- Chapter 1 Industrial Applicability
- 1. Patent Act Article 29 (1) main paragraph
- 2. Purport
- 3. Relevant Provisions
- 4. Statutory Inventions
- 4.1 List of Non-statutory Inventions
- 4.1.1 A law of nature as such
- 4.1.2 Mere discoveries and not creations
- 4.1.3 Those contrary to a law of nature
- 4.1.4 Those in which a law of nature is not utilized
- 4.1.5 Personal skill
- 4.1.6 Mere presentation of information
- 4.1.7 Aesthetic creations
- 4.1.8 Computer programming language or computer program
- 4.1.9 Those whose outcome of the claimed subject matter is not reproducible
- 4.1.10 Incomplete Invention
- 4.2 Notification of ground for rejection in the case of non-statutory invention
- 4.3 Difference between statutory invention under Patent Act and device underUtility Model Act
- 4.3.1 Article under the Utility Model Act
- 4.3.2 Devices that do not relate to the shape or construction of article or acombination of articles
- 5. Industrially inapplicable invention
- 5.1 Medical Activity
- 5.2 Inventions that cannot be commercially worked
- 5.3 Inventions that cannot be implemented in practice
- Chapter 2 Novelty
- 1. Patent Act Article 29 paragraph (1)
- 2. Purport
- 3. Relevant Provisions
- 3.1 Publicly Known Invention
- 3.2 Publicly worked invention
- 3.3 Invention Described in a Distributed Publication
- 3.3.1 Distributed publication
- 3.3.2 Distribution
- 3.3.3 Time of distribution
- 3.3.4 Invention described in a publication
- 3.4 Inventions publicly available through electric telecommunication lines
- 3.4.1 Purport
- 3.4.2 Requirement of an invention available to the public through electrictelecommunication lines that constitutes a prior art under Article 29 paragraph (1)subparagraph (ii)
- (1) Inventions publicly known to the public through electric telecommunicationlines
- (2) Invention made available to the public
- (3) Inventions published through electronic telecommunication lines owned by anentity prescribed by the Presidential Decree
- (a) Governments, local self-governed communities, foreign government, foreignlocal self-governed communities or international organizations
- (b) National/Public schools under the Higher Education Act Article 3 or foreignnational/public universities
- (c) National/public research institutes in this country or foreign country
- (d) Corporation designated and publicly notified by the Commissioner of KoreanIntellectual Property Office
- 3.4.3 Finding the time and content of publication
- 3.4.4 Method of Citation
- 3.4.5 Notes
- 4. How to assess novelty
- 4.1 Specifying the invention disclosed in claims
- 4.1.1 General principle of specifying inventions
- 4.1.2 Principle of specifying invention which includes special expression
- (1) A product specified by its work, function, property, or characteristic(hereinafter referred to as “the function, characteristic, etc.”)
- (2) The claim which includes an expression specifying a product by its use(limitation of use)
- (3) A product specified by its manufacturing process (product-by-process claim)
- (4) Claims consisting of the preamble and the body (Jepson type claim)
- 4.2. Finding of a cited invention
- 4.2.1 Publicly known invention
- 4.2.2 Publicly worked invention
- 4.2.3 Invention described in a distributed publication
- 4.2.4 Notes for finding of cited inventions
- 4.3 Method of assessing whether a claimed invention is novel
- 4.3.1 Assessing novelty on invention with numerical limitation
- 4.3.2 Assessing novelty in parameter inventions
- 4.4 Notes for assessing novelty
- 5. Inventions not considered to be publicly known, etc.
- 5.1 Patent Act Article 30
- 5.2 Purport of the system
- 5.3 Requirements for inventions under Article 30 paragraph (1)
- 5.3.1 Where an invention is laid open by a person with the right to obtain a patentprior to the filing of the application
- 5.3.2 When an invention is publicly known, against the intention of a person withthe right to obtain a patent
- 5.3.3 Differences between the disclosure by a person with the right to obtain apatent and the disclosure against the intention of the person
- 5.4 The procedure to take advantage of the provision of Article 30
- 5.4.1 When a person with the right to obtain a patent has laid open the inventionbefore the filing
- 5.4.2 When the invention is disclosed against the intention of a person with theright to obtain a patent
- 5.5 Examination to decide whether Article 30 applies to an invention
- 5.5.1 Formality examination
- 5.5.2 Substantive examination
- 5.5.3 Notes
- Chapter 3 Inventive Step
- 1. Patent Act Article 29 paragraph (2)
- 2. Purport
- 3. Relevant provisions
- 3.1 Before the filing of a patent application
- 3.2 A person with ordinary skill in the art
- 3.3 Invention that could have been easily made
- 4. General principles of assessing the inventive step
- 5. Method of assessing the inventive step
- 5.1 Procedures of assessing the inventive step
- 5.2. Selection of the cited invention
- 6. Grounds of assessing the inventive step
- 6.1 Probable cause or motivation
- 6.1.1 Suggestions shown in the disclosures of the cited inventions
- 6.1.2 Common problem to be solved
- 6.1.3 Common function or operation
- 6.1.4 Close relation of technical fields
- 6.2 Mere exercise of ordinary creativity of a person skilled in the art
- 6.2.1 Replacement with Equivalents
- 6.2.2 Simple modification of design in applying specific technology
- 6.2.3 Partial removal of constituents
- 6.2.4 Mere change and limitation of use
- 6.2.5 General application of known art
- 6.3 Advantageous effects to be considered
- 6.4 Assessing the inventive step according to the invention type
- 6.4.1 Assessing the inventive step of a selection invention
- 6.4.2 Assessing the inventive step of an invention including numerical limitations
- 6.4.3 Assessing the inventive step of a parameter Invention
- 6.4.4 Assessing the inventive step of a product invention described by itsmanufacturing process
- 7. Assessment of the inventive step of a combination invention
- 8. Other factors in assessing inventive step
- 9. Notes on assessment of inventive step
- Chapter 4 Enlarged Concept of Novelty
- 1. Patent Act Article 29 paragraph (3)
- 2. Purport
- 3. Conditions to apply Article 29 paragraph (3) and (4) to an application
- 4. Rules for the proviso of the Article 29 paragraph (3)
- 5. In the case of international application under Article 29 paragraph (4)
- 6. Method of assessing the identity
- 6.1 Procedure of assessing the identity
- 6.2 Substantive method of assessing the identity
- Chapter 6 Unpatentable Invention, etc.
