Open Decision Ledger · IP, data & telecommunications
Working a product invention and the description requirement
Supreme Court, Oct. 25, 2018, 2016Hu601 (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
For an invention of a product, what does working the invention mean under Article 42(3) of the former Patent Act, and when does a description meet the requirement of that provision?
Holding
Working an invention of a product means acts such as producing or using the item. The description requirement of Article 42(3) of the former Patent Act is met where a person skilled in the art, at the level of technology at the filing date, can produce the item itself and use it from what the description states, without adding undue experiment or special knowledge, and can sufficiently predict the effect of the invention even where that is not proved by concrete experiments. Applying that rule, the Supreme Court held that the absence of human clinical trial results, of direct therapeutic effect on the target diseases, or of comparative experiments with a single-polymer preparation did not defeat the requirement, and reversed the judgment below.
Points at issue, verbatim
구 특허법 제42조 제3항의 규정 취지 / ‘물건의 발명’에서 발명 ‘실시’의 의미 및 위 조항에서 정한 기재요건을 충족하는 경우
Unofficial English translation
The purport of the provision of Article 42 paragraph (3) of the former Patent Act / Meaning of the "working" of the invention in "an invention of a product" and cases where the description requirements set forth in the said provision are satisfied
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
물건의 발명에서 통상의 기술자가 특허출원 당시의 기술수준으로 보아 과도한 실험이나 특수한 지식을 부가하지 않고서도 발명의 상세한 설명에 기재된 사항에 의하여 물건 자체를 생산하고 이를 사용할 수 있고, 구체적인 실험 등으로 증명이 되어 있지 않더라도
Unofficial English translation
In an invention of a product, a person having ordinary skill in the art, in light of the level of technology at the time of filing of the patent application, can produce the product itself and use it by the matters described in the detailed description of the invention without undue experimentation or adding special knowledge, and even if it is not proven by specific experiments or the like,
Factors
- 구 특허법 제42조 제3항의 규정 취지
- ‘물건의 발명’에서 발명 ‘실시’의 의미 및 위 조항에서 정한 기재요건을 충족하는 경우
Unofficial English translation
• The purport of the provision of Article 42 paragraph (3) of the former Patent Act
• Meaning of the "working" of the invention in "an invention of a product" and cases where the description requirements set forth in the said provision are satisfied
Relation to precedent
Follows earlier decisions Stated in the decision
대법원 2011. 10. 13. 선고 2010후2582 판결, 대법원 2015. 9. 24. 선고 2013후525 판결 등 참조
Unofficial English translation
See Supreme Court Decision 2010Hu2582 decided October 13, 2011, Supreme Court Decision 2013Hu525 decided September 24, 2015, etc.
Decisions referred to
대법원 2011. 10. 13. 선고 2010후2582 판결(공2011하, 2381), 대법원 2015. 9. 24. 선고 2013후525 판결(공2015하, 1626), 대법원 2016. 5. 26. 선고 2014후2061 판결(공2016하, 893), 대법원 2016. 12. 29. 선고 2014후1747 판결
Burden of proof
Not addressed Not in the decision
Open question and revisit condition
How close must the predicted human plasma concentration be to the rabbit data before the effect is regarded as sufficiently predictable at the filing-date level?
The remand judgment of the Patent Court, once it re-examines the description on the record, will show how the rule is applied to the dependent claims. Any amendment to Article 42(3) of the Patent Act, or a later Supreme Court decision that qualifies the prediction from animal experiments, would require this entry to be read again.
Cross-family AI independent reading & axis check
8 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 all 8 axes.
Raw 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 4 February 2016 (2014Heo3590), held that a person skilled in the art could not accurately understand, from the time and concentration data alone and without adding undue experiment or special knowledge, that the amended claim 1 produced a long-term therapeutic effect on the target diseases. It therefore held that the amended claim 1, and the amended claims 3 to 5 and 7 to 13 which cite it directly or indirectly, lacked the requirement of Article 42(3) of the former Patent Act, so that their registrations had to be declared invalid.
Supreme Court standard: The Supreme Court held that the court below had misapprehended the law on the description requirement of Article 42(3) of the former Patent Act, and that this affected the outcome. In its view the specification gave the PLGA molecular weight ranges, structure and intrinsic viscosity with examples of suitable polymers, and Examples 1 to 10 showed sustained release of octreotide for 89 days within a stable range, so a skilled person could produce and use the preparation and could predict the effect in humans. It therefore reversed the whole judgment and remanded the case to the Patent Court for rehearing, the participating Justices being unanimous.
Distinguishing conditions
- A case in which a person skilled in the art cannot produce the item and use it from the description without adding undue experiment or special knowledge, which the Court treated as the point at which the requirement fails.
- A case in which the effect of the invention cannot be sufficiently predicted at the level of technology at the filing date, even though the item can be produced.
- An invention that is not an invention of a product, since the Court defined working by reference to acts such as producing or using the item.
Record verification notes
Fix the priority date first, because the whole test is measured at the level of technology at the filing date. Then set the time and concentration data of Examples 1 to 10 against the sustained release period the claims require, here over three months, and check the dosing adjustment the Court relied on for the low concentrations in the first two days. The Court listed four earlier decisions as referred to, and none is marked as changed, so read this entry against them before relying on it.
From the official text
Points at issue
구 특허법 제42조 제3항의 규정 취지 / ‘물건의 발명’에서 발명 ‘실시’의 의미 및 위 조항에서 정한 기재요건을 충족하는 경우
Unofficial English translation
The purport of the provision of Article 42 paragraph (3) of the former Patent Act / Meaning of the "working" of the invention in "an invention of a product" and cases where the description requirements set forth in the said provision are satisfied
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
구 특허법(2007. 1. 3. 법률 제8197호로 개정되기 전의 것) 제42조 제3항
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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