[1] In a case where a designated state is designated when an international application is filed under the Patent Cooperation Treaty, whether the conditions and effect of the priority claim are in accordance with the laws and regulations of the Republic of Korea (affirmative) / In a case where an inventor claims priority while filing a subsequent application containing a professional engineer of the earlier application, whether the filing date of the same part as the later application shall be deemed the priority claim date (affirmative)

[2] The case holding that in a case where Gap et al. acquired the right to obtain a patent for the invention of the first or fifth earlier applications filed by Eul et al., entered into a contract under which Byung et al. would have the right to obtain an international application under the Patent Cooperation Treaty by claiming priority based on the above earlier applications from Gap et al., and Byung claimed priority based on the earlier applications at the Chinese Intellectual Property Office, and subsequently, the patent applicant et al. claimed priority based on the earlier applications while taking over the five earlier applications; thereafter, the patent applicant et al. changed the title of the patent applicant after taking over the subsequent application rights; and the patent applicant filed a written request for priority based on the earlier applications with the Commissioner of the Korean Intellectual Property Office; however, the patent applicant et al. filed a disposition invalidating each priority claim on the grounds that there is disagreement between the applicant at the time of the later application and the earlier application, without verifying whether Byung properly succeeded to the right to claim priority based on the domestic patent application, deeming the earlier application to be invalid by deeming the applicant and the applicant should not be deemed invalid

[1] When an international application as prescribed by the Patent Cooperation Treaty (hereinafter “PC”) is filed within one year thereafter on the basis of the priority claim after a patent application was filed in Korea first, the designated country may be deemed the Republic of Korea. In this case, the conditions and effect of the priority claim shall be as prescribed by the Acts and subordinate statutes of the Republic of Korea [Article 8(b) (b) of the PC].

A person who intends to obtain a patent may claim priority over an invention described in the specification or drawings initially accompanying the earlier application filed earlier (hereinafter referred to as “Earlier application”) for a patent having the right to obtain a patent (Article 55(1) of the Patent Act). Of the inventions described in a patent application claiming priority, the patent application shall be deemed to have been filed at the time the earlier application was filed (hereinafter referred to as “the date of priority claim”) when applying certain patent requirements, such as newness and inventiveness, with respect to an invention identical to the invention described in the first specification, etc. of the earlier application claiming the relevant priority (hereinafter referred to as “Earlier application”).

Therefore, if an inventor claims priority while filing an application for a subsequent invention containing a professional engineer of an earlier-filing application, the filing date of the same part as the later-filing application is considered as the priority filing date. The purpose of such domestic priority system is to ensure that the inventor's accumulated performance can be protected as a patent in consideration of the fact that technology development is continuously conducted.

A person who has made an invention or his/her successor has the right to obtain a patent under the Patent Act (main sentence of Article 33(1) of the Patent Act), and the right to obtain a patent is transferable (Article 37(1) of the Patent Act). If an applicant who has succeeded to a “right to obtain a patent” at the time of the subsequent application, he/she may claim the priority, and at the time of the subsequent application, a report on alteration of the patent applicant is not required to be completed. The succession to the right to obtain a patent after the patent application shall not take effect unless a report on alteration is filed, except in cases of inheritance or other general succession. Article 38(4) of the Patent Act, which provides that the succession to the right to obtain a patent shall not take effect unless a report on alteration is filed, cannot be deemed to have been made easily confirmed in the patent-related procedure to seek convenience and swiftness in the examination of the patent application. Accordingly, even if the applicant who has filed an earlier application is different from the applicant, the priority claim should be asserted.

[2] Where Gap et al. acquired the right to obtain a patent for the earlier applications from Gap et al. (hereinafter “Earlier applications”), and Byung concluded a contract with Gap et al. to acquire the right to obtain an international application (hereinafter “PC international application”) as prescribed by the Patent Cooperation Treaty by claiming priority for the earlier applications, the case holding that the judgment below erred by misapprehending the legal principles as to the patent application at the time of filing a report on modification of the patent application and failing to verify the right at the time of filing a patent application, on the ground that the patent applicant did not complete the report on modification thereof, although the patent applicant et al. acquired the right to obtain a priority for the earlier applications, changed the patent applicant’s title after receiving the right to obtain a subsequent application, and submitted a domestic document stating priority for the earlier applications to the Commissioner of the Korean Intellectual Property Office, and the applicant asserted priority for the earlier applications on the grounds that the subsequent applications do not coincide with the applicant at the time of filing a patent application at the time of filing the earlier applications, and that the patent applicant did not have any other right to obtain a patent application at the time of the earlier applications.

