15 Consideration on the General Principles of Intellectual
Property Protection Method
Jae Ho Shin（*）

The intellectual property system generally has the following functions even though there are some levels ofdifferences in each regulation. i) Protecting the rights of the natural law of producers, ii) promoting industrial
development by stimulating the production of intellectual property and iii) maintaining the order of businesscompetition. However, in this paper we understand that the function to protect a privilege of an intellectual
property producer is a means to accomplish another function. In other words, on the premise that intellectual
property is different from a privilege in natural law and also, it is not there is no such compensation for suchprivileges in natural law, we approach the way of protecting intellectual property. To introduce the newprotection method, the judgment about the necessity of the protection must be precede this first, and this is a
judgment in policy to stimulate creation or induce investment and to choose a much better way in comparison
between the profit of the public which is created by the establishment of fair competition order and the loss ofthe public masses by artificial limits which cause the restricted usage of intellectual property. And, the way toprotect intellectual property has a close relation with the characteristic of the protection object but, in this paper,
we analyze the contents of privilege which are subordinately decided according to the protection method
without relation to the protection object and through this way, we examined the general principle inintroducing new protection methods unrelated with the protection object. Such principles present the limit
regarding the range which can be considered in policy in the case of minimizing the privilege procedure orchanging the degree of the protection in a new protection method.

Ⅰ Introduction
The methods of protecting intellectual
property are very extensive and general and it isarguable from a difference of viewpoint tounderstand intellectual property system. So, weneed to clarify what the intellectual property is
and why we have to protect it, first we need to
discuss the ways to protect intellectual property.
For this reason, before we discuss protection
methods, I will briefly look into the nature andattributes of the intellectual property system
and will mention my personal opinion toapproach the theory of protection method to
avoid
any
possibilityofunnecessary
misunderstanding before taking up the main
subject.

And then I will look into traditional
protection method of the intellectual property
based on a patent law protection method andcopyright legal protection method and will also
look into a hybrid protection system(*1), which
has been tried, recently. Lastly, I try to make theconclusion presenting the design methodology of
new protection method based on these
examinations about protection methods.

Ⅱ Nature
andNecessity
Intellectual Property System
1ofIntellectual Property

The term, intellectual property in Korean
originates from the translation of the English(*) Doctor of Laws, Lecturer at College of Law, Hanyang University and In-Ha University, Korea(*1) In the process to find new protection methods which can supplement the defects of existing protection methods
or which are most suitable to unexpected new protection objects, new protection methods that can not beclassified to traditional protection methods of intellectual property as like patent law protection method or
copyright legal protection method or illegal competition prevention protection method, are being tried. In thesekinds of protection methods, hybrid characteristics by adding or optional mixing of distinctive elements ofdifferent protection methods have developed. In this paper, such kinds of new protection methods wereclassified and considered as the hybrid protection system.

IIP Bulletin 2005

● 110 ●

word “intellectual property”.(*2) First, the term,“intellectual” means the results of human mental
and spiritual activity but this became
inappropriate to use this term for all intellectual
property, which recently expands more and more.
The reason that business trust which is a
substantial object of protection trademark rightcan be handled as intellectual property, not likeexperience or educational background and/or
connections, is because of today’s market
mechanism which is able to easily steal other’sbusiness trust, with mediation of service marks
rather than the result of spiritual activity or
intangible property, and as the concept ofintellectual property was recently expanded todatabases, which have has no creative
characteristics and are regarded as the result ofjust simple effort or investment, and these
databases are included as intellectual property(*3),
and if we consider neighboring literary property,
which have a separate privilege similar tocopyright because the level of creation is notrecognized as much as the level of creation inliterature properties, the term, “intellectual” will
be more appropriate to creations, a representativeof intellectual property.(*4)
In this paper, I define intellectual property, as“information which keeps property value, and it

will be able to create a public benefit through use
control”.
The reason I use the concept of informationis, when considering the deployment process
hereafter of the intellectual property system, I
believe it is the right method to decide the area ofintellectual property based on the characteristicof such objects after I examine the common
characteristics of the object which the necessityof the protection have been discussed as theintellectual property. And the characteristic,
which cannot occupy and can use at the sametime,(*5) easily be imitated,(*6) value is relative anduse is undecided, are very much similar withinformation as an economic good.(*7)
2

