In a case where it is obvious that a utility model will be invalidated due to the denial of non-obviousness even before a final decision on invalidation of a registered utility model becomes final and conclusive, whether a claim for prohibition of infringement or compensation for damages based on a utility model right constitutes an abuse of rights (affirmative in principle), and whether a court in charge of a lawsuit for infringement of a utility model right may deliberate and determine whether the utility model is non-obviousness,

Articles 1 (see current Article 1), 5(2) (see current Article 4(2)), 46 (see current Article 30), 126 of the Patent Act, Article 2 of the Civil Act

[1] Supreme Court en banc Decision 2010Da95390 Decided January 19, 2012 (Gong2012Sang, 299)

Shin Young Industrial Co., Ltd. (Law Firm Sejong, Attorneys Park Jong-soo et al., Counsel for the plaintiff-appellant)

Young Chang Co., Ltd. and one other (Law Firm & one other, Counsel for the plaintiff-appellant)

Seoul High Court Decision 2009Na94515 decided April 14, 2010

All appeals are dismissed. The costs of appeal are assessed against the Plaintiff.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. The Utility Model Act provides that a utility model registration may be invalidated through a trial procedure for invalidation of a utility model registered separately in a case where the utility model falls under a certain reason. Thus, once registered, a registered utility model does not become null and void, unless a trial decision to invalidate it by a trial becomes final and conclusive, even if the registered utility model has no inventive step.

However, the purpose of Article 1 of the Utility Model Act is to promote the development of technology by protecting and encouraging the practical device under Article 1 of the Utility Model Act and promoting its utilization, thereby contributing to the development of industry, thereby protecting not only the designer but also users’ interests, and ultimately contributing to industrial development. Meanwhile, Article 5(2) of the former Utility Model Act (wholly amended by Act No. 7872 of March 3, 2006) provides that a person with ordinary knowledge in the technical field to which the device pertains (hereinafter “ordinary technician”) can easily make a device by prior art known prior to the filing of utility model registration, which is not a non-obviousness of utility model registration, shall be within the so-called public domain where anyone can freely use the device. Accordingly, if a utility model registration is granted due to an error in the utility model registration that has to be open to the public due to lack of non-obviousness, it would be unfairly impairing the public interest, but it would be contrary to the legislative purpose of the Utility Model Act’s definition of the utility model right as well as unreasonable compensation for damages arising from the exercise of the utility model right.

In light of the above, even before a final and conclusive decision on invalidation of a registered utility model becomes final and conclusive, if it is evident that the registered utility model will be invalidated by an invalidation trial, a claim for prohibition of infringement or compensation for damages based on the utility model right shall not be allowed as an abuse of rights unless there are special circumstances. In a case where a court in charge of a lawsuit seeking infringement of a utility model right has a defense that such a claim constitutes an abuse of rights, the court may examine and determine whether the registered utility model is non-obviousness on the premise of examining the legitimacy thereof (see Supreme Court en banc Decision 2010Da95390, Jan. 19, 2012).

2. In accordance with the above legal principles, it is apparent that the utility model registration will be invalidated because the non-obviousness of claims for utility model registration in the registered device of this case (registration No. 253786) is denied, among the registered device of this case (registration No. 253786), the name of which is “the zone site and the zone” (registration No. 253786). Accordingly, in light of the records, it is examined whether the Plaintiff’s prohibition of infringement of the utility model right of this case based on the utility model right of this device, disposal of products infringing the utility model right and their manufacturing equipment, etc.

First of all, the comparison design 1, 2, and 2 in the decision of the court below on the design of this case is identical in that paper and synthetic resin film 1 and margin are connected to the other side to form film . However, the comparison design 2 is linked to Ra learning time frame, which consists of paper and heat resistant hydrogen 2, while components 1, 2 are high density ethylene with a thickness of 0.015mm as film material, 015mm, and the comparison design 2 in the decision of the court below is also different in that it is difficult to separate the comparison design and film 1,000 square meters from the comparison design of this case, and it is also difficult to use the same kind of material as the combination of technology in accordance with the previous technological direction of the court below, and it is also difficult to consider that the technical composition of the film or film 30,000 square meters as the combination of technological components in this case, and it is also difficult to use the same kind of material as the combination of technological components in this case at the time.

다음으로 이 사건 제7항 고안의 원심 판시 구성요소 3은 비교대상고안 2에 개시된 ‘라이닝 시트를 종이의 단부를 감싸도록 말아 고온의 프레스를 이용하여 라이닝 시트 마진끼리 접착하도록 한 구성’과 필름 마진 간의 접착방법을 핫멜트 접착제로 변경한 점에서만 차이가 있을 뿐이나, 이러한 차이는 통상의 기술자가 접합대상물에 따라 손쉽게 채택하여 변경할 수 있는 정도에 불과하다.

Furthermore, considering the technical level at the time of the application for the instant registered complaint and the technical content of the comparable device 1 and 2, if an ordinary engineer in the relevant technical field is a person in the relevant technical field, it shall be deemed that the existing technical and comparative device 1 as described in the detailed description of the instant registered complaint, as above, could be easily combined with the existing technical and comparative device 2, as stated in the detailed description of the instant registered complaint. Moreover, the expected effect in the instant Claim 7 design is difficult to be deemed as a significant effect beyond the outcome predicted from the combinations of each

Therefore, since the claim 7 of this case's device could easily be made from the previous technology described in the detailed description of the comparative device 1, 2, and the registered device of this case, it is evident that the utility model registration will be invalidated due to the denial of non-obviousness. Meanwhile, the claim 7 of this case's device is subordinate to the claim 5 of this case's device, and the claim 5 of this case's device of this case's claim 1 of this case's claim 7 of this case's claim 1 of this case's claim 2 of this case's claim 1 of this case's claim 1 of this case's claim 7 of non-obviousness is denied, since the invention of this case's claim 7 of this case's claim 7 of this case's invention of this case's claim 1 of this case's utility model right infringement prohibition, infringement of utility model right of this case's utility model right infringement product of this case and manufacturing equipment of this case's claim

The judgment of the court below to the same purport is just and acceptable, and there is no error in the misapprehension of legal principles as to the determination of inventive step of a device as alleged in the grounds of

3. Therefore, all appeals are dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Shin Young-chul (Presiding Justice)