(영문) 서울행정법원 2019.1.25. 선고 2017구합64170 판결

A. The plaintiffs are two of five inventorss of the patented invention under the below (hereinafter referred to as "the patented invention of this case"), and the patent right of the patented invention of this case (hereinafter referred to as "the patent right of this case") was registered as a state-owned patent on February 4, 2010.

The name of ○ Invention: C○ filing date/registration date//registration number: D/E/F patentee: The inventor of the Republic of Korea (Minister of Knowledge Economy): A, B, G, H, and IO Patent Claim: as shown in attached Form 1.

B. On December 28, 2010, the Commissioner of the Korean Intellectual Property Office received a civil petition that “A public official, who was a public official of the Ministry of Knowledge Economy, has made an employee invention and registered as a State-owned patent, from the Ministry of Knowledge Economy. When a public official executes a State-owned patent that made an employee invention, he/she shall use the patent after obtaining approval from the Commissioner of the Korean Intellectual Property Office pursuant to the Regulations on Disposition, Management and Compensation of Public Officials’ Employee Inventions, and after obtaining approval, he/she shall pay reasonable compensation to the inventor pursuant to the above provisions. Therefore, he/she shall reply to whether to use the patent of this case and, when using, after obtaining approval after filing an application for use of a State-owned patent

C. The Minister of Knowledge Economy, upon receipt of a reply from a NN agency responsible for the determination of strategic items 3, operation of the strategic item J information system ("K") such as online self-determination, specialized determination, and export permission application through the Internet site (L); hereinafter referred to as "M"), the Minister of Knowledge Economy did not file an application for the use of a national patent with the NN agency, which did not implement the patent right of this case.

D. The Plaintiffs, on March 6, 2017, implemented the instant patent right to the Defendant from M (L) to the present date. As such, the Plaintiffs filed an application for “a procedure for filing an application for approval of use of a national patent regarding the instant patent right” (hereinafter “instant application”).

E. On April 12, 2017, the Defendant filed a patent application with the Plaintiffs only for programs (P, P, hereinafter referred to as “P,” or “P”) that are part of the functions connected to M except for the impossibility of a patent, since “M was disclosed to the general public from February 2, 2005.” As a result of changes in the Internet environment and improvement in the function of M, N is confirmed to have completely suspended its use at all since since 2010, N was not a company using the patent right (P) that made by your invention after 2010, and N was fully removed from M in its physical form, and in 2014, it was confirmed that it was impossible to file an application for approval for use with the Korean Intellectual Property Office because it was not currently using the patent right made by your invention and there was no possibility of using it in the future.”

【Ground of recognition】 Facts without dispute, entry of Gap evidence Nos. 2-7 and purport of the whole pleadings

2. The plaintiffs' assertion

From May 2003 to June 2007, 5 including the plaintiffs claimed K as a whole, and the defendant constructed the above system that the plaintiffs claimed by the plaintiffs and implemented the civil service through the Internet from February 17, 2005. The company that could have used the "self-determination", "pre-determination", "pre-determination", was merely 3,000 or more members approved membership, and thus, it does not constitute "an invention freely available to the public". Thus, M's "self-determination", "pre-determination" and "pre-determination" are defined as a single control number between Q and the corresponding one control number, "the method of acquiring and using data base", "the method of using the above data base", "the method of using the data base" and "the method of using the data base", "the method of using the patent application of this case" and "the method of using the data base", and "the method of using the patent application of this case" and "the patent application of this case" of this case is additionally included in the "the patent application of this case".

① Q Connection and Use Method ( Claim Nos. 1, 2, 3, 6), ② Pakistan and Use Method ( Claim Nos. 1, 2, 3, and 6), ③ Method of automatically transmitting and managing a company’s use situation to M from February 17, 2005 to February 17, 2005, ④ Program(P, Claim Nos. 1 to 6), and Claim Nos. 6 and Use Method( Claim No. 5) are used from D date.