Protection
Property

NecessityofIntellectual

I limited the object of intellectual property towhich can create the benefit of the public throughuse control and this is to clarify excluding the socalled natural right theory.. In this case, thetreatment of moral right can be a problem,
however, actually, there is no theoreticallynecessary reason to include moral right, as a partof intellectual property, and also, it is not unified,internationally because of the difference in origin(*2) Property is classified as “Real Property” and “Personal Property” and real property is roughly equal to theimmovable property but for historical reasons, “the right of lease”(lease) is classified as the latter. And personal
property is divided into “chattel” and "intangible property’ including deposit, stock, credit and “intellectual
property” (Dictionary of English/American law, Tokyo Univ. Press, 2000, Article 675). So, Property means more
broad right of property generally rather than “ownership (Eigentum)”, the ownership of the absolute andconceptional supremacy in continent legal system (Nobuhiro Nakayama, (Industrial ownership Act (first volume)),
Koubundou publishers Inc., 2000, Article 3-4).
That is, the concept of thing in English and American law is not defined, generally and universally, not to be,according to the right of action, it only cements the definite object and furthermore, the concept of “thing(s)” itself
is not completely separated from “property” like the concept of thing in Roman law and just regarded as one
concept. From this point of view, there are some difficulties in accepting or referring to the concept as it is in the
countries following Pandekten law system (Kyung-Jin Choi, “Investigation on things in civil law”, SungKyunKwan
Univ., 2004, page 46).
In addition, such classification in English and American law does not regard intellectual property as a protection
object of semi-real right like the thing, object of the ownership, regard it as a right like credit which can prohibit
the act by third party and this is also the results they don’t approach this issue from the natural right.
(*3) The privilege of database author which does not possess creativity, was introduced at the revision of copyright act
in 2003 (2 of §73 and/or 9 of §73, Korea copyright act).
(*4) It implies the meaning, where the privilege is generated by the results of intellectual activity. So especially, in thecase of creations, it explicitly explains the relation of the privilege with the subject,.
(*5) These are “non-rival” and “nonexclusive” characteristics of intellectual property. For this reason,
they aredistinguished from goods, which the amount is limited. And non-exclusivity of consumption requires a different
legal system from the real right law that starts from the basic prerequisite, “goods are limited but desire of humans
is unlimited”.
(*6) Sufficient incentive for initial manufacturer must be guaranteed to induce reproduction of intellectual property
because it is easy to reproduce and imitate with the limit cost of nearly zero.
(*7) In Yukio Noguchi, (Economic theory of Information ), Tokyo Keizai Shimbun. Inc., 1974(re-quotation by Uemura
Shuichi and Kurata Keiko coauthor and The theory of occurrence and transmission of information, Keizin Bunkasha,1998), the information as economic goods is described that “it is able to be copied as the essential characteristics
of information, and as its original form is not destroyed by copying, the social limit cost is zero and the transaction
is indispensable. And the level of use by individual depends on the amount held by other individuals and hence
strong outside effectiveness occurs. There are many cases that cannot be separated and have uncertainty inconsumption.”● 111 ●IIP Bulletin 2005

of generation between continental law andEnglish/American law.(*8)
In my personal opinion, though I do not deny
the existence of such a natural legal privilege or
the necessity of protection, such privilege innatural law is a different right to intellectual
property and intellectual property should not be
a compensation of such a privilege in naturallaw. (*9)
As the restrictions of the privilege for public
interest is regulated together withtheallowance of intellectual property in all current
intellectual property law, the actual benefit ofsuch discussion is doubtful but, both parts change
the position in the treatment of new intellectual
property. In the natural right theory, (*10) we will
request that it must be protected in principle
based on the similarity and position with existing
intellectual property holder, but, in the policy
theory(*11) we will award the privilege as an
exception after consideration of the benefit to the
public which is created through the protection of
the intellectual property. In this paper, on such a
premise, intellectual property system exists toexpedite the production of intellectual property
through the allowance of incentives, diffusion ofuse and establishment of a fair transaction order
and we will regard that intellectual propertysystem exists to create the benefit to the public.
And we will discuss the protection method of
intellectual property, hereafter.

Ⅲ Traditional Protection Method ofIntellectual Property
1Classification of traditional protection
methods

As somebody’s possession does not hinder
the use of another person in intellectual property,
we can use intellectual property at the same timeand it has the characteristic of an object, which
does not become extinct. So, to legally protect
intellectual property that cannot occupy andcannot control the usage, realistically, theauthority to forbid the deed to use intellectual
property without just authority must be awarded
and the illegality must be recognized about unjust
usage deed of intellectual property. Suchprotection method of intellectual property can beclassified into privilege allowance type protection
method and deed restriction type protection
method in accordance to the theoreticalconstitution method that considers unjust usage
deed by the third party as an unlawful deed.
Privilege allowance type protection method(*8) The relationship between copyright, property right and moral right and the relationship between its privilege andcopyright, there are three opposing opinions, i) the opinion that regard the copyright as a copyright property rightand understand moral right as a separate right from copyright, ii) the opinion that moral right is included in the
copyright, however, it is opposed to and coexists with copyright property right and iii) the opinion that copyrightproperty right and moral right have a close relationship and hence can not be divided, and, copyright is one
privilege including all of these. Refer to the details in Masao Handa, (Introduction of copyright act (9th edition)),Ichiryusha, 1999, Article 1-7.
(*9) We cannot deny the generation of privilege to a producer of intellectual property in natural law, but intellectual
property right given by the positive law are different with this. Allowance of intellectual property right is justified
on the premise that we can create the benefit over social loss of the public due to the usage control of intellectual
property, through protection of intellectual property, ultimately though the procedure by each intellectual property
is different. But in the countries following a continental legal system, intellectual property law was taken place inthe position of the natural right theory and still such a position remains in Korean law. Particularly, in the case of
the copyright act, it is stating the cultural development as an ultimate purpose but the theory criticizing the naturalright theory (protection of the applicant only, protection of best applicant only etc.) in patent law and, if we consider
moral right etc., it will be easier to explain Korean copyright act by natural right theory. However, it could not be
an appropriate approach to decide the way to understand intellectual property right repetitively taking theenactment purpose of the local law or historical consideration of a main industrialized country.
(*10) In the opinion finding the allowance basis of intellectual property right in the process of generation, it isinterpreted that natural right, namely, the right recognized by natural law like the right to live, civil liberties andpursuit of happiness is allowed to producers of intellectual property though there is no rationale by the positive law
and intellectual property law to confirm these rights.
This kind of idea converts intellectual property system from so called, “favor principle” to “privilege principle” andin the whirlpool of extinguishing of all privilege in the modern revolution, it could make into the ownership andcould keep continuance of the intellectual property system (Y.S. Song･ S. Lee, Intellectual property law, SaeChangpublishing company, 2003, page 17).
(*11) In the opinion finding the allowance basis of intellectual property right in the protection results, the rightrecognized in current positive law like patent law and copyright is not regarded as a naturally recognized right innatural law and is interpreted that the law awards to create the benefit to the public through achievement ofspecific purpose by the protection result of intellectual property right.
Such opinion was described as “policy theory” contrast with natural right theory in this paper and again, this policy
theory is divided into incentive theory, open compensation theory and maintenance of business competition ordertheory depending on the type of effect to create the benefit to the public.

