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
제48호 (10건)



‘제조방법이 기재된 물건발명 청구항(Product by Process Claim)’의 특허청구범위 해석 - 대법원 2015. 1. 22. 선고 2011후927 전원합의체 판결 -


한국지식재산학회 산업재산권 제48호 2015.12 pp.1-42

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This article discusses the Supreme Court’s 2011hu927 en banc decision rendered on January 22, 2015. This case provides clear guidelines as follows for the construction of Product-by-Process claims(hereinafter called ‘PbP claims’). “PbP claims should be construed as product invention because the subject of invention in PbP claims is not the process, but the end product itself obtained through the process. Therefore, even though PbP claims are limited by and defined by the process, determination of patentability is based on the product itself, not on its method of production. Only the structure or properties implied by the process steps should be considered when assessing the patentability of PbP claims over the prior art.” These rules should be applied equally when deciding the scope of a right about PbP claims in the infringement suit. The Supreme Court’s 2013hu1726 decision rendered on February 12, 2015 basically had the same view. In addition, according to this decision, in cases where clearly unreasonable circumstance is present, such as the scope of a right drawn from the construction applying aforementioned rules is unduly broad compared to the substance of invention understood from the entire specification, the scope of a right may be limited to the process itself written in the claim. The aforementioned decisions have significant meaning, since they established resonable guidelines for the PbP claims construction which is a highly controversial issue in the world, independently of other countries.



등록무효사유를 가지는 상표의 사용에 의한 식별력 취득 - 대법원 2011후3698 전원합의체 판결 평석 -


한국지식재산학회 산업재산권 제48호 2015.12 pp.43-72

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In the above-referenced case, the Korean Supreme Court ruled en banc that the determination as to whether or not a mark has gained distinctiveness should be made as of the time when the mark is examined in a trial for confirmation of its scope (a “Scope Confirmation Trial”), as opposed to as of the time of the mark’s examination for registration. In reaching its decision, the Court took into consideration that the existence and the strength of the distinctiveness of a mark—which is a factor in determining the similarity in marks—are relative to other marks. Accordingly, despite that the subject mark had causes for invalidation, the Court validated the trademark by assessing the mark’s distinctiveness as of the time of the Scope Confirmation Trial. The distinctiveness of a mark is only one of many factors considered in determining the similarity in marks; and, as such, there is no legal basis to validate a mark that is otherwise clearly subject to invalidation on grounds of the mark’s distinctiveness gained over time. However, by validating a trademark as of the time of a Scope Confirmation Trial despite that such mark was clearly subject to invalidation, the Court appears to have gone beyond the long-held principle in the Korean trademark system which recognizes the first-to-file rule and confines the scope of the trademark protection to what is described in the trademark application. The Court’s decision, therefore, deserves an in-depth discussion.



인터넷 링크행위자는 이제 정범은 물론 방조범조차 아닌 것인가? - 대법원 2012도13748 판결의 문제점과저작권 형사범죄 처벌의 논리 -


한국지식재산학회 산업재산권 제48호 2015.12 pp.73-162

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In the copyright area of South Korea where many right holders often give up time and cost consuming litigations as an effect of extreme vulnerability to infringement, so far there is no en banc decision by Korean Supreme Court. Considering the purpose of this academic seminar to deal with an en banc decision itself or any related case by Korean Supreme Court, I inevitably analyzed the recent case, the position of which should be changed by a future en banc decision. It is the Korean Supreme Court panel’s decision 2012do13748 decided on Mar. 12, 2015 which ruled that aiding and abetting liability could not be imposed though the criminal defendant made a link to copyright infringing materials. By clarifying that any linking activity cannot fall on aiding and abetting or indirect infringement, this decision goes one step forward from the standpoint of existing precedents which ruled a linking is hard to be a direct infringement such as reproduction or transmission itself under the Korean copyright law. However, such a conclusion is colliding with the positive stance of the Korean Supreme Court in “Pantie Newspaper” case recognizing that a linking to porn is equal to displaying the porn and is not fitting at all with the Article 102 of the Korean Copyright Act providing the limitation of liability for online service provider, which provision is clearly based on that the service provider could be liable for its linking service under the aiding and abetting theory. Also, the conclusion is problematic because, from the perspective of policy, it is likely to unduly encourage copyright infringement rather than to uplift the freedom of the Internet and it is not matching with the other countries’ attitudes which commonly admit the possibility to impose at least the indirect or secondary liability on a linking activity. So, it shall be modified well by a future en banc decision by the Supreme Court. In addition, it should be kept in mind that Korean Courts have committed logical mistakes in many cases including this 2012do13748 decision, partly because the specific characteristic of copyright law makes it too hard and too effort-consuming to accurately analyze the combination of complex copyright divided into as many as ten individual sub-rights and much more complex fair use provisions. All copyright stakeholders should devote much more effort to address the complement of copyright legal system related to respond effectively to the infringement rather than to concentrate the above effort-consuming analysis. It is likely to be a clear shortcut by which we can expect various court cases including en banc cases in Korean copyright area. Besides, as this article shows the example by relying on Korean criminal law in trying to find an appropriate solution for the criminal case of copyright infringement, the much more important thing is to harmonize and cooperate with impeccable logic that is already taken in the adjacent laws which is also a part of the overall Korean Law, not to analyze the related trend of foreign intellectual property laws.




