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
제45호 (9건)

유인이론의 관점에서 본 ‘통상의 기술자’의 기술수준


한국지식재산학회 산업재산권 제45호 2014.12 pp.1-40

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Because the inventive step is determined on the bases of the level of a PHOSITA’s skill and the level of a PHOSITA’s skill determines not only the inventive step of an invention but also the validity of a patent, deciding the inventive step without determining the level of a PHOSITA’s skill is not reasonable. According to the “inducement standard”, the level of a PHOSITA’s skill should be determined not on the level of researchers’ or inventors’ skill hired with the incentive to obtain patents but on the hypothetical state without the promise of patent protection. Because the level of a PHOSITA’s skill is different in technologies, it should be set by considering the characters of each technology and industry. While software industry is not so greatly dependent on the patent system, patent protection is essential to the pharmaceutical industry. It is argued that software technology could develop naturally without the patent system. However, it would be difficult to imagine that pharmaceutical technology could develop without the patent protection. Therefore, it would be reasonable to consider that while the level of a PHOSITA’s skill in software technology is slightly lower than the level of a software technician’s skill with the patent system, the level of a PHOSITA’s skill in pharmaceutical technology is greatly lower than that of inventors or specialists in the technology.



투여용량 · 용법에 특징이 있는 의약발명의 특허성


한국지식재산학회 산업재산권 제45호 2014.12 pp.41-85

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This article is related to patentability of medicinal invention characterized in which dosage and administration is specified. According to the practice of Korean Intellectual Property Office, medical procedure such as treatment method of human being is unpatentable for the reason that requirement of industrial applicability is not met, even though it satisfies the requirements of novelty, inventive step and so on. Meanwhile, a medicinal use invention, an invention of a product, can be patented. In accordance with exhaustion of new material, the importance of medicinal use invention is growing. Recently, there are a lot of applications for medicinal use inventions which are based on discovering of a new dosage and administration as well as based on discovering of a new medicinal use of a material itself. A new dosage and administration of a medicine may be considered as treatment method of human being even though it is claimed as an invention of a product. For that reason, European country and Japan did not give a patent to a medicinal invention characterized in which dosage and administration is specified. However, according to revised EPC 2000, any substance or composition for any specific use in a method for treatment of the human can be patented provided that such use is not comprised in the state of the art. In addition, according to revised version of Japanese Patent Examination Guideline, a medicinal invention characterized in which dosage and administration is specified is also patentable provided that it satisfies the requirements of novelty, inventive step and so on. Through comparative research this article suggests to revise Examination Guideline for medicinal use invention to permit patentability of medicinal invention characterized in which dosage and administration is specified.



미국에서의 특허적격(Patent Eligibility) 판단에 대한 연구 - 인간배아줄기세포와 컴퓨터 프로그램을 중심으로 -


한국지식재산학회 산업재산권 제45호 2014.12 pp.87-132

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Even though the U.S. Supreme Court has acknowledged the subject matter very widely, it has rejected the patentability against the law of nature, physical phenomenon, and abstract idea. The decision whether an invention can be patentable is based on the preemption concept and inventiveness concept. Thus, the judgment of patentability is made by preemption and inventiveness test. In addition, these tests are made not respectively but complementary. In other words, the judgment is composed of two step test: first step is judging whether an invention is not patentable; second step is judging whether an invention is addicted to the inventiveness. However, this two step test has some problems. One of the problems is what is unpatentable subject matter, and another is what degree of inventiveness is required for passing patentability. Due to the features of the problems, the standard for this judgment cannot be decided uniformly. But, it is necessary to set out the direction of the boundary and the degree because new forms of invention is developed continuously. The main direction should be the balance between the incentive of patent owner and public interests, that is, the purpose of patent law, and the judgment has to be examined as a whole. Moreover, considering the statute, the history of legislation, the protection for the existing patent, and the features of patentability, the scope of subject matter has not to be interpreted too broadly. Next, with regard to what degree of the inventiveness is needed, human inventive faculty makes sufficient difference from the unpatentable matter and the difference should not trivial, routine, well-understood, conventional in order to be meaningful limitations. In addition, since the judgment for the inventiveness test can be considered in other patent requirements, it has not to be interpreted strictly. The recent lawsuits concerning human embryonic stem cells and computer program should be handled by two step test which is composed of preemption and inventiveness concept like all others. Since the two matters may be included in the unpatentable matters, the judgements would be focused on the inventiveness. Of course, although there are many needs to limit the patentable scope, the judgment of the patentability of them must follow the above principle, and this is the best way to solve the social imbalance.



