자기공지예외제도가 적용되어 등록된 특허에 대한 권리범위확인심판 또는 침해소송에서의 공지기술의 항변 또는 자유실시기술의 항변의 허용 여부

Article 30 of the Korean Patent Act prescribes that a patent right may also be acquired in a situation of right owner’s self-disclosure or disclosure against the owner’s will (hereinafter collectively referred to as “self-disclosure”). ‘The issue whether prior art defense or free-to-work art defense is allowed in a patent scope confirmation trial or a patent infringement suit against a patent, registered applying the self-disclosure exception system has become a hot one in 2022. To resolve this issue, this paper has comprehensively analyzed the jurisprudence of major countries and the legislative history of Article 30 of the Korean Patent Act and has arrived at the following conclusions. Firstly, essence of the self-disclosure exception system is a system that disregard self-disclosure from the prior art against owner himself. Therefore, the prior art defense or the free-to-work art defense based on the self-disclosure should not be allowed. This self-disclosure exception system is designed to compensate for the shortcomings of the first-to-file system and to prevents owner himself from being harmed by the self-disclosure. Secondly, due to the amendment of Art. 30 of the Patent Act in 2001, its literary language only applies to the situation of judging novelty and inventive step of self-disclosure exception system. However, the 2001 amendment to the Patent Act was not intended to narrow the applicable scope of the system, but to expand it. According to this legislative intent, the provision should be interpreted that self-disclosure is not applied as prior art against owner himself. In Japan, where the content of the corresponding provision is the same as that of Korea Patent Act, we have failed to find any case where the prior art defense is recognized based on self-disclosure. In major countries, we have not found any case where the prior art defense is recognized based on self-disclosure. Moreover, in China, the courts have made it clear through guidelines and judgments, that for rights created through the self-disclosure exception system, the prior art defense cannot be claimed based on the self-disclosure. And some Chinese scholars have also explained that such an interpretation is consistent with the legislative intent. In Korea, we have found the 2016-Gahap-502475 judgment of the Seoul Central District Court, the 2021-Heo-4591 judgment of the Patent Court, and the 2014-Hu-341 judgment of the Supreme Court, which rejected the literary interpretation of Article 30 of the Korean Patent Act. Thirdly, the patent policy does not recognize the prior art or free-to-work art defense on the following grounds. (1) For the self-disclosure exception system to promote early disclosure of inventions to achieve the purpose of patent law, which is to promote technological development, the target patent court decisions must be revoked or changed. (2) As of 2022, there exist at least 30,000 patents registered using Article 30(1)(1) of the Patent Act in Korea. The strict literary interpretation can fool many innocent right holders. (3) In Korea, the prior user’s right has been recognized in the Patent Act and the Design Protection Act, so the interest of right holders and third parties associated with the self-disclosure exception system has been balanced to a certain extent. (4) The patentee who has obtained a patent by taking advantage of Article 30 of the Patent Act must be able to exercise the patent right. The patent right must be protected by remedies provided by the Patent Act. Seeking relief in other laws has nothing to do with “patent” right. A right without a remedy is no right at all.