IIP Bulletin 2005

● 112 ●

is a protection method which allows semi-realright like ownership to intellectual property, itself
and awards the authority of overall utility,
earnings and disposition of intellectual property
and constitutes a theory of privilege infringementin the case to use without just authority. Deed
restriction type protection method prescribes
specific intellectual property usage deed without
just authority as a type of special unlawfulness
and allows relief means like infringement
prevention claims and damage reparation claims
in civil and criminal affairs.
2

Deed Restriction
MethodType

Protection

Deed restriction type protection method(*12)
is representatively implemented in the unfair
competition prevention law, and on the premisethat it is free to use the intellectual property inprinciple, it regulates the specific deed of use
through separate protection requisites onobjective damage of law and order.(*13)
Though there is difficulty in changing it toassets,(*14) the role of the protection method bydeed restriction must be emphasized more, today
because, if understanding gain and loss according
to the privilege allowance can not be determined,
we can minimize the minus effect of intellectual

property system like the monopoly of information,
deepening the technical gap etc., through thiskind of protection method.
3

Privilege Allowance Type Protection
MethodPrivilege allowance type protection method
has two kinds of protection method – “patent law
protection method” that awards the right after
related authorities decide the validity of theprivilege in advance and “copyright legal
protection method” which awards the rightwithout separate procedure or method if it is a
literary property.
Due to the difference in privilege allowance
way, the right by patent law protection method ismonopolistic and exclusive right that validity ofthe privilege is regarded or presumed but in thecase of the right by copyright legal protection
method, the validity of the right has to be proved
and the right is restricted by an imitationprohibition right which cannot exercise the rightif it is not their own literary property and is used
for independent creation.(*15)
But it is necessary to consider the legal basis
to restrict copyright by imitation prohibition right,
contrary to patents. Contrary to the provisionthat “the patentee exclusively possesses the(*13) In Nobuhiro Nakayama, (Multimedia and Copyright), Iwanami Shoten, Publishers, 1996, article 7, contrary to the(*12)
regulation such as a traffic regulation to impose a limit, the expression, “provision” is being used in the point toform a legal order.
(*14) In the privilege allowance type protection method, we regard the use deed by a third party of intellectual property(*13)
as the privilege infringement in principle and access to the contrast to the way to allow free use in the case for thereason to correspond to the privilege limit, exceptionally. And in the privilege allowance type protection method,
the privilege infringement is acknowledged by the fact that a man who has no just authority, uses intellectual
property but, on the other hand, the deed restriction type protection method, the illegality is recognized on thecondition that the separate benefit and protection of law is infringed by the use of intellectual property without
permission. For instance, to be regarded as an unfair competition deed, it must cause mistake and confusion in thecase of using aservice mark and it must mediate unjust acquisition in the case to use business secrets. In otherwords, the illegality on the deed of use of intellectual property is decided depending whether the benefit andprotection of law is infringed or not caused by use of intellectual property without permission in the deed
restriction protection method.
(*15) In the unfair competition prevention law, unfair competition deed is limited in the case that it is in the competition(*14)
based on the purpose of system and hence is restrictive and it is uncertain the right, itself can be extinguished in
the case to lose the fixed position. So, actually, it is impossible to transfer the intellectual property either to set up
a right of pledge separate with the business and it is possible to use the right, indirectly through the way that aperson can prohibit unfair competition deed, approve the use to a specific person.
(*16) The meaning of imitation prohibition is represented by the word, “relative monopoly”. For example, in Sakka(*15)
Humio, (Copyright act (Basis and Application)), Japan Institute of Invention and Innovation, 2003, Article 79-80, it
is stated that “Copyright act awards an exclusive privilege which is a real right privilege having general effect tothe author, but the characteristic is a so-called relative monopoly and hence, if it is created independently, it isprotected as a literary property even though it is identical. So, from this relativity, we must judge whether it isproduced based on its literary property, to recognize the infringement of copyright”. And in Takahashi Akihiro,(Meaning of competition principle of law during R&D procedures in intellectual property), KokusaiSyoin, 2003, in
Article 100, it is stated that “As copyright is only a relative monopoly contrary to patent law, even though it isrecognized that another person’s expression, independently created, is similar with my expression, we can not
employ a prevention claim or damage reparation claim in copyright act with only the reason, itself ”. On the other
hand, determining whether it is infringement or not, we use the expression, weak privilege, recently from thepoint it demands subjective conditions. (ref. 2nd Design system subcommittee, Strategic Council on Intellectual
Property of Industrial Structure Council of Japan, material 1-, the policy of Industrial design system, Article 15).

