명세서 기재 중 ‘인용에 의한 포함(incorporation by reference)’ -특허법원 2021허3994 판결을 중심으로 -

The Patent Court 2021 Heo 3994 decision, rendered in 2022, considered whether the enablement requirement of a patent specification could be met by ‘incorporation by reference’. In this case, the applicant filed a Patent Cooperation Treaty (PCT) application with the United States Patent and Trademark Office (USPTO) as the receiving office while claiming priority based on two U.S. applications. It seems that the specification of the PCT application was prepared based on the US practice recognizing ‘incorporation by reference’. When entering the national stage in Korea, the applicant filed a Korean translation of the international application, which incorporated by reference another U.S. patent application. PCT applications are increasing. However, there are differences among the countries regarding whether and to what extent ‘incorporation by reference’ is allowed. Thus, applicants need to pay attention not only at the international stage but also at the national stage of designated countries. The reaons are as following: if the purport of ‘incorporation by reference’ was stated for ‘essential matters (matters required to meet the requirements for specification), it may be difficult to make amendments without changing the filing date, depending on the designated country. In addition, different conclusions may be reached at each national stage regarding whether the enablement requirement could be met. First of all, it would be desirable to check the current situtation related to ‘reference’ or ‘incorporation by reference’ in the specification of patent applications in Korea, and then establish the Korean Intellectual Property Office (KIPO) examination practice for this issue. In addition, it seems necessary to consider whether to adopt the following three types of ‘incorporation by reference’ recognized by international treaties such as PCT and Patent Law Treaty (PLT). PCT allows applicants filing an erroneous element or part of an international application to incorporate the correct element or part by reference, provided it is completely contained in a priority application validly claimed on the date of filing. Where a part of the description or a drawing is missing from the application on the filing date but is contained completely in an earlier application whose priority is claimed, PLT allows an applicant later to include such missing part of the description or the missing drawing in the application without loss of the filing date. PLT also allows an applicant, at the time of filing, to replace the description and any drawings in an application by a reference to a previously filed application, for the purposes of the filing date.