진보성이 부정되는 특허권에 기초한 권리남용 법리 적용

Abstract

This paper is a study on whether a determination of patent infringement and its damage compensation can be conducted the trial or judgement if the inventive step of a patented invention has been denied before a final decision of nullity of a registration in a patent invalidation trial process. Supreme Court En Banc Decision 2010 Da 95390 all party agreement decision (case), rendered on January 19, 2012, has given its decision on the case: even before the final decision for invalidity of the patented invention, if its inventive step has been denied and consequently, it is obvious that the granted patent is going to be voided by the patent invalidation trial, patent infringement and its damage compensation can be applied to abuse of patent and thus, it is not acceptable. In particular, the decision also declared that the court taking charge of the patent infringement lawsuit can hold a trial and judge whether there is an inventive step for a patented invention or not as a prerequisite if there is a protest regarding abuse of patent. The case has significance because it is the first en banc Supreme Court decision that expanded a principle of law for abuse of a right to the inventive step. The decision declared that a court that has jurisdiction over a patent suit for infringement can dismiss a claim for damages even before determination of invalidation for patent registration if the inventive step, which is a requirement for patent, has been denied. This paper compared legal principles for abuse of a right in civil law and patent law and determined problems in the application of legal principles for abuse of a right and its reformation. After the case, the inventive step determination and the legal principles for abuse of a right held by Korean Courts are expected to be improved by more objective and professional assessment of facts. Japan has achieved extensive patent judicial reformation due to the Kilby case of April 11, 2000. The great deal of effort will be required to reform the patent lawsuit structure such as assigning jurisdiction of patent infringement lawsuit to a patent court in order to build up speciality.