무효인 특허권행사에 따른 특허권자의 민형사책임

Abstract

This paper analyzed an important Supreme Court case concerned with the liability for patentee's damages caused by an injunction being improper and compared our conclusions with foreign legislation and foreign cases. Areas in need of improvement were also examined. The fact that according to the latest statistics of the Korean Intellectual Property Office the rate of citation exceeds 60% in patent invalidation trials means that patented inventions are continuously under threat of being invalidated. The patent law is written to the effect that patent rights have no force at all once a patent invalidity decision has been rendered. On the basis of a patent invalidation decision, an opposing party can file a claim for damages or restitution of unjust enrichment against a patentee. In particular, if the patentee loses a lawsuit after winning an injunction case, it is presumed that the patentee is negligent for the damages of the opposite party that resulted from exercising the injunction. Therefore, the patentee is liable for the damages that stemmed from such an improper exercise. Hence, the patentee must take criminal responsibility for having obstructed work and civil liability for the damages. However, when reaching a decision about a patent infringement lawsuit, determining patent validity and scope is a complex and arcane endeavor. Thus, it may be argued that it is too harsh to hold the patentee solely liable because they lost a lawsuit after being awarded the injunction. Most patented inventors are good souls. If their patented inventions result in liability for damages later because of patent invalidation decisions, this would create the problem of patent applications made in bad faith. Because an object of the patent law is to protect and utilize inventions and contribute to the development of industry, it should stay more focused on protecting the rights of a patentee. To effectively cope with such a problem from the view point of the patentee, first, thorough research into the leading technology should be conducted prior to applying for a patent in order to prevent the later invalidation of the patented invention. Second, it is recommended that a patentee make his argument through a lawsuit instead of filing a claim for an injunction based on patent infringement in the case of alleged patent infringement.