Therefore, the defendant is obligated to apply to the Commissioner of the Korean Intellectual Property Office for the approval of the use of the patented invention of this case pursuant to Article 10(3) of the Regulations on the Disposal, Management, and Compensation of Public Officials’ Inventions. Thus, the defendant's refusal of the application of this case by the plaintiffs who should receive compensation pursuant to Articles 17 and 19

3. Relevant statutes;

Attached Form 2 shall be as shown in attached Table 2.

4. Judgment on the defendant's main defense of safety

A. The defendant's assertion

The issue of whether a patent has been used or worked is that the Korean Intellectual Property Office, who is in charge of the patent at the compensatory level pursuant to Article 10(2) and (4) of the Invention Promotion Act, shall verify the facts to the Defendant. The Plaintiffs do not have the right to file an application with the Defendant for the approval of the use of a national patent right. Accordingly, the instant reply is not an administrative disposition that is subject

B. Determination

1) In order for an administrative agency’s refusal of a citizen’s petition to constitute an administrative disposition that is subject to an appeal litigation, the administrative agency should have the right to request a citizen’s action in accordance with the relevant law or sound reasoning. In a case where an administrative agency does not accept a citizen’s petition without such right, such refusal cannot be deemed to have affected the applicant’s right or legal interest, and thus, it cannot be deemed an administrative disposition that is subject to an appeal litigation (see, e.g., Supreme Court Decision 2014Du47426, Jul. 14,

2) According to the Invention Promotion Act, public officials’ rights are succeeded to and succeeded to by the State or a local government (Article 10(2)); dispositions and management of patent rights, etc. owned by the Commissioner of the Korean Intellectual Property Office (Article 10(4)); and where public officials’ rights are succeeded to by the State or a local government, due compensation shall be paid (Article 15(7)). According to Articles 10 and 15 of the Invention Promotion Act, the former Regulations on the Disposal, Management, Compensation, etc. of Public Officials’ Inventions’ Inventions (amended by Presidential Decree No. 29123, Aug. 28, 2018; hereinafter “Rules”), the head of the invention institution shall request the State or the Commissioner of the Korean Intellectual Property Office to register a patent right in the name of the State or the Commissioner of the Korean Intellectual Property Office (Article 10(1) and (2) if he/she deems it necessary to obtain approval of a non-exclusive license for the State-owned invention without compensation (Article 10(1) and (2) of the Korean Intellectual Property Office).

3) The Plaintiffs are the inventors of the instant patent invention registered as a state-owned patent right, and if the instant patent right is disposed of without compensation, the Commissioner of the Korean Intellectual Property Office is obligated to pay compensation to the Plaintiffs pursuant to Article 15(7) of the Invention Promotion Act and Articles 17 and 19 of the instant provision

Meanwhile, according to Article 10(4) of the Invention Promotion Act and Articles 3 and 10 of the same Act, compensation for an employee invention, disposal and management of a national patent right belongs to the duties of the Commissioner of the Korean Intellectual Property Office, and the head of a State agency directly executes a national patent for public purposes by obtaining approval from the Commissioner of the Korean Intellectual Property Office. Article 10(2)2 and (3) of the same Act, which stipulates that the head of a State agency shall obtain approval from the Commissioner of the Korean Intellectual Property Office, only a provision that allows the Commissioner of the Korean Intellectual Property Office in charge of disposal and management of a national patent right and compensation for an employee invention to confirm whether a State-owned patent right has been granted and perform relevant duties, such as payment of compensation, etc., within the country, and even if the head of a State agency directly executes a state-owned patent right without obtaining approval from the Commissioner of the Korean Intellectual Property Office, the inventor of a national patent right shall be deemed to be entitled to

Therefore, the plaintiffs who are the inventor of the patent right of this case shall apply to the Commissioner of the Korean Intellectual Property Office for the payment of compensation under Article 17 of the Regulations of this case, and where the Commissioner of the Korean Intellectual Property Office refuses the plaintiffs' application due to lack of approval despite the fact that the patented invention of this case was implemented by the defendant, he shall seek revocation of the rejection disposition, and it shall not be deemed that the defendant has the right to request the Commissioner of the Korean Intellectual Property Office to apply for the approval

4) Ultimately, the instant reply is unlawful as it does not constitute an administrative disposition that is subject to an appeal litigation.

