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In 1995, the Patent Act was amended to conform to the TRIPs Agreement. The amendment has brought about broadening of patentee’s rights. In particular, a patentee’s grant was expanded to encompass the right to exclude others from offering the patented invention for assignment. With legislative history silent as to the meaning of the new provision and no case law construing it, there is little guidance in predicting (1) what is an ‘offering for assignment’; (2) whether there is infringement only if the contemplated assignment occurs; and (3) whether domestic offers to assign abroad infringes. This article analyzes foreign case law in an effort to answer these questions. In the United Kingdom, the Patent Acts 1977 did include ‘offer to dispose of’ infringement. This was so framed as to have, as nearly as practicable, the same effect in the U.K. as the corresponding provisions of the Community Patent Convention. The Chancery Division of the Patents Court held that (1) an advertisement or any negotiation without a firm offer constitutes an ‘offer to dispose of”; (2) offers to dispose of must be read as meaning offers in the U.K. to dispose of the product in the U.K.; and (3) advertisements for post-patent expiration sales would not infringe. In the United States, Congress amended 35 U.S.C. §271 in 1994, adding ‘offer to sell’ to the list of infringing activities. Congress also added section §271(i), which limits infringement via offer to sell. In 2000, the Federal Circuit held that the meaning of ‘offer to sell’ is to be interpreted according to its ordinary meaning in contract law. While the Federal Circuit has yet to address the issue of how to interpret ‘offer to sell’ provision with respect to foreign sales, there is a split in authority at the district court level. There also is a split on the issue of whether §271(i)’s limiting language suggests that an offer to sell is an infringement only if an actual sale occurs before the expiration of the patent. In 2008, the Federal Circuit allowed lost profit damages based on defendant’s ‘offer to sell’ infringing product. In Japan, the Patent Act was amended, adding ‘offering for assignment’ to the list of infringing activities. Although there seems to be no case law construing the meaning of ‘offering for assignment’, the Japanese Patent Office guideline suggests that the meaning of offer should be construed to include promotional efforts and advertising. Foreign case law and corresponding provision suggest that the term ‘contractual offer’ in section 2 of the Korean Patent Act should be corrected to the lay meaning ‘offer.’ Next, since requiring that both the offer to sell and the actual sale take place would make the ‘offer to sell’ language superfluous, they should be treated as separate and distinct exclusive rights. Finally, with the increasing interdependence of global economy, flexible approach rather than a strict territorial approach would provide balance between risks exposing the patentee to losses in the world market and the extraterritorial reach of the Patent Act.

목차

Ⅰ. 서론
 Ⅱ. ‘양도의 청약’의 개념
  1. 실시개념의 개정 연혁
  2. 양도의 청약이란?
  3. 문제의 제기
 Ⅲ. 주요국의 입법례 및 판례
  1. 양도의 청약에 관한 영국의 법리
  2. 판매의 청약에 관한 미국의 법리
  3. 양도의 신청에 관한 일본의 법리
 Ⅳ. 문제의 검토
  1. ‘청약’이라는 용어의 적절성
  2. 침해여부판단에서 ‘양도’와 ‘양도의 청약’의 관계
  3. 양도의 청약에 의한 침해와 손해배상
 Ⅴ. 결론
 참고문헌
 ABSTRACT

키워드

양도 판매 양도의 청약 판매의 청약 독점권 속지주의 역외적용 무역관련지적재산권협정 청약 청약의 유인 해외판매 시장에의 공급 판촉행위 assignment(disposal) sell(sale) offering for assignment(offer to dispose of) offer to sell(offering for sale) exclusive right territoriality extraterritorial application TRIPs contractual offer mere invitation to make an offer foreign sales putting on the market promotional activities

저자

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

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