Comparison of the First Requirement of the Doctrine of Equivalents Between Korea and Japan
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Comparison of the First Requirement of the Doctrine of Equivalents Between Korea and Japan Daehwan Koo
Published online: 15 March 2013 © Max Planck Institute for Intellectual Property and Competition Law, Munich 2013
Abstract In 2000, the Supreme Court of Korea issued the first judgment providing five requirements for applying the doctrine of equivalents to patented and allegedly infringing devices and processes. Since then, it started to interpret the first requirement of the doctrine of equivalents, namely the “identity of the problemsolving principle of the two inventions,” to mean that “the difference does not pertain to an essential part of the patented invention,” which was set forth by the Supreme Court of Japan in the Ball Spline decision. The purpose of this article is to examine whether the first requirement of the doctrine of equivalents rendered by the Supreme Court of Korea and that by the Supreme Court of Japan can be considered the same on the basis of its interpretation by the Supreme Court of Korea. To this end, the article provides a general introduction to the doctrine of equivalents in Korea and that in Japan and investigates the meanings of the key terms employed in the first requirement in Korea and that in Japan, such as “technical idea,” “problemsolving principle,” “essential part,” and “identity of the problem-solving principle.” Equating the first requirement of the doctrine of equivalents by the Supreme Court of Korea with that by the Supreme Court of Japan is theoretically inappropriate in that the Supreme Court of Korea applies the doctrine of equivalents even after verifying the interchange of an “essential part” of a patented invention. In practice, however, the Supreme Court of Korea still considers the other requirements of the doctrine of equivalents even after verifying this interchange. Keywords Supreme Court of Korea · Supreme Court of Japan · Doctrine of equivalents · Technical idea · Problem-solving principle · Essential part · Ball Spline case D. Koo (&) Ph.D.; Professor Law School, University of Seoul, 163 Siripdaero (90 Jeonnong-dong), Dongdaemun-gu, Seoul 130-743, Korea e-mail: [email protected]
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Comparison of the First Requirement of the Doctrine of Equivalents
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1 Introduction In Bayer AG v. Union Quimico Farmaceutica S.A. (97hu2200) (2000),1 the Supreme Court of Korea issued the first judgment providing five requirements for applying the doctrine of equivalents,2 and in 2007hu3806 (2009),3 it started to interpret the first requirement of the doctrine of equivalents, namely the “identity of the problemsolving principle of the two inventions,” to mean that the difference does not pertain to an essential part of the patented invention. The first requirement of the doctrine of equivalents rendered by the Supreme Court of Japan is that the difference pertains to a nonessential part of the patented invention. This interpretation of the first requirement by the Supreme Court of Korea is not problematic as long as there is no difference in this requirement between the two
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