특허법 상 ‘구체적 행위태양 제시의무 제도’의 효율성 제고방안

In accordance with the law of burden of proof in general civil litigation, the plaintiff (patentee) in a patent litigation is generally bearing the burden to prove infringement by the defendant and damages thereof. However, due to difficulties in securing relevant evidence, the plaintiff is often unable to prove the fact of infringement and the amount of damages. As a result, the patent right is not properly exercised. Although the National Assembly amended the Patent Act to address this issue and established Article 126-2, which obligates the defendant to present its specific manufacturing method (type of behavior), it is generally recognized that this provision is not actively utilized. Therefore, this paper compares and analyzes the corresponding jurisprudence of China, the United States and Japan to find measures to improve the efficiency of the system, stipulated by Article 126-2, and proposes the following measures as solutions thereof. First, courts should utilize Article 129 on the presumption of manufacturing method more strongly than Article 126-2 on the obligation to present specific manufacturing method. Second, courts should have faith in the efficiency of the provision and utilize it vigorously. In particular, courts do not need make any effort to know which method the defendant actually used to manufacture. And if the defendant refuses or fails to present its actual manufacturing method, the court should recognize that the accused articles were produced by the patented method. Third, if the defendant refuses to present its specific manufacturing method on the ground that the method is a trade secret, the court should utilize the in camera proceeding and order the production of the method.