IP Newsletter | Spring/Summer 2017
	PATENT
	Korean Supreme Court Reverses 12-year Precedent: Technology Described as Background or in a Claim Preamble is Not Necessarily Prior Art
	On January 19, 2017, in an en banc decision,1 the Korean Supreme Court ruled in a review of a patent invalidation trial that the mere fact that technology is described in the patent specification as background technology or in a claim preamble does not automatically mean that such technology was prior art disclosed to the public prior to the filing date of the patent. This ruling affirmed the previous Patent Court decision.2
	Background
	A patent claim that recites a preamble, and identifies one or more inventive elements as a point of novelty distinguishable over the content of the preamble, is often referred to as a "Jepson-type" claim. Further, patent specifications usually include a description of the background technology in the invention field. In Korea, courts and examiners have often treated the subject matter described in a claim preamble or in the specification as admitted prior art. An earlier Supreme Court decision3 supported this interpretation.
	Case Details
	In the present case, in response to a preliminary rejection for lack of inventiveness, the patent applicant amended the subject claim during prosecution into a Jepson-type claim. The applicant submitted the amendment together with an opinion stating that the elements described in the preamble were prior art. However, it appears the applicant mistakenly believed that the background technology described in the patent was already known to the public.
	The Supreme Court held that the presumption that technology described in a claim preamble or as background in the specification is prior art should only apply in limited cases, e.g., where it is clear from the specification and prosecution history as a whole that the description was intended to describe the prior art. Further, the Court held that if the applicant presents evidence that the description as prior art was made in error, the presumption can be rebutted.
	Accordingly, the Court reversed its earlier precedent.
	Significance / Potential Impact
	As a result of the new Supreme Court decision, certain confusing practices in patent and utility model examinations have now been resolved. Also, a new claim interpretation principle has been established – technology described as background in a patent specification or in a claim preamble is not necessarily prior art to the claimed invention.
	1 Supreme Court en banc Decision 2013Hu37
	2 Patent Court Decision 2012Heo7123
	3 Supreme Court Decision 2004Hu2031, December 23, 2005
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