● 113 ●IIP Bulletin 2005

privilege to execute the patent invention as thework” in Article 68 of the Japanese patent law, it
is regulated that “exclusively possess the right tocopy, play, transmit its (sono) literary property” in
Article 21 and below of the Copyright Act. I think
the statement, “sono” could be the legal basis ofimitation prohibition right.(*16) It will not beappropriate to say that the characteristic ofimitation prohibition right is from onlyinterpretation theory if we consider the impact tothe privilege and hence legislative supplement
will be needed if we cannot find a legal basis.
And in the patent law protection method, it
basically protects the idea, but in the copyrightlegal protection method, it only protects therepresentation, and hence the effect of the
copyright is not reached if the expression ischanged even though the idea included in theliterary property is used.
But the legal basis of the so-calledidea-expression dichotomy theory is doubtful in
Korea or Japan because there is no explicit
provision, which excludes the protection of theidea in this theory.(*17) In Japan, it shows,indirectly that the thought or the feeling itself is
not the object of protection through the definition
provision on the literary property as a object ofprotection like “the thing to express the thoughtor feeling, creatively” in Article 2 (1) but, in
Article 2 (1) ofthe Korean Copyright Act, it
defines literary property, simply as “a creation
which is included in the range of literature,science or art”.(*18) So the legal basis ofidea-expression dichotomy theory is doubtful.(*19)
To sum up, the traditional privilege allowance
type method is classified as patent law protection
method and copyright legal protection method
and traditionally, patent law method and copyrightlegal method have played a role to represent
intellectual property law. However, if we consider
that the current status that the borderline of theculture and industry disappears, the creation in
the limit area of the idea and expression happen
anew and the concept of the invention or literaryproperty have been enhanced, it became a thing
to classify both, by the difference of law purpose
like
industrial
developmentor
culturaldevelopment; or the difference of the protection
object like an invention or literary property, does
not have any more significant meaning.
Both have the distinction actual benefit as thedifference as the protection method, and whether
it is limited by imitation prohibition right and/or
idea-expression dichotomy, nowadays are themost important elements to distinguish between
them.

Ⅳ Hybrid Protection System
1

Generation
BackgroundProtection Method

of

New

Recently new protection method has been
tried because the new protection subject, notpredicted in traditional protection method, likethe investment result by new protection based on
inducing investment and intellectual property ofcyberspace such as computer programs, which isin the limit area of the idea and expression etc.,
have appeared. Also, it is because that the
incentive guaranteed in traditional protection
method cannot be practically used in today’s
industrial structure.
In the case of the new protection subject, i)
Due to the necessity of another protection to
induce the investment to related industry, there
will be a case that the protection condition should
be decided regardless of the creation, ii) in the
dichotomic thought of ‘idea protection’ and‘expression protection’, we cannot decide on an
appropriate protection range and iii) by thevarious use pattern in cyberspace, not predicted
in traditional protection method, re-evaluation of
the balance between rightful claimant and user
may be required or the case which is difficult toaccept this, may happen. So, on the premise that
we cannot resolve it through the way to simply
add protection subjects to the traditional(*16) If we look into the Berne Convention, the term, “these works” is used in only the reproduction right (Article 9)which can interpret the condition of ‘dependence’ as a concept of reproduction but, all in the public performanceright (Article 11), broadcasting right (2 of Article 11), recitation right (3 of Article 11) and secondary right ofliterary property writing (Article 12), the term of possessive case, “their works” is used.
(*17) In the Article 2 of WIPO copyright treaty and 2 of Article 9 of TRIPs, it states plainly that “the protection of
copyright reaches expression but doesn’t reach thought, procedure, operation method or mathematical concept”,
and it is putting the provision of the same purpose in 102(b) of the American Copyright Act.
(*18) In the revision of the Copyright Act before 1984, the vocabulary to be a thought and feeling had been inserted but
since then, at the advisory meeting for revision of copyright act, the opinion was raised that there is a possibility to
misunderstanding “thought” as a political ideology in Korea and in this reason, it was deleted from revisions.
(Hee-Sung Huh, Point by point introduction of new copyright act, Bumwoosa, 1988, page 20).
(*19) The Copyright Act does not prescribe such conditions but the requisite of literary property is recognized throughthe precedent (The Supreme Court, decision of judgment No. 77Nu76 on 13 Dec. 1977 and decision of judgment No.
79Do1482 on 28 Dec. 1979). However, considering the point that the protection range of copyright is restricted bythis requisite of copyright and it became a legal basis of so-called idea-expression dichotomy, I think this is amatter which needs legislation supplementation.

