자가 증식하는 발명의 침해 사례를 통한 특허 권리범위의 판단- 특허권 소진의 적용과 관련 문제로서의 특허권 남용을 중심으로 -

Today, self-replicating invention has raised unique problems related to patent exhaustion. In general, the doctrine of patent exhaustion is to limit patent rights after patented product is sold. However, a new entity is made by the use of the sold product in self-replicating invention. If patent exhaustion occurs in this case, the user or purchaser could get new entity and he could use the entity like patent holder without any restriction. When comparing other patent holders with general invention, this is not fair because the exhaustion limits the patent owners’ rights. Ths U.S. courts have recognized this problems and accepted the methods to evade the patent exhaustion. One is licensing with limit terms based on contract law and the other is adding post-sale limits to the product when selling it. However, as usual, the limit tool should be placed on the proper boundary. In particular, patent misuse has become the way to set the boundary by preventing patent holders from expanding the scope of patent or making harm to competition. Thus, patent exhaustion can be limited but the line should not be out of patent misuse. In addition, the U.S. courts have repeatedly decided that the patent exhaustion did not occur for the right of make. Particularly, the courts defined that patent right for self-replicating inventions cannot be exhausted even if there was no way to evade the exhaustion because the right to make is not exhausted as long as the new entity was made. As a result, whether the patent exhaustion and patent misuse can be applied depends on the interpretation of the object of patent law, which makes a balance between patent interests and public interests. Currently, according to the object of patent law or the trend of patent system, the patent exhaustion of self-replicating inventions should not be applied too broadly.