권리범위확인심판에서의 진보성 판단에 관한 고찰

The Supreme Court en banc Decision 2012hu4162 declared thatthe court in infringement litigation cannot decide whether the patentedinvention has an inventive step in a trial to confirm the scope of a patentand change precedents. Until the en banc Decision, the Supreme Court had decided theinventiveness of the patented invention in a trial to confirm the scope ofa patent except the Supreme Court Decision 97hu2095 sentenced onMarch 20, 2014. In addition, even though the Patent Act stipulates thatthe patent can be invalidated though an invalidation trial of the patentwhen the patent cannot satisfy the requirements to be patented, theSupreme Court en banc Decision 2010da95390 which is aninfringement suit notified that the court dealing with an infringementsuit could determine whether the patented invention had an inventivestep. Considering the Patent Act and the Supreme Court en bancDecision 2010da95390, the Supreme Court en banc Decision2012hu4162 makes us have questions. Because the Supreme Court enbanc Decision 2010da95390 declared that the courts of an infringementsuit could decide the inventive step of a patented invention when it wasobviously considered to be invalidated in an invalidation trial, itappeared that courts of a trial to confirm the scope of a patent (which isbasically similar to an infringement suit in that it is to confirm whether an accused invention belongs to the scope of the patented invention)also could decide the inventive step of the patented invention. Againstthis backdrop, this paper argues that the en banc Decision 2012hu4162is not proper in that it prohibits judgment of the inventive step of apatented invention even when it is considered to be invalidated in aninvalidation trial and the en banc Decision is a trial to confirm the scopeof a patent.