침해소송법원에서 진보성의 심리·판단 가능 여부

Abstract

This article discusses the Supreme Court's 2010da95390 en banc decision decided on January 19, 2012, regarding the issue of whether to deal with non-obviousness in the infringement court. Because Korean Patent Act § 133(3) provides that a patent may be invalidated only by decision of the Korean Intellectual Property Tribunal, in principle the infringement court cannot invalidate a patent even when causes of invalidation are found in the course of litigation. However, if this principle is applied overly rigidly, it may lead to an absurd situation where the infringement court should ensure the patent right for a patent not worthy of protection. To avoid this, the infringement court should wait until the decision of the Tribunal is confirmed; however it wrongly makes the alleged infringer endure disadvantages in business connection, as well as causing disadvantages to both parties and the court due to the delay. Many theories have been suggested to overcome these problems, and the Supreme Court have adopted some of these theories by consistently holding that the infringement court should deal with novelty and lack of description, resulting in little dispute. However, there have been conflicting decisions of the Supreme Court regarding non-obviousness, arousing controversy over the Supreme Court's view; so there was a strong demand that such issues be decided by en banc decision and clarifying the court's position. Accordingly, this case terminated the dispute by holding that injunction or damage claim grounded on a patent to be certainly invalidated due to lack of non-obviousness should be denied; a decision decided by adopting abuse of a right theory and based on the aim of Patent Act, public interest relating to the patent system, substantial justice and balance between parties. This case has a significant meaning in that it provides theoretical and political grounds for the direction of our patent litigation system. Through the advanced patent litigation system established by this case, the international competitiveness of our courts within recent globalized patent disputes is expected to be enhanced.