공지예외를 거쳐 등록된 특허의 효력과 자유기술 항변의 충돌 : 서울중앙지방법원 2018.12.13. 선고 2016가합502475판결을 중심으로

Abstract

From the fact that the invention was disclosed before filing a patent application, ‘Grace period exceptions’ and ‘Prior art defense’ give contrary effect to a patentee and a implementer each other. ‘Grace period exceptions’ allows to grant patent despite a disclosure of the invention before filling a pantent application, ‘Prior art defense’ gives an implementer right to use the invention freely because of the disclosure. So, there can be a conflict between them. If a patentee who was granted patent by ‘Grace period exceptions’ claims infringement and a implementer defends by ‘Prior art defense’, should the claim be allowed? Seoul Central District Court 2016Gahap502475 decision deals with it. To figure out, the paper classifies the case into ① an implementer uses the invention before filing a patent application and ② after filing a patent application. Case ②, the practitioner shouldn’t be allowed to use the invention because of the purport of ‘Grace period exceptions’ and the perspective of reward theory. Case ①, the practitioner should be allowed to use the invention because of the theoretical ground(principle of equity) and the legal structural ground(Analogy with Intervening rights and prior user rights), but the implementer should pay license fee to the patentee.