REQUIREMENTS FOR PATENTABILITY
2010. 1.
(Note) If there is any inconsistency or ambiguity between the Korean version and English version, the Korean version shall prevail.
Chapter 1 Industrial Applicability
4.1.4 Those in which a law of nature is not utilized............................................ 2
4.1.8 Computer programming language or computer program........................... 4
4.1.9 Those whose outcome of the claimed subject matter is not reproducible.. 4
4.2 Notification of ground for rejection in the case of non-statutory invention ........ 5
4.3 Difference between statutory invention under Patent Act and device under Utility Model Act ....................................................................................................... 5
4.3.2 Devices that do not relate to the shape or construction of article or a combination of articles........................................................................................ 6
3.4 Inventions publicly available through electric telecommunication lines........... 12
3.4.2 Requirement of an invention available to the public through electric telecommunication lines that constitutes a prior art under Article 29 paragraph
(1) subparagraph (ii).......................................................................................... 12
3.4.3 Finding the time and content of publication ............................................ 15
4.1.1 General principle of specifying inventions .............................................. 17
4.1.2 Principle of specifying invention which includes special expression ...... 19
4.2.3 Invention described in a distributed publication ...................................... 22
4.3 Method of assessing whether a claimed invention is novel............................... 23
4.3.1 Assessing novelty on invention with numerical limitation ...................... 23
4.3.2 Assessing novelty in parameter inventions .............................................. 24
5. Inventions not considered to be publicly known, etc. .........................................26
5.3 Requirements for inventions under Article 30 paragraph (1) ............................ 27
5.3.1 Where an invention is laid open by a person with the right to obtain a patent prior to the filing of the application........................................................ 27
5.3.2 When an invention is publicly known, against the intention of a person with the right to obtain a patent......................................................................... 28
5.3.3 Differences between the disclosure by a person with the right to obtain a patent and the disclosure against the intention of the person............................ 28
5.4 The procedure to take advantage of the provision ofArticle 30........................29
5.4.1 When a person with the right to obtain a patent has laid open the invention before the filing ................................................................................................. 29
5.4.2 When the invention is disclosed against the intention of a person with the right to obtain a patent....................................................................................... 29
5.5 Examination to decide whether Article 30 applies to an invention ................... 29
6.1.1 Suggestions shown in the disclosures of the cited inventions.................. 38
6.2 Mere exercise of ordinary creativity of a person skilled in the art .................... 40
6.2.2 Simple modification of design in applying specific technology .............. 41
6.4 Assessing the inventive step according to the invention type............................ 45
6.4.1 Assessing the inventive step of a selection invention .............................. 45
6.4.2 Assessing the inventive step of an invention including numerical limitations.......................................................................................................... 45
6.4.3 Assessing the inventive step of a parameter Invention ............................ 47
6.4.4 Assessing the inventive step of a product invention described by its manufacturing process....................................................................................... 48
7. Assessment of the inventive step of a combination invention ..............................49
Chapter 4 Enlarged Concept of Novelty
3. Conditions to apply Article 29 paragraph (3) and (4) to an application..................56
4. Rules for the proviso of the Article 29 paragraph (3)..........................................60
5. In the case of international application under Article 29 paragraph (4) ..................60
Chapter 6 Unpatentable Invention, etc.
3.1 Invention liable to contravene public order or morality .................................... 63
Chapter 1 Industrial Applicability
1. Patent Act Article 29 (1) main paragraph
Inventions that have industrial applicability are patentable unless they fall under either of the following sub-paragraphs.
(i) and (ii) are omitted.
2. Purport
All inventions should be industrially applicable since the purpose of the Patent Act is to contribute to the development of industry (Patent Act Article 1). In this regard, the Patent Act Article 29 paragraph (1) stipulates that an invention is patentable only if the invention is considered industrially applicable. The term of “industry”, in the Patent Act Article 29 paragraph (1), shall be interpreted in the broadest sense. In other words, the term industry is interpreted to cover all activities included in useful and practical technologies.
(Reference) Paris Convention Article 1(3) Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce property, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grains, tobacco leaves, fruits, cattle, minerals, mineral water, beer, flowers, and flours.
3. Relevant Provisions
Main paragraph of patent Act Article 29 paragraph (1) requires an invention to be “statutory” and “industrially applicable”. Therefore, these examination guidelines describe the requirement of “statutory invention” and of “subjects that involve industrial applicability”.