5. Judgment on the merits (family judgment)

A. Facts of recognition

1) Around December 2003, Defendant 5 confirmed control numbers related to the export product Q and examined the technical specifications thereof, and concluded a contract with Q and export control numbers in order to determine whether a strategic item (193 HS K6) is a strategic item (which constitutes a strategic item). Around August 2004, J Co., Ltd. entered into a contract with Q and export control numbers to obtain information on the strategic item J system through the Internet, to enable J Co., Ltd to obtain information on the strategic item J system, to distinguish the sales of strategic items, to make a voluntary registration, to apply for judgment, to request service, and to export permission of strategic items, and to establish a strategic item support system for strategic items, and to build a strategic item permission management system for strategic items by the Defendant.

The purpose of the project is to establish a strategic material information portal site, to establish a strategic material identification/registration/judgment support system, and to establish a strategic material export review license system. Among them, the strategic material identification/registration/judgment support system includes a Parme support system, ② search and inquiry of HS K code, search and inquiry of HS K code, entry of self-market records by item of HS K code, and establishment of a pre-determination system of strategic items, including functions such as automatic registration of identification, ③ support system for the registration of strategic items, ④ preparation of a request for judgment, and registration of the result of judgment.

2) On February 17, 2005, the Defendant opened the information system on strategic items established as a result of the above business, and provided services such as that companies may apply for the determination of strategic items and export permission via the Internet, or determine whether they constitute strategic items on their own by using the HS linkage sheet and determination system. The process of the Defendant’s establishment of the strategic information system from August 2004 to August 2008 and its details are as shown in attached Table 3.

3) On the other hand, around December 2006, in order to support the management of strategic items of S companies with poor Internet environment, the Defendant: (a) implemented the function provided by K to enable companies to manage strategic items even if they are not regularly connected with K in real time; (b) made it possible, if necessary, to receive the latest control list from K to make self-determination; and (c) developed “0 programs (P) allowing them to conduct online business by linking only when necessary, such as transmission of data for filing civil petitions, such as judgment, permission, etc.; and (d) distributed the above programs to the general public on March 6, 2007.

4) The level of structure of P’s system is as listed in Appendix 4. P installed in a company’s PC, etc. can be retained and managed by the user by holding its own database and storing and managing goods information ( Q, name name, manufacturer, etc.) within the said program.

5) A N agency under the Defendant’s jurisdiction promoted P’s patent application around August 2007 as follows.

(At the time, the plaintiff A served as the president of the N agency).

○○-N and N agencies and the Ministry of Commerce, Industry and Energy developed and distributed a gold-year program(P) program to support the management of strategic items. The program is a business model for the management of strategic items, and it is likely to create a similar information system that stolen the function of the program due to the increase in demand of the information system for the management of strategic items.There is no case of providing the same or similar services after the date of distribution (2007, Mar. 2, 2007), and the patent requirements are satisfied pursuant to Articles 29 and 30 of the Patent Act with the lapse of six months after the notice. Technology of the content of the application: The method of determining whether the user falls under strategic items: the method of self-determination, the method of application for pre-determination, the method of registration as a result of the determination, the method of information submission on strategic items, the method of information submission on strategic items, and the method of information management between the program and K.

6) Around 2010, N agency reviewed whether the patent of this case was used and its current status, and some of the contents are as follows.

OP summary. (Distribution and Performance) At least 710 enterprises have been distributed by December 10, 200, but only the judgment and transaction report (59 items) have been processed, and there has been no performance in dealing with civil petitions since 1 case of self-determination in 09.

A person shall be appointed.

○ 특허개요.(배경) 온라인을 통한 전략물자관리 도구인 프로그램(P)에 대한 배타적 독점권을 확보하여무단도용으로부터 지적재산권 보호코자 특허등록을 추진M 자체로 특허취득을 시도했으나, 공개 이후 6개월이 경과하여 특허요건에 부합되지 않아 P로 특허 취득(특허법 29조 및 30조)○ 특허사용 형태| 이용자의 PC에 설치되는 독립된 운영환경에서 K에 필요시에만 온라인으로 연결하여 업무처리(판정/허가 등 민원신청 자료 전송 시에만 M와 연결)- 업무처리 구성도<그림 삽입을 위한 여백>

A person shall be appointed.

