후출원 특허발명을 확인대상으로 하는 권리범위확인심판 = Patent Trial to make a declaration whether a later patent falls within the scope of protection of an earlier patent

다국어 초록 (Multilingual Abstract)

Can the owner of an earlier patent prohibit the owner of a later patent from using the invention if the later patent falls within the scope of protection of the earlier patent? This article considers this question in the context of both patent scope declaration trial and infringement action. Regardless of whether the nature of a patent is a monopoly right (with a positive right of use) or an exclusive right (without a positive right of use), an accused infringer cannot use the fact that its accused device or method is covered under a later separate patent as evidence of non-infringement. First, if the nature of a patent is an exclusive right, separate patentability does not automatically negate infringement because a patent does not give the inventor the right to practice the patented invention. Second, even if the nature of a patent is a monopoly right, the positive right of use is limited when two patents with different priorities collide. The priority principle as ageneral rule of intellectual property law applies here. In addition, if the later patent offered as a defense covers the same claimed subject matter as the earlier patent accused of being infringed, then a possibility exists that the later patent offered as a defense would be invalid. Therefore, the owner of an earlier patent can prohibit the owner of a later patent from using the invention if the later patent falls within the scope of protection of the earlier patent regardless of whether the later patented invention is a dependent invention or not. According to the case law, when the subject matter compared with the patented invention is another patented invention, between a patent scope declaration trial as to infringement and a patent scope declaration trial as to non-infringement, only the latter is allowed. However, there is no reason to differentiate between the former and the latter. In addition, the relationship between earlier and later patents should be dealt with the same way both in patent scope declaration trial and in infringement action.