특허소진에 관한 연구 －국내외 사례의 유형별 검토를 중심으로－

Abstract

Although the Doctrine of the Patent Exhaustion has been applied to various cases, there is no solid legalistic foundation for the Doctrine. So, it is necessary to start the study from finding the theoretical basis of the Doctrine. We can classify the issues about the Doctrine into four themes according to the cases of Korea, Japan, and the U.S.A. First, relating to the international exhaustion, it is not clear whether the Parallel Importation is allowed or not. Second, in view of the results of exhaustion, it is a question whether the repairing or exchanging a part constituting parts of invention becomes the direct infringement or not. Third, it is uncertain whether one who supplies infringing purchaser-user-repairer with component of a patented product is a contributory infringer or not. Fourth, there is a controversy on the subject, that is, whether method claims, as a category, are never exhaustible or not. First of all, the Korean lower court ruled that the Parallel Importation is allowed because the Patent exhausts internationally. In Japanese BBS case, based on the theory of the tacit understanding, the Supreme Court of Japan held that the Parallel Importation can be allowed. In the second place, about the question whether the repairing or exchanging a part constituting parts of invention becomes the direct infringement or not, there is no clear case in Korea. However, in the U.S.A. by decisions of the Supreme Court from the year of about 1850, the Doctrine of Repair and Reconstruction was developed. Aro Case is representative of the case about the Doctrine. In addition, in Japan through the courts’ decisions about various cases, two types of methodological approaches, namely Reconstruction Approach and Exhaustion Approach were produced. Moreover, in regard to the problem whether one who supplies infringing purchaseruser-repairer with component of a patented product is a contributory infringer or not, the Supreme Court of Korea ruled that producing or selling toner cartridge or OPC(Organic Photoconducting Cartridge) becomes the indirect infringement. By the way, the Supreme Court of the U.S.A. has solved both the problem whether the repairing or exchanging a part constituting parts of invention becomes the direct infringement or not and the question whether one who supplies infringing purchaser-user-repairer with component of a patented product is a contributory infringer or not by the Doctrine of Repair and Reconstruction. Especially, in cases about the indirect infringement the Supreme Court of the U.S.A. judges of the direct infringement as the premise. Last, on the subject whether method claims are never exhaustible or not, in Korea the Seoul High Court classified method claims into an invention of a process and an invention of a process of manufacturing a product on the basis of the Korean Paten Act system and held that as a category the latter is exhaustible but the former is never exhaustible. Meanwhile, in the recent QUANTA Case the Supreme Court of the U.S.A. ruled that Patent Exhaustion applies to method patents and method patent is exhausted by sale of item that embodies the method.