Earticle

초록

영어

Before the U.S. Supreme Court's Quanta decision in 2008, the Court of Appeals for the Federal Circuit(CAFC) held that method claims are not exhausted by sales of an unpatented article or device used to practice the claimed method and an implied license may be invoked. The U.S. Supreme Court, however, rejected the argument that patent exhaustion can never apply to a method claim. In Japan, the IP High Court noted in its 2006 Canon Inc. v. Recycle Assist Co., Ltd. decision that a method patent may be exhausted in the following circumstances. First, where a product which has no reasonable non-infringing use other than to practice the method patent is sold by the patentee, the method patent is exhausted with respect to the product. Second, where both a product and a method is claimed to substantially the same technical idea as each other, once a product patent is exhausted with respect to a patented product sold by the patentee, the method patent is also exhausted. The prevailing view from commentators in Japan is also that a method patent is exhausted where a product which has no reasonable non-infringing use other than to practice the whole process of the method patent is sold by the patentee. Although there have been a few lower court decisions that held a method patent may be exhausted in certain circumstances, there is no hard and fast rule in Korea. A patented method may not be sold in the same way as an article or device, but methods nonetheless may be “embodied” in a product. Eliminating exhaustion for method patents would seriously undermine the patent exhaustion doctrine, because patentees seeking to avoid patent exhaustion could simply draft their patent claims to describe a method rather than a product or an apparatus. By characterizing their claims as method instead of apparatus claims, or including a method claim for the machine's patented method of performing its task, a patent drafter could shield practically any patented item from exhaustion. Thus, this article points out that the sale of an item that substantially embodies the method exhausts the method patent. And a product “substantially embodies” a patent where (1) it has “no reasonable non-infringing use” other than to practice a patent and (2) it embodies "essential features of the patented invention".

목차

I. 서론
 II. 방법발명 특허권 소진에 대한 미국에서의 논의
  1. Quanta 판결 이전
  2. Quanta 판결의 의의
  3. 정리
 Ⅲ. 방법발명 특허권 소진에 대한 일본에서의 논의
  1. 관련 판례
  2. 학설
  3. 정리
 Ⅳ. 우리나라 판례의 분석
  1. 관련 판
  2. 분석 및 정리
 Ⅴ. 검토
  1. 방법발명 특허권의 소진성립요건
  2. 발명의 유형별 소진성립요건의 비교
  3. 물건발명 특허권의 병존필요 여부
  4. 특허권의 공유와 소진
 Ⅵ. 결론
 참고문헌
 

키워드

저자

• 김동준 [ Kim, Dong-Jun | 충남대학교 법학전문대학원 교수. ]

참고문헌

발행기관

간행물

표지보기 관심저널 등록

• 간행물명

  산업재산권 [Journal of Industrial Property]

• 간기

  계간

• pISSN

  1598-6055

• eISSN

  2733-9483

• 수록기간

  1995~2026

• 등재여부

  KCI 등재

• 십진분류

  KDC 367 DDC 346