특허법 제30조가 규정하는 본인공지예외제도에서 출원공개ㆍ등록공고 제외 조항의 삭제 필요성

Abstract

Article 29(1) of the Korean Patent Act stipulates the novelty requirement for inventions. If an invention is publicly disclosed prior to the filing, it becomes prior art and thus loses its novelty, rendering it ineligible for patent protection. This principle forms the foundation of the novelty requirement. However, a policy judgment exists that this principle should not be rigidly applied when the disclosure is made by the inventor themselves or by a third party against the inventor's will. Based on this judgment, Article 30 of the Korean Patent Act provides the so-called Self-Disclosure Exception System. Under this provision, disclosures made by the inventor or against their will by a third party are not regarded as prior art against the inventor's patent application or patent, provided that procedural requirements are complied with. However, the proviso of Article 30(1)(i) excludes disclosures resulting from publication or registration under a treaty or domestic/international law from this exception. This proviso, absent in the patent laws of the United States, Europe, and China, is uniquely found in the patent laws of Japan and Korea. This study examines the meaning and necessity of this proviso and proposes potential improvements. It begins by comparing the Self-Disclosure Exception System provisions in the Korean Patent Act and the Design Protection Act, identifying issues arising from their inconsistent treatment. Subsequently, it reviews the legislative history and current regulations on the Self-Disclosure Exception System in Korea and Japan, analyzing related case law and academic perspectives concerning the exclusion of disclosures from publication or registration. Japan adopted this exclusionary provision in the 1970s under unique circumstances: prior to 1975, Japan did not recognize chemical substance inventions as patentable, leading applicants to file patent applications for manufacturing methods of substances. Following the 1975 revision of the Japanese Patent Act, which allowed chemical substance patents, some applicants sought to claim exceptions to prior art disclosures resulting from earlier publication or registration of method inventions. Due to lingering opposition to substance patents at the time, the courts interpreted such disclosures as not aligned with the inventor’s intent, and the legislature amended the law to exclude such disclosures from the Self-Disclosure Exception System. Korea subsequently adopted this amendment in its Patent Act. This paper argues that the Japanese courts' reasoning for excluding publication or registration from the Self-Disclosure Exception System lacks validity and that Korea’s adoption of this rule should be reconsidered. Considering the global trend toward expanding the scope of exceptions to loss of novelty, it would be more appropriate to delete this proviso from the Korean Patent Act.