산업재산권 [Journal of Industrial Property]

간행물 정보
  • 자료유형
  • 발행기관
    한국지식재산학회 [Korea Intellectual Property Society]
  • ISSN
  • 간기
  • 수록기간
  • 등재여부
    KCI 등재
  • 주제분류
    사회과학 > 법학
  • 십진분류
    KDC 360 DDC 340
제36호 (9건)

유럽, 특히 영국에서 인간의 배아줄기세포의 특허 보호 및 생명윤리에 관한 연구


한국지식재산학회 산업재산권 제36호 2011.12 pp.1-37

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EU biotechnology directive published in July 1998 has influenced on legislation regarding patent in EU including U.K. In the Practice Notice 2003 the U.K. Intellectual Property Office began with granting a patent to invention which concerns human pluripotent stem cells arising from further division of totipotent stem cells, because they do not have the potential to develop into an entire human body, while totipotent cells have the potential to develop into the entire human body; therefore, they are not patentable because the human body at various stages of its formation and development is excluded from patentability by paragraph 3(a) of Schedule A2 of U.K. Patents Act 1977. The EPO Enlarged Board of Appeal issued its judgment in the WARF case in November 2008, and rejected the patent on the grounds that it involved the destruction of human embryos. U.K. Intellctual Property Office accepted the judgment of WARF case, and amended the Notice in 2009. Anybody hardly expects which impact U.K. patent policy on human embryo stem cells on patent policies of other countries' in EU can have in the future. The issue on patentability of human embryo stem cells has not been yet solved, and at present, we need to put our heads together to find a reasonable solution to this issue.



특허권자와 복제약 사업자의 역지불합의에 관한 연구 - 관련 미국판례와 공정거래위원회의 개정 심사지침을 중심으로 -


한국지식재산학회 산업재산권 제36호 2011.12 pp.39-80

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This article relates to study on reverse payment agreement between patent holders and generic drug manufacturers, especially focused on related American cases and revised guideline of Korean Fair Trade Commission. On December 13, 2011, Free Trade Agreement between the Republic of Korea and the United States of America(here in after, refer to as 'Korea-U.S. FTA') was ratified by the House of Representatives and the Senate of USA respectively, therefore, the only thing remained to be in effect of the agreement is ratification of Korean National Assembly. Among Korea-U.S. FTA, the most arguable issue is approval-patent linkage system. The Hatch-Waxman Act established a regulatory framework that sought to balance incentives for continued innovation by research based pharmaceutical companies and opportunities for market entry by generic drug manufacturers. However, because of reverse payment agreement between patent holders and generic drug manufacturers, approval-patent linkage system under Hatch-Waxman Act tend to not work effectively. Then, reverse payment agreement between patent holders and generic drug manufacturers are against Antitrust Law? We don't have any case about that question, but the courts of United States have lots of cases as to that question. For example, one court of appeals found that kind of agreement to constitute a per se antitrust violation. Other courts have found that kind of agreement to be legal, in part based on the reason that agreement as to patent fell within the patentees' exclusionary right. In this article, I set forth my thoughts on how to balance the role of Antitrust Law and the patent property right given to patentee by Patent Law, and suggested the way to practice 'approval-patent linkage system' more effectively in Korea without the same trial and error in States through studying of related American cases.