[1] Article 8(b) (b) of the Patent Cooperation Treaty; Articles 33(1), 37(1), 38(4), 52, 53, and 55(1) and (3) of the Patent Act; Articles 7(1) and 26(1) of the Enforcement Rule of the Patent Act / [2] Article 8(2) of the Patent Cooperation Treaty; Articles 33(1), 37(1), and 5(1) and (3) of the Patent Act; Articles 7(1) and 26(1) of the Enforcement Rule of the Patent Act

GENIP PET. LTD et al. (Attorneys Yoon In-person et al., Counsel for the plaintiff-appellant)

The Commissioner of the Korean Intellectual Property Office

Seoul High Court Decision 2016Nu30905 decided October 11, 2016

The judgment below is reversed and the case is remanded to Seoul High Court.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

1. In the event an international application (hereinafter referred to as “PC international application”) determined by the Patent Cooperation Treaty (hereinafter referred to as “PC international application”) within one year thereafter on the basis of the priority claim after the filing of the patent application in Korea first, the designated State may be deemed the Republic of Korea (hereinafter referred to as “PC self-designated application”). In this case, the conditions and effect of the priority claim shall be as prescribed by the statutes of the Republic of Korea [Article 8(b) (b) of the PC].

A person who intends to obtain a patent may claim priority over an invention described in the specification or drawings initially accompanying the earlier application filed earlier (hereinafter referred to as “Earlier application”) for a patent having the right to obtain a patent (Article 55(1) of the Patent Act). Of the inventions described in a patent application claiming priority, the patent application shall be deemed to have been filed at the time the earlier application was filed (hereinafter referred to as “the date of priority claim”) when applying certain patent requirements, such as newness and inventiveness, with respect to an invention identical to the invention described in the first specification, etc. of the earlier application claiming the relevant priority (hereinafter referred to as “Earlier application”).

Therefore, if an inventor claims priority while filing an application for a subsequent invention containing a professional engineer of an earlier-filing application, the filing date of the same part as the later-filing application is considered as the priority filing date. The purpose of such domestic priority system is to ensure that the inventor's accumulated performance can be protected as a patent in consideration of the fact that technology development is continuously conducted.

A person who has made an invention or his/her successor has the right to obtain a patent under the Patent Act (main sentence of Article 33(1) of the Patent Act), and the right to obtain a patent is transferable (Article 37(1) of the Patent Act). If an applicant who has succeeded to a “right to obtain a patent” at the time of the subsequent application, he/she may claim the priority, and at the time of the subsequent application, a report on alteration of the patent applicant is not required to be completed. The succession to the right to obtain a patent after the patent application shall not take effect unless a report on alteration is filed, except in cases of inheritance or other general succession. Article 38(4) of the Patent Act, which provides that the succession to the right to obtain a patent shall not take effect unless a report on alteration is filed, cannot be deemed to have been made easily confirmed in the patent-related procedure to seek convenience and swiftness in the examination of the patent application. Accordingly, even if the applicant who has filed an earlier application is different from the applicant, the priority claim should be asserted.

(1) The substantive examination of whether the subsequent applicant has actually succeeded to the right to obtain a patent from the earlier applicant in the process of the PC self-designated application shall be conducted in accordance with the statutes of the Republic of Korea after entering the domestic phase pursuant to Article 8(b)(b) of the PC. In cases where a successor to the right to obtain a patent seeks to initiate a patent-related procedure, the Defendant may require the successor to submit documents proving that he/she is the successor (Article 7(1) of the Enforcement Rule of the Patent Act). As such, if necessary, the succession of the right may be examined by requiring supplementation if necessary. If the subsequent applicant succeeds to the right to obtain a patent under Article 38(4) of the Patent Act and then requests the completion of a report on change of the patent applicant in the Republic of Korea before the filing of the PC international application, the subsequent applicant loses the opportunity to supplement defects in the domestic phase, and thus, cannot be deemed to be in accordance with the purpose of the domestic priority system. Moreover, even in cases where the first application is partially included in the applicant of the earlier application in the process of improving the invention and subsequent application, the applicant may change of the prior application.

