초국경적 특허발명의 실시와 특허권 침해

Under the principle of territoriality, a patent granted in one country has no effect beyond the territorial boundary of that country and cannot be infringed upon in other countries. However, since cross-border working of a patented invention is increasing due to the globalization and internationl networking, it is difficult to determine the country where the patented invention is being worked (whether it is the location of the server, the location of the terminal receiving the service, or the location of the service provider). First of all, the interpretation that patent infringement does not exist unless all elements of a patented invention (a product or a process) are physically present in the country is not inevitably derived from the principle of territoriality. In addition, according to the case law of the U.S., the U.K. and Germany, even where the patented system or method is partly worked abroad, it may still constitute patent infringement. Furthermore, it is necessary to cope with the cross-border patent infringement situation that is frequent in the digital and network technology environment. Thus, the possibility and necessity of flexible interpretation of territoriality can be recognized. Next, in relation to the flexible interpretation of territoriality, it would be a solution to determine the place of patent infringement based on where the ‘main act’ has been performed. The ‘main act’ test has an affinity with the patent law system and the specific requirements of the test can be established by accumulation of cases. When determining where the ‘main act’ has been performed, it is necessary to comprehensively consider factors such as (i) the physical location of the decision maker of the working and (ii) the place where the technical effect of a patented invention is realized. This test, which is similar to the ‘control and beneficial use’ criteria set out in the US case law, should be applied equally regardless of the category of the invention, whether it is a system claim or a method claim. By the way, in case of network related inventions, profit is usually generated through ‘use’ of the system rather than through manufacture and sale of the system. In addition, many network related inventions are claimed as processes. Therefore, the working act of ‘use’ is more important than before when determining patent infringement. In these situations, it is necessary to interpret the meaning of ‘use’ of the product or process, not formally but normatively. Furthermore, if it is not sufficient to cope with cross-border patent infringement with these interpretations, it will be necessary to amend the provisions of infringing act to incorporate the specially adapted infringing act in relation to network-related inventions. Finally, in case of cross-border working of a patented invention carried out by a plurality of actors, both the issue of divided infringement and the issue of territoriality matter. In this situation, it should first be determined whether the infringing act has been committed in this country or not and, if so, it should then be determined who among the plurality of actors is responsible for the infringing act.