고의적인 특허권 침해시의 징벌적 손해배상제도에 관한 소고

Abstract

With the promotion of the globalization of the economy, the advent of a knowledge-based economy, and the ongoing development of technology, the importance of efficiently protecting intellectual property rights has increased day by day. Indeed, intellectual property rights have gone beyond relations of rights and duties within individual nations to become objects of international conflict and some of the major elements of trade. According to a February 2014 announcement by the Korea Institute of Science and Technology Evaluation and Planning (KISTEP), in Patent Cooperation Treaty (PCT) patent application statistics announced by the World Intellectual Property Organization (WIPO), South Korea has stood firm as a leading nation in intellectual property rights, ranking fifth around the globe for three consecutive years (2011, 2012, and 2013). Consequently, conflict concerning patent rights between corporations and between corporations and individuals due to infringements of their respective patents is expected to become even fiercer. Regarding such infringements on patent rights, those who inflict damages on others due to illegal acts, performed intentionally or negligently, are presently liable to compensate for such damages (Article 750 of the Civil Act). And because the purpose of the liability for such illegal acts lies in compensation for damages, the scope of compensation for damages is limited to ordinary damages (Article 393 of the Civil Act). The punitive damages system of Anglo-American law was introduced for the first time into the Fair Transactions in Subcontracting Act in 2011 so that it became possible for the amount of compensation for damages to the victims to be up to three times the damages. In 2013, Article 35, which lays on prime contractors the responsibility to prove the absence of an intention or negligence regarding the seizure and appropriation of technical data, was newly established. In addition, the evaluation guidelines of the Korea Fair Trade Commission (KFTC) define the appropriation of technical data, obtained as actions by prime contractors to use technical data obtained from subcontractors to obtain unjust profit outside the purpose of obtainment or the agreed scope of use or to inflict damages on subcontractors. According to these guidelines, damages due to patent rights infringement, too, are included in damages arising from the appropriation of technical data. In addition, both the appropriation of technical data and the infringement of patent rights are difficult to discover or to prove, and that makes it difficult to calculate the amount of damages. If this system is introduced into the Patent Act, there is the positive aspect of raising corporations’ awareness of the need to abide by laws regarding patent infringement and increasing their transparency. Consequently, if applied and expanded in various ways, this system can be considerably effective in cases, especially of malicious illegal acts that are difficult to detect. This is because the victims themselves are expected to take legal measures as much as possible motivated by the fact of damage, and out of economic motives. In addition, this system allows the victims to be compensated by the victimizers for not only the principal lost and the interest but also an amount of money as a punitive element additionally included. This presents a middle ground between civil law and criminal law, which uses civil procedures to impose punishments. In addition, civil sanctions through the punitive damages system will promote effective sanctions against the victimizers and, furthermore, act as a buffer by preventing as much as possible minor criminal law violators from becoming criminal offenders. Among countries that have adopted Continental law, while Germany and Japan are passive, Taiwan is known to have introduced this system widely into diverse fields such as the Consumer Protection Law and have reaped favorable results. In South Korea, at present, there are concerns such as: ① differences in the legal systems; ② reduction in business activities; ③ possibility of double punishment; ④ possibility of undue profit; and ⑤ excess litigations. Such claims are not very persuasive, however, because the system will precisely and only eliminate pernicious contractors, who are perpetrators of malicious illegal acts, and, in actuality, may even have the function of purifying the market by sorting out inappropriate corporations. Likewise, in the case of the Presidential Committee on Judicial Reform, even among discussants who opposed the introduction of the punitive damages system during discussions about it, it was the dominant opinion that a limited introduction of the system into only particular fields was possible under the current legal system, where civil and criminal liabilities are separate. Finally, while acts of intentional infringement on patent rights are subject to criminal punishment (Article 225 of the Patent Act), the effectiveness of criminal remedies is not high because the number of cases indicted by the Public Prosecutors’ Office is small and the courts’ rate of pronouncement of actual prison sentences is low. Consequently, if the punitive damages system is introduced and well established as a part of the fortification of civil remedies, it will become more effective as a buffer that minimizes the expansion of criminal acts due to punishment in terms of criminal law.