신규성 상실의 예외에 해당하는 선행디자인에 기초한 자유실시디자인 주장에 관하여 - 대법원 2023. 2. 23. 선고 2021후10473 판결을 중심으로

Article 36 of the Design Protection Act stipulates an exception to lack of novelty whereby a design is treated as not lacking its novelty and ease of creation even if it was made public before the application is filed if a person with the right to register the design satisfies certain requirements. On the other hand, the doctrine of freely exploited design defense has been recognized by case law, which holds that if the challenged design against the registered design is something that a person with ordinary knowledge in the field to which the registered design belongs could easily exploit before the application for the registered design is filed, in accordance with the published design or a combination thereof, it does not fall within the scope of the rights of the registered design without comparison with the registered design. With regard to the same facts of a publicly known design, the exception to lack of novelty and the doctrine of freely exploited design defense may conflict in cases where the scope of design rights is at issue. However, there is neither direct provision regulating such conflict nor precedent setting forth its direct views over legal principles related thereto. The difference of opinion on whether or not a freely exploited design defense is allowed in cases where the exception to lack of novelty is applied originates from a fundamental difference in perspective on the relationship between the public domain and the exclusive rights of registered intellectual property rights. If an exception to lack of novelty is recognized, the existence of the publicly known design cannot be a reason for design registration rejection or invalidation of the registered design, and it should be viewed as having exclusive and monopolistic rights as a registered design. In particular, in the case of design rights, unlike patent rights, exclusive and monopolistic rights are granted to similar designs through legislation, so even if it was previously an area of ​​free exploitation, once it has been included in the scope of exclusive and monopolistic rights of registered rights stipulated in the law, free exploitation in that area can no longer be permitted. Such a view is consistent with the purpose of the registered intellectual property system. If a freely exploited design defense based on a prior design, which is an exception to lack of novelty, is allowed, the rights of the registered design holder may be damaged by excessively protecting a third party who has not made any creative contribution. The subject case is significant as the first case which explicitly determined that a freely exploited design defense based on a prior design that falls under the exception to lack of novelty is not permitted, based on the above understanding of the public domain and the exclusive rights of registered intellectual property rights.