직무발명 보상금 산정기준에 대한 연구


한국지식재산학회 산업재산권 제36호 2011.12 pp.81-128

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According to Article 15, Paragraph 1, of the Invention Promotion Act of Korea, the employee shall have a right to receive a reasonable amount of remuneration for the invention when he/she assigned the right to obtain a patent/the patent right to the employer, or when he/she granted an exclusive license to the employer in accordance with the contract, employment policy, or other agreement. The amount of such remuneration shall be decided by considering both profits gained by the employer from the invention and the extent of contribution by the employer to the invention, (Article 15, Paragraph 3). Here, we have problems to determine a reasonable amount of remuneration. There is no clear definition as to “profit” and “contribution” by law. This makes it difficult to determine reasonable remuneration. Solving the difficulty of determining reasonable remuneration, the Act stipulates the contract or employment policy prescribing the employee's invention should be reasonable. Even the reform of the Act, inventors are not satisfied with the current situation of a “reasonable amount” of remuneration. They expect more than they now receive. The number of law suits concerning employees' invention is increasing and the amount of remuneration they claim is increasing. Inventors have become very conscious of patent rights. Particularly “headline cases”, such as the Olympus case and the litigation filed by Professor Nakamura, have emboldened some employee/inventors, who are now more likely to assert that their contributions should be more highly remunerated. While a few employees are strongly influenced by this trend, most of the employees consider that patent activity is only a part of their scope of duties. These employees tend to value other business activities as more important than patent rights. First, we should reconsider the meaning of employee invention's system. The System is designed for balancing the profits of employer and employee and raising the incentive for invent. In that meaning, claim for remuneration of employee is mandatory. Employee invention's system was set forth for the balances of employer's and employee's benefit. And "the reasonable amount of remuneration" is determined in that point. And claims for remuneration of employee should consider the circumstances of employer and employee. The employers has to face to various risks in his business and has to bear the liability and risk of loss arisen by his business, but the employee does not have to face to the risk of loss and does not have to bear any liability arisen by the employer's business. As Tokyo High Court decided the employee's contribution rate is 5 percent, 5 percent is the figure that is most frequently used in Japanese practices as an employee's contribution to an invention. In these way, we should balancing the profits of employer and employee and raise the incentive for invent, the reasonable amount of remuneration should be determined. If do not that, the purpose of employee' invention system will be frustrated.



대·중소기업간 공동연구시 발생하는 지식재산권 관련 쟁점에 관한 검토

신재호, 조용순

한국지식재산학회 산업재산권 제36호 2011.12 pp.129-174

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This study considers the mutually beneficial ways to resolve the conflicting matters that potentially arise from joint research between large firms and SMEs. To this regard, it suggests certain of typess of special contracts that can be applied to the case in which the parties seek joint ownership, while this also reviews the way for fair sharing through the use of existing Employee Invention for the case that right to research finding subjects to one party. For the mutualistic relation between large firms and SMEs is to be established, above all, large firm’s awareness that it is willing to share some portion of total profit need to be encouraged. This study also provides how to reasonably share profit for this large firms and basic guidance for SMEs to define the basic demand level for negotiation with large firms.



특허권 남용의 법리와 그 관련 문제


한국지식재산학회 산업재산권 제36호 2011.12 pp.175-226

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As the significance of the patent grows sharply in the modern society, the number of patent litigations is also on the rise. The defense based on patent misuse is often raised in the patent infringement litigations. In Korea, this defense is based on the Article 2 of the Korean Civil Code in which the principle of good faith and the prohibition of the abuse of right is stipulated. This is due to the fact that there is no explicit provision on patent abuse in Korea. The doctrine of the abuse of right has been applied to various types of litigations, in particular to the land ownership related cases. One noteworthy trend in a series of relevant court decisions is that the courts tend to emphasize the subjective requirement, that is an intention to harm the defendant. However, this doctrine in its original context has seldom been used in the patent litigations. Rather, the Korean Supreme Court has applied this doctrine in order to reject a patent lawsuit based on the seemingly invalid patent. According to the Korean patent regime, the general courts adjudicating patent infringement lawsuits are not allowed to declare the invalidity of patent. The power of declaring the patent invalid is solely given to the Patent Office. However, the Supreme Court has used the doctrine of right of abuse as one of the vehicles that helps the court bypass this hurdle, thereby entitling the general courts to adjudicate cases based on its own judgment on the invalidity of patent. According to the Supreme Court, exercising the patent which has defects that will evidently render the patent invalid in the future is deemed patent misuse. Considering that patent misuse rests on the idea that patent should not be given broader protection than it deserves, this article went on to touch upon related issues, such as the flexibility in ordering an injunction as is shown in the famous ebay case in the U.S. Supreme Court, the requirement of "the necessity to order a preliminary injunction" in the preliminary injunction procedure in Korea, and the antitrust concerns in determining the patent misuse defense.



지식재산권의 침해와 부당이득


한국지식재산학회 산업재산권 제36호 2011.12 pp.227-272

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In the cases where intellectual property infringement occurs there are some special provisions in patent law which alleviate the burden of proof of the intellectual property owner for the claim of damages that arise from the tort cases, but there are no special provisions for the claims of restitution of unjust enrichment. If the intellectual property owner fails to establish the requirements of the tort or the statute of limitations of damages claim has already completed, the owner can sue for the restitution of unjust enrichment but the range of restitution is limited to licence fee. This study focuses on reviewing the overall theories and cases of unjust enrichment to find out the ground for proper range of restitution. Owners of intellectual property may receive an infringer’s operating profit, or compensation of a malicious beneficiary. However the owner himself has a burden of proof so it is actually difficult to claim for further damages. Even though the main purpose of unjust enrichment is not to sanction the wrongful act but to restitute or adjust the profit which the law does not admit, In order to make unjust enrichment supplementally function as efficient protection of intellectual property there is a need to have hermeneutical and legislative special actions to alleviate the burden of proof of the intellectual property owner for the claims against the malicious beneficiary.



