특허권 침해소송 제기 후 청구된 소극적 권리범위확인심판에서 확인의 이익

Should the “declaration interest” be recognized when a defendant in a patent infringement lawsuit seeks a negative patent scope declaration while both parties are engaged in an infringement litigation? The Korea Supreme Court has acknowledged the declaration interest of a negative patent scope declaration trial and subsequent a trial revocation litigation after an infringement lawsuit in the trademark case of Hot Wing (2008Hu4486) and the patent case of Heating Apparatus (2016Hu328). This paper reviews these Supreme Court decisions. An analysis of the relevant laws in Austria, the United States, the United Kingdom, China, and Japan reveals that none of these countries permit a subsequent negative patent scope declaration trial or a non-infringement declaration lawsuit. This paper argues that infringement proceedings are the most effective and appropriate means of dispute resolution, and that declaration proceedings are unhelpful and burdensome to the patentee when infringement proceedings are ongoing. First, although there is no explicit provision in the Patent Act, the doctrine of declaration interest should be applied as a requirement to file a negative patent scope declaration trial. The Supreme Court erred in assuming that the absence of an explicit provision in the Patent Act should lead to an unconditional grant of a negative patent scope declaration trial without regard to declaration interest. Second, as Austria has an explicit provision, the Korea Patent Act should be amended to clarify the relevant legal principle. Specifically, a new paragraph (5) should be added to Article 164 of the Patent Act, stating that if the defendant proves that an infringement proceeding concerning the same subject matter is pending between the same parties before the declaration proceeding is filed, the negative patent scope declaration trial shall be dismissed.