Open Decision Ledger · IP, data & telecommunications
Combining prior inventions to deny inventive step of a freeze-dried antibody formulation
Supreme Court, Dec. 13, 2018, 2016Hu1529 (judgment)
No holding summary · checked against points at issue. The official text publishes no summary of the holding for this decision. The quotation and factors in this record are copied verbatim from the points at issue; the evidence for each axis is taken from the points at issue, the order and the reasons.
Case name: 등록무효(특)
Official text on the National Law Information Center
Question
Where the patentee A, a foreign company, sought a correction trial over claim 1 of the invention titled 'Stable lyophilised pharmaceutical compositions of monoclonal or polyclonal antibodies', did the amended claim 1 lack inventive step under Article 29(2) of the Patent Act because a person with ordinary skill could easily combine the cited prior inventions?
Holding
Yes. Judged against the level of technology, common general knowledge and the basic task in stabilising freeze-dried protein formulations containing antibodies at the priority date, a person with ordinary skill could easily reach the amended claim 1 by referring to prior invention 2 or 4 and adding a surfactant such as polysorbate to the sugar and amino acid of prior invention 1. The amended claim 1 therefore produces no effect markedly beyond what the combination predicts, and its inventive step is negated.
Points at issue, verbatim
통상의 기술자가 용이하게 선행발명들을 결합하여 위 발명에 이를 수 있으므로 제1항 정정발명의 진보성이 부정된다고 한 사례
Unofficial English translation
a person having ordinary skill in the art could easily arrive at the invention by combining the preceding inventions, and accordingly the inventive step of the amended invention of paragraph (1) was denied
Disposition
Reversed and remanded Stated in the decision
원심판결을 파기하고, 사건을 특허법원에 환송한다.
Unofficial English translation
The judgment of the court below is reversed, and the case is remanded to the Patent Court.
Form of the test
Elements stated Stated in the decision
그 인용되는 기술을 조합 또는 결합하면 당해 특허발명에 이를 수 있다는 암시, 동기 등이 선행기술문헌에 제시되어 있거나 그렇지 않더라도 당해 특허발명의 출원 당시의 기술수준, 기술상식, 해당 기술분야의 기본적 과제, 발전경향, 해당 업계의 요구 등에 비추어 보아
Unofficial English translation
where a hint, motivation, or the like that the patented invention can be reached by combining or joining the cited technologies is presented in the prior art documents, or even where it is not, in light of the level of technology as of the filing date of the patented invention, common general knowledge, the fundamental tasks in the relevant technical field, development trends, the demands of the relevant industry, and the like,
Factors
- 위 제1항 정정발명의 우선일 당시의 기술수준
- 기술상식
- 항체를 포함한 동결건조 단백질 제제의 안정화 분야의 기본적 과제 등에 비추어 볼 때
Unofficial English translation
• the level of technology as of the priority date of the amended invention of the aforesaid paragraph (1)
• common general knowledge
• in light of the fundamental tasks in the field of stabilization of freeze-dried protein preparations including antibodies, and the like
Relation to precedent
Follows earlier decisions Stated in the decision
대법원 2007. 9. 6. 선고 2005후3284 판결(공2007하, 1582)
Unofficial English translation
Supreme Court Decision 2005Hu3284 decided September 6, 2007 (Gong 2007 Ha, 1582)
Decisions referred to
[1] 대법원 2007. 9. 6. 선고 2005후3284 판결(공2007하, 1582), 대법원 2009. 10. 29. 선고 2009후1644 판결, 대법원 2010. 9. 9. 선고 2009후1897 판결, 대법원 2013. 7. 25. 선고 2011후1814 판결, 대법원 2014. 5. 16. 선고 2012후115 판결, 대법원 2015. 7. 23. 선고 2013후2620 판결, 대법원 2015. 11. 27. 선고 2013후3326 판결, 대법원 2016. 1. 14. 선고 2015후1447 판결, 대법원 2018. 6. 28. 선고 2016후564 판결
Burden of proof
Not addressed Not in the decision
Open question and revisit condition
When the claim combining a sugar and an amino acid with a surfactant lacks inventive step, how much must a dependent claim's added or limited component differ before its inventive step is established?
The judgment of the Patent Court on remand will show how the inventive step of claims 2, 3 and 8 to 11 was examined once claim 1 was denied it. An amendment to Article 29(2) of the Patent Act, or a later decision among Supreme Court Decision 2015Hu1447 and the other decisions cited, that reads the obviousness test differently would require this entry to be read again.
Cross-family AI independent reading & axis check
7 of 8 axes matched GPT-6 Astra (OpenAI, codex CLI) · 2026-10-25
A reader from another model family (GPT-6 Astra), given the official text but not the primary reading, agreed on 7 of the 8 axes; the readings differed on axis 4 (form of the test).
