명세서의 요지변경이 있는 보정 후 특허된 발명에 대한 정정심판의 소급효

This paper deals with a patent reissue case where an applicant petitioned an unlawfully revised patent after the original patent application was made public after 18 months of its original date of application. The patent examiner did not dismissed this unlawful revision and the revision application was patented. Afterwards, a petition for reexamination was filed by the applicant's competitor and the patent tribunal decided to invalidate the patented revised application in reasoning that the applicant's revision was such a change of the core part of the original application that the original application, which was made public, became a ‘prior art.’ In response to the decision, the applicant tried to reissue of the patent by eliminating the unlawfully revised part. 판례평석 The core issue in this case is whether this kind of reissue has retrospective effect to the original application date and this issue may be controversial. In deciding the above mentioned case, the Patent Court's determined not to permit the applicant to eliminate the unlawfully revised part reasoning that the retrospective effect of the reissue can be applied to the revision filing date. However, the Korean Supreme Court's decided to vacate and remand the case to the Patent Court. The grounds for the remand were as follows: Under the Article 49 of the old Korean Patent Law, retrospective effect of the court decision for the revised patent should be applied back up to the filing date of the original application rather than up to the filing date of the later revised one since the petition for patent reissuing by eliminating the revised part would result in eliminating the core part of the original applicant if the court decide to approve the revision. Further, the patent examiner in the case at issue did not dismiss the revision even though the applicant submitted the revised version where the core part of the original patent application was changed and the patent office patented the revision. In deciding, the Supreme Court consider the factors; (1) the nature of applicant and reissue, (2) type of reissue, (3) protection for the third party, and (4) whether the application for the reissue satisfies the conditions for reissuing. This decision was the first case handling this issue in Korea and the author cannot help agreeing to the Korean Supreme Court's reasoning for its decision.