특허법상 실시행위에 수출 추가의 필요성

Abstract

It seems that export of patent infringing products was not included in the list of infringing acts because it was considered to be able to regulate export by controlling the other infringing acts, such as manufacture or assignment. However, assignment of a product generally means transferring ownership of the product to another person. Thus, the assignment of patent infringing products does not necessarily occur in Korea where the patent infringing products are exported. It is true that exports are made for the purpose of assignments, but assignments do not always occur in Korea where patent infringing products are exported. The principle of territoriality does not prohibit to regulate export of patent infringing products as patent infringing acts since it is not intended to extend the effect of Korean patent rights to acts abroad. This is also supported by the fact that other intellectual property laws such as the Design Protection Act and the Trademark Act already regulate export of infringing products. Previous studies argued that there was no need to add export to patent infringing acts. However, it is necessary to consider adding export to the list of patent infringing acts since that argument could be refuted as follows. First, it is necessary to harmonize patent law with other intellectual property laws that include export in the list of infringing acts, such as Design Protection Act, Trademark Act. Second, although adding export to the patent infringement activities does not affect the border measures, it is necessary to provide a substantive legal basis in the Patent Act for the export prohibition under the Customs Act and the Act on The Investigation of Unfair International Trade Practices and Remedy Against Injury to Industry. Third, it is necessary to prevent the exporting entity from doing so where the manufacturing entity and the exporting entity are different. Fourth, it is not clear whether domestic assignment occur in the pre-export stage, so it is difficult to conclude that export can be regulated by prohibiting the act of assignment. Fifth, preventing export of patent infringing products would be beneficial to domestic companies. For example, where the patentee and the infringer compete abroad by manufacturing and exporting the patented product and the infringing product in Korea, respectively, prohibiting export of the infringing product can be an important remedy for the patentee. The Korea Trade Commission investigation cases show that there is a demand from patentees for a ban on the export of patent infringing products. It is also necessary to consider adding possession for the purpose of export to the list of infringing acts in order to ensure effective regulation of exports.