특허법상 모인(冒認) 법리의 재검토

If a patent applicant files an invention A', that has been changed by modifications and additions in view of subject matter A, derived from another, it is unclear whether the invention A' is rejected or, if patented, revoked, whether the invention A' is considered as a joint invention and to what extent the inventor of A is entitled to recover. This article reviews theses three issues. First of all, in order to sanction usurpation, amendments and modifications which are within the ambit of a person skilled in the art should be disregarded when determining the identity between the invention A' and the invention A. According to the Supreme Court Decision 2009 Hu 2463, one who has not delivered a substantial contribution to the invention in suit is not an inventor and amendments and modifications that remain within the scope of actions of a person skilled in the art are not substantial contributions. Consistent applications of this case law will be required. In case this does not work, legislative actions should be considered. For example, the Patent Act may be amended to make invention A available for purposes of establishing lack of inventive step of the invention A' (U.S. type approach). Alternatively, the Patent Act may be amended to define usurpation in terms of the essential contents of an invention (German type approach). Secondly, where a party takes another’s confidential information and adds to it information of his own devising, if both the wronged party and the wrongdoer have made substantial contributions to the invention in suit, a joint entitlement should be recognized. Even if, according to the Supreme Court Decision, some form of collaboration is required in order that an ‘invention’ be ‘made by two or more persons jointly, a joint entitlement, by analogy, could be recognized. In case this does not work, the Patent Act may be amended to make it the only decisive issue of joint inventorship whether, from an objective point of view, a contribution by the co-inventor exists (German type approach). Finally, the extent to which the inventor of A (the entitled party) is entitled to recover with regard to the derived invention A' should be the same regardless of whether the entitled party chooses to file his own patent application or to require recovery of his right to the patent. For example, where a patent applicant files an invention A', that has been changed by modifications and additions in view of subject matter A, derived from another, the patent application (or the patent) should be rejected (or revoked) if amendments and modifications remain within the scope of actions of a person skilled in the art. In this case, the inventor of A (the entitled party) should be entitled to the derived invention A' regardless of whether the entitled party chooses to file his own patent application or to require recovery of his right to the patent.