② Article 55(1) of the Patent Act merely stipulates that “a person who is entitled to claim priority” is “a person who intends to obtain a patent.” This is compared to the requirement that the divisional applicant or the title holder of the converted application be identical by prescribing that a person who is entitled to file a divisional application (Article 52) and a converted application for a utility model registration (Article 53) are “applicant.” Since a person who is entitled to obtain a patent has the right to obtain a patent (Article 33(1) of the Patent Act), it is consistent with the literal interpretation that a person who is entitled to obtain a patent falls under “a person who intends to obtain a patent” and “a person who is entitled to obtain a patent” under Article 55(1) of the Patent Act. Article 26(1) of the Enforcement Rule of the Patent Act that prescribes that a report on change of the patent applicant is filed before the registration of the patent is filed also supports such interpretation

2. Review of the reasoning of the lower judgment and the evidence duly admitted reveals the following circumstances.

A. Nonparty 1 and Nonparty 2 acquired the right to obtain a patent for the invention of the first to fifth earlier application (hereinafter referred to as “instant earlier application”) of this case filed by Nonparty 3.

B. The non-party 4 (English name omitted) entered into a contract with the non-party 1 and the non-party 2 to claim priority on the basis of the earlier applications in this case and to be transferred the right to file the PC international application, and the non-party 4 claimed priority on the basis of the instant earlier applications while filing five instant PC international applications with the Chinese Intellectual Property Office (hereinafter “instant later applications”).

C. The Plaintiff GEIE LIE (hereinafter “Plaintiff GIE”) acquired, from Nonparty 4, the right to the later application of this case, and the Plaintiff LIE (hereinafter “Plaintiff LIE”) acquired from Plaintiff GIE’s GIE right to the instant later application from Plaintiff GIEN, and changed the patent applicant’s title.

D. Pursuant to Article 203 of the Patent Act, the Plaintiffs submitted to the Defendant a domestic document containing a priority claim based on the instant earlier application regarding the instant later application. Although the name of the applicant for the instant earlier application was changed to “non-party 1 and Non-party 2,” the applicant for the instant later application is “non-party 4,” the applicant for the instant later application is deemed to be “non-party 4,” and the name of the later applicant is not the same at the time of the instant later application, the Plaintiffs demanded correction to the effect that “the documents proving that the later applicant is a legitimate successor of the earlier applicant at the time of the later application

E. According to the above request for correction, the Plaintiffs submitted to the Defendant a written contract under which they would claim priority based on the earlier applications of this case and be transferred the right to file the PC international application (the later applications of this case), and the Defendant did not dispute the fact that the Plaintiffs acquired the right to claim priority based on the earlier applications of this case.

F. However, the Defendant rendered the instant disposition invalidating each priority claim in accordance with Article 16(1) of the Patent Act on the ground that “the applicants at the time of the application for the instant subsequent application are inconsistent with those at the time of the application, and the agreement on the transfer of rights submitted by the Plaintiffs as accompanying documents in the written amendment does not constitute documents proving that the subsequent applicant is a legitimate successor of the earlier applicant at the time of the application for the subsequent application.”

3. We examine these circumstances in light of the legal principles as seen earlier.

A. Although Nonparty 4 did not report the change of the patent applicant regarding the instant earlier applications at the time of the filing of the instant later applications based on the instant earlier applications, Nonparty 4 did not report the change of the patent applicant regarding the instant earlier applications at the time of the instant later applications, it cannot be deemed that Nonparty 4’s succession to the right to obtain a patent for the instant earlier applications is permissible after the filing date of the later applications. In addition, since the Plaintiffs submitted the instant later applications to the Defendant before the registration of the instant later applications, the succession of the right to obtain a patent for the instant earlier applications was submitted by the Plaintiffs prior to the filing date of the later applications, it can be deemed that the legally submitted application was made pursuant to Article 2

B. As the applicant of the earlier application of this case and the subsequent application of this case are not identical, it is necessary to verify whether Nonparty 4 properly succeeded to the right to claim priority pursuant to each of the instant transfer contracts. Without verifying such fact, the PC international application claiming priority based on the domestic patent application did not complete the report of change of the patent applicant at the time of the subsequent application, the priority claim should not be deemed null and void solely on the basis that the applicant of the earlier application and the subsequent application were different from the applicant of the earlier application.

4. Nevertheless, the lower court determined that the instant disposition that invalidated the Plaintiffs’ priority claim on the ground that the subsequent application did not contain a report on the change of patent applicant at the time of the instant later application was lawful. In so determining, the lower court erred by misapprehending the legal doctrine on domestic priority claim and priority examination, thereby adversely affecting the conclusion of the judgment.

5. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Jo Hee-de (Presiding Justice)