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A Study on Determining Nonobviousness Reflecting on Secondary Considerations : Transocean Offshore Deepwater Drilling vs Maersk Drilling USA

  • DONG-A LAW REVIEW
  • 2014, (62), pp.559-589
  • Publisher : The Institute for Legal Studies Dong-A University
  • Research Area : Social Science > Law

Jun, Yong Cheul 1

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ABSTRACT

In order to retain objectivity in determining an inventive step as an essential requirement for patentability, comparisons between the claimed invention and the teaching of the prior art have practically been made based on technical features. However, determining an inventive step by only considering technical features may increase the danger of hindsight since a person having ordinary skill in the art exposed to advanced technology after the filing date of the application may determine an inventive step after he or she grasps and understands the teachings of the prior art. In determining an inventive step, secondary considerations of non-technical features, such as commercial success, industry praise, unexpected results, copying, industry skepticism, licensing, a long-felt but unsolved need, and the like, are usefully taken to understand the genuine scope of the invention by reducing the danger of hindsight. Compared to the United States, it appears that South Korea is significantly more reluctant to reflect secondary considerations in determining an inventive step of an invention. In order to expand the object and scope of protecting industrially meaningful inventions with patents, while preventing hindsight in determining an inventive step, it is necessary to organize and specify standards for reflecting secondary considerations in determining an inventive step as well as items requiring proof from the patentee through future judgments or rulings. This thesis explores the ruling from the United States Court of Appeals for the Federal Circuit on Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., a case in which an original ruling was overturned after non-obviousness of a patented invention was recognized due to secondary considerations, and analyzes the process of determining an inventive step reflecting secondary considerations. The ruling from the United States Court of Appeals for the Federal Circuit on Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc. may be used as a reference to prepare standards for reflecting secondary considerations in determining an inventive step.

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