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Can "Identity of the Problem-solving Principles" be Equated with "Pertinence to Nonessential Part"?

  • DONG-A LAW REVIEW
  • 2013, (60), pp.375-402
  • Publisher : The Institute for Legal Studies Dong-A University
  • Research Area : Social Science > Law

Koo Dae Hwan 1

1서울시립대학교

Accredited

ABSTRACT

After the Korea Supreme Court (hereinafter, KSC) issued the first judgment providing five requirements for the application of the doctrine of equivalents in 2000, the KSC began to interpret the first requirement of the doctrine of equivalents rendered by the KSC, i.e. “identity of the problem-solving principle of the two inventions” to mean that “the difference does not pertain to an essential part of the patented invention” which was set forth by the Japanese Supreme Court (hereinafter, JSC) in the Ball Spline decision. The purpose of this article is to examine whether the first requirements of the doctrine of equivalents by the KSC and the JSC can be considered the same each other as the KSC interpreted. To accomplish this, this article introduces the doctrine of equivalents of Korea and that of Japan in general, and investigates the meanings of the key terms involved in the first requirements by the KSC and the JSC, e.g. “technical idea,” “problem -solving principle,” “essential part,” and “identity of problem-solving principle.” “Essential part” can be interpreted to mean “characteristic part” as well as “technical idea”(or “problem-solving principle”). As far as “essential part” can be understood as to mean concrete and physical part as well as abstract idea, it cannot be considered as the same as “problem-solving principle”. In addition, this article compares the adoption rate of the doctrine of equivalents between Korea and Japan. In Japan, the adoption rate is conspicuously lower than that of Korea and the low adoption rate mostly resulted from the first requirement of the doctrine of equivalents. The KSC applies the doctrine of equivalents even after it is confirmed that “essential part” of the patented invention is interchanged. Therefore, the equation of the first requirement of the KSC with that of the JSC is inappropriate as far as the KSC applies the doctrine of equivalents even after it is confirmed that essential part of the patented invention is interchanged. In addition, recently the KSC does not apply the doctrine of equivalents in many cases related with the doctrine of equivalents on the basis that “problem-solving principle” is not the same each other. This attitude is very similar to that of Japanese lower courts (before Manhole Cover case and Hollow Golf Club case) which denied equivalence on the basis that the characteristic part (i.e. “essential part”) of the patented invention was different from that of the accused product.

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