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
제41호 (10건)



아이디어의 지적재산권법적 보호체계


한국지식재산학회 산업재산권 제41호 2013.08 pp.1-41

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Idea is regarded to be in public area in current intellectual property right system and is not target to be protected. However there has problems investing a lot of efforts to create idea and being unable to protect under intellectual property right law even in case where the idea can cause economic value. That is to say protection system have been required since third party can create economic value by using or imitating, free riding creative idea like this without notice. It is considered to be needed that so called, idea protection law in which creative idea being unable to protect under current intellectual property right law is regarded to one intellectual property right and is to be protected, would be established. Although idea may be added to target to be protected through revision such as Invention Promotion Act or Unfair Completion Prevention Act etc., Invention Promotion Act is not law is not the law aiming at protection of industrial property right but the law aiming to promote, and constitutions adding idea as target to be protected is difficult to set relation with existing business secret. Accordingly it is determined to build law system establishing idea protection law and protecting idea by this law.



특허괴물의 의의와 규제방안


한국지식재산학회 산업재산권 제41호 2013.08 pp.43-87

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(1) Patent troll refers to (2) non-practicing entities that (3) stack up patents or buy patent rights from other patent right holders to create a patent wall (4) with which they claim excessive license fee or compensation for damages against companies or exercise patent rights to file infringement litigation. Trolls have both sides of coins and bring positive effect and negative effect. There are many controversial issues about trolls. This Paper describes what are patent trolls and how to regulate patent trolls. In order to solve problems of patent trolls I'll examine the U.S approaches and then research the regulation tools and strategies for the patent troll issues in Korea. I'll suggest some improvement measurements for the legal framework and policy for example restriction on joinder or injunction. There is discussion about restricting the injunction, the best weapon of patent trolls applying the four test of eBay case. According to the principles of equity admitting the preliminary (or permanent) injunction should be determined by the following four elements: (1) whether the damage causes irreparable harm or not, (2) whether there are other adequate remedies or not, (3) considering balance of hardship between the parties, and (4) the injunction causes harm to public interest. This is similar to the provision of preliminary injunction requirements (the Clause 2, Article 300 of Civil Execution Act). Therefore the bargaining power by automatical preliminary injunction can not be enjoined in Korea. The necessity of reserve to prevent significant damage or imminent danger should be strictly limited to forbid patent troll's abusive behaviors. There is an opinion which prevents trolls from exercising the injunction right and give them only monetary compensations. However, it is not consist with the nature of exclusive right. It is a better idea to use compulsive license in the Antitrust law rather than liability rule. The problems joining unrelated defendants in the same action are serious in patent trolls' litigation in U.S. Someone states that the defendants can not be joined simply because the same patent is infringed and the number of defendants per litigation should be limited. In patent litigations the American Invent Act is amended to prevent patent trolls' strategies of multiple defendants joinder. It amends the permissive joinder rule that defendants can not be joined if they don't arise out of the same facts and transactions. The court also prevents the trolls' joinder in some cases. I consider this is useful to remove trolls' negative effect of bad behaviors. If patent trolls' patents are the standard essential patents (SEPs), the injunction by trolls can be illegal in the Antitrust law because they break the commitment of FRAND (fair, reasonable and non-discriminatory) license term. It may be dominant position abuse if tolls refuse to license even to the willing licensee.




