특허권 소진의 성립범위에 대한 검토 - 특허권자 의사에 반해 유통된 특허품을 중심으로 -

Among various legal issues stemming from patent exhaustion, the legal status of ‘patented item which was put on the market against patentee’s will (hereinafter, ‘unapproved merchandise’) has not been studied enough so far in spite of its significance. The legal treatment of unapproved merchandise is a serious phase where the interests between the transaction stability and the profit of patentee conflicts. The mainstream judicial practices of GermanyㆍJapan and several precedent cases of Korea regard unapproved merchandise as a patent infringement. On the other hand, the case law of the UK and the US principally recognize patent exhaustion for unapproved merchandise once put on the market and admits the exception of exhaustion narrowly. The aspect to regard unapproved merchandise as a patent infringement may threat transaction stability because all the downstream traders shall be patent infringers and concede the injunctions regardless of their bona fide intent. The courts of Germany and Japan distinguish ‘the ancillary breach of contract’ from ‘substantial breach of contract’. The former is recognized where the patent licensee breaches ‘minor’ conditions of contract and causes default of contract obligation. The latter is recognized where the licensee breaches ‘major’ conditions of contract and leads to patent infringement. However, this approach is seriously handicapped as the line between ancillary and substantial breach is congenitally blur and fact specific, while the consequence of such decision is fatally different. It is reasonable to give priority to transaction stability recognizing patent exhaustion even for unapproved merchandise. In return, the degree of exhaustion shall be proportionated by the justification of patent protection. To scale the justification of protection, this article analyzes unapproved merchandise into three categories. The aspect to prioritize transaction stability accords with the original philosophy of patent exhaustion and deter business entities who claims patent of minor component in whole item using it a leverage of patent trolling. Moreover, aforementioned aspect guarantees suitable amount of protection for the patentee based upon the degree of his/her participation in unapproved merchandise. This approach also corresponds with recent reality that the patentee could notify the conditions of contract publicly and track its implementation through IoT or Block chain. This article also suggests the allotment of burden of proof surrounding patent exhaustion defense in infringement litigation.