Since the PP development by using the prospect patent in the future, the Internet environment of the S company has been significantly improved, so M alone can conduct affairs for the management of strategic items. Therefore, in the future, it is anticipated that the companies will deal mainly with civil affairs related to strategic items through simple M rather than P.

7) According to the Plaintiff’s explanation on the instant patented invention, the appraiser T made an appraisal and statement as follows as to whether the claim 1 to 6 of the instant patent invention is being implemented in M (referring to the case where M is used using the user terminal without the P installed).

As the network base of the main contents of the appraisal document ○○○ Claim 1 falls under the NE system, PC and other user devices used to seal to K, and KR are affiliated with the NE system. The network base of the premise of the claim 1 is self-determination of strategic materials. The online self-determination function is provided through MN-based user terminal. It is not necessary to identify only strategic materials by using the online self-determination system. However, in order to register the result of self-determination in the system and output it in the form of self-market, it is not responsible for the result of the online self-determination, and the NE and the Ministry of Trade, Industry and Energy are not responsible for the accuracy and responsibility of the result of the determination. The determination of the strategic items is being carried out by the user (enterprise) through the detailed description of the data base, including the name of the manufacturer and the number of the article stored by the user in the ME 1. Therefore, the premise of the claim 1 is that the manufacturer and the number of the article in question can be included in the list of the article.

Among them, in relation to the pre-determination of whether the selected product falls under strategic items (Composition 11), there is a structure that requires a specialized determination (pre-determination) as to whether the name of the product selected among the classification of the product applied for through the user device falls under strategic items in M. It is determined that M is being conducted in M. Each item stated in paragraphs 1 through 5 of ○○ Claim 1 is identical to that of Claim 1, Claim 2, Claim 8-10, and Claim 5. Since the above organization is judged to have been conducted in M., it is determined that the information stated in paragraph 6 of this case was conducted in M. Since it is judged that the user was not aware of the information stated in the paragraph 1, Claim 2, and Claim 5, it is not possible for the user to use the pre-determination data database to determine whether the product falls under strategic items or not. It is determined that the user is not aware of the information recorded in the patented invention of this case.

8) In access to the M website, the program installed on the user’s PC is due to an authorized certificate management program called “U”.

【Unfounded Grounds for Recognition】 Each entry in Gap’s 7, 10-12, 16 evidence, Eul’s 2-8, 10-16, 18-21 evidence (including each number), appraiser T, witness V’s testimony, appraiser T’s appraisal result, and the purport or judgment of the whole pleadings;

1) If a patent invention’s claim is constituted as a multiple elements of a patent invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s combination is not an independent protection of each element. If an invention compared to a patent invention has only a part of the essential elements as described in the patent invention’s claim’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s invention’s whole does not fall under the scope of the patent invention’s right (see, e

However, in full view of the following circumstances known from the above facts, M currently does not have a composition 1 and 2 of claims for the patented invention of this case (hereinafter referred to as "claims") and does not fall under the scope of rights under paragraph (1). Claims 2 through 5 are subordinate claims limiting paragraph (1) and Paragraph (6) includes all elements of paragraph (1). Thus, insofar as M does not fall under the scope of rights under paragraph (1), it does not fall under paragraphs 2 through 6. Accordingly, the Plaintiff’s assertion that the patented invention of this case was implemented in M is not correct.

A) Composition 1 of Claim 1 refers to storing goods and detailed information received from a user by holding a network database itself. Unlike storing goods and information in a user terminal where P is installed or inquiring about information in the database even without connection with M when P is used, if P is connected to M through a user terminal where P is not installed, user devices do not have a database.

An appraiser determined that, when using M in the part concerning the composition 1 of the claim No. 1 among the appraisal statement, the network entertainment is being conducted in M without concrete determination as to whether the network entertainment is stored in the database. In this regard, an appraiser deemed that the relevant program is installed when accessing M through the user terminal without a P, thereby securing the data and securing the database. However, the installation in actual connection with M is limited to the authorized certificate management program, and the user’s device cannot be used merely by simply receiving data and storing and using it. Therefore, an appraiser cannot be said to have a base.

