선택발명의 진보성에 대한 비교법적 접근 -현저한 효과와 선택의 동기

All the relevant factors regarding unsolved problems in the prior art, namely differences of property in kind or in degree, have been considered in determining the obviousness of selection inventions even in the U.S. where a patent for selection invention is obtained by the same obviousness test as other inventions. As KSR decision of the U.S. Supreme Court emphasizes not only the problems alleged to be addressed by the prior art but the common sense of a skilled artisan to assess whether there would have been a motivation to modify or combine prior arts, the property of compounds will be considered more importantly in determining obviousness of chemical inventions. It is usually the key to add beneficial properties to prior compounds or remove detrimental properties from them in the context of unsolved problems or common sense of a skilled person in the chemical art. The judicially created obviousness standard of selection inventions in Korea seems neither unsuitable for the global trend, nor too strict to be appropriately applied. In particular, pharmaceuticals has been qualified for various forms of regulatory protection, such as Hatch-Waxman Act. The obviousness standard, if necessary, must be carefully tailored. One way to give some insight about the standard is to consider not only the superior effect of species but the motivation to select the species from genus. That will be more consistent with Patent Act §29(2) and provide helpful rationale for an obviousness finding in the unpredictable chemical art.