용도 한정 물건 발명의 청구범위 해석: 서울중앙지방법원 2018가합579509 판결을 중심으로

The court ruling adopted the Supreme Court’s principle that in inventions for pharmaceutical uses, the specific use should be considered an element of a claim. The court extended this principle to other fields, treating both the specific substance and its intended use as elements of a claim. However, the author argues that this generalization lacks legal foundation. The Supreme Court recognized its value as elements of a claim in pharmaceutical patents, specifically because methods for diagnosing and treating diseases cannot be patented. Applying this reasoning broadly to non-pharmaceutical use inventions is problematic considering the established legal principles for use-limited compound inventions, use-limited extract inventions, and product-by-process (PBP) claims. The author suggests that in non-pharmaceutical use inventions, the use itself should not be considered elements of a claim, which aligns with the position of major IP5 countries, except Japan. Additionally, for inventions with technical features related to use, the document recommends three approaches: (1) protecting inventions with technically distinctive uses through method patents; (2) allowing category corrections from use-limited product inventions to use-related method inventions; and (3) amending the Patent Act to include provisions on non-exclusive-use articles, incorporating a subjective requirement that the infringer is aware that their actions contribute to or assist a patent’s exploitation.