IIP Bulletin 2005

● 114 ●

protection method, independent protection
method that is suggested for the protection ofsemiconductor chip arrangement plan, computer
program, type pace, database and digital contents,
have the same generation background.
In addition, the necessity to introduce newprotection method has been presented concerning
the protection subject that is protected in current
intellectual property law and actually, theindustrial structure of the today is greatly
different from the time that traditional protection
method has been formed. That is to say, incentive,
which is guaranteed in traditional protection
methods, can be practically affected in manycases today, and though it gives an opportunity offormal protection, , there is also a case that it ispractically impossible to apply this in the aspectsof time or charge. Such requests for practicalprotection introduce new protection methods
during the search for a procedure for protection
methods to minimize the time and cost, needed togenerate privilege in the area mainly adopting
patent law protection method.
This kind of new protection method is nottotally separate and has appeared as a hybrid
system adopting the advantage of traditional
protection method and such protection method isclassified i) the system to introduce (a part of)non evaluation system based on the patent law
protection method or the system to add theprotection by no formalities before the generationof privilege (modification of a patent law approach
method),ii) the system to introduce theregistration system based on the copyright legal
protection method (modification of a copyrightlegal approach method) and iii) the system to add
the privilege allowance type protection method
based on deed restriction type protection method(modification of deed restriction type approach
method).
2Modification of Patent Law Approach
MethodFirstly, there is a protection method adopting
a part of a non-evaluation system based on apatent law protection method like the Korean
industrial design non-evaluation system or utility
model pre-registration system in the modified
patent law approach method.
In the utility model act, there is a separate
procedure called the “technical assessment
system”, and contrary to Japanese law, if a

revocation decision is made through a technicalassessment or demurrer, the utility model right
retroactively lapses in Korean utility model act.
This can be regarded as the purpose to improvethe uncertainty of the privilege but paradoxically,
even though it is a registered privilege, we cannot
escape the uncertainty until we receive thetechnique assessment. And, since technicalassessment system has been recognized as aprocedure to determine a privilege, technicalassessment application has increased and becomea judgment burden. An exclusive privilege event
is limited to the infringement deed of anotherperson until it is decided to maintain the technicalassessment as actual judgment to the necessary
condition of entities.
In Korean industrial design non-evaluation
system, it has the characteristic at the point
limiting the object to some very popular products.
But, it is doubtful whether the recently
designated five kinds of non-evaluation objects,
clothes, bedding, official papers, wrapping paper
and textile fabric are decided based on popularity
or life cycle. And in the past, pre-registration
review process to the non-evaluation objects waslimited to the requests on the procedure, however,in the existing law, the actual necessary condition
that is relatively easy to judge and cited design is
not necessary, is examined to minimize theoccurrences of infirm right. And in the revisedlaw, we can be judging about all refusal reason incase there is information offer.(*20)
As the separate procedure to enable
recovery to complete privilege like technicalassessment system is not prepared in the aspectof the effect of privilege, there is only a provisionthat the negligence is presumed in case ofnon-evaluation registration design right owner
infringe other’s design right considering infirm
right which can occur through non-evaluation
registration(*21) and it gives the same privilege tothe design right through non-evaluation with theevaluation registration design right and this is thedifference from the utility model rightpre-registration system.
However, it cannot be an early privilege withjust a utility model right that limits exclusive
rights and industrial design non-evaluation
system which the user has to check theeffectiveness of the infirm privilege registered by
non-evaluation, also there cannot be afundamental solution for the weak point in patentlaw protection method, the time and cost required(*20) In the revision of the design law (the name of the law was changed to the “design protection law”), which will comeinto force from July 2005, Article 26 (3) is newly included and we can judge refusal for all refusal reasons if
information is provided.
(*21) In the case of non-evaluation registration design right, there is a separate provision that it recognizes thepossibility of occurrence of infirm right and apply the provision of negligence presumption in case that
non-evaluation registration design right owner infringe other’s design right etc. (Korean Design Right law, Article
65(2)).
● 115 ●IIP Bulletin 2005

to make it a right. Also, the utility model rightpre-registration system and industrial design
non-evaluation system are under thoroughre-investigation now in Korea also.
As another protection method of modified
patent law, there is the so-called design
approach.(*22) This is the new protection methodthat complements patent law protection methodside by side with copyright legal protection
method or deed restriction type protection
method prior to receiving a privilege. In otherwords, this method complements the weak pointof patent law protection method which requires
regular procedure, cost and time as the necessary
conditions to receive privilege by preparation of
separate privilege before generation of right, notthrough non-evaluation system or formal
evaluation system.
3

ModificationofApproach Method

Copyright

regulation(*23) for protecting computer software of
WIPO have been discussed as new protection
methods for computer programs inside andoutside of the country. It could be evaluatedbasically as amended one of copyright legal
protection method on the aspect that material
protection factors are judged by individual cases
and the character of the rights are restricted by
the imitation prohibition rights not tofundamentally allow block effect in spite of thefact that this protection method is different fromthe copyright legal protection method of thenon-style system from the aspect that it is
excluded from protection objects by introducing a
registration system if there isn’t a declaration of
intention (application, deposition) and stabilize
the legal relation by announcing officially the
subject and the object and the existing period of
the rights.

