권리범위 확인심판에서 확인대상 발명의 특정

When requesting a scope confirmation trial of a patent right, the subject matter for comparative adjudication must be specifically identified enough to allow comparison with the patented invention. Although the subject matter for comparative adjudication is merely a product or method actually practiced, the problem of inadequate or inappropriate identification often occurs by identifying it abstractly in a similar way to a patented invention. A starting point for solving this problem is to first change the term for the subject matter for comparative adjudication from ‘invention’ to ‘product or method’. It is necessary to clarify that the subject matter of the scope confirmation trial is not the ‘invention’ but the ‘specific embodiment’ by changing the terminology. Next, it is necessary to avoid applying the legal principle regarding the patent claims to identification of the subject matter for comparative adjudication. It is not appropriate to treat the comparison table in the description of the subject matter for comparative adjudication as if it were a patent claim and to consider the description to have priority over the drawings. In addition, it is not appropriate to describe the subject matter for comparative adjudication in a functional language and to identify it by invoking the legal principle of patent claim interpretation. The subject matter for comparative adjudication must be identified by considering the description and drawings as a whole. Even if the patent claim is described in a generic term or in a functional language, the subject matter for comparative adjudication must be identified in terms of a specific embodiment, not a generic term or a functional language. According to Supreme Court precedent, if a non-infringement judgment is possible even when some elements of the subject matter for comparative adjudication are unclear, the subject matter for comparative adjudication is considered to be properly identified in respect of cause of action. Unless such precedents are changed, the legal principle that the subject matter for comparative adjudication must be identified in respect of object of action before being identified in respect of cause of action is necessary. However, since this is to ensure that all specific elements of the subject matter for comparative adjudication corresponding to the elements of the patented invention are described at the trial stage, there is no need to distinguish between how to identify the subject matter in respect of object of action and how to identify the subject matter in respect of cause of action. The identification of the subject matter for comparative adjudication is affected by the interpretation of the patent claims. Therefore, it is necessary to establish a practice to ensure that a reasonable interpretation of the patent claims is made from the trial stage and that the subject matter for comparative adjudication is specifically identified based on this interpretation.