복수주체가 관여하는 특허발명의 실시와 특허권 침해

There are situations, where process or system inventions are carried out by a plurality of actors in a distributed manner, such as over computer networks. This situation is known as “divided infringement” or “joint infringement.” For example, if a claim has three steps, and one entity performs the first step and another entity performs the next two steps, each entity could assert that it is not liable for infringement because it does not perform all steps of the method. This Article considers this issue. The first (and most appropriate) solution would be to determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement. An entity should be responsible for others’ performance where that entity directs or controls others’ performance. The ‘direct or control’ theory has been held both by the Federal Circuit in the U.S. and by the lower courts in Japan. This view seems to be supported by the majority of commentators. In addition, ‘tool’ theory could be used where an entity had used the other entity as a ‘tool’ to perform the last act of the claimed process such that the process was predictably and inevitably finished by the other entity, and independent of any knowledge of the invention by the other entity. Where there is no ‘direction or control’ between the multi-actors, ‘joint infringement’ theory could provide the basis for liability. Although both pros and cons exist on this theory, the majority of commentators seem to support ‘joint infringement’ theory. In other words, whoever knowingly and collectively performs a patented invention with another shall be liable as an infringer. What ‘knowingly’ means in this context could be developed by case law rather than provided by legislative action. Another problem may arise where one who acts privately and non-commercially is involved in multi-actor performance situations. According to Section 94 of the Patent Act, the effect of a patent shall not extend to acts done privately and for non-commercial purposes. However, it would be unreasonable to interpret section 94 such that divided or joint infringement does not arise in the situation where one who acts privately and non-commercially is involved. In addition to these solutions, the indirect infringement provision (section 127 of the Patent Act) needs to be amended. Where process or system inventions are implemented on a server side and a client side over computer networks, one who distributes software to users may be held liable as an indirect infringer according to the indirect infringement provision of German Patent Act. Section 127 of the Patent Act should be amended similarly.