세계사> [하동군]하동 고로쇠 수액 채취 시작…열흘 앞당겨 | 군포철쭉축제

2018년 12월 20일 ○ 주관연구기관명 : 충남대학교 산학협력단 ○ 연 구 기 간 : 2018. 8. 31. ~ 12. 30. ○ 주관연구책임자 : 충남대학교 김 동 준 ○ 참여연구원 ․연 구 원 : 성균관대학교 정 차 호 ․연구보조원 : 성균관대학교 문 려 화 ․연구보조원 : 충남대학교 홍 승 희 i 구성요소 부가 특허출원에 의한 영업비밀 기술탈취 방지를 위한 특허법의 공동발명 개선안 연구 목 차 제1장 서론 ····························································································································17 제2장 기술탈취 관련 법규의 현황 및 문제점 ·························································23 I. 특허법 외의 관련 법규 ····································································································25 1. 부정경쟁방지법 ·················································································································25 2. 하도급법 ·····························································································································27 3. 상생협력법 ·························································································································32 4. 중소기업기술보호법 ·········································································································33 5. 현행 법규의 한계(문제의 제기) ·····················································································34 II. 특허법 ·································································································································43 1. 관련 규정 ···························································································································43 2. 현행 규정의 한계(문제의 제기) ·····················································································45 제3장 공동발명자 판단 법리 및 공동발명자 간의 지분율 산정방법에 관한 우리나라, 일본, 미국, 중국 및 독일의 법리 연구 ·················································47 I. 우리나라의 공동발명자 판단 법리 및 공동발명자 간의 지분율 산정방법 ··········49 1. 공동발명자 판단 법리 ···································································································49 2. 공동발명자 간의 지분율 산정 ·······················································································64 II. 일본의 공동발명자 판단 법리 및 공동발명자 간의 지분율 산정방법 ·················68 1. 발명자의 인정기준 ·········································································································68 2. 공동발명자의 인정기준 ···································································································75 3. 공동발명자 간의 지분율 ·································································································81 III. 미국의 공동발명자 판단 법리 및 공동발명자 간의 지분율 산정방법 ··············104 1. 발명자 판단 법리 ···········································································································104 2. 공동발명자 판단 법리 ···································································································109 3. 공동발명자 인정을 위한 주관적 의사(교환)의 필요성 여부 ·································113 4. 미국의 공동발명자 판단 관련 여러 기준 ·································································118 5. 공동발명자 여부와 모인 ·······························································································119 ii IV. 중국의 공동발명자 판단 법리 및 공동발명자 간의 지분율 산정방법 ·············121 1. 중국의 공동발명자 법리 ·······························································································121 2. 공동발명자의 법리 ·········································································································125 3. 중국의 첨부 법리 ···········································································································127 V. 대만의 공동발명자 판단 법리 및 공동발명자 간의 지분율 산정방법 ··············133 1. 발명자 인정기준 ·············································································································133 2. 공동발명자의 인정기준 법리 ·······················································································134 VI. 독일의 공동발명자 판단 법리 및 공동발명자 간의 지분율 산정방법 ·············140 1. 공동발명자 판단 법리 ···································································································140 제4장 발명자‧공동발명자 판단 법리에 대한 연구 ···············································145 I. 발명자 여부를 판단하기 위한 관련 법리의 연구 ····················································147 1. 서론 ···································································································································147 2. 착상과 구체화의 개념 명확화 ·····················································································147 3. 발명의 완성 시점: 실시 가능 시점 v. 효과 결정 시점 ·········································157 4. 청구항을 기준으로 하는 발명자 판단 ·······································································159 5. 결론 ···································································································································168 II. 공동발명자 사이에 (객관적 기여 외에) 주관적 의사교환이 필요한지 여부: 모인 발명을 중심으로 ··················································································································168 1. 서론 ···································································································································169 2. 기존의 상반된 견해 ·······································································································170 3. 모인 후 변경된 발명에서의 공동발명자 인정 사례 연구 ·····································172 4. 시나리오 연구 ·················································································································184 5. 공동발명자 판단을 위한 주관적 요건 법리의 구축 ···············································187 6. 민법의 첨부(添附) 법리: 주관적 요건 불필요 ·························································190 7. 특허법 개정방안 ·············································································································192 8. 