|
|
|
|
|
|
|
Newsletter | December 2014, Issue 4
|
|
|
|
|
|
|
|
|
|
|
Intellectual Property
|
|
|
|
|
Korean Supreme Court requires review of specification to define technical meaning for claim construction
|
|
|
|
Recently, the Korean Supreme Court clarified its guidance on claim construction for determining the technical meaning of a claimed invention.
|
|
|
|
Previously, the Korean Supreme Court's holdings were divided in two camps: (i) in cases where the scope of the claim was apparent from the language of the claim, the Court held that the claim should be construed based on the claim language itself and cannot be construed restrictively based on the specification (Supreme Court Case Nos. 2004Hu776 rendered on October 13, 2006, 2008Hu4202 rendered on June 24, 2010, and 2010Hu1107 rendered on July 14, 2011); at the same time (ii) the Court held that since the technical meaning of a claimed invention cannot be clearly understood without considering the specification, the claim should be construed objectively and reasonably based on the detailed description or drawings in addition to the ordinary meaning of the language of the claim (Supreme Court Case Nos. 2005Hu520 rendered on September 21, 2007, 2008Hu26 rendered on January 28, 2010, and 2010Hu3219 rendered on November 10, 2011). Consequently, courts tended to first focus on the plain and ordinary meaning of a claim term in determining the scope of a claim (without reviewing the detailed description and drawings) and did not further look into the technical meaning of the claimed invention if the claim scope seemed clear, although this sometimes varied based on the court's discretion. This generally had the effect of broadening the scope of a patent, particularly for validity analysis, and ultimately, made it difficult to defend against invalidity attacks.
|
|
|
|
In the recent ruling (Canon v. Alphachem, et al., Supreme Court Case No. 2012Hu917 rendered on July 24, 2014), however, the Supreme Court held that the specific technical meaning of a claim feature must generally be construed in light of the detailed description of the invention considering the purpose and effect of the claimed invention. Specifically, in upholding the validity of the patent in view of the patent's detailed description and drawings, the Court stated, "the scope of a patented invention must be construed in an objective/reasonable manner based on the plain language of the claims and also in light of the invention's detailed description and drawings, [and]…where it is difficult to fully understand the inventive features from the claim language alone, other disclosures of the specification, including the drawings, should be considered to determine the technical features of the invention." Further, the Court noted the purpose of the claimed invention, the method of the claimed element in achieving the purpose, and the effect of the claimed invention in defining the technical meaning of the claimed element. Thus, the Supreme Court now appears to require an objective/reasonable interpretation of the claims based on the detailed description and drawings, and a clear understanding of the claimed "technical features" in view of the purpose and effect of the invention, beyond the simple ordinary meaning of the claim language.
|
|
|
|
Going forward, the present ruling will make it easier for patentees to defend against validity attacks.
|
|
|
|
|
|
Back to Main Page
|
|
|
|
|
|
For more information, please visit our website:
|
|
|
|
|
|
|
|