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| IP Newsletter | Fall/Winter 2015 | |
This changing trend was encapsulated in the decision in the Patent Court1case 2013Heo1313, rendered on January 28, 2014 (which later became final2). This case brought some clarity to this nebulous area of Korean patent law, and is worth further attention, especially in light of the recently published commentaries of the responsible judge who rendered the decision, regarding the deliberation process and the issues the panel thought to be particularly relevant.
The patent in question was directed to the specific design and dimensions of a "scribing wheel," a high-end precision instrument used for "scribing" or cutting brittle panels or substrates (e.g., glass substrates for LCD panels). The specific design of the cutting ridge of a scribing wheel (particularly the spacing and dimensions of the notches along the ridge) can significantly influence the desired degree of fragmentation, penetration depth, and yield of the substrate panels being scribed.
When the Patent Court compared the two cited references with the claimed invention, which all related to scribing wheels and their design options (thus relating to the same technical field), it specifically reviewed inventiveness in light of the exact technical problem the invention was intended to solve. The Court then looked at whether the same technical problem was already disclosed, suggested or inherent in the prior art.
Interestingly, in order to answer this latter question, the Court ordered the patentee to submit a "patent map," or a graphical model of the areas in which companies in the relevant field have filed patents, which allows one to quickly visualize the relationships between a particular patent or technology and prior patents in the same field or industry. Using the patent map, the Court was better able to understand the development and commercialization of the claimed technology in relation to a person of ordinary skill in the art in the field as of the filing date.
Ultimately, the Patent Court reversed the lower decision by the IPT, holding that the patent would have involved an inventive step as of the filing date when reviewed in the context of the unique technical problem it was intended to address. The Patent Court determined that none of the prior art disclosed or otherwise suggested that the design options adopted in the patent would have been thought to address the particular technical problem addressed by the patent, specifically, the suppression of high penetrability while improving the degree of "bite3" of the scribing wheel.
Beyond the facts of this particular case, the Patent Court's decision was significant in clearly establishing that the patentability of an invention cannot be examined apart from the specific technical problem it is intended to solve. Prior to this decision, Korean courts often failed to take into account the technical problem at all, or gave it little weight, focusing instead on comparing the technical constitutions of the patent at issue and the prior art, to the extent they belonged to the same technical field. However, the Patent Court's decision expressly held that a unique technical problem in the claimed invention is a strong indicator that an inventive step exists.
The Patent Court's holding should lead to more courts in Korea taking into account the unique technical problems addressed by particular patents, which in turn should lead to greater affirmance of patent validity. Indeed, more and more courts in patent cases are asking the parties to submit a patent map or other patent landscape analysis to better understand the context in which particular inventions were developed.
| 1 | The Korean Patent Court is an intermediate appellate court with exclusive jurisdiction to review all appeals from the Korean Intellectual Property Office. |
| 2 | The case began as an appeal of a final rejection which was earlier affirmed by the Intellectual Property Tribunal ("IPT"), the Korean equivalent of the PTAB at the U.S.P.T.O. |
| 3 | This relates to the catching of the substrate panels being scribed, without slippage of the scribing wheel. |
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Duck-Soon CHANG ducksoon.chang@kimchang.com |
Yoon-Ki KIM ykkim1@ip.kimchang.com |
Peter K. PAIK pkpaik@ip.kimchang.com |