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
제44호 (9건)

영업방법발명의 성립성 판단기준 - 미국연방대법원 Alice v. CLS 판결을 중심으로 -

전정화, 권태복

한국지식재산학회 산업재산권 제44호 2014.08 pp.1-38

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Whether a patent of a computer program is recognized has long been discussed. As of now, the number of patents of computer programs including business method related inventions is on the gradual rise. These days, the criteria of recognizing patentability of computer program inventions have been discussing constantly. Since State Street Bank case in 1998, it has been easy to grant patent right for business method related inventions. Along with that, there has been criticism that the number of bad patents increased. As a result, as shown in Bilski v. Kappos case, there has been action of enhancing the patents of business methods. In the process, on Jun. 19, 2014, in the case of Alice v. CLS, the US Supreme Court unanimously decided that the patent of software being regarded as an ‛abstract idea’ was invalid. It was the first significant Supreme Court decision on patentability of a business method related invention since the Bilski case decision. Therefore, the case may be able to present a critical criterium to judge patentability of a business method related invention. In Korea, recently, it is clarified that software is a subject of a patent, and it is revealed that the claim of a computer program fulfilling the required conditions of patentability of an invention is given the patent as an object under the Patent Act. Thanks to the expansion of the claim, the possibility of granting patent right to software is high. However, there are always concerns over bad patents. For the reason, what matters is how to determine the conditions of patentability and decision criteria. Given the current trend of cases, it is considered that it will be difficult to grant patent right to a simple work processing method or business method. It is predicted that such a trend can contribute to settling the controversy of low-quality patents which has constantly been raised, and furthermore can control patent troll which take advantage of software patents. Although the criteria of patentability of software inventions are prepared well, the criteria of the freshness and inventiveness in terms of technical factors are not clarified. Therefore, it is necessary to continue to make additional discussions of the issue.



균등침해 요건 중 과제해결원리 동일성 판단방법


한국지식재산학회 산업재산권 제44호 2014.08 pp.39-95

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In order for infringement under the Doctrine of Equivalents (hereinafter ‘DOE’) to be found, five requirements must be met. The first requirement is that the claimed invention and the accused embodiment share the same principle underlying the solution to the problem (hereinafter ‘same solution principle test’). This test is similar to the non-essential feature test of Japan and roughly corresponds to the parity (or same value) test of Germany. They all ask whether the accused embodiment has equal value as compared to the solution provided by the claimed invention. This article, based on the comparative study and case analysis, clarifies how to apply the same solution principle test. First of all, since it is part of the DOE, the same solution principle test must be applied to individual elements of the claim, not to the claimed invention as a whole. That is, to prove infringement under the DOE, the claimed element and modified element, as viewed in the context of the overall invention, share the same solution principle. Both in Japan and in Germany, the corresponding test is applied to individual elements of the claim, not to the claimed invention as a whole. In addition, the first requirement does not mean that elements to be replaced with their equivalents should not exist in a claimed element which distinguishes between the claimed invention and the prior art. Rather, it should be determined whether the claimed element and modified element share the same solution principle. In this determination, the characteristic feature, which represents the solution principle, may be used. Furthermore, although prior arts not described in the specification may be used to figure out the solution principle, they must be used to construe the solution principle so narrowly as to negate the first requirement. The DOE aims at providing fair protection for the patentee balanced against certainty for thirds parties. When applied according to the suggestions made above, the same solution principle test would help the DOE achieve its aim.



