Where only one of the co-owners files a petition for a trial of dissatisfaction within a lawful period of time with respect to a decision to revoke the registration of a patent invention, the amendment to add the remaining co-owners as a joint petitioner after the lapse of the period for a trial request is to change the gist of the petition for trial and cannot be permitted under Article 140(2) of the former Patent Act, and the petition for a trial on the above decision is filed by one of the co-owners, and is unlawful, as it violates Article 139(3) of the former Patent Act.

The case holding that, where only one of the co-owners files a petition for a trial of dissatisfaction within a lawful period of time with respect to a decision to revoke the registration of a patent invention jointly owned, the correction to add the remaining co-owners as a joint petitioner after the lapse of the period for filing a petition for trial is not permissible pursuant to Article 140 (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001), and thus, the petition for a trial on the above decision is unlawful as it violates Article 139 (3) of the same Act as a petition for a trial filed by one of the co-owners.

Articles 139(3) and 140 of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

CNHz, et al. (Seng Law Firm, Attorneys Yoon-won, et al., Counsel for the defendant-appellant)

The Commissioner of the Korean Intellectual Property Office

August 24, 2005

1. The plaintiffs' claims are dismissed.

2. The costs of lawsuit are assessed against the plaintiffs.

The decision made by the Intellectual Property Tribunal on October 28, 2004 on the case No. 2003 No. 51 shall be revoked.

1. Basic facts

[Evidence : Evidence of No. 1 to 3, No. 2 to 5]

A. Patent invention of this case

The patent invention of this case jointly owned by the plaintiffs (registration No. 287012, Mar. 14, 1996, Jan. 19, 201) is related to "unfolded wireless credit card system" and the claims are as shown in the attached Table.

B. Decision of revocation and decision of this case

(1) Ruling of revocation

On February 21, 2003, the Korean Intellectual Property Office rendered a decision to revoke the registration under paragraphs (1) through (8) of the instant patent invention (No. 102 and No. 126 of 2001), and the above decision was served on the plaintiffs' representative on February 26, 2003.

(2) The process of the instant trial decision

On March 25, 2003, one of the co-owners filed a petition for a trial seeking the revocation of the above revocation decision, and the Korean Intellectual Property Tribunal tried to dismiss the petition for a trial on October 28, 2004 on the following grounds.

(3) Summary of the grounds for the instant trial decision

The patented invention in this case is owned by two plaintiffs, and only one of the co-owners of the plaintiff CCCF companies filed a petition for a trial on the decision to revoke the patent application within the statutory period. This is unlawful as it violates Article 139(3) of the Patent Act that all the co-owners should jointly file a petition for a trial on the patent application in common, and the above provision is a mandatory provision, and the correction of the defect is a change to the purport of the claim. Thus, the above petition for a trial on the plaintiff CCCF company is impossible to correct, and it cannot be dismissed in accordance with Article 142 of the Patent Act.

2. Whether the trial decision of this case is legitimate

A. Grounds for revocation of the Plaintiff’s trial decision

Although the procedure for adjudication on the patent right in common provides that all co-owners shall be the petitioner for the trial or the respondent for the trial, it shall be determined at the time of conclusion of the trial procedure by applying Article 68 of the Civil Procedure Act, which is based on the time of conclusion of the trial in the first instance, unless otherwise expressly provided in the Patent Act, as to the time of determining whether the eligibility of the claimant for the trial is satisfied. An amendment by a claimant who added co-owners before the conclusion of the trial shall not only be applied mutatis mutandis under Article 68 of the Civil Procedure Act, but also a correction by applying Article 68 of the Civil Procedure Act, which goes against the purpose of essential co-litigation, or would not prejudice the defendant's exercise of right to defense, but if such a correction is not permitted, it shall be permitted because the right is extinguished and the property right is infringed, regardless of the efforts by the claimant for the decision to revoke the patent invention in this case, which is the date of conclusion of the trial. Thus, the appeal on September 15, 2004>

(b) Markets:

According to Articles 132-3, 139(3) and 140(2) of the former Patent Act (amended by Act No. 6411, Feb. 3, 2001; hereinafter the same), where a person who has received a decision to revoke a patent has an objection to the decision of revocation, he/she may request a trial within 30 days from the date of receipt of the certified copy of the decision. When a co-owner requests a trial on the right under joint ownership, all the co-owners shall request the trial, and the correction of the patent right is not possible except for the reasons for the request. Thus, the procedure for trial on the patent right under joint ownership is an essential joint trial, which requires that only a part of the co-owners have to be jointly determined, and an amendment which adds the remaining co-owners as co-owners during the trial after filing a request for a trial, unless there are special circumstances, such as where the remaining co-owners appear to be included in the trial before the declaration of the period for request for a trial, and it is reasonable to permit the remaining correction of right before the trial (see 20.

According to the above evidence and evidence No. 4 through No. 6, with respect to the patented invention of this case owned by 2 claimant, the decision of the Korean Intellectual Property Office revoking the registration was made on February 21, 2003 and its decision was served on the plaintiffs' representative on February 26, 2003. As to this, only one of the co-owners filed a petition for a trial seeking cancellation of the above decision on March 25, 2003. The plaintiff National Bank of Korea did not file a petition for a trial within 30 days from the above delivery date as to the plaintiff's petition for a trial on the ground that it was not legitimate within 10 days after the above judgment of the 19th trial as to the plaintiff's patent invention of this case. The plaintiff's Reasons for Appeal No. 2 cannot be viewed as legitimate within the 19th trial period, which is the plaintiff's legitimate joint owner's rejection of the plaintiff's petition for a trial as to the above patent invention of this case. Thus, according to the above facts, it cannot be found that the plaintiff No. 1 of this case's joint owner's objection.

In addition, unlike the case where the plaintiffs want to obtain a patent right like the right to obtain a patent, and the decision of revocation is made by an objection against the decision of rejection or the joint owner of the patent right which requires the unity of all the co-owners as requested, and where the joint owner of the patent right claims a trial for dissatisfaction, as in the case of this case, after the registration of the patent right was already made and the lawsuit for revocation of the trial can be brought independently by one co-owner, unlike the case where one co-owner can bring a lawsuit for revocation of the trial decision, even if permission of correction of the claimant who added the co-owner before the conclusion of the trial procedure does not conflict with the purport of essential co-litigation or infringe the defendant's exercise of right to defense, but if permission of correction is not allowed by the time of the claimant's efforts, the right is extinguished and thus, it is unreasonable to allow it to be treated as a lawsuit for revocation of the trial by the time of the above joint owner's objection to the procedure for revocation of the trial, which is a procedure for the decision of revocation of the trial, it cannot be seen as identical with the procedure for the plaintiff's objection.

Therefore, a request for a trial on the above decision to revoke the registration of the patented invention of this case is filed by only one of the co-owners, and it is unlawful as it violates Article 139(3) of the former Patent Act. An amendment to add the remaining co-owners to a claimant is not permissible pursuant to the main sentence of Article 140(2) of the former Patent Act because it constitutes a change in the substance of a request for a trial. Thus, the request for a trial of this case is a case where it is impossible to correct the defect and thus, it shall be dismissed by Article 142 of the former Patent Act. Accordingly, the decision of this case

3. Conclusion

Therefore, the plaintiffs' claim of this case is dismissed as it is without merit, and it is so decided as per Disposition.

Judges Lee Jae-hwan (Presiding Judge)