4. Statutory Inventions
Under the Patent Act Article 2 subparagraph (i), “Invention means the highly advanced creation of a technical idea utilizing the law of nature”, the invention shall satisfy the provision in order for a filed patent application to be statutory under the Patent Act.
However, the term “highly advanced” has been introduced to differentiate “device” under the Utility Model Act from “Invention” under the Patent Act, and this term is disregarded in determining whether the invention is statutory or not.
4.1 List of Non-statutory Inventions
The decision of whether an invention falls under the Patent Act Article 2 subparagraph
(i) is not without challenge and the guidelines hereby exemplify the types of non-statuary inventions in order to help determine whether the invention is statutory.
4.1.1 A law of nature as such
Since a statutory invention shall utilize a law of nature, a law of nature as such including the second law of thermodynamics, the law of conservation of energy, etc. is not considered as a statutory invention.
4.1.2 Mere discoveries and not creations
A mere discovery is not deemed to be a creation because a discovery means to find out laws which exist in nature. A statutory invention requires to be a creation, and thus, mere discoveries, such as discoveries of natural things such as an ore or natural phenomena are not considered to be a statutory invention.
However, the method for artificially isolating substances from things in nature, not a mere discovery, is considered to be a statutory invention. So are the isolated chemical substances and microorganisms.
A use invention, which claims a novel use of a known material based on its inherent but newly found property, shall be treated distinctively from “a mere discovery” in the Patent Act. A mere discovery of a use of a known material does not constitute a statutory invention even if the use is novel. A novel use based on the newly found property is, however, considered a statutory invention only when a non-obvious inventive effort is made to discover the new property and provide the novel use.
4.1.3 Those contrary to a law of nature
Those contrary to a law of nature (e.g., perpetual motion) are not considered as a statutory invention since an invention must utilize a law of nature. If a claimed invention involves any means contrary to a law of nature, the claimed invention is not considered a statutory invention (Relevant court decision: Case No. 98Huh74 (Supreme Court, 4 Sept. 1998)).
4.1.4 Those in which a law of nature is not utilized
If a claimed invention utilizes any laws other than a law of nature (e.g., economic laws, mathematical methods, logics, cartography, etc.), arbitrary arrangements (e.g., a rule for playing a game as such) or mental activities (e.g., method for doing business as such, teaching skills as such, financial insurance scheme as such, tax code as such, etc.), the claimed invention is not considered to be statutory.
In the case where a claimed invention is not directed to logics, mathematical principles as such or a method directly using them but involves technical devices or a method which gives useful, concrete and tangible result by increasing or controlling the performance of a certain technical tools with the data, which is converted using mathematical manipulations, if the technical devices or technical methods are considered as universal, repetitive and objective, they are deemed as a statutory invention which uses technical idea utilizing a law of nature.
Whether a claimed invention utilizes a law of nature shall be taken into account as a whole. Therefore, even if a part of matters defining an invention stated in a claim utilizes a law of nature, when it is judged that the claimed invention as a whole does not utilize a law of nature, the claimed invention is not statutory under the Patent Act. On the contrary, even if a part of matters (e.g., mathematical axioms) defining an invention stated in a claim does not utilize a law of nature, when it is judged that the claimed invention as a whole is considered as utilizing a law of nature, the claimed invention is deemed as statutory.
(Example 1) A method for generating cryptographs through the combination of Alphabets, numbers and signs
(Example 2) A method for creating a phonetic transcription of foreign languages comprising the step of: using the phenomena in which there is change in pronunciation formed by a set of vocal organs including the shape of throat and sound of tongue formed at pronouncing a certain word to indicate different pronunciation or characteristics of forming a phonetic transcription as the shape of lips changes (Relevant court decision: Case No. 2001Huh3453 (Patent Court, 17 Jan. 2002)).
(Example 3) A method of comprehensive management for recycling garbages or waste comprising the steps of: distributing special bags bar-code stickers attached with personal information of a person who disposes garbage or waste to citizens; inviting the citizens to separate general waste and place garbage in special disposal bag with the bar-code stickers attached; collecting the disposal bags on a daily basis and discharging them at a waste disposal site; and sorting waste or garbage at the waste disposal site, wherein in the case of wrongly sorted garbage, the citizen who disposed garbage in a wrong disposal bag are detected by the bar-code and warned not to do it again (Relevant court decision: Case No. 2000Huh5438 (Patent Court, 21 Sept. 2001)).
4.1.5 Personal skill
A personal skill, which is acquired by personal practice and cannot be shared with third parties as a knowledge due to lack of objectivity, is not considered to be a statutory invention.
(Example 1) A method of performing musical instruments, a method of throwing a spilt-fingered fast ball characterized in the way of holding the ball in fingers and throwing the same.
4.1.6 Mere presentation of information
A mere presentation of information where the feature resides solely in the content of the
information and its main objective is to present the information is not considered as a statutory invention.
(Example 1) An audio compact disc where the feature resides solely in the music recorded thereon, computer program listings as such, and image data taken with a digital camera, etc.
However, if the technical feature resides in the presentation of information, the presenting per se, the means for presentation and the method for presentation, might be considered as a statutory invention.
(Example 2) A plastic card on which information is recorded with letters, numbers and signs embossed on it (a technical feature residing in the means for presentation of information)
4.1.7 Aesthetic creations
An aesthetic creation may contain a visionary feature as well as a technical feature. Therefore, its evaluation is subjectively made. An aesthetic effect itself (e.g., paintings and carvings as such) is not considered as a statutory invention. However, if the aesthetic effect is achieved by a technical composition or other technical means, it is viewed as a statutory invention.