특허이의신청제도의 재도입 방안에 관한 연구


한국지식재산학회 산업재산권 제45호 2014.12 pp.133-167

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The information offer system became nominal and public inspection of patent applications weakened as the number of patents granted without laying open to the public increased due to the fast first office action of Korean Intellectual Property Office (KIPO). Although a patent examiner tries to examine the applications with no errors, it is not easy to do perfect examination, which results in granting non-immaculate patents. Defective patents are very apt to lead to a big patent dispute, so urgent legislation is required to reduce the possibility of the disputes in this situation. KIPO has the trial for invalidation of a patent to cancel non-immaculate patents, but its processing fee is relatively high and it takes much time to see the results of the trial. Therefore, a new dispute settlement system needs to be introduced to make sure for anybody to confirm the patentability in a faster and cheaper way. Opposition is an administrative process available under the patent law which allows the third parties with doubt on the patentability to request a reexamination of a patent within a certain period after registration. If the opposition of KIPO, merged into the trial for invalidation in 2006, is reformed after reviewing foreign patent laws so as to meet the industrial needs and to fit the industrial settings, it must be one of the best alternatives to restore the function of public inspection of a patent application to its original state. When considering similar foreign opposition systems, United States Patent and Trademark Office (USPTO) has reexamination processes in which Patent Trial and Appeal Board deals with the cases and there is a certain condition for the examiner to start reviewing the cases. Moreover, USPTO has multiple types of reexamination in a parallel manner so that the third parties could use the reexaminations according to their circumstances. Japan Patent Office (JPO) introduced a new opposition system in which a panel of trial examiners deals with the cases only by documentary processing and the panel starts examination ex office as needed, which results in increasing fairness of the patent opposition system. Furthermore, the JPO’s new opposition system makes it possible for the third parties to rapidly confirm the validity of a patent. The new dispute settlement system of KIPO might be an patent opposition in which anybody with doubt on the patentability can request a reexamination within 6 months after granting the patent, wherein the ground of opposition is only raised under novelty and inventive step based on prior art consisting of printed publications, which guarantees fast processing and fairness. Also, it is reasonable that a panel of trial examiners deals with the opposition cases so as to reduce work load of KIPO and guarantee low processing cost.



국제출원(PCT)의 보정범위와 무효에 관한 연구


한국지식재산학회 산업재산권 제45호 2014.12 pp.169-207

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The applicant in the international filing can amend claims according to Article 19 of the PCT Regulation after receiving the International Search Report, and can amend specification, claims and drawings according to Article 34 of the PCT Regulation during the international preliminary examination. The amendment according to Article 19 and Article 34 can be within the scope described in specification, claims and drawings filed on the international filing date. Although the amendment against the scope of amendment may not incur specific problem in the international phase, the opinion would be issued to give a change for the applicant to submit written argument and written amendment in the international preliminary examination. The translations of the original publication and written amendment are submitted in entry of national phase and the Examiner of the designated country will examine on the basis of the translations. If new matter would be added in the amendment of international phase, the examination is not performed to apply Article 19 or 34 of PCT Regulation, but performed to apply Article 204, Article 205, Article 208 and Para 2 of Article 47 of the Korean Patent Law. The Examiner would not examine on the basis of the original publication but examine on the basis of the translation. Although the original publication and the translation are not consistent, there is no responsibility to confirm whether or not the content which is not described in specification, claims and drawings submitted on the international filing date defined in PCT is added in the content of amendment. Accordingly the international application violating the range of the amendment can be allowed to be patented, and there has a problem in that the patent would be invalidated thereafter. For solving such a problem, it is needed to describe the provision obligatorily confirming the original publication and the translation to decide whether or not the new matter is added, in the Patent Law.



디자인권의 침해 판단 기준에 관한 연구


한국지식재산학회 산업재산권 제45호 2014.12 pp.209-251

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Design patents are a useful tool and have been used successfully in a number of industries with longer product life cycles, such as consumer goods, tools, and jewelry. While some will debate whether Apple v. Samsung lived up to its billing as the “Trial of the Century,” one of the most difficult questions an intellectual property lawyer can be asked is whether a given product infringes a design patent. The test for determining design rights infringement is whether the alleged infringement is substantially similar with from the registered design. In assessing whether there is no substantial difference between the two, the court adopts the test of imperfect recollection. It must be decided on a comparison of the features which appeal to, and are judged by, the eye. A factor which has to be taken into account in assessing the scope of a registered design is the background of the relevant prior art in existence. However, the current design infringement test is not laid down by the Design Act. Many courts tried to establish some relevant standard for determining design right infringement. In this article, my intent is to show various proper standard for desifn infringement.



