In order to reduce the burden of proof on the patent holder and punish the infringer in a lawsuit for intentional patent infringement, a treble damages system was introduced through the revision of the Patent Act article 128 in 2019. Although the effect of compensating for the actual damage to the patent holder and preventing patent infringement was expected, approximately two years and six months have elapsed since the enforcement date of the revised law, and only two cases of increased damages were claimed and sentenced to the first trial. In one case, the provisions of the amended law could not be applied according to the provisions of the Addenda to the Patent Act, and in the other case, ‘intentional’ was not recognized. On the other hand, in the United States, claims for enhanced damages due to willful patent infringement are actively being made, and the court’s judgment criteria for malicious or willfullness have been established through several cases. The increase in cases of infringement of malice and enhanced damages before and after the Halo judgment of Supreme court has been confirmed through empirical analysis of related judgments. In Korean patent practice, the reason why Article 128 Paragraph 8 of the patent is not actively utilized is the supplementary provisions that limit the application of the enhanced damages system to infringement acts after July 2019, but it will be resolved naturally with the passage of time. A more fundamental cause is that the criteria for judging ‘intentional’ in ‘infringement recognized as intentional’ in Article 128 (8) of the Patent Act have not been established due to the small number of related cases. In Seoul Central District Court 2020Gahap505891 decision ordered on May 27, 2021, the court recognized that the plaintiff had delivered goods to the defendant and advertised that the plaintiff had the patent right, but it was difficult to admit the defendant’s intention to infringe on the patent. It was judged that the evidence was insufficient. However, it is difficult to conclude that the court’s criteria for judgment of intentionality are strict only with one case in which intention is denied. Considering the purpose of the Patent Act revision and inclusion of willful negligence in interpreting Civil Act §750, a more relaxed standard should be applied to intentional patent infringement. Furthermore, in order to make the proof of intentional infringement more clear as a patent holder, the ‘warning letter’ should be actively used even before litigation. A suspect infringer shall get advice from experts to avoid intentional patent infringement even before he or she receives a warning letter from the patent holder.

요약
I. 들어가며
II 미국의 특허침해와 증액배상 소송
    1. 개요
    2. 적용 요건
    3. Halo 판결이 증액배상 소송에 미친 영향
III. 우리나라의 특허법상 증액배상제도
    1. 도입 경위
    2. 적용 요건
    3. 증액배상 적용 사례
    4. 특허법 제128조 제8항 증액손해배상과‘고의로 인한’의 의미
IV. 고의의 특허침해와 증액배상제도의 활용
    1. 문제점
    2. 부칙적용
    3. ‘고의로 인한’에 대한 유연한 판단
    4. 경고장, 전문가의 법률적 조언, 법률의견서와 고의 판단
    5. 특허법의 자료제출명령제도의 활용
V. 나가며
ABSTRACT

• 이지영(서울대학교 지식재산전문박사과정, 특허법원 고법판사) | Yi, Jiyoung