[2] Purport of Article 99(2) and (4) of the Patent Act / Whether the provisions on the claim for partition of co-owned property under the Civil Act apply to co-ownership of a patent right (affirmative), and whether partition in kind is permitted in the nature of a patent right (negative) / Whether the same legal principle applies to a design right (affirmative)

[2] The purport of Article 99(2) and (4) of the Patent Act (amended by Act No. 12753, Jun. 11, 2014) is to prohibit the transfer of shares without the consent of other co-owners and the establishment of a license, taking into account the unique characteristics of the co-ownership relationship where a third party, other than co-owners, is entitled to transfer a patent right’s share or obtain a license for the grant of the patent right’s license, the economic effect significantly vary depending on the size, technology, and ability of capital invested by the third party, etc.

Therefore, even if each co-owner recognizes the right to claim a partition of co-ownership under the Civil Act as a means to resolve co-ownership in cases where there is a conflict of interests between the co-owners, it is difficult to view that there is such change in the economic value of shares of other co-owners by a third party other than the co-owners, and there is no other provision prohibiting the claim for partition, and thus, the provisions on the claim for partition of co-ownership under the Civil Act can be applied to the co-ownership relation of patent rights. Provided, That the patent right is an exclusive right for the implementation of invention, and its subject is no body, and if it is recognized as a right to divide a patent in kind by granting a patent right to each co-owner, it would result in an unreasonable result that one patent right actually increases into multiple patent rights. Accordingly, such kind of division is not allowed in the nature

1. Where a patent is jointly owned, each co-owner may not transfer his/her share or establish a pledge on his/her share without the consent of the other co-owners, and the patent cannot be granted an exclusive license or a non-exclusive license (see Article 99(2) and (4) of the Patent Act (amended by Act No. 12753, Jun. 11, 2014; hereinafter the same shall apply)) with respect to his/her patent right and has the nature similar to partnership oil to the extent of the exercise of the right. However, in general, the joint owners of the patent cannot be deemed to possess the patent right by forming a partnership based on the joint purpose or partnership. Unless otherwise expressly provided in the Patent Act, the general provisions of the Civil Act on joint ownership shall also apply to joint ownership of the patent (see, e.g., Supreme Court Decision 2002Hu567, Dec. 9, 2004).

However, the purport of Article 99(2) and (4) of the Patent Act is to prohibit the transfer of shares without the consent of other co-owners and the establishment of a license, considering the unique characteristics of the co-ownership relationship that may cause a considerable change in the economic value of the shares of other co-owners when a third party, other than the co-owners, is assigned a patent right or is granted a license for the grant of a patent right, depending on the size, technology, and ability of capital invested by the third party. Thus, even if each co-owner's right to partition of shares is recognized as a means to resolve the co-ownership relationship, it is difficult to deem that the economic value of the share of each co-owner is changed by a third party, other than the co-owner, as it does not go against Article 99(2) and (4) of the Patent Act, and there is no provision prohibiting the claim for partition. However, a patent right is an exclusive right for the implementation of the invention and its subject is not only the subject matter of the patent right, but also it is reasonable to recognize that multiple patent rights are granted to each co-owner in kind.

In addition, the above legal principle also applies to the design right.

2. In light of such legal principles, it is justifiable for the lower court to accept the Plaintiff’s claim for partition, which is the co-owner of each patent and design right (hereinafter “instant patent, etc.”) in its holding, and to order the payment of the instant patent, etc. by auction. In so doing, contrary to what is alleged in the grounds of appeal, the lower court did not err by misapprehending the legal doctrine on the claim for

3. In addition, the Defendants’ assertion in the grounds of appeal that the deceased non-party, the inheritee of the Plaintiff, received KRW 70 million from the Defendants and agreed to transfer all of the shares in the patent right of this case to the Defendants is merely an error in the selection of evidence and fact-finding which belong to the exclusive jurisdiction of the lower court, and thus, cannot be accepted.

4. 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 Kim Chang-suk (Presiding Justice)