디자인보호법상 모인(冒認) 법리의 검토

Abstract

If an applicant for design registration files a design A', that has been changed by modifications in view of subject matter A, derived from another, it is unclear whether the design A' is rejected or, if registered, revoked. According to the Supreme Court Decision 2009 Hu 2463, one who has not delivered a substantial contribution to the invention in suit is not an inventor and amendments and modifications that remain within the scope of actions of a person skilled in the art are not substantial contributions. The Patent Court Decision 2021 Heo 5358 (hereinafter “the Decision”) applied the holding of the Supreme Court Decision 2009 Hu 2463 to a design usurpation case. This article reviews the Decision and the principles of usurpation under the design protection law. First of all, in order to sanction usurpation, modifications which are within the ambit of a person skilled in the design should be disregarded when determining the identity between the design A' and the design A. Consistent applications of this case law will be required. In case this does not work, legislative actions should be considered. Although the basic principles of usurpation under the patent law may apply to the design protection law, the characteristics of the design protection law should be considered when applying the principles of usurpation. For example, novelty under the design protection law is determined by similarity between the design A and the design A'. However, novelty under the patent law is determined by substantial identity between the invention A and the invention A'. Therefore, the substantial identity under the patent law is not applicable to the design protection law. With the amendment of the Patent Act in 2016, a rightful owner is entitled to recover his patent right with regard to the derived invention. However, the design protection law was not amended at that time, and it remains the same until now. There is no reason to treat design rights differently from patent rights in relation to the rightful owner's remedy. In addition, it is inefficient for the rightful owner to file his own application according to the article 45 of the Design Protection Act. Therefore, it is necessary to amend the Design Protection Act so that a rightful owner be entitled to recover his design right by way of transfer with regard to the derived design. If a system for requesting recovery of the design right is newly adopted in the Design Protection Act as a remedy for the rightful owner, it is desirable to amend the standing for invalidation trials. Like the Patent Act, it would be desirable to make an amendment to limit the standing for invalidation trial to the rightful owner.