소프트웨어 특허대상성 논의의 역사적 전개와 한국에서의 시사점

Abstract

The issue of patent eligibility has been a topic for debate in the U.S., Europe and Korea starting from the 1970s, which witnessed the development of the software industry. The core of debate lies in the applicability and usefulness of the rule of “hardware-tied or physical transformation”, which has served as the rule for patent eligibility since before industrialization. In the U.S, the controversy started with mental steps jurisprudence, which denied the patent eligibility of software. The U.S. Supreme Court struggled with this problem in its opinion on Benson, Flook, Diehr and partially accommodated the patent eligibility of software in the 1970s. The U.S. Court of Appeals for the Federal Circuit changed software patent eligibility as a problem of skills in drawing up patent claims by adopting “useful, concrete, and tangible results” as the standard for cases like State St. Bank & Trust Co. v. Signature Fin. Grp. The Bilski v. Kappos opinion of the U.S. Supreme Court in 2010 aimed to reverse this by-passing trend in patent eligibility, but the intrinsic goal of the opinion lies at stopping broad re-emergence of judicial exceptions such as laws of nature, natural phenomena, abstract ideas, and to warn against the “hardware-tied or physical transformation” rule gaining the status of an absolute rule. After Bilski, the USPTO and lower courts have applied similar standards stating that patent eligibility of software requires more than citing general purpose computers in patent claims but that the core role of patent eligibility of software lies in restricting over-broad patent grants by allowing abstract claims. The European Patent Office took cautious steps to interpret the Convention on the Grant of European Patents, which generally excludes software as a subject for patents but allowed exceptions in such decisions as Vicom, IBM before entering the 2000s by requiring “further technical effect”. However, after the 2000s it has changed its attitude to acknowledge patent eligibility of software even with claims citing general computers in Hitachi, Microsoft, etc. It now shows a stance focused more on the substantive inventive step review when granting patents against software patent claims. Contrary to the U.S. and Europe, Korea defines patent eligible invention as “technological creative arts using natural laws”, showing the influence of introducing Japanese law in the area of patent law. Court opinions have been cautious to recognize the patent eligibility of software under the influence of negative theories. After the mid-1990s, the Korea Patent Office has taken a more acceptive attitude toward software patents by adopting positive guidances. However, guidances and court opinions which confirm guidances stress too much hardware-tied aspects or organic composition of software and hardware and enlarge review of software eligibility with written description requirement in claims. This attitude expands the role of patent eligibility in software patents over other requirements for patent granting. Therefore, there is a need to establish a proper role and review standard for patent eligibility in regard to software patents.