Claim
5
To form a metal panel in which a filing member is to
be filled between a front plate and a rear plate which are made of a colored
steel sheet, a method of forming a continuous metal panel comprising:
continuously forming said front plate and rear plate having a certain width, in
a lengthwise direction; forming caulking grooves having a narrow width to be in
equal intervals in a lengthwise direction to said front plate; forming a
connection groove portion and a connection projection portion respectively by
bending upper and bottom portions of said front and rear plates; installing a
cover so that said caulking grooves may be sealed with an outside; stiffening in
a manner to fill a filing member between said front and rear plates; and
loading said panel by cutting into a necessary length for use
Claim 6
The continuous metal panel
as claimed in claim 5, produced by use of an insulator in which a filing member
is selected from a polyurethane foam (PU), a glass wool board (G/W), a mineral
wool board, a rock wool board (R/W),
a styrofoam board (EPS), a polyester foam board or a plastic insulation board
‘A discrepancy of an inventive
category between an independent claim and a dependent claim’
□
Argument of Plaintiff
A. An invention subject to confirmation appertains
to the scope of right of claim 5 invention regarding the subject case.
B. An invention of claim 6 regarding the subject
case is a product invention; whereas, the invention subject to confirmation is
a manufacturing method invention. In this regard, a category of an invention is
specified differently such that an inter-comparison cannot be realized. Hence,
a claimed matter of the trial to confirm the scope of right by the defendant,
with respect to the invention of claim 6, should have been dismissed as being
unlawful.
C. Even if, the category of invention as for the
invention of claim 6 of the subject case holds an ambiguous description such
that the scope is not recognized, for which protection is sought, in such a
case, it is impossible to inter-compare the invention described in claim 6 and
the invention subject to confirmation. Hence, a claimed matter of the trial to
confirm the scope of right by the defendant with respect to the invention of
claim 6, should have been dismissed as being unlawful. Further, the
aforementioned ambiguous description is just a matter to be examined on an
additional invalidation trial.
D. The invention described in claim 6 of the subject
case is interpreted clearly as a product invention. Further, even if
‘…continuous metal penal’ described in the end of the scope of claims is a typographical error of ‘…a method of forming a continuous metal penal’, a
skilled artisan can readily appreciate the scope of claims by reference to the
detailed description of the invention and the drawings, so the scope for which
protection is sought, can thus be specified.
E. Moreover, if the invention of claim 6 regarding
the subject case is interpreted as a method of forming a continuous metal penal,
the invention subject to confirmation furnishes all constituents same as or
equivalent to those of the invention of claim 6 regarding the subject case, it
thus pertains to the scope of right of claim 6 invention regarding the subject
case.
F. Therefore, the trial decision of the subject case
being concluded differently from above should be canceled since it is unfair.
□
Issue
① Whether a claim for a
trial to confirm the scope of right is available or not, by taking into account
another invention in a different inventive category from the patent invention
as an invention subject to confirmation
② Whether, in cases where
there is an ambiguous description in the scope of claims of the patent
invention such that the scope of right cannot be specified, a claim for a trial
to confirm the scope of right becomes illegitimate
□
Gist of Decision
①
Whether it is possible to claim a trial to confirm
the scope of right by taking into account another invention in a different
inventive category from the patent invention, as the invention subject to
confirmation -> Possible
According to Articles 94, 2 of the Patent law, in
cases where a patent invention is a product invention, a patentee has the
exclusive right for acts of manufacturing, using, assigning, leasing,
importing, or offering for assigning or leasing (including displaying for the
purpose of assignment or lease) the product commercially or industrially.
Therefore, inside the scope of right of the product invention, not only the
product but also the inventions as regards a manufacturing method and a usage method
which are related with the product shall be regarded as being included.
Thus, in such a trial to confirm the scope of right
as to confirm the scope of patent invention for which protection is sought
(i.e., the scope to which the effects of patent right extend), it is obviously
possible to confirm whether an invention of a process subject to confirmation
pertains to the scope of patent invention, which is a product invention, for
which protection is sought. More specifically, it is possible to
determine sufficiently whether or not the scope of right falls within the
another scope of right by comparing both inventions, in a manner that examines
whether a product related to a process invention subject to confirmation (in cases
of an invention regarding a manufacturing method, a product produced by the
manufacturing method, or the like), includes all constitutions of the product
of the patent invention. Therefore, based on the grounds that the
patent invention of the subject case and the invention for which confirmation
is sought are in different categories, it cannot be determined that the claim
for trial to confirm the scope of right should be dismissed as being illegitimate.