미국 특허법상 발명의 개념 - 자연법칙의 이용성을 다룬 최신 판례들이 주는 시사점 -


한국지식재산학회 산업재산권 제41호 2013.08 pp.89-136

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To build up the most suitable definition for an invention in Korea patent law, we need to exactly understand the related trends in the United States. It’s because the trends are playing now as the external pressure on our law and requiring us to respond wisely to it. Unlike German & Japanese law where an discovery basically can’t be an invention and what many Korean scholars unconsciously depend on, the U.S. Patent Act expressly provides that 'discovery' will tentatively fall under the definition of an invention while U.S. case law has firmly built up an interpretational principle, the law of nature exception saying that the law of nature, natural phenomena, and abstract ideas should be excluded from the definition of an invention. In these three exceptional objects, not only the discovery but also the application of those things is required to get legal protection as an invention. Under the above legal frames, the case law by U.S. Supreme Court recognized the issued application for the category of computer programs and for the category of Microorganisms as an invention for the first time,respectively, in Diehr case in 1981 and in Chakrabarty case in 1980. However, some lower courts with Court of Appeals for the Federal Circuit as the center had distorted the real meaning of the above case law and had expanded the actual scope of an invention arbitrarily. For example, a weird variation of the standard of Diehr decision did allow any abstract idea could be an Business Method invention as long as such idea would useful, concrete and tangible and the two broad interpretation of Chakrabarty decision did make it possible that any organism including human DNA isolated or purified from natural presence could be treated as an invention even though the organism would not be different in its chemical composition from its natural presence. These extreme positions by lower courts were all struck down in the recent two cases by U.S. Supreme Court: Bilski decision in 2010 on BM application and Myriad decision in 2013 on human DNA. The recent Supreme Court decisions have been reaffirmed the prior standards held by Diehr and Chakrabarty decisions long ago. But the recent decisions intentionally avoided answering in detail the question, what could be the human productive behavior as the ultimate standard to be an invention or how far the application behavior toward laws of nature could be recognized when the above both behaviors are the key factor which turn the laws of nature into an invention. In Korea, there would be no problem in the category of process claim related to computer programs invention and BM invention because Korean court has maintained almost the same standard as that of Diehr case & Bilski case in U.S. for a long time even though U.S. itself go through twists and turns to arrive the standard. However, in the category of product claim related to biotechnology including microorganism and human DNA invention, we need to carefully check whether Korean current standard would be improperly lower than the standard presented by Chakrabarty case and Myriad case because it is unreasonable for Korea to keep lower hurdle of being an invention than US.



발명의 공지예외를 인정받기 위한 요건과 공개행위의 밀접불가분성


한국지식재산학회 산업재산권 제41호 2013.08 pp.137-177

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This article is related to the requirements of non-prejudicial disclosures as to invention disclosed several times before the filing of the patent application and relevancy of the disclosures. Patent is an award of opening new and useful technology to the public. Therefore, in principle, a publicly known invention prior to the filing of the patent application is not eligible to be patented. However, in order to encourage early publication of an invention and achieve the purpose of Patent Law more effectively, Korean Patent Law permits an exception under restricted conditions. According to the Article 30 of Patent Law, even if an invention is disclosed prior to the filing of the patent application, the invention is not considered to be publicly known when the required conditions set forth in the Article are met. There are two types of disclosures not be regarded as publicly opened. One is disclosure made by a person who has a right to obtain a patent. Another is made against the intention of a person with the right to obtain a patent. As to the latter, the exception is recognized with the requirements as follows. (i) A patent application shall be filed within six month from the date of disclosure, (ii) The purport of taking advantage of the provision of Article 30 shall be stated in the application; and (iii) Documents proving the relevant facts shall be submitted within thirty days from the filing date. In addition, if there are several disclosures before the filing of the patent application, the statement of the purport of taking advantage and the submission of the documents should be submitted as to every disclosure respectively. Under the Korean Patent Examination Guideline, only if the disclosure made after the first disclosure is the same with the first one in contents and closely related with the first one, the statement and the submission of the documents can be omitted. The meanwhile Courts and Intellectual Property Tribunal of Korea judged the relationship of the disclosures very restrictively and rarely admitted the omission of the statement and the submission of the documents. However, recently the Patent Court and Intellectual Property Tribunal of Korea changed their attitude and have been admitting the omission of the statement and the submission of the documents more broadly. Under these circumstances, this article reviewed the previous and recent cases related with Article 30 of Korean Patent Law and suggested desirable interpretation of that.