Axis 4 (Form of the test): Primary “Elements stated” vs Independent “Existing test applied”
The primary reading treats the opinion as stating the general requirements for combining prior art, while the independent reading treats it as applying those criteria to the specific claims, since the opinion contains both elements.
통상의 기술자가 용이하게 선행발명들을 결합하여 위 발명에 이를 수 있으므로 제1항 정정발명의 진보성이 부정된다고 한 사례Raw responses and comparison record: Protocol · Blind readings (JSONL) · Axis comparison (JSONL) · SHA-256 (JSON)
Lower-court contrast & scope of application
Lower-court reading vs. Supreme Court holding
Lower-court context: The Patent Court, in its judgment of 1 July 2016 (2015Heo3955), held that the inventive step of the amended claim 1 was not negated, on the ground that many documents recorded a negative teaching on using a surfactant as a protein stabiliser. On that basis it also held that the inventive step of the amended claims 2, 3 and 8 to 11 was not negated.
Supreme Court standard: The Supreme Court held that this misapprehended the legal principle on inventive step or failed to carry out the necessary examination, and that the error affected the judgment. Prior inventions 2 and 4 clearly disclosed the stabilising mechanism and role of surfactants, prior invention 2 expressly stated the need for polysorbate to reconstitute a lyophilised protein formulation, and improvement of turbidity after reconstitution was a basic task in the field, so no negative teaching deterred the addition. Because claim 1 lacked inventive step, the claims derived from it could not be presumed inventive either, and the judgment was reversed and remanded to the Patent Court.
Distinguishing conditions
- A case in which the cited prior art itself expressly or implicitly suggests or motivates the combination, so that the outcome does not rest on the level of technology and common general knowledge.
- A case in which the combination of prior inventions yields an effect markedly beyond the effect predicted from them, since the Court relied on the absence of such an effect.
- A claim that includes the technical features of the amended claim 1 with components added or limited, whose inventive step the Court said must be examined together with those added or limited components.
Record verification notes
Set each cited prior invention against the amended claim 1 element by element, especially whether it contains a surfactant, and identify the gap the patentee relies on. Then gather what was common general knowledge and a basic task at the priority date, such as FDA reporting requirements for turbidity and visible particles after reconstitution, and what prior inventions 2 and 4 disclosed about surfactants. Finally test for an effect markedly beyond the predicted combination, and keep the assessment of claims 2, 3 and 8 to 11 separate from that of claim 1.
From the official text
Points at issue
[1] 여러 선행기술문헌을 인용하여 특허발명의 진보성을 판단하는 기준 [2] 명칭을 “단클론성 또는 다클론성 항체의 안정한 동결건조 제약학적 조성물”로 하는 특허발명의 특허권자인 갑 외국회사가 특허심판원에 정정심판을 청구한 특허청구범위 제1항 등의 진보성이 문제 된 사안에서, 위 제1항 정정발명의 우선일 당시의 기술수준, 기술상식, 항체를 포함한 동결건조 단백질 제제의 안정화 분야의 기본적 과제 등에 비추어 볼 때 통상의 기술자가 용이하게 선행발명들을 결합하여 위 발명에 이를 수 있으므로 제1항 정정발명의 진보성이 부정된다고 한 사례
Unofficial English translation
[1] The criteria for assessing the inventive step of a patented invention by citing a plurality of prior art documents [2] A case in which, in a matter where the inventive step of paragraph (1) of the claims, among others, of a patent invention entitled "Stable Freeze-Dried Pharmaceutical Composition of Monoclonal or Polyclonal Antibodies" was at issue, the patentee of the patented invention, A, a foreign company, filed a trial for correction before the Patent Trial and Appeal Board; it was held that, in light of the level of technology as of the priority date of the amended invention of the aforesaid paragraph (1), common general knowledge, the fundamental tasks in the field of stabilization of freeze-dried protein preparations including antibodies, and the like, a person having ordinary skill in the art could easily arrive at the invention by combining the preceding inventions, and accordingly the inventive step of the amended invention of paragraph (1) was denied
Summary of the holding
The official text publishes no summary of the holding for this decision. The quotation and factors in this record are copied verbatim from the points at issue; the evidence for each axis is taken from the points at issue, the order and the reasons.
Order
원심판결을 파기하고, 사건을 특허법원에 환송한다.
Unofficial English translation
The judgment of the court below is reversed, and the case is remanded to the Patent Court.
Provisions referred to
[1] 특허법 제29조 제2항 [2] 특허법 제29조 제2항
Read 2026-10-25 · Cross-read 2026-10-25. All quotes matched against the official text. The Chinese-character placeholders the court used for anonymised parties are given in their Korean readings, and parenthetical Chinese-character glosses are omitted.
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