권리범위확인심판에서는 법원이 진보성 판단을 할 수 없는가?

Abstract

The Korean Supreme Court in a unanimous en banc decision (hereinafter, En Banc Decision) (Supreme Court en banc Decision 2010Da95390 Decided January 19, 2012) held that Korean civil courts could dismiss a patent injunction or damages claim for a patent abuse even before a patent is formally invalidated by the Intellectual Property Tribunal of the Korean Intellectual Property Office (KIPO) when it was obvious that the patent would be invalidated in ‘Invalidation Trial of Patent’, and that civil courts could decide whether the patented invention had an inventive step when there was an argument that the patent injunction or damages claim based on the patent without an inventive step was a patent abuse. Furthermore, the En Banc Decision overruled Supreme Court Order 91Ma540decided June 2, 1992 and Supreme Court 98Da7209 decided March 23, 2001, which held that in the patent infringement litigation where an inventive step did not exist, although novelty existed, the court should not reject the scope of the right unless the patent invalidation decision was finalized in the separate proceedings. On the other hand, the En Banc Decision did not overrule Supreme Court 97hu2095decided October 27, 1998 in which the Korean Supreme Court ruled that the Tribunal of the KIPO in “a Trial to Confirm the Scope of a Patent” could not decide whether the patented invention had an inventive step, and that the Tribunal should not reject the scope of the right. If the Tribunal does not examine the inventive step of a patented invention even if the invention has no inventive step, the Tribunal will accept the argument of the plaintiff of the trial. However, the court in infringement litigation will examine the inventive step requirement and deny the scope of the patent. This makes the decision by the Tribunal in “a Trial to Confirm the Scope of a Patent” meaningless. Therefore, it is necessary that the Tribunal or the courts in “a Trial to Confirm the Scope of a Patent”decide whether a patented invention has an inventive step when the defendant argues that the patented invention has no inventive step and thus the patent is invalid.