특허심판의 일사부재리 원칙에서의 ‘동일증거’ 판단방법


한국지식재산학회 산업재산권 제41호 2013.08 pp.179-215

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Art. 163 of the Korea Patent Act prescribes that, after a patent trial is ultimately determined, nobody is allowed to request a new trial with same point and "same evidence". In determining whether a new evidence is the same with an old evidence, the Korean Supreme Court held, among others, that a material evidence, which may invalidate the patent at issue, is not same evidence. This paper criticizes that such decision is not consistent with literal analysis of Art. 163. In determining inventive step of a patented invention, normally two prior arts are under debates. If the old trial discussed prior arts A and B, and the new trial suggests prior arts A and C, how sameness of evidence could be determined? This paper suggests that if prior art B is substantially the same with prior art C, the prior arts set A+B is substantially the same with the prior arts set A+C. Further, this paper proclaims that in any new trial the prior art A must not be interpreted differently from the interpretation of the old trial. Res judicata must respect not only "results" of the old trial but also "contents" of it.



디자인의 단일성 판단 - 대법원 2013.2.15.선고 2012후3343 판결을 중심으로 -


한국지식재산학회 산업재산권 제41호 2013.08 pp.217-251

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According to the principle of A single application for a single design registration, the judgement of a single design needs to be made on the basis of the unity of creation. At this time, an examiner needs to consider a creator's subjective creative intention in judging the unity of creation. An applicant needs to clearly describe the subjective intention of the creator in the essentials of the creation. Even in case of partial design, whether the applied design is one or not needs to be judged depending on the existence of unity in creation. If numerous parts, which exist in an article, form one creative unit, this should be identified as a single design. Even at this time, the subjective intention of the creator needs to be considered in judging whether it forms one creative unit or not. An examiner needs to strive to identify the originator's subjective creative intention through the description of the essestials of the creation or with a method of being submitted a written opinion.



냄새상표의 보호 - 미국법과 E.U.법에 대한 분석을 포함하여 -


한국지식재산학회 산업재산권 제41호 2013.08 pp.253-293

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A scent mark is introduced in 2011 as the result of Korea-U.S. Free Trade Agreement. Before 2011, only visual signs could be protected as trademarks under Korean Trademark Law and 2011 amendment extends protection to non-visual marks. In the U.S., Lanham Act does not stipulate clearly the protection of a scent mark, but since TTAB admitted protection of the scent mark in Clarke, scent has been recognized as a mark to be protected under Lanham Act. Also E.U. regulation describes protection of a mark which can be represented graphically and ostensibly a scent mark may be expressed graphically. Even though a scent mark is included into protected marks legislatively, a scent mark must be recognizable objectively to satisfy some requirements for registration. First of all, it must be described or represented graphically. Under Korean and U.S. law, a scent mark has to be described and a specimen must be submitted. However, in E.U., Office for Harmonization in the Internal Market denies the possibility of graphical expression on a scent mark. Thereby, a scent mark cannot be protected in E.U. Even in Korea and the U.S., other obstacles bar protection of a scent mark: distinctiveness and functionality. A scent mark is hard to be inherently distinctive and usually acquires secondary meaning by use. However, there is possibility that the use of a scent mark makes the mark itself functional. Therefore, in the U.S. since 1990, a scent mark has been registerable, but very few scent marks are actually registered. Moreover, considering a complicated process and nature that scent is detected by a human being, a scent mark may not be proper to be protected as a trademark. However, protection of a scent mark is already resolved legislatively and then, it is not a proper time to discuss validity of a scent mark. Under the current situation, it is advisable that methods to register and protect a scent mark must be researched more thoroughly and until completion of the research, registration or protection of a scent mark need to be restrained.



