선택발명인 거울상 이성질체 발명의 신규성 판단

Abstract

This paper suggests better jurisprudence on novelty determination of an enantiomer

invention, which is a type of selection invention. For the suggestion, it first crafts an

upgraded definition of a selection invention and then analyzes standards of novelty

determination of selection invention and enantiomer invention in the U.S.A, Europe,

Japan and Korea. Based on such analysis, this paper proclaims new standards of

novelty determination of enantiomer invention as follows: (1) express disclosure

requirement must be case-by-case determined on whether resolution method from

racemate to enantiomer at issue was specifically disclosed; (2) enabling requirement

of prior art must be separately and additionally determined; (3) in determining

express disclosure requirement, the concept of skilled person must not be applied and

only single prior must be compared; and (4) determination of enabling requirement

must be based on the skilled person's own knowledge. As a conclusion, this paper

claims that such law which fundamentally denies novelty of an enantiomer invention

is not appropriate and that we should induce relevant research and development

activities by establishing a proper inventive step standard.