4.1.8 Computer programming language or computer program
A computer program is a mere list of instructions to operate a computer. Therefore, a computer program is not considered as a statutory invention. However, in the case of an invention where a data processing process by a computer program is specifically executed using a hardware, a data processing unit (machine) operating in association with the computer program, its operating method, and a computer readable medium carrying the computer program thereon are viewed as statutory inventions.
4.1.9 Those whose outcome of the claimed subject matter is not reproducible
An invention whose outcome of the claimed subject matter is not achievable and reproducible is not considered as statutory, even if the means to achieve the goal of the invention is sufficiently described. It does not mean that the possibility of reproduction of a claimed invention should account for 100%. Even with less than 100% possibility, the invention is considered to be reproduced if it is certain that the outcome is achievable.
4.1.10 Incomplete Invention
A statutory invention shall be complete and a complete invention is defined as an invention in which the subject matters shall be specified concretely and objectively so that a person with ordinary skill in the art may easily repeat the invention to achieve the intended technical effect. The decision on whether an invention is complete shall be made by considering the invention as a whole such as its purpose, subject matters and operational effects of the invention indicated in the description of patent application in accordance with the state of the art at the time of filing (Case No. 93Huh1810 (Supreme Court, 27 Dec. 1994)).
If a subject matter lacks concrete means to solve the problem to be solved or if it is clearly impossible for the subject matter to solve the problem to be solved by any means presented in a claim, the claimed invention is not considered as statutory. However, in this case, the inventor can verify that the claimed invention solves the problem to be solved by means presented in a claim with an appropriate and concrete evidence such as reliable experimental data of third parties.
As one of the requirements to obtain a patent right, an examiner should distinguish between the requirement of completing an invention and that of satisfying description requirement. An incomplete invention or an invention yet to be completed at the time of filing cannot be amended later to correct the defect after the application is filed. However, in the case of deficiency of description requirement, it is possible to correct the defect through the amendment because an invention is complete at the filing but fails to make a description regularly. Therefore, if it is unclear under which cases the invention falls, it is desirable to notify the ground for rejection under the Patent Act Article 42 paragraph (3) rather than under the main paragraph of Article 29 paragraph (1).
4.2 Notification of ground for rejection in the case of non-statutory invention
If the claimed invention falls under the scope of the non-statutory inventions such as a law of nature as such, discoveries, subject matters against the law of nature, subject matters not using the law of nature, mere presentation of information, aesthetic creations or incomplete invention, the ground for rejection shall be notified with the reason that the subject matter is not “industrial applicable”, citing the main paragraph of Article 29 paragraph (1).
4.3 Difference between statutory invention under Patent Act and device under Utility Model Act
Under the Patent Act, devices (including a composite) and methods can be a patentable subject matter. However, under the Utility Model Act, a utility model may be granted only for devices that relate to the shape, construction of article, or a combination of articles. The subject matter of the utility model is a technical idea applied to the article described in claims, not the article itself.
4.3.1 Article under the Utility Model Act
There is no general definition prescribed about an article or articles described in Utility Model Act Article 4 paragraph (1). However, it is construed that a subject matter is generally considered as an article under Utility Model Act on condition that it is the object for trade having a specific shape in space and the purpose of its use is clear.
The simple explanation about the shape, construction of an article, or a combination of articles is as follows: - (1)
- Shape
“Shape” is external figuration expressed in the line, the surface, and so on (e.g., the shape of the cam or the tooth shape of the gear, etc.).
- (2)
- Construction
“Construction” is a configuration which is formed spatially and 3-dimensionally. It is expressed in the contour of articles. It is also shown in plane, side, front, and sectional (when necessary) views. A constructional feature needs not to be necessarily clear from outer appearances, however, a constructional difference is acknowledged when it is discriminated by cutting an article or using a physical/chemical analysis, even when two articles have the same appearances. A circuit of electronic products may be deemed to be a construction under Utility Model Act.
- (3)
- Combination
Combination means that two or more articles are spatially separated respectively and have independent specific construction or shape, and moreover, show the usefulness for relating to each other functionally when used. For example, the fastening tools which consist of a bolt and a nut are a kind of combination.
4.3.2 Devices that do not relate to the shape or construction of article or a combination of articles
A process, a composition, a chemical substance, an object which is not fixed in a certain shape, animal variety, plant variety and the like do not fall under the scope of a statutory device under Utility Model Act.
(Reference) When dependent claims delimit the material of the subject matter of an independent claim which is directed to a device, the subject matter of the dependent claims is considered as a statutory device relating to the shape or construction of an article or a combination of articles.
5. Industrially inapplicable invention
The following is a non-exhaustive list of “industrially inapplicable inventions.” Upon noticing that a claimed invention does not meet the requirements of industrial applicability, the ground should be indicated as specifically as possible in the notification of grounds for rejection.
5.1 Medical Activity
- (1)
- List of industrially inapplicable inventions
- (a)
- Methods for treatment of the human body by surgery, therapy or diagnosis, which are, hereafter, referred to “medical activities,” are considered industrially inapplicable.
A surgical method practiced on the human body by means of a surgical device (e.g., scalpel) or a method for treatment of the human body with a medicinal substance is regarded as medical activities, even when the method is not performed by medical doctors (including doctors of oriental medicine) or by medical or technical support staff.
- (b)
- A method including medical activities at least in one step or as an inseparable part in a claim is not regarded as industrially applicable.
