특허법 상 자료제출명령에 대한 검토

Abstract

This article provides some perspectives of interpretation and suggestions of renovation for Art. 132 of Patent Act, which has been recently amended and come into force as of 30 June 2016. This paper reviews the history of Art. 132 and finds its status as a special rule of Civil Procedure Act. As Art. 132 principally preempts the ‘trade secret immunity’ in discovery process, it is essential to establish reasonable rule to balance party’s interest and keep procedural pertinence in submission order. This article proposes five practical elements to be considered for said order. With respect to the legal effect of defendant’s non-submission, the courts need to be more prudent in imposing statutory demerit of regarding plaintiff’s assertion true as such(Art. 132 (3)). This article reasons aforementioned norm and reviews practice of courts in Korea and Japan on that issue. For the third party in the litigation, the rule to oblige document submission stems from Civil Procedure Act(Art. 344), other than Patent Act(Art. 132). According to Art. 344 of Civil Procedure Act, the party may object submission order for its trade secret. Hence, the reasonable standard to estimate pertinence of this objection shall be provided. As Art. 132(3) mandates even parties to submit documents regardless of its nature of trade secret, the ‘Attorney’s Privilege Rule’ of Civil Procedure Act, which immunizes the attorney from coercive disclosure of client’s trade secret, may conflict with said Art 132(3). This author provides an aspect on that issue and presents possible interpretation of law. As for the renovation of Art. 132, this article suggests amendment to, expand court’s capability of discretion to protect trade secret in documentary submission order; allow parties to participate in In Camera procedure under certain conditions; facilitate the defendant with counter claim to seek for submission order against plaintiff in order to collect evidence of patent invalidity or non-infringement; oblige the defendant arguing infringement to disclose its actual form of implementation.