Open Decision Ledger · IP, data & telecommunications
Ex post hindsight in utility model inventive step
Supreme Court, Oct. 15, 2020, 2016Hu2829 (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(실)
Official text on the National Law Information Center
Question
When denying the inventive step of a registered utility model, may the court judge whether the ordinary technician could easily have devised the design ex post, on the premise that the technician knew the technology disclosed in the specification of the design whose inventive step is at issue?
Holding
No. To decide inventive step, the court must examine, in light of the scope and content of the prior art, the difference between the design at issue and that prior art, and the technician's level in the relevant field, whether the design could have been derived therefrom with extreme ease, and it must not judge ex post, on the premise that the technician knew the technology disclosed in the specification of the design at issue. Here the prior designs showed no motivation or suggestion to combine their configurations or contents, and the documents showing magnetic shielding with a shield plate or yoke in electronic components did not make it easy to see that the ordinary technician could readily have applied a shielding magnet integrating a permanent magnet and a yoke to a mobile phone case.
Points at issue, verbatim
선행고안들의 구성이나 내용에는 이들을 결합할 동기나 암시가 나타나 있지 않고, 통상의 기술자가 영구자석과 요크를 일체화한 차폐자석을 휴대폰 케이스에 극히 쉽게 적용할 수 있다고 보기 어려우므로 등록고안의 진보성이 부정되지 않는데도
Unofficial English translation
the configurations or contents of the prior devices do not reveal any motivation or suggestion to combine these, and since it is difficult to regard a person of ordinary skill in the art as being able to extremely easily apply a shielding magnet in which a permanent magnet and a yoke are integrated to a mobile phone case, the inventiveness of the registered device is not denied, nevertheless
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
이 경우 진보성 판단의 대상이 된 고안의 명세서에 개시되어 있는 기술을 알고 있음을 전제로 하여 사후적으로 통상의 기술자가 그 고안을 극히 쉽게 고안할 수 있는지를 판단해서는 안 된다
Unofficial English translation
In such a case, it must not be determined ex post facto whether a person of ordinary skill in the art could extremely easily make that device, on the premise that the person knows the technology disclosed in the specification of the device that was the subject of the inventiveness determination
Factors
- 등록고안의 진보성이 부정된다는 이유로 등록무효심판을 청구하였고, 특허심판원이 이를 인용하는 심결을 한 사안에서
- 등록고안의 청구범위 제1항은 ‘휴대폰의 전면 및 후면, 일측면을 감싸는 형태로 휴대폰에 장착되어 휴대폰의 외관을 보호하는 휴대폰 케이스’와 ‘휴대폰 케이스의 전면부에는 휴대폰에 내장된 홀 아이씨와 대응되는 지점에 영구자석 및 요크를 매개로 구현된 차폐자석이 내장’된 것을 구성으로 하는데
- 선행고안들의 구성이나 내용에는 이들을 결합할 동기나 암시가 나타나 있지 않고
- 통상의 기술자가 영구자석과 요크를 일체화한 차폐자석을 휴대폰 케이스에 극히 쉽게 적용할 수 있다고 보기 어려우므로
Unofficial English translation
• In a case where a trial for invalidation of registration was filed on the ground that the inventiveness of the registered device is denied, and the Intellectual Property Trial and Appeal Board rendered a decision upholding such claim,
• paragraph (1) of the claims of the registered device is composed of 'a mobile phone case mounted on a mobile phone in a form enveloping the front and rear and one side of the mobile phone, thereby protecting the appearance of the mobile phone' and 'a shielding magnet, implemented through a permanent magnet and a yoke, embedded at a point corresponding to a Hall IC built into the mobile phone, in the front portion of the mobile phone case'; however,
• the configurations or contents of the prior devices do not reveal any motivation or suggestion to combine them, and
• since it is difficult to regard a person of ordinary skill in the art as being able to extremely easily apply a shielding magnet in which a permanent magnet and a yoke are integrated to a mobile phone case,
Relation to precedent
Follows earlier decisions Stated in the decision
대법원 2019. 7. 25. 선고 2018후12004 판결(공2019하, 1685)
Unofficial English translation
Supreme Court Decision 2018Hu12004 decided July 25, 2019 (Gong 2019 Ha, 1685)
Decisions referred to
[1] 대법원 2019. 7. 25. 선고 2018후12004 판결(공2019하, 1685)
Burden of proof
Not addressed Not in the decision
Open question and revisit condition
What additional evidence beyond documents showing magnetic shielding with a shield plate or yoke in electronic components would make application of an integrated shielding magnet to a mobile phone case extremely easy?
The Patent Court's judgment on remand will show how the absence of motivation to combine was assessed on the full record, and reading this entry again will be necessary if that judgment is later brought before the Supreme Court. Any amendment to Article 4(2) or Article 31(1) of the Utility Model Act would also require a fresh reading.
Cross-family AI independent reading & axis check
6 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 6 of the 8 axes; the readings differed on axis 4 (form of the test), axis 8 (open question and revisit condition).
Axis 4 (Form of the test): Primary “Elements stated” vs Independent “Existing test applied”
The primary reading records the standard as a general test of requirements, while the independent reading records it as application to the facts. The holding both states the test and applies it to the prior designs, so each reader emphasizes a different side.
통상의 기술자가 영구자석과 요크를 일체화한 차폐자석을 휴대폰 케이스에 극히 쉽게 적용할 수 있다고 보기 어려우므로 등록고안의 진보성이 부정되지 않는데도Axis 8 (Open question and revisit condition): Primary “What additional evidence beyond documents showing magnetic shielding with a shield plate or yoke in electronic components would make application of an integrated shielding magnet to a mobile phone case extremely easy?” vs Independent “What additional evidence of a motivation to combine the prior designs would justify denying inventive step?”
