진보성 판단에서 발명의 효과

Concerning technical effect of the invention when assessing inventive-step judgement, comments by scholars and case laws have been divided into two viewpoints, ‘secondary consideration factor theory’ and ‘separate inventive step requirement theory’. Does obviousness of invention to be derived from the prior art in Patent Act 29(2) mean obviousness of constitution of an invention to be derived, or mean obviousness of both constitution and technical effect of an invention to be derived? This paper suggests that the two theories could coexist in relation to the position of the technical effect in assessment of inventive step, which position is also consistent with current Korean case law. However, if we do not integrate the two theories, we are likely to tend to focus only on the technical effect by omitting the determination of whether it is obvious for the constitution of an invention to be derived from prior art. Inventive step judgement should be primarily based on ‘secondary consideration factor theory’, but in the process ‘unexpected remarkable effect’ can be considered in the way it can rebut the presumption of obviousness of constitution of an invention to be derived.