- (c)
- When a method for treatment of the human body has both a therapeutic effect and a non-therapeutic effect (e.g., cosmetic effects) and both effects are inseparable, it is regarded as a method for treatment of the human body by therapy, which is industrially inapplicable.
- (2)
- List of Industrially Applicable Inventions
- (a)
- Medical devices as such to be used in surgery, therapy or diagnosis, and pharmaceutical medicines as such used for medical activities are industrially applicable.
- (b)
- A method for operating a medical device, which is new, or a method of measurement by using a medical device is considered industrially applicable except for the method, which includes interaction between the human body and the medical device or substantial medical activities.
- (c)
- A method for treating samples that have been discharged from a human body (e.g., urine, excrement, placenta, hair and nail) or extracted from a human body (e.g., blood, skin, cells, tumor or tissue) and a method for gathering data by analyzing such samples are considered industrially applicable when the method is composed of steps separable from medical activities.
- (3)
- Notes for examining inventions including medical activities
Methods for treatment of the human body by surgery, therapy or diagnosis are industrially inapplicable in general. The method is, however, considered industrially applicable if it is clearly drafted in the claim that the method is limited to the animal body with the exclusion of human being (Case No. 90Huh250 (Supreme Court, 12 Mar. 1991)).
5.2 Inventions that cannot be commercially worked
An invention applicable only for personal use or an invention only for experimental or academic purposes is regarded as industrially inapplicable. However, an invention concerning a marketable or tradable subject matter is considered industrially applicable even if the invention is applicable for the personal, experimental or academic use.
5.3 Inventions that cannot be implemented in practice
An invention which cannot be implemented in practice is not considered as industrially applicable even if it works in theory.
(Example 1) A method for preventing an increase in ultraviolet rays associated with the destruction of the ozone layer by covering the entire surface of the earth with an ultraviolet ray-absorbing plastic film.
Even in the case where an invention has not been implemented at the time of the filing, the invention may be considered as industrially applicable if it is possible to be used in the industry in the future. Under the requirement of industrial applicability, it is sufficient that the invention be industrially applicable in the future. However, the invention would not be deemed to be industrially applicable if it is possible to be used in the industry only after the relevant technology is advanced (Case No. 2001Huh2801 (Supreme Court, 14 Mar. 2003)).
Chapter 2 Novelty
1. Patent Act Article 29 paragraph (1)
Inventions that have industrial applicability are patentable unless they fall under either of the following sub-paragraphs: - (i)
- inventions publicly known or worked in the Republic of Korea or a foreign country before the filing of the patent application; or
- (ii)
- inventions described in a publication distributed in the Republic of Korea or a foreign country, or inventions publicly available through electric telecommunication lines as prescribed by Presidential Decree, before the filing of the patent application.
(Reference) “Inventions publicly known or worked in the Republic of Korea” is revised into “inventions publicly known or worked in the Republic of Korea or a foreign country” on March 3, 2006. The revision shows that the terms of “being publicly known or worked” is expanded to meet the global standard. The revised term is applied to applications filed on or after October 1, 2006.
2. Purport
The purport of the Patent System is to grant an exclusive right in reward for the disclosure of an invention. Therefore, an exclusive right shall not be given to an invention already disclosed to the public. Under the Patent Act Article 29 paragraph (1), prior to the filing of the patent application, (i) inventions publicly known, (ii) inventions publicly worked (iii) inventions described in a publication, or (iv) inventions published through electric telecommunication lines as prescribed by Presidential Decree are not patentable due to lack of novelty.
3. Relevant Provisions
3.1 Publicly Known Invention
“A publicly known invention” means an invention which is known or to be known to the public if there has been no deliberate attempt to keep it secret in the Republic of Korea or a foreign country prior to the filing of the application. In interpreting of “prior to the filing of the application”, the time of filing refers to the exact point of time of filing, even to the hour and minute of the filing, not to the date of filing (if the invention is publicly known in a foreign country, the time is converted into Korean time). Also, “the public” means general people having no secrecy obligations with respect to the invention.
(Example 1) Even if there is no publication of a patent registration, the patent application can be a prior art under Article 29 paragraph (1) subparagraph (i) after registration of patent. That is because the patented invention should be made available for public inspection upon request. However, if an application is not published, the invention of said application shall not constitute the prior art under Article 29 paragraph (1) subparagraph
(ii) as the application is not regarded as a publication distributed in the Republic of Korea or a foreign country before the filing of the patent application.
3.2 Publicly worked invention
(Note) If there is any inconsistency or ambiguity between the Korean version and English version, the Korean version shall prevail.
