특허법상 속지주의: 대법원 2019다222782, 222799 판결의 의미와 과제

Abstract

Since cross-border working of a patented invention is increasing due to the globalization and international networking, it is difficult to determine the country where a patented invention is being worked. The meaning of “makes” in this context was the subject of consideration by the Supreme Court in case No. 2019 Da 222782, 222799 (Merged) (hereinafter the “Decision”). The case concerned the question of whether making all or a substantial portion of the constituent parts of a patented product as a collection so that they may easily be put together to the complete product might amount to direct infringement. The Decision, while recognizing the necessity of flexible interpretation of territoriality, laid down a rather strict test for recognizing domestic manufacture of a patented product. The test should be understood in the context of the case. When applying the test laid down by the Decision to a case in dispute, it should be scrutinized whether there is a similarity between the case in dispute and the case of the Decision. The Decision held that making a kit of parts might amount to making of a complete product under certain circumstances. In other words, the issue considered in the Decision was not an indirect infringement but a direct infringement. However, the Supreme Court in case No. 2014 Da 42110 considered the issue of indirect infringement where an unfinished product was exported for the final processing abroad. Thus, there is no conflict between these two decisions. The two decisions, when read together, state as follows: (1) There is a direct infringement where making a kit of parts could be deemed as making a complete product under the test according to the Decision; or (2) There is neither direct nor indirect infringement where there is only a preparatory act of making an unfinished product that could not be deemed as making a complete product. The flexible application of the territoriality principle in patent law has been recognized by the Supreme Court in the Decision. However, it is necessary to clarify the scope of application of the Decision. Furthermore, the meaning of other acts of working an invention than the act of making should be clarified in the context of territoriality. In addition, it should be considered whether it would be necessary to take legislative actions like the U.S.