표준특허의 Unwilling Licensee와 역홀드업에 관한 연구


한국지식재산학회 산업재산권 제44호 2014.08 pp.97-134

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A series of recent smartphone-related disputes in many regions and countries concern a right holder’s ability to obtain injunctive relief for putative infringer’s infringement of FRAND-encumbered Standard Essential Patents(SEP). “Patent holdup” becomes an issue when a patent holder seeks an injunction or threatens to enjoin the potential licensee, who has made sunk investments on features relating to the invention embodied in an SEP held by the patentee. “Royalty stacking” also can add to the problem since an end-user product often incorporates features embodied in many different patents and the total amount of royalties that the manufacturer must pay accumulate accordingly. For these reasons, competition authorities have recommended Standard Setting Organizations (SSO) to mandate the inclusion of Fair, Reasonable, and Non-Discriminatory (“FRAND”) commitments on the SSO IPR policy in order to avoid undue restraints on competition. SEP holders have typically committed to license their patents on FRAND terms, which is irrevocable. Therefore, SEP holders are obliged to negotiate in good faith with potential licensees who wish to implement the SEP holders’SEPs. The meaning of FRAND, however, is not necessarily clear and defined, and this lack of clarity can be a major obstacle in reaching a license agreement between an SEP holder and a potential licensee. The SEP holder can either seek an injunctive remedy or damages if the negotiation does not result in an agreement. Because of the risk of a holdup, which can restrict a potential licensee’s bargaining power, the competition authorities in many countries have sought to restrain the SEP holder’s right to enforce its SEP. There are recent decisions from EU Directorate-General for Competition and U.S. FTC opining that the enforcement of SEP-based injunctive rights could constitute a breach of competition law under certain circumstances. Furthermore, Federal District Courts in the U.S. ruled that FRAND commitments to the SSOs created enforceable contracts between SEP holders and the SSOs such that the SEP holder is obligated to license its SEP on FRAND terms and the defendant is a third-party beneficiary of these contracts. Thereafter, the U.S. ITC issued that if a putative licensee refuses to pay what has been determined to be a FRAND royalty, or refuses to engage in a negotiation to determine FRAND terms, such a refusal could amount to a constructive refusal to negotiate. Such refusal can also take the form of the putative licensee insisting on terms clearly outside the bounds of what could reasonably be considered to be FRAND terms in an attempt to evade the licensee’s obligation to fairly compensate the patent holder. An ITC exclusion order also could be appropriate if a putative licensee is not subject to the jurisdiction of a court that could award damages. The Japanese IP High Court similarly issued a decision that an SEP holder can seek injunctive relief against an unwilling licensee though the IP High Court refused to issue a preliminary injunction against Apple in a suit between Samsung and Apple involving SEPs. This study is aimed at finding the appropriate scope of the enforcement of the SEP rights. Due to the nature of the IP right that is SEP, limiting SEP right would be necessary in some circumstances, but it is also necessary to consider that patent rights should not be restrained excessively. In other words, arguments favoring the restraint of SEP rights citing patent holdup risks should be balanced and preserve the position of the patentee as guaranteed by the policies underlying the patent protection regime.



인간배아줄기세포의 특허보호에 관한 유럽의 최신 동향 - 유럽사법재판소의 Brüstle v. Greenpeace 판결을 중심으로 -


한국지식재산학회 산업재산권 제44호 2014.08 pp.135-175

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The researches on human embryonic stem cells(hESC) which are carried out by many developed countries in this area including the U.S., west european countries, Japan etc. are aiming for treatment of neural diseases such as Alzheimer's disease, cancer. However, patent protection on hESC brings an issue on bioethics, in which the matter is from which stage of development after fertilization embryo is regarded as a human being, because it generally originates from destruction of human embryo if stem cells are derived from the embryo. The Directive 98/44/EC on legal protection of biotechnological invention as to including matters on biotechnological inventions in Europe does not have any definition on what is ‘human embryo’. Therefore, there have been many disputes on the correct meaning of what is embryo as well as what is use of human embryos for industrial or commercial purposes according to Rule 28 of Implementing Regulation to the EPC(European Patent Convention). In this regard, the Brstle v. Greenpeace case of European Court of Justice in 2012 has an important meaning. This case shows what is embryo, which is broadly interpreted than ever. Following the purpose of this case, the UK Intellectual Property Office has revised the Practice Notices in 2012, and published the Examination Guidelines for Patent Applications relating to Biotechnological Inventions in 2013. In addition, German Federal Supreme Court has made a decision on Brüstle case in 2012, in which the human embryo appears to be interpreted narrower than the ECJ. In the future, it is anxious how both ECJ’s judgment and German Federal Supreme Court(BGH)’s judgment on Brüstle case are influenced upon European Patent Office as well as other european countries’ courts. It is meaningful for us to compare and analyze the interpretations of ECJ and BGH on patentability of human embryonic stem cells in Europe.



등록디자인의 상표 등록에 관한 소고


한국지식재산학회 산업재산권 제44호 2014.08 pp.177-217

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Although the design is originally to be influenced by the Design Protection Act, to protect it under the Trademark Law by registering a trademark is to contribute to the development of industry and to provide protection in the interest of consumers by pursuing to maintain goodwill of those using trademarks. Since a trademark occurs with its distinctiveness, when an emblem (a particular mark) is not inherently distinctive, the trademark must be proven that it has achieved distinctiveness in the consumer’s mind in order for it to become a trademark. However, determining whether a particular mark has acquired distinctiveness is a matter of the fact finder. Especially such perception is not about the general public, but about the perception of the consumers who are buyers of the product. Whether a particular product is distinctive is something up to whether the consumers perceive the mark as being distinctive. Therefore, as a result of using the mark before registering as trademark, if that particular mark has been distinctively recognized as a mark associated with a particular product, that certain product could be set as a designated good to be used to help register the trademark.



