디자인권의 간접침해 규정에 대한 검토

Abstract

The indirect infringement provision of the Design Protection Act was enacted by referring to the analogous provision of the Patent Act in order to provide effective measures for threatened infringement by holding a person who assists in preparatory acts of direct infringement liable for infringement under certain circumstances. The indirect infringement provision, after being enacted in 1973, had little difference with that of the Patent Act until the Design Protection Act included ‘export’ in the provision in 2011. This article points out what is wrong with this amendment. First of all, Article 10.28 of the Korea-EU Free Trade Agreement (FTA), which was the basis of the 2011 amendment, is a direct infringement provision regulating the export of ‘products bearing or embodying the protected design.’ Although it may have been sufficient to include ‘export’ in the definition of ‘working’ of a design in Article 2, it seems that the Design Protection Act has been revised more than necessary to reflect the FTA agreement by adding ‘export’ as an indirect infringing act without in-depth analysis. In addition, the Supreme Court of Korea held in a patent infringement case that if a party who exports a product that has an exclusive infringing use but the product is only used abroad, the party is not liable for indirect infringement (Supreme Court Decision 2014Da42110 Decided July 23, 2015.). In view of this decision, adding ‘export’ as an indirect infringing act must be reviewed in-depth from the perspective of the territoriality. It is doubtful whether the revision was appropriate because it was not possible to find such a discussion in the National Assembly Standing Committee examination report at that time. Since there is no reason to differentiate between the Design Protection Act and the Patent Act from the perspective of the territoriality, it is necessary to remove ‘export’ from indirect infringing acts of the Design Protection Act. The indirect infringement regulations of design right are not the same between the countries. While Korea, Japan and the United States have the indirect infringement provision in the relevant Acts, there is no such provision in EU Community Design Regulation. Since relevant cases are rare, it would be doubtful whether to maintain the indirect infringement provision. However, in order to cope with the proliferation of design rights infringement by utilizing 3D printing in the future, it is necessary to figure out whether to expand the scope of object of the indirect infringement while maintaining the indirect infringement provision. Under the current provision, only ‘a product’ exclusively used for producing an article bearing or embodying the protected design is the object of the indirect infringement. Because a CAD file of an article protected by design right is not ‘a product’, the distribution of a CAD file is not an indirect infringement. Under the German and the U.K. Patent Acts, the object of the indirect infringement is not ‘a product’ but ‘a means’ which is interpreted to encompass not only physical products but also digitally processed data. It would be a solution to include ‘supplying a means exclusively used for producing an article bearing or embodying the protected design’ in the indirect infringement provision by referring to the relevant provisions of the German and the U.K. Patent Acts.