Legal
4

These minimize the social cost according to
generated rights by rights generated without asystem under the copyright legal protection
method, but the characteristics of the occurring
rights have some unstable aspects. Namely it isuncertain whether acquiring the rights or not andcan define protection limit only in the abstract
due to widespread objects of protection ofcreation or expression and there are some casesthat the act of usage which is the object ofregulation is vague in the case of special
protection objects because rights have just been
generated without any procedure or system at thesame time as creation. It has been tried that theprotection method revised the copyright legal
protection method by individual registration on
specific intellectual property for these reasons.
i.e. i) to specify protection objects by independent
legislation, ii) to make certain whether acquiring
rights or not for taking registration as the rights
occurring elements, iii) to regulate separately
whether controlling or not for special usage act of
this intellectual property, iv) to exclude or
weaken the personality right, v) to restrict theexcessive rights to shorten the protection period.
The representative regulation examples of Korea
classified into this protection method are thearrangement design for semiconductor monolithic
circuit and the enacting of the model

Modification of Deed Restriction TypeApproach Method

Another type of new protection method isthe constructing plan not that different from theprivilege allowance type protection method in
substance, which adopts a deed restriction type asa base but sets up a protection period. This
protection method was tried in the online digitalcontents industry development Act enacted
independently to foster a digital contents industry
in Korea in 2001, but we can assume the situationon the aspect of converting from the privilege
allowance type protection method which allows
so-called “Digitalization Rights” to the deed
restriction type protection method during
legislation process. A digital contents producer
can have authority to control certain usage act for
digital contents,(*24) but basically there are a few
differences from the general deed restriction typeprotection method even accepting the deed
restriction type protection method. It is
discriminative to set up the protection period as
mentioned before. But setting protection period
under the deed restriction type protection
method as introduced in the unfair competition
prevention law for protecting the product type inJapan in1993 (Japan, the unfair competition
prevent law, Article 2(1) -3). Namely, it specifies
an imitation act of product type as a type of unfair
competition
under
the
Japanese
Unfair(*22) Unregistered designs have been protected from prohibiting copy for relevantly short period under what is known
as the “Design Approach” which gives the differential rights to non-registration Design and registration designs
under the one regulation of design protection. The Copyright, Designs and Patent Act of England 1989 protecting
non-registration designs for short period and they approve the right of non-registration designs in “The EC
regulation for protecting public designs.
(*23) Like the WIPO Model provisions on the protection of computer software Geneva 1978, WIPO prepared a draft
provision in 1976 and 1983 but has not concluded it.
(*24) WIPO Model provisions on the protection of computer software Geneva 1978.

IIP Bulletin 2005

● 116 ●

Competition Prevention law and restrict theprotection period by excluding the one passed
over 3 years from the day of first selling. This
regulation was introduced in the amended unfair
competition prevention law acted in Korea since
July 2004 as an analogical type.
In principle, the Korean online digitalcontents industry development law adopting deed
restriction type protection method is distinctive
as this establishes the protection period and alsoa mark of digital contents producer is a necessary
condition of protection.
There are two meanings for allowing themark as a protection element. A Social costfollowed by the rights occurrence could be
minimized as equivalent to the copyright legal
protection method to generate the rights by anon-system on an aspect of determining whether
protecting or not by the producer’s own mark not
public organization. The other is that the object
can have limits set for intellectual property which
the producer expresses positively their intention
to protect and it is different from the copyrightlegal protection method by the meaning ofprotecting exclusively in the case of expressing acertain way.

Ⅴ Design Methodology
Protection Methodof1

Protection

Introduction
Method

of

a

New

New

If we look into considerations of theintroduction of the new protection method, first,
we need to examine the necessity of protection,
characteristics of protection object and degree ofprotection.
Especially, further examination on the needof protection must precede this in order to choose
the protection method for new objects.(*25) In
intellectual property law, without extra legislation,
there is a limit of usage by public in intellectual
property and by contract; usage of intellectual
property is limited in society.(*26) On the policyside, extra legislation is requested when it isvague to decide on protection of intellectual

property. When this situation is prolonged, it canbring social damage in the future or now. Thismeans that even if intellectual property benefitssociety, it may not expand and will reduce
development of related areas. Therefore, bylimiting the usage of intellectual property, it isnecessary to have a definite benefit to the publicthat is created.
This is a judgment in policy to stimulate thecreation or induce investment and to choose amuch better way in comparison between thebenefit of the public, which is created byestablishment of fair competition order, and theloss to the public by artificial limits, which cause
restricted usage of the intellectual property.(*27)
It is necessary to acknowledge the need for
new way of protection if there is agreement on
the need of protection. First of all, we need tofigure out the reason why we can not bring it overfrom protection object under the existing law.
Then necessary condition of protection has to beestablished to create a common benefit. It isnecessary to grasp the current situation of use
and find out how intellectual property producers
can receive incentives.
In addition, policy judgments about thedegree of the protection on cost and time torequest right, bond characteristic, length ofprotection and criminal discipline or personal
accusation, are necessary.
The protection method has a close relation
with the characteristics of the object of protection
but in this paper the general principle, which is
not related with the object of protection, was also
examined through the analysis of the content of
the privilege to be subordinately decided
according to the protection method regardless ofthe object of protection.
2

