방법의 발명과 특허권 소진

Abstract

The doctrine of patent exhaustion is one of the typical law principles in the patent system which has been formed over time through case precedents and doctrines to solve problems caused by mechanically applying the patent law. Conceptually, the doctrine of patent exhaustion may become a problem in most cases where patented products are distributed by the patent holders. Thus, the scope of application is extensive and a variety of issues related to the limitation of the doctrine of patent exhaustion have been discussed for a long period of time. Furthermore, with the rapid development of science and technology, various types of patented products are emerging and their transactions are increasingly becoming more complex. Accordingly, the areas in which the patent exhaustion doctrine is discussed are rapidly expanding in the context of the patent system. Although there have been a few lower court decisions holding that a method patent may be exhausted in certain circumstances, there has been no Supreme Court decision squarely dealing with the doctrine of patent exhaustion in Korea. But the Supreme Court of Korea has received a great deal of attention following its recent decision on the requirements and rationals of the patent exhaustion, and the exhaustion of method patent claims. A patented method may not be sold in the same way as is an article or device, but methods nonetheless may be “embodied” in a product. The indiscriminate exclusion of method patents from the subject of the patent exhaustion would seriously undermine the essence of the patent exhaustion doctrine, because patent holders seeking to avoid patent exhaustion could simply draft their patent claims to describe a method rather than a product or an apparatus. For this reason, the Supreme Court of Korea clearly held that the sale of an item that substantially embodies the method invention can exhaust the method patent. Moreover, the Court held that determining whether the product “substantially embodies” a method patent or not must be made by comprehensively considering: (a) whether the product has no reasonable non-infringing use other than to practice a patent; (b) whether it has the core of the technological idea on which the peculiar solution of the invention is based; and (c) the proportion of the process whose operation is enabled through the product in the entire process of a method patent. I think this decision is of great significance because it cleared patent rights may be exhausted even in method patent claims and held the requirements and the specific criteria of patent exhaustion.