신규성 상실의 예외와 관련된 자유실시디자인의 의미에 대한 고찰

Abstract

The recently sentenced Patent Court decision 2020Heo5412 on May 7, 2021 (hereinafter referred to as the “the subject decision”) ruled that the design subject to confirmation is a freely practiced design based on the publicly known design with the exception to lack of novelty in a trial to confirm scope of a design right. Accordingly, the subject decision suggested an important topic on how to interpret the meaning of a freely practiced design in relation to the exception to lack of novelty. However, I don't think the interpretation theory of the subject decision is valid. If a person eligible for design registration has received design registration due to the exception to lack of novelty, the publicly known design, which is the basis, cannot be regarded as being in the area of a freely practiced design. In other words, since the publicly known design should be recognized as a non-free publicly known design belonging to the exclusive practiced design area of the design right holder, it is not reasonable to judge that the design subject to confirmation corresponds to a freely practiced design based on that case. For a registered design with the exception to lack of novelty, it is reasonable to deny the defense of a freely practiced design based on such publicly known design by not considering the validity of such registered design. This interpretation is also reasonable in light of international interpretation theories such as the defense of an existing technology in China and the defense of a freely practiced design in Japan, etc. Considering the fundamental meaning and purpose of free implementation design, it can be seen that a freely practiced design was introduced as roundabout means for such defense in a defender because the invalidation of a design right and abuse of right cannot be claimed in the trial to confirm scope of design right. Therefore, it is not desirable to decide that it is a freely practiced design by formally comparing only the publicly known design and the design subject to confirmation in excluding all relevance to the registered design. It is not desirable to neutralize legal regulations by interpreting a freely practiced design being a theory that is limitedly recognized in judicial precedence and applying it before exception to lack of novelty recognized under the Design Protection Act. Therefore, in the application of a free implementation design, a decision should be made in consideration of whether exception to lack of novelty are recognized. The Design Protection Act has provisions that protect legitimate rights holders. Therefore, it is not reasonable to easily recognize the defense of a freely practiced design by comparing only the publicly known design registered by the legitimate right holder in recognition of exception to lack of novelty and the design subject to confirmation. And it will neutralize the design right of the legitimate right holder.