General Principle Not Related with the
Object of Protection(1) Protection Method
The protection method for new objects has
to proceed from protection by deed restriction.
Introducing privilege allowance type protection
method without confidence in social loss and gain(*25) The thing to decide first on planning new protection method of the intellectual property is whether to protect it.
Recently there’re some opinions, which any creation has to be protected for pro-patent trend, but still it has to beinvestigated whether to protect. It has to be considered about necessity of protection and then what to prohibit inorder, but there are some cases that there are no acts as result of investigating whether to prohibit in reverse.
Namely there is no need to protect if investments can happen without artificial protection, it is the intellectual
property that has to be protected through such screening. (Shimizu Megumi, (Pro-patent and competition policy),
Shinzansha Publisher Co., Ltd., 1999, article 20).
(*26) Tamura Yoshiyuki, (Theory of functional intellectual property law), Shinzansha Publisher Co., Ltd., 1996, Article 14,
it is explained below that the return is asked, because usage is restricted on the occasion that physical access orlegal access is impossible, and it can individually be treated with the illegal act law on the civil law if that is enough.
(*27) Which imitation act has to be prohibited depends on the age, the social situation, the industrial structure, thetechnology level and so on, and the regulation following the request of the time is always needed on the field of theintellectual property right (Nobuhiro Nakayama, (Multimedia and copyright), Iwanami Shoten Pulishers, 1996,
article 7).
● 117 ●IIP Bulletin 2005

following deed restriction control would result in
the risk of trial and error. Although privilege
allowance type protection method could beagainst the law because this type of method takes
advantage of intellectual property, deed
restriction type protection method can minimize
adverse effects from the restriction on the use
because generally this type requires impinging on
another benefit and protection of the law. In otherwords, privilege types can guarantee free use ifneeded because there are restrictions only whensomeone causes confusion/ misconception forusers or when someone makes dishonest
earnings disturbing the business of an intellectual
property producer. As was said, “The world
became advanced and prosperous by imitatingothers”; it is not a good idea to define the use of
intellectual property itself as illegal when there isno plus factor greater than a counter result
according to the restriction on the use.
We also need to be reminded of the fact thatthe privilege once endowed can not be diluted tothe degree of deed restriction type protection,although degrees of protection can be increased
from deed restriction type protection method toprivilege allowance type to meet the needs of thetimes.(*28) Also, in the case of privilege allowancetype, social costs are required to maintain our
registration system or screening and that is why
we need to approach gradually the privilege
allowance type, which accepts social costs, andcounter results.
Unfair competition prevention law in Korea
uses a deed restriction type protection method
and lists all the protection objects clearly. On theother side, protection objects are defined
abstractly in laws, which pursue privilege
allowance type protection method such as patentlaw or copyright. And this is why privilege
allowance type protection method makes it easierto accept new protection object for intellectual
property system. It is also necessary to examine
if adopting a new protection object by extending
the concepts of invention or literary property isappropriate way of approaching.(*29)(2) Judgment of Efficiency
The validity of a decision for privilege has tobe preceded to allow exclusive rights. In otherwords, prearranged inspection on specific matteris definitely required to allow the privilege thatcan control the use of intellectual property
produced independently. When judgment in policy(Progressivity)
andprofessional
search(Freshness) is needed, throwing the judgment on
an interested party about whether the conditionof protection is fulfilled or not is very
irresponsible behavior and this damages themeaning of the presence of intellectual propertysystem. Although each interested party has adifferent opinion on whether conditions ofprotection are fulfilled or not, those privileges
from perfunctory examination has to be restrictedby imitation prohibition right in principle. In somecases, it could be a good idea to put off the timefor exercising rights when certain procedure forthe validity of a decision is arranged.
(3) Block Effect
When privilege is being issued, certain
procedures and methods are required to allow theblock effect. To allow a block effect each object
has to be granted single privilege. Also, we needcertain standards such as principle of earlycreation or application and proper procedures
have to be made for those standards. Then theprivilege would be created accordingly by thesearrangements. If we give block effect to theprivileges created by no rules there are chances
to affect legal stability causing serious trouble anddestroying the meaning of the presence ofintellectual property system.
(4) Protection Period
When arranging incentives for intellectual
property producers depend on the protection
period we should be careful not to apply a rule tothe protection object whose protection period has
not expired. The principles created in the pastshould be respected and vested rights should not
be abused when the protection period is reduced.
But there is no reason to apply this in principle
when the protection period is extended because
common benefits in intellectual property systemare either achieved through the privilege
procedure (application procedure) already or
going to be made by encouraging creation and
That
is,
the
retroactive
investment.(*30)(*28) Because lowering the level of protection is very difficult once getting to protect as right, it seems proper tointroduce the deed restriction type protection first unless the necessity of protection by rights establishment typeis uncertain like this (Industrial Institute, (Consideration about intellectual property system toward 21st century),
Institute of Intellectual Property, 2000, article 43).
(*29) Even if it is possible with the construction of existing law for protection of new information, it is necessary tochoose a proper system after examining that it is appropriate protecting under which system (Industrial Institute,(Consideration about intellectual property system toward 21st century), Institute of Intellectual Property, 2000,
article 43).
(*30) As an incentive to inspire the creation desire about new literary property, it protects the literary property. A
copyright system will brings rather big contrary effect at the culture development if it is limited to the present
time (Nobuhiro Nakayama, (Industrial ownership Act (first volume)), Koubundou publishers Inc., 2000, article 8).