결론 ···································································································································196 III. 공동발명자 간 지분율(share rates) 산정방법 ·························································198 1. 서론 ···································································································································198 2. 1975년 小林健男론 ·········································································································198 3. 1999년의 Tigran Guledjian 방법: 청구항 수를 기준으로 하는 방법 ··················202 4. 2007년 정차호 산정방법 ·······························································································203 5. 2012년 일본의 影山光太郎(카게야마 코우타로우) 이론 ·········································205 6. 일본의 공동발명자 지분율을 산정한 판례 연구 ·····················································214 7. 우리나라의 공동발명자 지분율을 산정한 판례 연구 ·············································231 8. 공동발명자 지분율 산정방법 제안 ·············································································242 9. 결론 ···································································································································246 iii 제5장 특허법상 모인(冒認) 법리 ················································································251 I. 우리나라 ····························································································································253 1. 모인의 의의 ·····················································································································253 2. 모인출원‧특허의 거절‧무효 ····························································································254 3. 모인출원‧특허에 대한 정당한 권리자의 구제 ··························································280 4. 모인자 기여의 취급 ·······································································································285 II. 주요국의 법리 ·················································································································289 1. 일본 ···································································································································289 2. 미국 ···································································································································309 3. 독일 ···································································································································326 4. 영국 ···································································································································347 III. 정리 ··································································································································363 1. 모인의 의의 ·····················································································································363 2. 모인 출원‧특허의 거절‧무효 ··························································································364 3. 모인 출원‧특허에 대한 정당한 권리자의 구제 ························································364 4. 모인자 기여의 취급 ·······································································································365 제6장 모인 및 정당한 권리자 구제 관련 제도개선방안 ···································367 I. 모인 시 거절‧무효의 범위 ·····························································································369 1. 우리나라의 법리 ·············································································································369 2. 주요국의 법리 ·················································································································377 3. 개선방안 ···························································································································378 II. 모인자 기여 시 공동발명 인정 여부 ·········································································383 1. 우리나라의 법리 ·············································································································383 2. 주요국의 법리 ·················································································································384 3. 개선방안 ···························································································································387 4. 공유 관련 문제 ···············································································································395 III. 정당한 권리자의 구제 관련 검토 ··············································································399 1. 우리나라의 법리 ·············································································································399 2. 주요국의 법리 ·················································································································400 3. 개선방안 ···························································································································400 4. 정리 ···································································································································402 IV. 소결론: 해석론에 의한 대응 ······················································································403 V. 입법적 해결방안(보론) ··································································································407 1. 방안 1: 특허를 받을 수 있는 권리 규정 개정(공동발명자 정의 無) ··················407 2. 방안 2: 무권리자 출원‧특허에 대한 특허요건 특례 신설 ·····································411 iv 3. 방안 3: 특허를 받을 수 있는 권리의 공유 규정 개정 ··········································414 4. 