진보성의 심사기준과 인용문헌의조합에 관한 연구

The intellectual property right is a very ideational and metaphysical concept in its interpretation of a right scope as compared to a corporeal property right because it is basically designed to protect a useful intellectual property in a human culture or an industry domain. In the present study, an inventive judgment method being applied by the patent offices of Korea, the US, Japan and EPO will be studied based on a precedent and an examination standard. In case of Korea, according to the examination handbook, when an inventive step is judged, it can be judged in combination with at least two cited references, but the combination is limited to a case that those who skilled in the art can easily combine at the time when a corresponding invention is made. In addition, according to a precedent by the supreme court, it discloses a certain standard with respect to a combination of the cited references as it is needed to disclose a motive that those who skilled in the art can easily combine since at least two cited references have the same technical field, and the technical problems to be resolved are same so as to judge an inventive step based on a combination of at least two cited references. In case of the US, ‘Graham v. Deere, Test’ is generally adapted when a non-obviousness is judged in the patent office and the court. Namely, an inventive step test of a recent KSR decision is a little applied. According to a decision by the supreme court, it is judged that when a certain case is rejected based on a combination of at least two cited references, it is needed to provide the examiner with a motivation, suggestion or teaching in the cited reference, and the technical field should be same for citing the references, and the cited reference should belong to the field related with a problem to be resolved in a corresponding application. In the Guidelines for Examination in the EPO, PSA is actually applied when judging an inventive step, and it is stipulated that only one or multiple cited references can be applied, provided that according to the EU appeal tribunal, when an invention step is judged, it is principle to adapt one or two cited references, and it is excluded that an inventive step is neglected by a combination of at least thee cited references. The inventive step test actually adapted by the Japan patent office and court is basically the same as the Graham v. Deere, Test and PSA of EPO, but the inventive step test of Japan is more detail and logical as compared to the US and EPO. It is general that the inventive step judgment actually adapted by the patent offices and courts of almost developed countries limit the number of combined cited references to two so as to reject an application based on the lack in the inventive step, provided that it is proper that an inventive step rejection is a little limitedly adapted in a special case when at least three cited references are applied. According to the statistics of the Korean patent office, the total numbers of the applications in 2004 are 423,081 by Japan, 351,431 by the US, 140,115 by Korea, 130,133 by China, and 59,234 by Germany, respectively. Korea is the third most application country following Japan and the US. In an actual work of the patent examination and patent decision and the patent infringement suit, an inventive step judgment is a controversial issue while occupying a lot of portions. So, it should be proper and objective. In this matter, in order to support the Patent Act article 42(3) which became effective in 2007, Korea should establish a new standard in the inventive step judgment based on a precedent of the Supreme Court like the PSA of EPO. In particular, almost inventive step judgments are done based on a combination of two or three cited references, so it is needed to make a standard with respect to a combination of the cited references and a scope of the number of cited references clear, and a universal and proper examination standard should be set.