신규성의 실질적 동일성 판단기준 - 대법원 2014후1181 판결을 중심으로 -


한국지식재산학회 산업재산권 제48호 2015.12 pp.163-200

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It was judged in the Supreme Court that a novelty can be applied in a case where an invention described in claims is identical with a cited invention as well as a case where an invention described in claims is substantially identical with a cited invention, according thereto, in the examination criteria, it is regarded that there is no novelty in case where both have the substantial identity and a patent cannot be accepted. Although premising the case where the invention described in claims is substantially identical with the cited invention in the Supreme Court, it would have been to be the issue whether or not both have the substantial identity is realized by what criteria and determination. In order to determine the novelty, first, the determination criteria in that the gist of the invention can be accepted by referring to description of invention in case where the gist of the invention cannot be accepted only by the item described in claims was suggested. Next, after accepting the gist of the invention described in claims, it is determined whether or not the gist of the invention has the identity with the cited invention. Then, if it would be identical therewith, a patent cannot be obtained, however although it is the case where there is a difference, it cannot be accepted to be determined that all would have the novelty. Although the invention described in claims and the cited invention are not completely identical, it should be interpreted not to have the novelty if the difference (i) is merely a simple addition, change, cancellation, etc. of the well known, publicly used technology in the concrete means for solving a subject, (ⅱ) has no new effect obtained thereby, (ⅲ) is merely an extrinsic item which does not substantial influence on the technological concept of the invention.



투여용법ㆍ용량을 포함하는 의약용도발명의 권리범위


한국지식재산학회 산업재산권 제48호 2015.12 pp.201-241

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This article is related to scope of protection of pharmaceutical use invention including dosage regimen According to Korean Patent Examination Guideline, medical activities such as methods for treatment of the human body by surgery, therapy or diagnosis is being regarded as industrially inapplicable inventions, therefore, cannot be patented even though they satisfy the requirements of novelty, inventive step and so on. Meanwhile, Korean supreme court usually held that new dosage regimen, correspond to a medical activity, is not a constitutional element of pharmaceutical use invention. As a result, in Korea, there was no need to discuss as to scope of protection of dosage regimen. However, recently there was a Supreme Court en banc decision ruling that in cases where the administration and dosage are added on top of the target disease or efficacy of a medicine as an invention of a product, such administration and dosage should be viewed not so much as a medical practice itself, as an expression of those features through which a medicine may fully realize its efficacy, thereby constituting an element of invention that attaches an entirely new significance to the medicine as a product. A new patent may be granted to a medicine meeting the patentability requirements, including novelty and nonobviousness, by virtue of the addition of administration and dosage. Under these circumstances, it is urgent to establish the scope of protection of pharmaceutical use invention including dosage regimen and this article suggested the reasonable protection range.



발명의 컴퓨터 구현 논의에 따른 특허제도 개선방안


한국지식재산학회 산업재산권 제48호 2015.12 pp.243-290

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Patent system can be through the invention of Patent, the use and the protection of the balance of the three axes to achieve its purpose. It is not an exaggeration to say that has been organized around the protection of until now. From software patents intended for use is made for the purpose of blocking the invasion of competitors. Thus, patent usability decreases, it becomes possible to generate multiplied separately from the purpose of the patent system intended for technicians innovation. Therefore, rather than a defensive patent, through the use, you need to be able to contribute to the technology advances and cultural promotion. Copyright system and or the maximum of the difference of the patent system, biggest problem of software patents, and even if they do not mimic the patent of others is the point of becoming a patent infringement. For these reasons, patents have been filed is questionable whether to attract technology development. Thus, patent strategy to elicit innovation seen as “not a protection technique, and the use of technology”, it is necessary to establish the direction of the policy.



소극적 권리범위확인심판에서 실시 ‘계획’ 또는 ‘예정’인 확인대상발명의 확인의 이익


한국지식재산학회 산업재산권 제48호 2015.12 pp.291-326

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Korea has had a unique system, called negative patent scope declaration trial, through which a requester may ask whether a proposed or planned act would be in the scope of the patent right. Like a normal declaration action before a court, interest of declaration shall be recognized in the trial as well. In that regard, there exist different opinions on the proper level of declaration interest. Based on the belief that the most important function of the negative patent scope declaration trial is to prevent future patent disputes, this author contends that declaration interest must be flexibly and widely recognized in the trial. Those who have different opinions apprehend that such flexible and wide recognition enables a requester to misuse the trial. In other words, a defendant of a patent infringement litigation may specify a declaration target invention differently from his actual products and getting a favorable decision from the trial and then by submitting the decision may try to deceive the civil court. Based on the following reasons, this paper proclaims that the apprehension on such misuse is much exaggerated. Firstly, current system which demands the requester clarify whether the declaration targer invention is being actually worked or is being planned to work makes such misuse difficult. Secondly, the patentee himself can prevent such misuse by admitting that he does not have any intent to raise a patent infringement litigation against the declaration target invention specified by the requester and by making the trial dismissed lack of declaration interest.



