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Restrictive/Narrow Interpretation of Scope of Right

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KH

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2010-05-14

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Restrictive/Narrow Interpretation of Scope of Right


I. Trial for Confirmation of Scope of Right of Patent Registration
No. 176284

Patent Court’s Decision No. 2006HEO7245 published on May 10, 2007
Supreme Court’s Decision No. 2007HU2186 published on Oct. 23, 2008
- dismissed

1. Gist of the present patented invention and the subject invention for confirmation

(1) Present patented invention (claim 1)

A method of printing color in a file having color-based identification marks, in which each specified color is indicated as each of numbers 0-9 and each numbered color is printed at a predetermined position of a file, to discriminate the arrangement numbers of files (hereinafter, referred to as ‘constituent 1’),
the method comprising:
- sorting, from a plurality of files to form the color-based identification marks, files to print a color corresponding to the same unit and the same number, and printing the corresponding color in each group of the sorted files (hereinafter, referred to as ‘constituent 2’),
- sorting files to print color following the printed color in the previous step and corresponding to the same unit and the same number, and printing the corresponding color in each group of the sorted files (hereinafter, referred to as ‘constituent 3’),
- repeating the steps at the predetermined number of times (hereinafter, referred to as ‘constituent 4’), thereby forming the color-based identification marks in a plurality of the files.

(2) Gist of the subject invention for confirmation

The subject invention for confirmation relates to a method of printing color in files having color-based identification marks. When a color corresponding to a certain number is printed, files are sorted by colors corresponding to the same unit and the same number, the sorted files are collected in a group, and the corresponding color is printed in the group of the relevant files. After the files having the color corresponding to the same unit and the same number to be printed are sorted and collected in a group, the corresponding color is printed in each group of the sorted files by using the same printing plate, thereby reducing the production cost and printing time.

2. Patent Court’s decision (2006HEO7245)

(1) Method of deciding scope of right

The scope of a patent is determined based on the matter(s) described in the claims attached to a patent application. Where the technical scope is clear based on the description of the claim(s) only, in principle, the description of the claim(s) shall not be restrictively/narrowly interpreted based on the description in the specification. The claim(s) is literally interpreted where a part of the matter(s) described in the claim(s) is not supported by the description of the detailed explanation of an invention or where an applicant seems to intentionally exclude the part of the matter(s) from the claim(s), i.e., the scope of a patent. However, where the literal interpretation of the claim(s) is clearly unreasonable in light of the description in the specification, the scope of the patent right may be restrictively/narrowly interpreted, considering the contents of the technical idea as filed in the application, the description in the specification, the applicant’s opinion, and the legal stability of a third party.

(2) The present patented invention having constituent 1 corresponds to the subject invention for confirmation having the step of ‘classifying print paper having a color corresponding to the same unit and a predetermined number to be printed, and to print the corresponding color in each group of the classified print paper’. The two inventions are identical with each other in the point that the object having the color corresponding to the same unit and the same number to be printed is sorted, and the corresponding color is printed in each sorted group. However, in the subject invention of confirmation, the object to be sorted to print an identification mark is the print paper with two files. The print paper is separated after the final printing is completed. However, the specification of the present invention discloses only the constitution of sort and print by a single file unit. In the specification of the present invention, there is no description of the constitution and processes of sorting or printing by using the print paper divided into two files as one unit like the subject invention for confirmation, and cutting and dividing the print paper in the final process. Considering the aforementioned reason and the matters (‘sorting files’, ‘printing the corresponding color in the file’) described in the claim(s) of the present invention, the constitution and processes of classifying and printing, as a single unit, the print paper to be divided into two files like the subject invention for confirmation are the new ones that cannot be predicted from the present patented invention and therefore, there is the difference between the two inventions.

3. Supreme Court’s decision (2007HU2186)

(1) Method of determining the scope of right

The scope of a patent is determined based on the matter(s) described in the claims attached to a patent application. Where the technical scope is clear based on the description of the claim(s) only, in principle, the description of the claim(s) shall not be restrictively/narrowly interpreted based on the description in the specification. Where it is clearly unreasonable to literally interpret the claim(s) as it is in light of the description in the specification, the scope of the patent right may be restrictively/narrowly interpreted, considering the contents of the technical idea as filed in the application, the description in the specification, the applicant’s opinion, and the legal stability of a third party.

(2) Where the ‘file(s)’ described in constituent 2 of the present patented invention is interpreted by defining it as a ‘piece of a file’ only, it is somewhat improper to consider the file(s) in the form of being divided into each piece of a file later (i.e., in the form of binding pieces of files) as being excluded from the constitution. However, it is reasonable that, after the scope of the right of the invention described in claim 1 is interpreted as restrictively/narrowly reaching to only the invention having the constitution of printing one color in one printing plate, by considering the purpose, effects and embodiments described in the detailed explanation, the applicant’s opinion, or the like, the subject invention for confirmation having the constitution of simultaneously printing two colors in one printing plate is not within the scope of the right of the present invention described in claim 1.


II. Trial for Invalidation of Patent Registration No. 132514

Patent Court’s Decision No. 2005HEO9527 published on Oct. 26, 2006
Supreme Court’s Decision No. 2006HU3618 published on Oct. 25, 2007
- returned for retrial

1. Gist of the present patented invention (claim 1)

A method of producing one or more 4-ADPA intermediates comprising the steps of:
a) bringing aniline or substituted aniline derivatives and nitrobenzene into reactive contact in a suitable solvent system; and
b) reacting the aniline or substituted aniline derivatives and nitrobenzene in a confined (reaction) zone at a suitable temperature, and in the presence of a suitable base and a controlled amount of protic material to produce one or more 4-ADPA intermediates.

2. Supreme Court’s decision (2006HU3618)

(1) Method of determining the scope of right

The claim(s) describes the matter(s) to be protected as a patented invention by an applicant. The invention subjected to the determination of the novelty and inventive steps shall be confirmed based on the matter(s) described in the claim(s). It is not allowable to interpret the claims by limiting/narrowing or broadening it based on the descr  

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