부정경쟁방지법상 신설된 일반조항의 법적성격과 그 적용의 한계


한국지식재산학회 산업재산권 제45호 2014.12 pp.253-312

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Recently a revised provision containing a General Clause(Article 2, Paragraph 1, Subparagraph 10) to the Unfair Competition Prevention and Trade Secret Protection Act has been introduced in Korea. It says that “An act to use the product of significant effort and investment made by a competitor without permission, for one’s own business and in a manner contrary to business ethics or the order of fair competition, and through this to gain unjust profit by taking advantage of the effort and investment of the competitor and violate the competitor’s profit legally entitled to protection”. The purpose of this revision is to seek a proper measure against new and different types of unfair competition. However, the newly introduced General Clause has some characteristics and limitations comparing to the General Clause of Germany or Switzerland. First, it is not a universal but a supplementary characteristics so that our general clause can be applied selectively only to the specific provision listed Article 2, Paragraph 1, Subparagraph. Second, unlike Germany and Switzerland, the purpose of the Act is limited for the protection of competitioner’s interests without regard to the consumer protection or public interests. Third, it’s subject matter is limited to the exploitation of others' achievement among many kinds of general unfair competition acts, which is codified on the Suprem Court’s decision recognized the tort liability. Fourth, the newly introduced General Clause has also limitation in perspective of legal relief. Furthermore, the introduction of the new General Clause require rebuilding a new relationship between Unfair Competition Prevention Act and Antitrust & Fair trade Law that has also its own General Clause. Relationship between Unfair Competition Prevention Act and intellectual property laws, the general tort doctrine also require some reconsideration. This paper deals with the above said characteristics and limitations of the the new General Clause. Furthermore, this paper examines some question and Legal issue caused by the interface between the intellectual property theory and the general tort doctrine and Antitrust & Fair trade Law. Finally, this paper discusses the desirable approach for rebuilding a new relationship between Unfair Competition Prevention Act and Antitrust & Fair trade Law.



프로야구게임 제작에 관한 야구종사자의 퍼블리시티권


한국지식재산학회 산업재산권 제45호 2014.12 pp.313-368

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In perspective of logical sequence, this article is the last of trilogy on the right of publicity which follows the first arguing that it is reasonable in the Korea to recognize the right of publicity distinguished from the right of personality and the second arguing that such recognized right is belong to the area of unfair competition law rather than that of copyright law. In this article, the detailed aspects of the right of publicity will be revealed by legal analysis associated with a specific subject. The specific subject is no less than virtual baseball game. The infringement to the right of publicity occurs frequently in virtual sports game such as fantasy baseball games because they must inevitably borrow detailed characteristics of many players or teams in real space. With respect to creation of a virtual baseball game, not only a famous player but also a nameless bench player, baseball manager and coach are eligible for the right of publicity while the eligibility of the team itself is still seriously doubted. Moreover, the horizontal scope of the right covers, as an example for a baseball player, all symbols including his initial name and voice which could reveal his identity. In this regard, the judgment by Seoul High Court on so-called Sang-Min Park fake singer case where the issue was whether it would be the mark or not under the Korean Unfair Competition Prevention Act was arguably wrong because the court discriminated against the other symbols, unlike the singer’s name. The subject of legal protection should be determined by substantial and flexible standard as whether the issued subject could identify someone, not by formalistic and rigid standard as whether it is a name or other symbols.



지식재산권법상 용어에 관한 비판적 소견


한국지식재산학회 산업재산권 제45호 2014.12 pp.369-402

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This article is devoted to review and clarify some legal sentences and terms in Korean Intellectual Property Acts including Copyright, Trademark and Patent. It is possible to understand what his or her rights and duties are clearly, when he or she reads Korean Acts by recognizing that the legal expressions are in keeping with the Korean Grammar and correct. And it is reasonable and rightful that the Koreans could understand the same legal object in the same meaning by the reading the Korean legal sentences or words. Some legal expressions in the field of Intellectual Property Acts are grammatically incorrect and do not match to other legal terms of property law, in my opinion, and that reason has been caused by the indirect influences of Japanese Grammar. The phrase ‘general succession’ in Korean Intellectual Property Acts is a typical example. I believe that the one of the academic duties left to the Korean Intellectual Scholars and Practitioners is to fully consider the unnatural legal expressions and make Koreans understand the meaning of legal sentences and their rights easily.


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