웹하드서비스제공자의 면책요건 - 표준적인 기술조치를 중심으로 -


한국지식재산학회 산업재산권 제41호 2013.08 pp.295-336

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Before the amendment of Copyright Act in 2011, the liability of web storage service providers could be reduced or waived in those cases where such service providers prevented or stopped reproduction and transmission thereof when made aware that copyrights would be infringed upon due to the reproduction and interactive transmission of works by the other persons. However, the amendment of 2011 categorized online service providers into four types and also introduced new requirements for exemption. If online service providers are exempted from liability, they shall adopt a repeat infringer policy, accommodate standard technical measure, and not receive direct financial benefit attributable to infringing activity. The web storage service providers shall also meet such requirements in order for its liability to be waived. The provision of standard technical measures is to introduce the DMCA §512(i)(2) for the implementation of the KORUS FTA. Accordingly, the concept of a standard technical measures may be deduced from the examination of the standard technical measures under DMCA. However, the DMCA does not provide "technical measures" obligation of Article 104 of Korean Copyright Act, instead has been regulated online service providers with only the standard technical measures. With the introduction of "standard technical measures", it needs to be examined that the existing obligation of the technical measures is not necessary any more in the Korean Copyright Act. The legislative intent of congress and the case law show that "standard technical measures" and "technological protection measures" are not different concepts in the DMCA. The Korean Copyright Act also provides not only technological protection measures but also the prohibition of circumvention of the measures, which implies the two measures may have any conflict each other. This paper will examine whether Article 104 regarding the technical measure obligation might exist through the review of standard technical measures of the Korean Copyright Act and the DMCA.



저작권 침해행위에 대한 비친고죄 요건으로서 영리성과 상습의 의미에 대하여

김용섭, 박창석

한국지식재산학회 산업재산권 제41호 2013.08 pp.337-372

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Without special limit of the copyright law, the existing Korean copyright law had stated that the criminal prosecution for the infringement of copyright is a crime subject to victim’s complaint. Then, to meet the environment change on the use of copyrighted works, revision of copyright law at 28/12/2006 newly legislated crime subject not to victim’s complaint. Since then, there was a revision at 2/12/2011 for execute of Korea-United States FTA. And it works to the present. In the revision at 28/12/2006, the key of crime subject not to victim’s complaint. application is that “both commercial and recidivistic” copyright infringement are the exception of the crime subject to victim’s complaint. Like this, through the revision of copyright law at 28/12/2006, lists of crime subject not to victim’s complaint. clauses are increased but both ‘commerciality’ and ‘recidivism’ are needed to application of crime subject not to victim’s complaint. Thus, they can’t had imposed a penalty without victim´s complaint, because if both ‘commerciality’ and ‘recidivism’ are not applicable, it still had applied to a crime subject to victim’s complaint. Then by the revision at 2/12/2011 for execute of Korea-United States FTA, exceptions of the crime subject to victim’s complaint. are more expanded and the application of the crime subject not to victim’s complaint. was extended by changing “for both commerciality and recidivism” to “for commerciality or for recidivism”. It means that if either “commerciality” or “recidivism” is accepted, the possibility of punishment increases without victim´s complaint. In our society today, the copyright related matter is not for special people, it comes to many people as ordinary, direct and indirect matters. Copyright is an product of human’s mental activities and an articulation of this activities. It must be prospected and protected. Because, we can look forward to more good quality culture contents and we can enjoy these only under strict and proper protect of copyright.



특허 기반 사업의 비즈니스 모델 유형 분류

임창남, 김승운

한국지식재산학회 산업재산권 제41호 2013.08 pp.373-421

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초록 close As the knowledge economy is rapidly developed, patents become more important and a lot of patent based businesses are developed. Additionally, many researches have tried to classify business model of patent based businesses. In this research, I classify business model of patent based businesses as four types which are types of patent acquisition, patent finance, patent creation, and patent services of business model according to two objective criteria. The two objective criteria are whether the patent based business company owns patents while running a business and whether the patent based business company provides money when securing the patents.


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