특허 명세서의 뒷받침 요건-한국, 일본, 미국, 유럽 법제의 비교-

Although the support requirement is closely related to the scope of the claim, in Korean patent litigation practice, the focus has been primarily on whether the invention is novel or inventive, and even when the support requirement is an issue, it is mostly focused on the enablement requirement, so the support requirement has been relatively neglected in both legal theory and litigation. It is unclear what the specific criteria are for judging the formal correspondence between the claims and the description of the invention, and there is no judgment on how to view the submission of additional material to support the correspondence after filing. First, regarding the issue of distinction from the enablement requirement, Article 42 of the Patent Act clearly distinguishes between the two requirements, and states that they are independent patent requirements with different purposes and targets, especially in the Supreme Court’s judgment of October 13, 2011, No. 2010H2582, and Japan, the United States, and the European Union also distinguish between the two requirements. On the other hand, the United Kingdom, although a country in Europe, only stipulates the sufficiency requirement as a reason for revocation of a registered patent as opposed to an application, and the sufficiency requirement is almost the same as the enablement requirement. On the other hand, in litigation practice, the support requirement is often judged together with the enablement requirement, and the conclusion is almost the same, but there are cases where it is necessary to distinguish it from the enablement requirement, such as the absence of pharmacological data in the case of an invention for medicinal use. Therefore, litigants will need to clearly assert unique grounds of invalidity that meet the intent of the supporting requirements, and the court will need to actively direct the litigation to clarify the claims. Regarding the standard of judgment, there is no specific standard of judgment for the supporting requirement in the Patent Act, but there is considerable case law, and the situation is similar in Japan, the United States, and the European Union. Korea, through a series of Supreme Court rulings, judges whether the claims and the description of the invention are consistent, but whether the description of the invention can be expanded or generalized in the case of a broad claim, taking into account the level of technology and technical common sense in the field of technology at the time of filing. On the other hand, in Japan, the Polarizing Film ruling suggested the possibility of a person of ordinary skill in the art to recognize the solution of the problem in addition to the correspondence of the description as a criterion for judgment, and the trend seems to be to determine whether the supporting requirements are met based on the actual correspondence. The United States uses the “possession test” established through long-standing case law as the standard for determining the detailed description requirement, which seems to be somewhat higher than the formal correspondence in Korea in that the degree of disclosure of the technology in the specification must be such that a person of ordinary skill in the art would be able to recognize that the inventor possesses the invention from the description. Japan’s standard can be confused with the practicability requirement. We believe that the current practice is appropriate, as the overly formal application of the correspondence relationship in litigation is likely to result in unprotected patents with broad claims. However, as technologies in the life sciences or pharmaceuticals evolve, it is likely that genus claim support requirements will become a major issue in future litigation. The U.S. litigation practice, which already has a number of precedents and active academic discussions, may be worth learning from in many ways, including whether the support requirement can be supplemented by post-filing experimental data from the invention at issue. In Korea, there is a case law that does not allow additional data to be submitted in cases where the enablement requirement is at issue, but there is no case law regarding the support requirement. In the Polarizing Film case, Japan held that it is impermissible to eliminate the cost of materials by supplementing data at a later date, as it is contrary to the essence of the patent system. In light of the purpose of the patent system, which is to provide exclusive and monopolistic rights in exchange for disclosure of technology, it should not be permitted to cure deficiencies by submitting data after filing.