대한민국 특허제도의 문제점(II) ―심사관 거절이유의 일부가 잘못되었다고 판단한 심판 또는 소송에서 그 청구를 기각하는 관행에 대하여―

In the multiple claims system, the examiner may reject a patent application with various rejection reasons. For example, claim 1 may be rejected under novelty, claim 2 under non-obviousness, and claim 3 under description requirement. Claim groups A, B and C can be applied in the same manner. In the case with multiple rejection reasons, the multiple issues are usually raised in the appeal before the Patent Appeal Board or in the following appeal before the patent Court. In the example above, three issues will be presented to discuss in the appeal. It is our practice in the appeal that the appeal is dismissed if at least one of the issues is not justified, in other words, if at least one of the rejection reasons was correct, although the remaining issues are justified, in other words, although the remaining rejection reasons were not correct. In many appeals, all the issues brought by the applicant are not discussed if at least one of the issues is not justified. In such appeals, they reason that a patent application shall be finally rejected if it has a rejection reason on even one claim. Such appeal procedure in the patent Appeal Board or the Patent Court is seriously harmful to the patent system and cannot protect inventors appropriately. In order to implement the right appeal system, all the issues brought by the applicant should be discussed regardless of their justification. Further, the previous decision should be reversed if any one of the multiple issues is justified. Finally, the case shall be returned to the examiner so that she provides the applicant with an opportunity to amend the claims or to reply.