모인 상황에서의 출원 분할 방안 ···············································································419 제7장 결론 ··························································································································423 v <표 차례> <표 1> 하도급거래 공정화법 개정 경위 ········································································29 <표 2> 기술탈취 관련 법규(보호대상 및 위반행위 비교) ··········································34 <표 3> 기술탈취 관련 법규(위반행위에 대한 제재 비교) ··········································36 <표 4> 중소기업 기술탈취 근절대책(18. 2. 중기부/산자부/공정위/특허청) ··············40 <표 5> 기술적 사상에 대한 기존이론과의 비교(影山) ··················································89 <표 6> 발명의 분류(影山) ····································································································90 <표 7> 원리·모델의 구분, 예측난이성, 중요성(影山) ·················································97 <표 8> 지분율 산정기준(影山) ··························································································100 <표 9> 발명자 판단 기준(Chisum) ···················································································119 <표 10> 갑이 a를 착상하고 을이 그 착상을 모인한 후 b 착상을 추가한 경우의 처 리 ············································································································································120 <표 11> 착상과 구체화(조영선 교수 설명) ····································································155 <표 12> 착상과 구체화 법리 제안 ··················································································156 <표 13> 공동발명 관련 가상사례 1 ················································································185 <표 14> 공동발명 관련 가상사례 2 ················································································186 <표 15> 공동발명 정의규정 제안(김승군·김선정) ······················································193 <표 16> 공동발명 정의규정 제안(정차호) ······································································193 <표 17> 원리·모델의 구분, 예측난이성, 중요성(影山) ·············································210 <표 18> 원리 및/또는 모델의 관여자: 2가지 경우(影山) ···········································211 <표 19> 발명자의 지분율 산정방법(影山) ······································································212 <표 20> 知財高裁 平成19年(ネ)第10056号 判決의 사안 ··············································227 <표 21> 지분율 산정 사례(서울중앙지방법원 2013가합517131 판결) ······················233 <표 22> 지분율 산정 가상사례(정차호 산정방법) ························································245 <표 23> 특허법원 2015허1430 판결(모인 여부 판단) ················································266 <표 24> 특허법원 2014허7707 판결(모인 여부 판단) ················································269 <표 25> 모인 여부 판단 특허법원 판결 정리 ······························································275 <표 26> 특허법 제35조에 따른 정당한 권리자 출원 사안(10-2010-21941) ············281 <표 27> 출원일소급제도/특허권이전청구제도에 있어서 동일성에 대한 학설 ·······288 <표 28> 동일성에 대한 학설 비교 ··················································································289 <표 29> 모인대상발명과 특허발명의 대비(東京地裁 平成13年(ワ)第13678号) ·······291 <표 30> 피고발명과 특허발명의 관계(知財高裁 平成17年(行ケ)第10193号) ···········292 <표 31> 미국 CAFC Oddzon 판결 사안 ·········································································313 <표 32> 모인의 의의(주요국 비교) ················································································363 <표 33> 모인 출원‧특허의 거절‧무효(주요국 비교) ····················································364 <표 34> 모인 출원‧특허에 대한 정당한 권리자의 구제(주요국 비교) ···················364 <표 35> 모인자 기여의 취급(주요국 비교) ··································································365 vi <표 36> 모인 여부 판단기준 관련 특허법원 판결의 동향 ········································369 <표 37> 대법원 2009후2463 판결의 의미에 대한 학설 ··············································371 <표 38> 발명자의 의의(AIPPI 보고서) ············································································388 <표 39> 주요국의 공동발명 성립요건 비교 ··································································391 <표 40> 특허권 이전청구 규정 비교(우리나라와 일본) ··············································393 <표 41> 공유특허의 지분활용에 대한 주요국 제도 현황 ··········································397 <표 42> 공유특허의 분할청구에 대한 주요국 제도 현황 ··········································397 <표 43> 종합검토(피모인자와 모인자의 공유 인정 시) ··············································403 <표 44> 종합검토(피모인자와 모인장의 공유 불인정 시) ··········································406 <표 45> 특허법 개정방안(방안 1) ····················································································407 <표 46> 특허법 개정방안(방안 2) ····················································································412 <표 47> 특허법 개정방안(방안 3-1) ················································································415 <표 48> 특허법 개정방안(방안 3-2) ················································································416 <표 49> 특허법 개정방안(출원 단계 중 분리 이전 방안) ··········································419 <그림 차례> [그림 1] 발명자/공동발명자의 인정 및 지분율 산정의 기본적인 절차(影山) ········103 [그림 2] 발명자/공동발명자의 인정 및 지분율 산정의 기본적인 절차(影山) ········213 요약서(Summary) 1 <<구성요소 부가 특허출원에 의한 영업비밀 기술탈취 방지를 위한 특허법의 공동발명 개선안 연구>> 요약서(Summary) 제1장 서론 본 “구성요소 부가 특허출원에 의한 영업비밀 기술탈취 방지를 위한 특허법의 공 동발명 개선안 연구”의 보고서는 기술탈취 문제에 효과적으로 대응하기 위해 특허제 도개선이 필요한지 여부와 관련하여, 제2장에서는 기술탈취 관련 법규의 현황 및 문 제점에 대해, 제3장 및 제4장에서는 우리나라와 주요국의 발명자 공동 발명자 판단 법리 및 제도개선방안에 대해, 제5장 및 제6장에서는 우리나라와 주요국의 특허법상 모인(冒認) 법리 및 제도개선방안에 대해 연구하였는데, 이하 연구결과를 요약한다.

6. 일본의 공동발명자 지분율을 산정한 판례 연구 가. 知的財産高等裁判所 平成19年3月29日判決 平成18年(ネ)第10035号 判決(원고 50%; H 30%; I 20%) 1) 사실관계 대상 특허발명(연료 분사 밸브, 특허 제2609929호)은 “슬릿 형상 분공의 내부의 폭 W와 내부의 긴 방향을 따른 길이 L1의 비율을 4.5 이상으로 하여 분무를 매우 편평한 형상으로 하여 공기와의 접촉면적을 증대시켜, 주위의 공기를 끌어들이기 쉽게 하고 분무의 미립화를 촉진하여 연료 분사량이 적은 경우에도 분무의 입경을 작게 할 수 있는 것이며, 또 분무의 도달거리 및 관철력(貫徹力)을 슬릿 형상 분공의 내부의 폭 W와 내부의 긴 방향에 따른 길이 L1의 비율을 조정하는 것에 의하여 가능하게 한 것 660) Falana v. Kent State University, 669 F.3d 1349 (Fed. Cir. Jan. 23, 2012). 발명자․공동발명자 판단 법리에 대한 연구 215 이다. 그 결과, 대상 특허발명은 스월(swirl)을 불필요로 하거나 연비가 향상해 희박연 소의 제어범위가 넓어져, 사이클 변동이 적다는 작용효과를 얻을 수 있는 것이다.” 발명신고서에 원고 및 H(피고 회사 연료연구실 연구개발에 관한 연구원)가 공동발 명자로 기재되었고, 특허공보에서도 원고 및 H가 발명자로 기재되었다.