상표등록의 불사용취소심판에서 등록상표의 동일성 판단 - 대법원 2013.9.26. 선고 2012후2463 전원합의체 판결을 중심으로-


한국지식재산학회 산업재산권 제44호 2014.08 pp.219-261

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According to a precedent of the Court on the use of identical trademarks in the trial for cancellation for nonuse of trademark registration, it was confirmed that the use of a socially accepted identical form as well as the physically identical form can be considered as the use of the identical trademark and therefore cannot be cancelled. There has been no precedent set by the Court on whether it is the use of an identical registered trademark if a part of either the English or Korean alphabet in the combined trademark is omitted. In the Supreme Court Decision 2012 Hu 2463 presented on 26 Sep. 2013 by the Supreme Court, the Court defined that the use of either the English title or its Korean transliteration title can be treated as the use of a conventionally identical trademark. In the same judgment, the Court confirmed the actual use of the trademark stating that given the English education level of Korea, the use of the identical trademark is acceptable because the English part of the registered trademark, ‘CONTINENTAL’, can be called ‘CONTINENTAL’ even without stating it in the Korean alphabet. This is a significant precedent which suggests a reasonable methodology for identifying trademarks in consideration of Korean language conventions, English education level, and the development of the Internet. Among the examples of the legislation of other countries, Article 50 Clause 1 in the Trademark Law of Japan stipulated that the range of identity for the registered trademark can include the trademarks which are socially accepted to be identical with the registered trademark, presenting the range in parentheses. This same point was established with the precedent of the Korean Court. It is required that the types of trademarks which can be considered to be identical with the registered trademark by social conventions for the consistent management of Trademark Law be defined.



방송물의 유통 및 활용과 관련된 몇 가지 고찰


한국지식재산학회 산업재산권 제44호 2014.08 pp.263-301

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Copyright law has very close relation with the factors which influence on the development of broadcasting industries, such as digital broadcasting technology, internet platform system, etc. Also, copyright law plays key role on the stage of production and distribution of the broadcasting contents. Whenever the new technology or digital media appears according to the development of digital technology and the transformation of network environment, copyright problems have been arisen and become major legal issues. To vitalize the distribution of the broadcast contents, not only copyright protection but also fair use of the contents are needed. Excessive copyright protection of the contents could cause the misuse of legal status, and could exert a harmful influence on the sound development of broadcasting industries. Therefore, to vitalize the efficient production and distribution of the broadcast contents, prudential considerations are needed in balancing the copyright protection and fair use of the contents.



日本의 영업비밀보호 강화에 따른 韓 · 日간 기술경쟁 변화와 영향

백영준, 조용순

한국지식재산학회 산업재산권 제44호 2014.08 pp.303-342

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On April 2014, Japan released a “Trade Secret Task Force Report”. Regarding this, Japan Patent Attorneys Association had various opinion. In addition, the contents of this report was reflected in the Intellectual Property Strategic Program 2014 and the 2014 revision of Japan Revitalization Strategy. It contains national strategies for the prevention of technology leakage and the protection of trade secret; for civil-national organization partnership; and for business correspondence etc. In Korea, the proprietary plan of national intellectual property 2014 has taken measures to protect trade secrets and to prevent technology leakage. Japan concerns japanese technicians’outflow, and at the same time Japan also has tried to technology outflow throughout M&A. However, what matters is Korea still needs Japanese technology. In Korea, we need to take a complementary 「win-win strategy」. For example, with having innovative ideas, we could deploy global business with Japanese companies which has cutting-edge technology. Additionally, in Korea, there are enormous laws for the prevention of technology leakage and the protection of trade secret. Therefore, the role of the control tower which coordinates policies for the trade secret protection and revised related laws has to be strengthen.



국내 바이오테크(BT)산업의 특허전략이 기업성과에 미치는 영향에 관한 실증연구

김주일, 조현정

한국지식재산학회 산업재산권 제44호 2014.08 pp.343-383

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Biotechnology industry have been spending huge amount of time and money on R&D. Furthermore there are some types of approval systems which are necessarily required for commercialization. Therefore, patent is especially important as a legal instrument for protection of technology in Biotechnology industry nowadays. This study is to find out how patenting strategies affect company performance in Korea biotechnology industry and to induce main issues from analysis related to question, “What do we supposed to consider while trying to making patent strategies.” For such, we used patent-related and financial information of 118 companies in Korea biotechnology industry. In particular, this study tries to apply the patent strategy model of Ernst(1995) on Korea biotechnology industry and to do empirical analysis on the degree of company performance affected by various patenting strategies. As a result of study, Korea biotechnology industries are supposed to be classified into pharmaceutical companies which have high patent activity(Active Patentees) and other pharmaceutical companies which have low patent activity(Inactive Patentees), and NBFs(New Biotechnology Firms) in bio industry which perform patent activity selectively(Selective Patentees). There is difference in company performance by types of patent strategies. NBFs have much benefit more than pharmaceutical companies whose patent activity is low. It means that patent management is needed in Biotechnology industry.


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