Chapter 1 Industrial Applicability
4.1.4 Those in which a law of nature is not utilized............................................ 2
4.1.8 Computer programming language or computer program........................... 4
4.2 Notification of ground for rejection in the case of non-statutory invention ........ 5
4.3 Difference between statutory invention under Patent Act and device under Utility Model Act ....................................................................................................... 5
4.3.2 Devices that do not relate to the shape or construction of article or a combination of articles........................................................................................ 6
3.4 Inventions publicly available through electric telecommunication lines........... 12
(1) subparagraph (ii).......................................................................................... 12
3.4.3 Finding the time and content of publication ............................................ 15
4.1.1 General principle of specifying inventions .............................................. 17
4.1.2 Principle of specifying invention which includes special expression ...... 19
4.2.3 Invention described in a distributed publication ...................................... 22
4.3 Method of assessing whether a claimed invention is novel............................... 23
4.3.1 Assessing novelty on invention with numerical limitation ...................... 23
4.3.2 Assessing novelty in parameter inventions .............................................. 24
5. Inventions not considered to be publicly known, etc. .........................................26
5.3 Requirements for inventions under Article 30 paragraph (1) ............................ 27
5.3.1 Where an invention is laid open by a person with the right to obtain a patent prior to the filing of the application........................................................ 27
5.3.2 When an invention is publicly known, against the intention of a person with the right to obtain a patent......................................................................... 28
5.3.3 Differences between the disclosure by a person with the right to obtain a patent and the disclosure against the intention of the person............................ 28
5.4 The procedure to take advantage of the provision ofArticle 30........................29
5.4.1 When a person with the right to obtain a patent has laid open the invention before the filing ................................................................................................. 29
5.4.2 When the invention is disclosed against the intention of a person with the right to obtain a patent....................................................................................... 29
5.5 Examination to decide whether Article 30 applies to an invention ................... 29
6.1.1 Suggestions shown in the disclosures of the cited inventions.................. 38
6.2 Mere exercise of ordinary creativity of a person skilled in the art .................... 40
6.2.2 Simple modification of design in applying specific technology .............. 41
6.4 Assessing the inventive step according to the invention type............................ 45
6.4.1 Assessing the inventive step of a selection invention .............................. 45
6.4.2 Assessing the inventive step of an invention including numerical limitations.......................................................................................................... 45
6.4.3 Assessing the inventive step of a parameter Invention ............................ 47
6.4.4 Assessing the inventive step of a product invention described by its manufacturing process....................................................................................... 48
7. Assessment of the inventive step of a combination invention ..............................49
Chapter 4 Enlarged Concept of Novelty
3. Conditions to apply Article 29 paragraph (3) and (4) to an application..................56
4. Rules for the proviso of the Article 29 paragraph (3)..........................................60
5. In the case of international application under Article 29 paragraph (4) ..................60
Chapter 6 Unpatentable Invention, etc.
3.1 Invention liable to contravene public order or morality .................................... 63
Chapter 1 Industrial Applicability
Inventions that have industrial applicability are patentable unless they fall under either of the following sub-paragraphs.
(i) and (ii) are omitted.
All inventions should be industrially applicable since the purpose of the Patent Act is to contribute to the development of industry (Patent Act Article 1). In this regard, the Patent Act Article 29 paragraph (1) stipulates that an invention is patentable only if the invention is considered industrially applicable. The term of “industry”, in the Patent Act Article 29 paragraph (1), shall be interpreted in the broadest sense. In other words, the term industry is interpreted to cover all activities included in useful and practical technologies.
(Reference) Paris Convention Article 1(3) Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce property, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grains, tobacco leaves, fruits, cattle, minerals, mineral water, beer, flowers, and flours.
Main paragraph of patent Act Article 29 paragraph (1) requires an invention to be “statutory” and “industrially applicable”. Therefore, these examination guidelines describe the requirement of “statutory invention” and of “subjects that involve industrial applicability”.
Under the Patent Act Article 2 subparagraph (i), “Invention means the highly advanced creation of a technical idea utilizing the law of nature”, the invention shall satisfy the provision in order for a filed patent application to be statutory under the Patent Act.
However, the term “highly advanced” has been introduced to differentiate “device” under the Utility Model Act from “Invention” under the Patent Act, and this term is disregarded in determining whether the invention is statutory or not.
The decision of whether an invention falls under the Patent Act Article 2 subparagraph
(i) is not without challenge and the guidelines hereby exemplify the types of non-statuary inventions in order to help determine whether the invention is statutory.
Since a statutory invention shall utilize a law of nature, a law of nature as such including the second law of thermodynamics, the law of conservation of energy, etc. is not considered as a statutory invention.
A mere discovery is not deemed to be a creation because a discovery means to find out laws which exist in nature. A statutory invention requires to be a creation, and thus, mere discoveries, such as discoveries of natural things such as an ore or natural phenomena are not considered to be a statutory invention.
However, the method for artificially isolating substances from things in nature, not a mere discovery, is considered to be a statutory invention. So are the isolated chemical substances and microorganisms.
A use invention, which claims a novel use of a known material based on its inherent but newly found property, shall be treated distinctively from “a mere discovery” in the Patent Act. A mere discovery of a use of a known material does not constitute a statutory invention even if the use is novel. A novel use based on the newly found property is, however, considered a statutory invention only when a non-obvious inventive effort is made to discover the new property and provide the novel use.
Those contrary to a law of nature (e.g., perpetual motion) are not considered as a statutory invention since an invention must utilize a law of nature. If a claimed invention involves any means contrary to a law of nature, the claimed invention is not considered a statutory invention (Relevant court decision: Case No. 98Huh74 (Supreme Court, 4 Sept. 1998)).
If a claimed invention utilizes any laws other than a law of nature (e.g., economic laws, mathematical methods, logics, cartography, etc.), arbitrary arrangements (e.g., a rule for playing a game as such) or mental activities (e.g., method for doing business as such, teaching skills as such, financial insurance scheme as such, tax code as such, etc.), the claimed invention is not considered to be statutory.
In the case where a claimed invention is not directed to logics, mathematical principles as such or a method directly using them but involves technical devices or a method which gives useful, concrete and tangible result by increasing or controlling the performance of a certain technical tools with the data, which is converted using mathematical manipulations, if the technical devices or technical methods are considered as universal, repetitive and objective, they are deemed as a statutory invention which uses technical idea utilizing a law of nature.
