방법발명의 특허권 소진에 관한 비판적 고찰

Abstract

As to things invented, the legal doctrine on patent exhaustion is applicable according to which a patent holder can no longer exercise rights to a patented invention where the patent is legally transferred. However, there has been controversy as to whether the foregoing legal doctrine on patent exhaustion is likewise applicable to a method invention. In the U.S. Supreme Court’s 2008 decision regarding the Quanta Computer vs. LG Electronics case, the Court affirmed that the patent of method inventions have been exhausted, which later became a general view. In 2019, the Supreme Court of Korea also affirmed the patent exhaustion of method inventions by presenting a relatively detailed rationale. However, even in cases of the transfer of a thing that is closely related to practicing a method invention, a patented invention is distinguished from a thing and no special provisions exist under the Patent Act of Korea that restricts the exercise of right as to a method invention. Therefore, deeming that the patent right of a method invention per se becomes exhausted upon the transfer of a thing is problematic. Opinions or judicial precedents affirming the legal doctrine on patent exhaustion are grounded on transactional safety and prevention of double gain, and avoidance of exhaustion according to the method of claim construction. However, constituting double gain is improbable inasmuch as the transfer of a thing and the practice of a method invention are distinctive, and concerns over avoidance of exhaustion is one of the methods of claim constitution that the Korean patent law recognizes. Moreover, given that the issue of transactional safety may be dealt with by way of implicit license rather than patent right exhaustion, regarding the same as the basis for patent exhaustion is difficult. In view of the existence of relevant provisions under the Patent Act, judgment based on the party’s reasonable interpretation, possibility of recognizing exceptions in a specific situation, likelihood of regulation pursuant to the Monopoly Regulation and Fair Trade Act against a patent holder’s excessive claim, etc., deeming that the patent exhaustion of a method invention is not recognized while implied license is granted would be reasonable. Furthermore, it would be tenable to construe that practicing a method invention is permissible, as a matter of principle, if based on an implied license, while the same is restricted in exceptional cases upon the existence of an explicit agreement or the indication of details on the limitation of transfer of a thing.