② Whether a claim for a
trial to confirm the scope of right becomes illegitimate in cases where the
scope of right is not specified due to the ambiguous descriptions of the scope
of claims regarding the patent invention -> Determination available
A
trial to confirm the scope of patent right is to specifically confirm the scope
where the effects of the right extend, in relation with the invention subject
to confirmation. In regards to the specific confirmation, under a premise that
the scope of patent invention is being recognized, there are included a
confirmation by which the recognized scope of right is compared to the
invention subject to confirmation so as to identify whether or not the effects
of the patent right apply, as well as another confirmation whether the effects of the subject patent right do not reach
to the invention for which confirmation is sought because the scope of patent
invention for which protection is sought itself is not fundamentally
recognized.
Furthermore,
in cases where the technical scope of the invention itself cannot be specified because
a part of the constituents of the invention is abstractive or obscure at the
time of filing even given the description of the scope of claims and the
detailed description of the invention and the description of the drawings
regarding the patent invention, it is difficult to judge ‘being applied/not being
applied’ through a specific constitutional comparison with the invention for
which confirmation is sought. However, this is a case in which there is no
recognized the scope of the patent invention for which protection is sought
thus the effects of the patent right are not extended to the invention for
which confirmation is sought. As examined above, it is a form to confirm the
scope of right, which is obviously predetermined by the trial to confirm the
scope of right. Hence, it cannot be deemed that the claim for trial to confirm
the scope of right with respect to the corresponding patent invention becomes
unlawful because of the circumstance wherein the technical scope of the patent
invention cannot be specified. Such a legal principle shall be identically
applied so long as the technical scope for which protection is sought cannot be
specified either, which is resultant from cases where an inventive category is
ambiguous as well.
③
Whether a claim for a trial to confirm the scope of
right becomes illegitimate in cases where the scope of right cannot be
specified due to the ambiguous description of the scope of claims regarding the
patent invention or not -> Determination
available
The
invention described in claim 6 of the subject case, may be interpreted as a
product invention that is so-called process limitation that limits a product
invention, in that the scope of claim is ‘…as claimed in claim 5, the
continuous metal panel produced by use of an insulator in which a filing member
is selected from a polyurethane foam
(PU), a glass wool board (G/W)…’ and its end demonstrates ‘continuous metal
panel’ being a product invention and that there is description ‘produced by use
of…’ just in front thereof, thereby somewhat corresponding to a manufacturing
method. By the way, putting together the following, ‘continuous metal panel’
described in the end of the scope of claims with respect to the invention
described in claim 6 of the subject case, may be regarded sufficiently as a
typographical error of ‘a method of forming a continuous metal panel’.
(Omitted)
Putting
together above, the invention of claim 6 of the subject case may be deemed to
claim ‘continuous metal panel’ which is a product invention being a process
limitation, or to omit ‘a forming method’ erroneously while trying to claim ‘a
method of forming a continuous metal panel’ which is another manufacturing
method invention in a different category therefrom (it is difficult to regard
it even as an explicit typographical error). Consequentially, the scope of claims is not described explicitly
such that the technical scope cannot be specified, therefore, the scope of
right is not recognized.
5.
Conclusion
□
Notice the description of the scope of claims
-
If the scope of claims is described unclearly, a
risk may occur in which the scope of right may be denied.
- The invention of claim 5 of the subject case and
the invention for which confirmation is sought underwent the judgment whether
the scope of right is included through a specific technical constitutional
comparison as below.
|
Item
|
Technical Constitution
|
Comparison Result
|
|
Preamble
|
To
form a metal panel in which a filing member is filled between a front plate
and a rear plate which are made of a colored steel sheet
|
No difference
|
|
Constitution 1
|
continuously forming said front· rear plates having a certain width, in a lengthwise
direction
|
No difference
|
|
Constitution 2
|
forming
caulking grooves having a narrow width to be in equal intervals in a
lengthwise direction to said front plate
|
No difference
|
|
Constitution 3
|
forming
a connection groove portion and a connection projection portion respectively
by bending upper and bottom portions of said front and rear plates
|
No difference
|
|
Constitution 4
|
installing a cover so that said caulking grooves may be sealed with an outside
|
Different
|
|
Constitution 5
|
stiffening in a manner to fill a filing member
between said front and rear plates
|
No difference
|
|
Constitution 6
|
loading said panel by cutting into a necessary
length for use
|
No difference
|
-
However, with respect to the invention described in claim 6, just because the
scope of claims is not clearly described, a judgment was made without a
comparison for a technical constitution, whereby it does not appertain to the
scope of right.
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