디자인보호법상 선출원주의와 신규성 상실의 적용에 관한 유사 판단의 문제

Abstract

Since determining similarity of designs is made in consideration of dualism at the stage of determining registration requirements and confirming scope of rights (including determining infringement), it is also a reality that causes some confusion in the practical circles on determining similarity. In other words, when the court determines similarity of designs, determining similarity is made in consideration of the prior design parts without excluding the prior design parts in the stage of registration, while that is made except for the prior design parts in the stage confirming scope of rights or determining infringement. Therefore, it can be confirmed that the court is thoroughly determining similarity of designs based on this dualism. Looking at the decisions that applied the first-to-file system to designs containing the prior parts, rather than establishing legal principles that are premised on determining infringement of rights and detemines except for the prior parts, the same legal principles on lack of novelty is applied in the name of determining design registration requirements in the Design Protection Act. Since the first-to-file system is actually the basis for allowing a specific person to have a preferential exclusive effect on the design right after the design is registered, it seems practically reasonable to apply the same legal principles as confirming scope of rights(including determining infringement) and determine similarity on designs containing the prior parts. In this regard, Patent Court Decision 2019Heo4659 seems to be of important significance in examining the above issues, as both first-to-file system and lack of novelty have been reviewed since the trial decision. Therefore, this paper proposes that the court will make a clear legal principles determining similarity on the application of first-to-file system, after it analyzes the case of the subject decision in detail and reviews the determination in the trial and the subject decision in detail and reviews the problems on determining similarity related to this case.