방법발명 특허권의 소진


한국지식재산학회 산업재산권 제36호 2011.12 pp.273-307

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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".



표준설정 과정에서 특허공개의무 위반과 특허위협(Hold-up)에 대한 경쟁법의 접근


한국지식재산학회 산업재산권 제36호 2011.12 pp.309-365

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As industry standards become more important due to its intrinsic efficiency, opportunistic behavior to take advantage of becoming a standard is increasing, too. Most standard setting organizations(SSO) adopt IPR policies to require participants to disclose proprietary candidate patents beforehand and to commit FRAND(Fair, Reasonable and Non-Discriminatory) terms of license. However, there have emerged hold-up cases not to open (pending) patent rights during the standard setting process and ask excessive licensing fees after industry is locked-in to the standard. Traditional solution is to find some extreme conducts to be misuse of patent rights and/or unfair trade practices. The result can be such as to deny enforcement of the patent between the parties. When some conducts are found to undermine consumer welfare and social efficiency associated to standard setting, however, such solutions by patent laws focusing on the enforceability of patent rights and/or contractual aspects become short of sufficiency. After successful settlements in Dell(1996) and Unocal(2005), the Federal Trade Commission charged patent hold-up conducts by Rambus to violate the Section 5 of the FTC Act and Section 2 of the Sherman Act. However in 2008, the Federal D.C. Circuit Court vacated the FTC order for the reasons that the FTC failed to satisfy burden of proof for a monopolization, i.e. anti-competitive effects and causation. Another problem was about the vague disclosure rule by a SSO. While the hurdles required for monopolization findings in Rambus were merely no more than traditional, however, the FTC concentrated on the price increase effect caused by hold-up behavior and correct them, even beyond the orthodox antitrust principles. While not totally denying such a demand noticed by the FTC, the author argues that competition laws should concentrate on anti-competitive effects by market dominant players as shown in the US federal courts' decisions. Legal principles of patent and contract should be basic and starting grounds to cure problems and antitrust violations should be triggered only by findings of exclusionary effects and causation flowing out of questioned conducts. By such differentiations between tools of patent laws and competition laws, efficiencies associated with standard setting would be realized without excessive intervention by competition authorities, thereby inducing dynamic competition.



사적 표준화 기구의 지식재산권 공개의무의 범위 및 공개의무 위반 행위에 대한 사후규제 - 지식재산권법과 독점규제법의 적용을 중심으로 -


한국지식재산학회 산업재산권 제36호 2011.12 pp.367-435

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In the current economic circumstance, industry standards play an important role for business and consumers, widely understood as one of the instruments leading the modern economy. Standards can make products more valuable to consumers because of interoperability among products following the same standard. They, thus, can widen consumer choice and increase social efficiency. However, it is reported that a standard could make innovation retarded by requiring significant additional costs to switch to alternative standard after the standard has been adopted. In particular, if a patent proprietor covers the technology required to implement the standard, he/she can exploit users of the technology by appropriate excessive royalty or royalty discrimination between competitors of the patent holder. For this reason, SSO requires those members to disclose patent information of potential standard technologies and FRAND commitment before publicize the standard. Unfortunately, such disclosure rules can be avoided and a SSO member can exclude substitute technologies and dominate a relevant market of the technology incorporated the standard in the standard-setting process. In this situation, the SSO member’s violating disclosure rules of SSO can be condemned as exclusionary anticompetitive behavior and, thus, establish the infringement of antitrust law. However, a monopolist's act interrupting antitrust law must harm the competitive process, rather than one or more competitors. For this reason, the antitrust plaintiff, the Government as plaintiff-that bears the burden of proving the causation between an exclusionary practice and anticompetitive effect of the monopolist's conduct. In the context of standardization process, the infringement of the rule of disclosing IP should be considered as general causation of monopolization of the standard technology. For this conclusion, SSO’s patent policy requiring disclosure of IP in the standard technology should show the scope of the disclosing duty and the result of indolence of the duty.


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