그런데 공동발명인 경우에는 공동발명자 전원의 합의에 따라 지분율을 결정하기 606) 小林健男, 「共同研究と職務発明」, 開発社, 1975, 37頁(“共同研究開発のために利用された設備ないし投下され た器材等の有無及び量の大小共同発明者が共同研究開発を遂行するためにさまざまの研究設備を提供し、その利 用を他方の共同発明者にも認めているとき、この物的設備の提供と利用は、共同発明者の持分算定上考慮すべき 要素の一つとなる。ことに、これらの設備が代替性を有しない特殊なものであること並びに新規に右設備を設置 するものとすれば、巨額の設備投資資金を要する性質の研究設備であるならば、これら設備の提供者である共同 発明者の持分は、そうでない者の持分に比較して大きいと考えられる。”). 607) 小林健男, 「共同研究と職務発明」, 開発社, 1975, 37頁共同研究開発遂行の過程で多種多様の器材を使用する場 合、右器材の量及び価格も器材提供者たる共同発明者の持分算定に影響を及ぼす。 608) 小林健男, 「共同研究と職務発明」, 開発社, 1975, 37頁ことに、使用された器材が稀少価値を有し、容易に入手 できないものであったり、量的には僅少ものであっても、異常に高価なものであるようなときには、これら特殊 器材の提供者たる共同発明者の持分は、かかる器材を提供しない他の共同発明者の持分よりも大きい。 609) 小林健男, 「共同研究と職務発明」, 開発社, 1975, 37頁共同研究開発における研究開発資金の負担の有無及びそ の程度は、各共同発明者の持分算定上考慮すべき要素となる。 これは、あたかも数人で土地、建物を購入する場合、各自の持分が原則としてその拠出金額の割合で定ま る、とする考えとほぼ同じ面をもつ。したがって、まず資金提供者たる共同発明者の持分は、資金を 提供しない共同発明者の持分よりも大きい。さらに、資金提供者たる共同発明者間においては、資金 の額の大なる共同発明者の持分が、資金の額の小なる共同発明者のそれよりも大きい。 구성요소 부가 특허출원에 의한 영업비밀 기술탈취 방지를 위한 특허법의 공동발명 개선안 연구 202 어려운 경우도 있고 심지어 지분율이 애당초 불명확한 경우도 적지 않다. 그래서 관련 된 경우 공동발명자 각자의 지분비율을 어떻게 결정할 것인지가 문제가 된다.610) 7) 평가 小林健男론은 일본에서 공동발명자 간의 지분율 산정방법을 제시한 오래된 것이 다. 1975년의 이론이라는 점에서 나름 의의를 가진다. 두 회사 사이의 공동연구개발계 약에 있어서는 그 결과물인 특허의 지분을 미리 결정함에 있어서 투여인력, 투여경비, 기자재 등을 중요하게 볼 수 있다. 그러나, 공동발명자 결정 및 지분율 산정은 그러한 비창작적 요소와는 무관한 것이다. 이런 견지에서 필자는 小林健男의 이론을 격렬하 게 반대한다. 小林健男의 이론은 두 회사 사이에 특허의 지분을 결정함에 있어서는 활 용될 수 있으나, 발명자 지분율을 결정함에 있어서는 활용될 수 없는 것이다. 발명자 권과 소유권은 별개의 쟁점이다.611) 小林健男론은 소유권 배분에는 적용될 수 있을지 모르나 발명자권 배분에는 적용될 수 없는 것이다.

