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영어

Article 128 of the Korean Patent Act, which purposes to strongly protect a patent right, prescribes several methods to calculate damages caused by patent infringements. Nonetheless, some have argued that a patentee does not receive proper compensation in an actual patent infringement lawsuit. This paper, in order to enhance effectiveness of the damages calculation methods, suggests some proposals for proper interpretation and/or amendment of Article 128(5) as the followings. First, the first sentence of Article 128(5); which is the meaning is unclear. Moreover, it is not utilized in practice. Then, This paper in order to remove unclearness the first sentence of Art. 128(5), and improve the application in practice, suggests some proposals for proper interpretation and/or amendment of the first sentence of Art. 128(5). It is natural that a patentee claims damages for lost profit or infringer’s profit that is excess of royalty. Royalty equivalent as the minimum damages, Patentee can choose to calculation of damage by lost profit or infringer’s profit. If, this article is just a regulation of caution rule, have no meaning, this article should be deleted. Meanwhile, the first sentence of Art. 128(5) could be interpreted as royalty equivalent as the “minimum” damages, it is necessary to amend Art. 128(4) in order to clarify such meaning in the provision. The first sentence of Art. 128(5) could be understood as allowance of mixed-calculation. Hence, it could be interpreted that mixed-calculation is allowable under the Korean Patent Act. Since the judicial review is available without enactment of a mixed-calculation, there is no need of separate legislation for it. Second, the Article 765 of the Korean Civil Law arranges unusually the wrongdoer’s right of claim for reduction of damages. On the contrary, the second sentence of Art. 128(5) enables that if a patent infringement act is a excusable negligence one, it is possible to reduce the damages without considering the economic situation of the patent infringer. Considering that an act of infringement occurs as his or her business and, as a result, the infringer makes any kind of profit, such reduction theory should be applied more strictly in a patent case. However, the Patent Act provides more alleviated reduction theory comparing to the Civil Act. In that sense, such provision of the Patent Act should be deleted or at least amended. If the theory to reduce damages for excusable negligence is needed to be maintained in the Patent Act, such logic should be applied to the theory to increase damages for gross negligence under the Patent Act. If the infringers with excusable negligence must compensate all damages, then willful of gross negligence infringers must compensate enhanced damages. That is, there is a need to distinguish excusable negligence and gross negligence.