shall be consistent with those described in the detailed explanation of an invention on the basis of the technical level at the time of filing the application of the invention, so that the skilled person can clearly understand, from the detailed explanation of the invention only, the technical constitution or the combination of the technical constitution and the acting effects of the constitution described in the claim(s).

Next, subparagraph (ii) of the same paragraph requires that ‘the claim(s) must define the invention clearly and concisely’. In light of the regulation according to Article 97 of the Patent Law that the scope of protection conferred by a patented invention is determined by the subject matter described in the claim(s), the claim(s) shall be clearly described, and any terms to unclearly express the constitution of the invention shall not be allowed in principle in the claim(s). Further, in light of the point that the claim(s) shall be interpreted by referring to the detailed explanation of the invention, the claim(s) shall not include any term(s) which is used in the other meaning than that defined in the detailed explanation of the invention, consequently making the claim(s) unclear.

Next, subparagraph (ii) of the same paragraph requires that ‘the claim(s) must describe only the indispensable matters of the constitution of the invention’. Under this regulation, where it is indicated that all the constituents required for the constitution of an invention are not described in the claims after the invention is patented, it shall not be argued that the constituent not described in that time when the invention is patented is to be interpreted to be included in the description of the claim(s). Moreover, all the constituents described in the claim(s) shall be understood as the indispensable constituents, and it shall not be argued that some constituents are not the indispensable constituents by the reason that hose are less important or the like.

③ Article 42 (3) of the Patent Law (description of detailed explanation)

According to Article 42(3) of the Patent Law, a detailed explanation of an invention must be described with respect to the purpose, constitution and effects of the invention so that a person skilled in the art may easily carry out the invention. This means that, the contents of a patented invention shall be open so that a third person can easily understand the contents from the specification only, to clarify the technical contents and scope to be protected as a patent right, and therefore, any person skilled in the art can correctly understand the invention and reproduce the same from the description of the specification, based on the technical level at that time of the filing of the application, without adding any special knowledge. When a thesis for a doctorate is stored in a public library, university library or the like, it is in the situation that the general public can perceive the contents described in the thesis. In this case, any person having ordinary skill can easily understand the contents of the thesis, without adding any excessive experiments or special knowledge unless there is a special reason.

(2) Judgment in the present case

① Since the present patented invention(s) in independent claims 1 and 17 are described as a ‘method of converting Korean into English comprising the steps of’, the addition and working of the other constituents than the constituents explicitly described are expected. Further, the purpose or effect of the present patented invention is not to improve the processes of managing, storing and controlling the word data. Further, the question as to whether to narrow the scope of right by including these processes as one of the constituents in the claims and thus to be in an advantageous position regarding the determination of the requirements for patentability, or whether to broaden the scope of right by not describing these processes as the constituents in the claims and thus to be in a disadvantageous position regarding the determination of the requirements for patentability depends on the opinion and decision of the applicant. When a word processor or the like using the present patented invention is run in a computer, the processes of managing, storing and controlling the word data are necessarily performed by the computer. However, based on this reason, the applicant acknowledges that these processes not illustrated in the specification or drawings of the invention should be the constituents to be necessarily described in the claims of the invention and the description o  

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