906) UK Patent Act Section 7 (“(1) Any person may make an application for a patent either alone or jointly with another. (2) A patent for an invention may be granted (a) primarily to the inventor or joint inventors; (b) in preference to the foregoing, to any person or persons who, by virtue of any enactment or rule of law, or any foreign law or treaty or international convention, or by virtue of an enforceable term of any agreement entered into with the inventor before the making of the invention, was or were at the time of the making of the invention entitled to the whole of the property in it (other than equitable interests) in the United Kingdom; (c) in any event, to the successor or successors in title of any person or persons mentioned in paragraph (a) or (b) above or any person so mentioned and the successor or successors in title of another person so mentioned; and to no other person. (3) In this Act ‘inventor’ in relation to an invention means the actual deviser of the invention and ‘joint inventor’ shall be construed accordingly. (4) Except so far as the contrary is established, a person who makes an application for a patent shall be taken to be the person who is entitled under subsection (2) above to be granted a patent and two or more persons who make such an application jointly shall be taken to be the persons so entitled.”). 907) 日本国際知的財産保護協会, 前揭 報告書(特許を受ける権利を有する者の適切な権利の保護の在り方に関する調 査研究報告書), 76頁. 특허법상 모인(冒認) 법리 349 ④ 특허를 받을 수 있는 권리를 가진 자의 특허출원 전에 해당 권리에 관한 발명에 대한 특허출원의 위탁을 받은 자가 자기명의로 특허출원한 경우 ⑤ 직무발명에 대하여 특허를 받을 수 있는 권리를 승계한 사용자의 특허출원 전 에 해당 직무발명을 한 종업원이 자기명의로 특허출원한 경우 ⑥ 특허를 받을 수 있는 권리의 공유자의 일방만이 자기명의만으로 특허출원한 경 우 나. 모인출원 특허의 거절 무효 모인의 존부는 특허출원의 심사에 있어서 심사관에 의해 인정판단되는 것은 아니 지만, 권리부여절차에 있어서 특허청장(히어링 오피스)에 의해 인정판단될 수 있고, 특허법은 제8조 제2항에서 특허청장이 특허부여 전의 권리부여 절차에서 해당 특허출 원에 관하여 예를 들면 출원의 거절을 명할 수 있다고 규정하고 있다.908) 재판례 및 학설상, 발명의 “핵심(heart)” 부분에 대하여 모인의 존부가 문제로 되어 야 한다고 해석되고 있다.909) 즉, 모인 판단 시 청구항만을 검토하는 것이 아니라 발명 의 핵심(heart)을 파악하는 접근법을 취하고 있는데, 출원 전 단계에서 모인이 문제되 는 경우도 있고, 청구범위 없이 출원된 경우도 있으며, 청구범위가 출원 중 계속 변경 (일반적으로 감축)되기 때문이다. 발명의 핵심은 하나 이상 있을 수 있으며, 모든 청구 항이 각각 별개의 핵심으로 인정되어야 하는 것은 아니다.910) 나아가 모인의 존부의 908) 日本国際知的財産保護協会, 前揭 報告書(特許を受ける権利を有する者の適切な権利の保護の在り方に関する調 査研究報告書), 90頁. 한편, 모인의 기준 시는 특허출원시가 아니라 특허부여 전의 판단 시 또는 특허부여 시 라고 해석되며 또한, 특허청장은 특허부여 전의 권리부여 절차에서 당해 특허출원에 관하여 예를 들면, 출원 인 명의변경을 명하거나, 출원의 거절을 명하거나 기타 적당한 조치를 명할 수 있으므로 특허청장이 특허부여 전의 권리부여절차에서 정당한 권리자로의 출원인 명의변경을 명한 경우에는 당연히 당해 출원의 거절이유는 문제로 되지 않게 된다.

위 정차호 개정방안에서 해당 출원 또는 특허의 하나 이상의 청구항에 기여해야 한다는 요건은 Not-all-claims 원칙을 명확하게 규정하며, All-claims 원칙을 명시적으 로 폐기하는 것이다.

나. 공동발명자 간의 지분율산정 공동발명자가 그 발명의 완성에 공헌한 정도에 따라 지분율이 결정되는 것이 당연 하다.600) 일반적으로 다음 사항을 종합적으로 참작하여 해당 발명에 공헌한 정도를 산 정하여 공동발명자 각자의 지분을 결정해야 한다.

3) 평가 대상 사건에서 법원이 제시한 3가지 요건 중 첫 번째 것은 주관적 요건에 해당하고 두 번째 및 세 번째 것은 객관적 요건에 해당하는 것으로 생각된다: ① 선행 발명자와 후행 발명자 사이의 협력 또는 연결(collaboration or connection), ② 공통의 목표 (common goal) 및 ③ 특허발명의 착상에 대한 현저한 기여(significant contribution). 법원은 주관적 요건은 충족된 것으로 본 반면, 객관적 요건은 충족하지 못한 것으로 보고, 공동발명자임을 부정하였다.