Whether a claimed invention utilizes a law of nature shall be taken into account as a whole. Therefore, even if a part of matters defining an invention stated in a claim utilizes a law of nature, when it is judged that the claimed invention as a whole does not utilize a law of nature, the claimed invention is not statutory under the Patent Act. On the contrary, even if a part of matters (e.g., mathematical axioms) defining an invention stated in a claim does not utilize a law of nature, when it is judged that the claimed invention as a whole is considered as utilizing a law of nature, the claimed invention is deemed as statutory.
(Example 1) A method for generating cryptographs through the combination of Alphabets, numbers and signs
(Example 2) A method for creating a phonetic transcription of foreign languages comprising the step of: using the phenomena in which there is change in pronunciation formed by a set of vocal organs including the shape of throat and sound of tongue formed at pronouncing a certain word to indicate different pronunciation or characteristics of forming a phonetic transcription as the shape of lips changes (Relevant court decision: Case No. 2001Huh3453 (Patent Court, 17 Jan. 2002)).
(Example 3) A method of comprehensive management for recycling garbages or waste comprising the steps of: distributing special bags bar-code stickers attached with personal information of a person who disposes garbage or waste to citizens; inviting the citizens to separate general waste and place garbage in special disposal bag with the bar-code stickers attached; collecting the disposal bags on a daily basis and discharging them at a waste disposal site; and sorting waste or garbage at the waste disposal site, wherein in the case of wrongly sorted garbage, the citizen who disposed garbage in a wrong disposal bag are detected by the bar-code and warned not to do it again (Relevant court decision: Case No. 2000Huh5438 (Patent Court, 21 Sept. 2001)).
A personal skill, which is acquired by personal practice and cannot be shared with third parties as a knowledge due to lack of objectivity, is not considered to be a statutory invention.
(Example 1) A method of performing musical instruments, a method of throwing a spilt-fingered fast ball characterized in the way of holding the ball in fingers and throwing the same.
A mere presentation of information where the feature resides solely in the content of the
information and its main objective is to present the information is not considered as a statutory invention.
(Example 1) An audio compact disc where the feature resides solely in the music recorded thereon, computer program listings as such, and image data taken with a digital camera, etc.
However, if the technical feature resides in the presentation of information, the presenting per se, the means for presentation and the method for presentation, might be considered as a statutory invention.
(Example 2) A plastic card on which information is recorded with letters, numbers and signs embossed on it (a technical feature residing in the means for presentation of information)
An aesthetic creation may contain a visionary feature as well as a technical feature. Therefore, its evaluation is subjectively made. An aesthetic effect itself (e.g., paintings and carvings as such) is not considered as a statutory invention. However, if the aesthetic effect is achieved by a technical composition or other technical means, it is viewed as a statutory invention.
A computer program is a mere list of instructions to operate a computer. Therefore, a computer program is not considered as a statutory invention. However, in the case of an invention where a data processing process by a computer program is specifically executed using a hardware, a data processing unit (machine) operating in association with the computer program, its operating method, and a computer readable medium carrying the computer program thereon are viewed as statutory inventions.
An invention whose outcome of the claimed subject matter is not achievable and reproducible is not considered as statutory, even if the means to achieve the goal of the invention is sufficiently described. It does not mean that the possibility of reproduction of a claimed invention should account for 100%. Even with less than 100% possibility, the invention is considered to be reproduced if it is certain that the outcome is achievable.
A statutory invention shall be complete and a complete invention is defined as an invention in which the subject matters shall be specified concretely and objectively so that a person with ordinary skill in the art may easily repeat the invention to achieve the intended technical effect. The decision on whether an invention is complete shall be made by considering the invention as a whole such as its purpose, subject matters and operational effects of the invention indicated in the description of patent application in accordance with the state of the art at the time of filing (Case No. 93Huh1810 (Supreme Court, 27 Dec. 1994)).
If a subject matter lacks concrete means to solve the problem to be solved or if it is clearly impossible for the subject matter to solve the problem to be solved by any means presented in a claim, the claimed invention is not considered as statutory. However, in this case, the inventor can verify that the claimed invention solves the problem to be solved by means presented in a claim with an appropriate and concrete evidence such as reliable experimental data of third parties.
As one of the requirements to obtain a patent right, an examiner should distinguish between the requirement of completing an invention and that of satisfying description requirement. An incomplete invention or an invention yet to be completed at the time of filing cannot be amended later to correct the defect after the application is filed. However, in the case of deficiency of description requirement, it is possible to correct the defect through the amendment because an invention is complete at the filing but fails to make a description regularly. Therefore, if it is unclear under which cases the invention falls, it is desirable to notify the ground for rejection under the Patent Act Article 42 paragraph (3) rather than under the main paragraph of Article 29 paragraph (1).
If the claimed invention falls under the scope of the non-statutory inventions such as a law of nature as such, discoveries, subject matters against the law of nature, subject matters not using the law of nature, mere presentation of information, aesthetic creations or incomplete invention, the ground for rejection shall be notified with the reason that the subject matter is not “industrial applicable”, citing the main paragraph of Article 29 paragraph (1).
Under the Patent Act, devices (including a composite) and methods can be a patentable subject matter. However, under the Utility Model Act, a utility model may be granted only for devices that relate to the shape, construction of article, or a combination of articles. The subject matter of the utility model is a technical idea applied to the article described in claims, not the article itself.