IIP Bulletin 2005

● 118 ●

application of the extension of the patent period is
far from the original purpose of the intellectual
property system and it is only possible to discussat the level of international diplomacy and tradethrough the unification of protection level toconclude a treaty, for example.
In 1998, the U.S. established copyrightprotection lengthening law (Sonny Bono
Copyright Term Extension Act: Effective
10.28.1998) that extends 20 more years on
copyrights and applied to all copyrights that had
not expired at that time. Once, it was questioned
whether it corresponded to U.S. Federal law.
However, on Jan 15, 2003, the U.S. Federal court
pronounced that the copyright protection
lengthening law does not violate Article 1 of the
U.S. Federal copyright law in the Eldred vs.
Ashcroft case.(*31) Major evidence for this rule arecongress’s admission of retroactive application on
extension of copyrights and patents, previous
judgment of retroactive application on extensionof patents, and 70 year extension on copyrights
by European alliance, U.S. copyrights holders
emphasize that they should have the same
protection rights. However, the evidence listed
above lacks logical sense. The strongest evidence
to support it is that if there wasn’t an extension
on protection law, the fact that Walt Disney’s
characters Mickey Mouse copyright would haveended in 2003, Pluto in 2006, and Goofy in 2008
seems more convincing to explain the backgroundof the constitutional judgment.

law can be damaged.

(5) Duplication of Protection
When introducing new protection methods
through independent legislation it is important tohave a clear relationship with existing laws. This
becomes an issue of discussion mainly as a matterof possibility of double protection(*32) by copyrightwhen privilege is created from no rules.(*33) In
order to do that, separating the roles of existinglaws should precede this. When making an
independent law in the future the principle ofmutual adjustment should be provided for in thelaw. Because in the independent legislation as
discussed in the following, the effectiveness not
to intend, happens for another property in thesimilar position and the balance between therightful person and user, agreed in the existingIntellectual property system generally has
the following functions even though there aresome levels of differences in each regulation. i)
Protecting the rights of the natural law of
producers, ii) promoting industrial development
by stimulating the production of intellectual
property and iii) maintaining the order of businesscompetition. However, in this paper weunderstand that the function to protect a privilege
of intellectual property producer means the way
to accomplish another function. In other words,on the premise that intellectual property isdifferent from a privilege in natural law and also,
there is no compensation for such privilege innatural law, we are approaching the way to protect
intellectual property.

3Adequacy of Independent Legislation

In principle, for the adequacy of independent
legislation, whether the existing law system canaccept should be precede this and the decision
has to be made depending on how much it would
confuse the legal system.
Serious distortion of intellectual property
based on new protection methods is the first
concern. In this case, as we cannot help changing
the law purpose or protection requisite, it will beproper to solve this through the legislation in a
separate way.
Also, as traditional law system have been
bisected and fixed by the protection of idea andexpression for a long time, exceptional regulation
at a specific intellectual property, which
differently interprets the range of protection, hasalso possibility to seriously distort the existinglaw system,. Most of all, such independent
legislation has the advantage that protection canbe set to meet individual protection objectives
and range but as mentioned, previously, until
other intellectual properties that are in a similarplace have laws for them, protection may belimited and bring an unexpected effect and thesocial cost to establish and enforce a new systemand then settle down, should be considered, too.

Ⅵ Conclusion(*31) Eldred v. Ashcroft 537 U.S. 186(2003)(*32) The accumulation of protection can be used instead of double protection. Double protection is the system to allow
double rights to the same person on the same object with different types of rights. It is the concept that must
separate that double protection, which can request a protection to one of them or both of them by choice and can beprotected by more than two laws at the same time, and co-existence of protestation, which cannot appeal to theother law only if choosing one, merely leaving the possibility of the choice. (WIPO, Intellectual Property Reading
Material, 1995, p. 417).
(*33) Refer to Ikegami Takashi, “Consideration of proper protection area by each intellectual property system”,
periodical publications, Institute of Intellectual Property, 2002, article 27-28 about the mixture of copyright andanother intellectual property rights.
● 119 ●IIP Bulletin 2005

On these points of view, granting theintellectual property rights could not be justified
if public benefits could not be generated to diffuse
usage and maintain the order of businesscompetition by stimulating production of
intellectual property, and the protection method
has to be designed only for maximizing publicbenefit, not for consideration of rights of thenatural law. This paper revaluates the protection
method of the intellectual property supposing
these ideas.
But these discussions can only be an
opportunity to again think over the criteria andprinciples in its own way. It might not be a rightapproaching way to decide uniformly how tounderstand intellectual property law, because it
is a dynamic concept which changes appearances
sensitively according to the situation. The issueof how to understand the intellectual property
law under “the situation of each country” and“the present point of time,” has to be thestarting point for all areas of the intellectual
property law, and it is the case to be newly
established to fulfill a duty of the intellectual
property law hereafter.

IIP Bulletin 2005

● 120 ●