Therefore, Composition 1 is currently being implemented in M.

B) Composition 2 of Claim No. 1 stipulates that “The above-mentioned network entertainment is stipulated as “the stage at which the employer requests a self-determination as to whether the goods selected from among the goods on which the product detailed information is stored in the database fall under strategic materials” but, in the case of using P, the user terminal without a P is unable to choose the goods in the database because it does not own database and does not own the database, it cannot be said that 2 is currently being carried out in M.

C) Furthermore, although the network entertainment of claims 1 provides for a self-determination as to whether it constitutes strategic items, user terminals without a P are merely transmitting user’s input information to M or showing information received from M, and do not have the function of self-determination, and the determination shall be processed by the function realized in M.

An appraiser considered that the online self-determination service can be used in the case of using M using the user device without P, and that the online self-determination service is responsible for the result of the judgment by the online user (enterprise) based on the notice, but the route is only required to register the data in M and then peruse or output it later, and the above notice is only required to be within the subject of legal responsibility, so it cannot be a ground for the fact that the online self-determination service can be used without the route, or that the above notice is carried out by the user's self-determination.

2) Sub-determination

Article 10 (3) of the Regulations of this case, which provides that the head of the Korean Intellectual Property Office shall obtain approval for the grant of a patent right to the Commissioner of the Korean Intellectual Property Office, applies to a case where the head of the state agency directly intends to directly conduct a national patent right, so long as the patented invention in M is not currently worked in M, the defendant is not obliged to apply to the Commissioner of the Korean Intellectual Property Office for approval for the grant of

Meanwhile, the plaintiffs asserted that M is the plaintiffs' employee's invention, and the defendant did not file a patent application by establishing M and implementing it from February 17, 2005 without filing a patent application. Thus, they should pay reasonable compensation to the plaintiffs pursuant to Article 16 of the Invention Promotion Act. However, Article 10 (3) of the provision of this case applies only to state-owned patent rights. Thus, even if M is a plaintiff's employee's invention, it is only a separate requirement for compensation, and it is irrelevant to the defendant's obligation to apply for grant of a patent right of this case without compensation.

Therefore, even if there is a right to request the Commissioner of the Korean Intellectual Property Office to apply for the approval of the grant of the patent right of this case against the defendant, the defendant's refusal of such request is legitimate.

6. Conclusion

Therefore, we decide to dismiss the lawsuit of this case and decide as per Disposition.

Judges

For the transfer of judge;

Judge Lee Young-soo

Judges Kim Gin-han

Note tin

1) However, the component number indication in Appendix 1 is written in order to explain the results of the appraisal.

2) As the Government Organization Act was amended by Act No. 11690 on March 23, 2013, it was repealed by the Ministry of Knowledge Economy, and the Ministry of Trade, Industry and Energy succeeds to some of its administrative affairs.

3) It refers to goods, etc. designated and publicly notified as requiring restrictions on export permission, etc. for the sake of international peace, maintenance of safety, and national security (Article 19 of the Foreign Trade Act); and any person who intends to export strategic items shall obtain export permission; and he/she may file an application for determination as to whether strategic items fall under the category of strategic items with

4) Article 29 of the former Patent Act (amended by Act No. 9381 of Jan. 30, 2009) (Patent Requirements)

(1) An invention having industrial applicability is patentable unless it falls under any of the following subparagraphs:

1. An invention publicly known or worked inside or outside the Republic of Korea before the patent application;

2. An invention listed in a publication distributed inside or outside the Republic of Korea prior to the filing of a patent application, or made available to the public via telecommunication lines prescribed by Presidential Decree;

5) It is 'the defendant' regardless of the change of the division according to the revision of the Government Organization Act.

6) The Korea Customs and Statistics Integration Schedules, which subdivided J items based on the tariff schedule under the Korea Customs and Customs and other Koreas.

Attached Form

A person shall be appointed.