There is no general definition prescribed about an article or articles described in Utility Model Act Article 4 paragraph (1). However, it is construed that a subject matter is generally considered as an article under Utility Model Act on condition that it is the object for trade having a specific shape in space and the purpose of its use is clear.
The simple explanation about the shape, construction of an article, or a combination of articles is as follows: Combination means that two or more articles are spatially separated respectively and have independent specific construction or shape, and moreover, show the usefulness for relating to each other functionally when used. For example, the fastening tools which consist of a bolt and a nut are a kind of combination.
A process, a composition, a chemical substance, an object which is not fixed in a certain shape, animal variety, plant variety and the like do not fall under the scope of a statutory device under Utility Model Act.
(Reference) When dependent claims delimit the material of the subject matter of an independent claim which is directed to a device, the subject matter of the dependent claims is considered as a statutory device relating to the shape or construction of an article or a combination of articles.
The following is a non-exhaustive list of “industrially inapplicable inventions.” Upon noticing that a claimed invention does not meet the requirements of industrial applicability, the ground should be indicated as specifically as possible in the notification of grounds for rejection.
Methods for treatment of the human body by surgery, therapy or diagnosis are industrially inapplicable in general. The method is, however, considered industrially applicable if it is clearly drafted in the claim that the method is limited to the animal body with the exclusion of human being (Case No. 90Huh250 (Supreme Court, 12 Mar. 1991)).
An invention applicable only for personal use or an invention only for experimental or academic purposes is regarded as industrially inapplicable. However, an invention concerning a marketable or tradable subject matter is considered industrially applicable even if the invention is applicable for the personal, experimental or academic use.
An invention which cannot be implemented in practice is not considered as industrially applicable even if it works in theory.
(Example 1) A method for preventing an increase in ultraviolet rays associated with the destruction of the ozone layer by covering the entire surface of the earth with an ultraviolet ray-absorbing plastic film.
Even in the case where an invention has not been implemented at the time of the filing, the invention may be considered as industrially applicable if it is possible to be used in the industry in the future. Under the requirement of industrial applicability, it is sufficient that the invention be industrially applicable in the future. However, the invention would not be deemed to be industrially applicable if it is possible to be used in the industry only after the relevant technology is advanced (Case No. 2001Huh2801 (Supreme Court, 14 Mar. 2003)).
Chapter 2 Novelty
1. Patent Act Article 29 paragraph (1)
Inventions that have industrial applicability are patentable unless they fall under either of the following sub-paragraphs: (Reference) “Inventions publicly known or worked in the Republic of Korea” is revised into “inventions publicly known or worked in the Republic of Korea or a foreign country” on March 3, 2006. The revision shows that the terms of “being publicly known or worked” is expanded to meet the global standard. The revised term is applied to applications filed on or after October 1, 2006.
2. Purport
The purport of the Patent System is to grant an exclusive right in reward for the disclosure of an invention. Therefore, an exclusive right shall not be given to an invention already disclosed to the public. Under the Patent Act Article 29 paragraph (1), prior to the filing of the patent application, (i) inventions publicly known, (ii) inventions publicly worked (iii) inventions described in a publication, or (iv) inventions published through electric telecommunication lines as prescribed by Presidential Decree are not patentable due to lack of novelty.
3. Relevant Provisions
3.1 Publicly Known Invention
“A publicly known invention” means an invention which is known or to be known to the public if there has been no deliberate attempt to keep it secret in the Republic of Korea or a foreign country prior to the filing of the application. In interpreting of “prior to the filing of the application”, the time of filing refers to the exact point of time of filing, even to the hour and minute of the filing, not to the date of filing (if the invention is publicly known in a foreign country, the time is converted into Korean time). Also, “the public” means general people having no secrecy obligations with respect to the invention.
(Example 1) Even if there is no publication of a patent registration, the patent application can be a prior art under Article 29 paragraph (1) subparagraph (i) after registration of patent. That is because the patented invention should be made available for public inspection upon request. However, if an application is not published, the invention of said application shall not constitute the prior art under Article 29 paragraph (1) subparagraph
(ii) as the application is not regarded as a publication distributed in the Republic of Korea or a foreign country before the filing of the patent application.
3.2 Publicly worked invention
4.1.9 Those whose outcome of the claimed subject matter is not reproducible.. 4
3.4.2 Requirement of an invention available to the public through electric telecommunication lines that constitutes a prior art under Article 29 paragraph
1. Patent Act Article 29 (1) main paragraph
2. Purport
3. Relevant Provisions
4. Statutory Inventions
4.1 List of Non-statutory Inventions
4.1.1 A law of nature as such
4.1.2 Mere discoveries and not creations
4.1.3 Those contrary to a law of nature
4.1.4 Those in which a law of nature is not utilized
4.1.5 Personal skill
4.1.6 Mere presentation of information
4.1.7 Aesthetic creations
4.1.8 Computer programming language or computer program
4.1.9 Those whose outcome of the claimed subject matter is not reproducible
4.1.10 Incomplete Invention
4.2 Notification of ground for rejection in the case of non-statutory invention
4.3 Difference between statutory invention under Patent Act and device under Utility Model Act
4.3.1 Article under the Utility Model Act
4.3.2 Devices that do not relate to the shape or construction of article or a combination of articles
5. Industrially inapplicable invention
5.1 Medical Activity
5.2 Inventions that cannot be commercially worked
5.3 Inventions that cannot be implemented in practice