저작물 개념에 관한 소고


한국지식재산학회 산업재산권 제48호 2015.12 pp.327-356

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The conceptual definition of ‘work’ is the most difficult as well as the most important. In the existing Copyright Act, the ‘work’ is defined as a creative work that expresses human thoughts and emotions. The term ‘works of applied art’ means the artistic works that may be copied on the goods in the same shapes, and whose originality may be recognized apart from the relevant applied goods, and that include designs, etc. It is very difficult and risky to determine non-copyrightability of intellectual products because the creativity is not a digital issue but an analogue issue. On the other hand, ‘reproduction’ means to execute construction works in accordance with the models or plans for the relevant construction works in cases of architectural structures. In order to expand the concept of work without imposing limitation on the fields, we need to reestablish the legal basis of requirements demanded for ‘works of applied art.’ Also, the close review is required especially on the basic terms in copyright law such as the term ‘reproduction.’



온라인서비스제공자 책임규제에 대한 정합성 검토


한국지식재산학회 산업재산권 제48호 2015.12 pp.357-400

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Development of the Internet industry is unthinkable aside the Online Service Provider(OSP) who mediates information and content, and offers network means. However, while dysfunction of the Internet has been increased, a blade has gradually headed for OSP in order to regulate illegal information and infringing contents effectively. OSP who distributes a large amount of information and content, has no general obligation to monitor them it hosts because of anxiety on a conflict with the freedom of expression and an unreasonable burden to it. However, it may be responsible on certain illegal activities of users through its information network. The regulation on OSP liabilities began in a field of copyright, and has been applied in various fields recently. The characteristic of regulation on OSP in Korea, incorporates safe harbour provisions in the copyright law to provide immunity to it from indirect infringement like leading jurisdictions such as US, Japan and the EU. The regulatory approach on limitation of OSP liability divided into two regimes. One is a single law regulates various illegal actions including copyright infringement, defamation, illegal information, etc, and the other is several separate legal manner regulate each act. The former is taken by the EU and Japan, and the latter is taken by US and Korea. The flow of regulation on OSP liability has been recently changed in Korea in the form of imposing direct responsibility gradually from the initial limited liability method. The flow are found, for example, at 「The Act on Promotion of Information and Communications Network Utilization and Information Protection」, 「The Act on the Promotion of the Game Industry」, 「The Protection Act on the Children and Juveniles from Sexual Abuse」, 「The Telecommunications Business Act」, 「The Outdoor Advertising Management Act」, 「The Framework Act on the National Language」, etc. It may be seen to impose administrative regulations and even criminal penalty to OSP at these laws. These sporadic regulation is due to the fault did not take into account the Internet industry, and the lack of adequate understanding of the initial copyright law approaches on the limitation of liability. Such inconsistent regulation leads to redundancy and inefficiency, and hinders the freedom of expression and the emergence of a creative service in the Internet industry. However, in the United States, taking a vertical approach like Korea, we may find indemnity provisions for OSP in various laws because it has foundation such as a self-regulatory principle and competition centered in regulation. This article proposes to regulate OSP responsibility through a single unified legislation such as the Act on limitation of OSP liability in Japan, and the European E-Commerce Directive.



인터넷 광고와 퍼블리시티권의 성격 - ‘부정경쟁방지법’ 차목의 적용을 중심으로 -


한국지식재산학회 산업재산권 제48호 2015.12 pp.401-445

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Recently, the likeness of celebrities, such as their names and photos, has widely been used for the Internet advertising, which, in turn, was followed by law suits arguing that the right of publicity was infringed. However, the courts, especially Seoul High Court(SHC), were very reluctant to hold that publicity right was infringed. In the cases, celebrities’ names and photos were appropriated for ‘keyword advertising’ and ‘viral marketing.’ SHC denied both existence and necessity of ‘right of publicity’ under current Korean legal system. Further, it denied the applicability of ‘Cha-Mok’ of Korea Unfair Competition Prevention Act(UCPA). It also held that the defendants in both ‘keyword advertising’ and ‘viral marketing’ cases did not infringe the plaintiffs’ personal right on names and photos. The purpose of this article is to provide theoretical basis for the protection of publicity right in Korea. This article argues that the publicity right should not be, and does not have to be, approached by property rule. In ‘Haelan case,’ the first case in the U.S. which recognized ‘right of publicity,’ the court said that “the tag “property” simply symbolizes the fact that courts enforce a claim which has pecuniary worth.” This article also argues that liability rule approach is superior to property rule approach in protecting right of publicity. Liability rule is more appropriate due to the lack of information enough to grant full property disposition to celebrities’ likeness, and due to the variety of situations in which the likeness is commercially used. History has shown that too-little protection by courts of emerging economic values almost always resulted in too-much protection by legislation, which conflicted with other social values such as freedom of expression. Liability rule approach can achieve the goal of appropriate protection without harming other social values. Courts should keep in mind that ‘protection’ in the field of intellectual property means ‘fair distribution of economic values among contributors.’


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