The primary reading asks what evidence beyond shield-plate documents would make application to the phone case extremely easy, while the independent reading asks what evidence of motivation to combine would justify denial.
선행고안들의 구성이나 내용에는 이들을 결합할 동기나 암시가 나타나 있지 않고, 통상의 기술자가 영구자석과 요크를 일체화한 차폐자석을 휴대폰 케이스에 극히 쉽게 적용할 수 있다고 보기 어려우므로 등록고안의 진보성이 부정되지 않는데도Raw 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 18 November 2016 (2016Heo2300), held that the claim of the design at issue was not limited to a configuration in which the front of the phone case is folded behind the rear, so the effect of preventing malfunction arising from that folding could not be treated as an effect of the claimed configuration. It then held that claim 1 and dependent claims 2 to 4 could be derived with extreme ease by combining prior design 4 with prior design 2, and denied their inventive step.
Supreme Court standard: The Supreme Court held that the court below had misapprehended the law on inventive step of a utility model, in a way that affected its decision. The prior designs showed no motivation or suggestion to combine them, and the exhibits recording magnetic shielding in electronic components did not make it easy to see that the ordinary technician could readily have applied an integrated shielding magnet to the phone case, so the inventive step of claim 1 was not denied, and dependent claims 2 to 4 inherited that conclusion. The whole judgment was therefore reversed and the case remanded to the Patent Court, by unanimous opinion of the Justices concerned.
Distinguishing conditions
- A case in which the configuration or content of the prior designs itself shows a motivation or suggestion to combine them, so that the difference can be derived with extreme ease.
- A case in which the court can judge inventive step without assuming that the technician knew the technology disclosed in the specification of the design at issue.
- A case in which the inventive step of the design at claim 1 is denied, since the decision held that dependent claims 2 to 4 are not denied only because claim 1 survives.
Record verification notes
Set each claim against the scope and content of each prior design separately, and ask whether the technical problem solved differs from the one each prior design addressed, since the Court distinguished prior design 4 by its technical problem. Then gather what the other side offers as motivation to combine, such as documents on magnetic shielding in electronic components, and test whether it makes application of an integrated shielding magnet to the phone case extremely easy. Also check which version of Article 4(2) of the Utility Model Act governed the filing.
From the official text
Points at issue
[1] 고안의 진보성이 부정되는지 판단하는 방법 및 이 경우 진보성 판단의 대상이 된 고안의 명세서에 개시되어 있는 기술을 알고 있음을 전제로 사후적으로 통상의 기술자가 쉽게 고안할 수 있는지를 판단할 수 있는지 여부(소극) [2] 갑 주식회사가 명칭을 “홀 아이씨(Hall IC) 구동용 차폐자석이 구비된 휴대폰 케이스”로 하는 등록고안의 실용신안권자인 을을 상대로 등록고안의 진보성이 부정된다는 이유로 등록무효심판을 청구하였고, 특허심판원이 이를 인용하는 심결을 한 사안에서, 등록고안의 청구범위 제1항은 ‘휴대폰의 전면 및 후면, 일측면을 감싸는 형태로 휴대폰에 장착되어 휴대폰의 외관을 보호하는 휴대폰 케이스’와 ‘휴대폰 케이스의 전면부에는 휴대폰에 내장된 홀 아이씨와 대응되는 지점에 영구자석 및 요크를 매개로 구현된 차폐자석이 내장’된 것을 구성으로 하는데, 선행고안들의 구성이나 내용에는 이들을 결합할 동기나 암시가 나타나 있지 않고, 통상의 기술자가 영구자석과 요크를 일체화한 차폐자석을 휴대폰 케이스에 극히 쉽게 적용할 수 있다고 보기 어려우므로 등록고안의 진보성이 부정되지 않는데도, 이와 달리 본 원심판단에 법리오해의 잘못이 있다고 한 사례
Unofficial English translation
[1] Whether the method for determining whether the inventiveness of a device is denied, and whether, in such a case, it may be determined ex post facto that a person of ordinary skill in the art could easily make the device, on the premise that the person knows the technology disclosed in the specification of the device that was the subject of the inventiveness determination (negative) [2] In a case where Company A filed a trial for invalidation of registration against B, the holder of the utility model right to a registered device titled "Mobile Phone Case Equipped with a Shielding Magnet for Driving a Hall IC", on the ground that the inventiveness of the registered device is denied, and the Intellectual Property Trial and Appeal Board rendered a decision upholding such claim, paragraph (1) of the claims of the registered device is composed of 'a mobile phone case mounted on a mobile phone in a form enveloping the front and rear and one side of the mobile phone, thereby protecting the appearance of the mobile phone' and 'a shielding magnet, implemented through a permanent magnet and a yoke, embedded at a point corresponding to a Hall IC built into the mobile phone, in the front portion of the mobile phone case'; the configurations or contents of the prior devices do not reveal any motivation or suggestion to combine them, and since it is difficult to regard a person of ordinary skill in the art as being able to extremely easily apply a shielding magnet in which a permanent magnet and a yoke are integrated to a mobile phone case, the inventiveness of the registered device is not denied; a case in which it was nevertheless held that the determination of the court below in this regard was in error as a misapprehension of legal principles
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] 실용신안법 제4조 제2항 [2] 실용신안법 제4조 제2항, 제31조 제1항
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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