2017Hu1274. Nullification of registration (specific)

Indigobal Ethiopid LE (INFOBRID PET, LTD.)

Patent Attorney Cho Jong-soo, Counsel for the defendant-appellant

Samsung Electronic Co., Ltd.

Patent Firm LLC et al., Counsel for defendant

Patent Court Decision 2016Heo9851 Decided May 19, 2017

October 17, 2019

The judgment below is reversed, and the case is remanded to the Patent Court.

1. The first ground of appeal is examined.

A. In Korea, when an international application (hereinafter referred to as “PC international application”) prescribed by this Patent Cooperation Treaty (hereinafter referred to as “PC international application”) is filed within one year thereafter on the basis of the priority claim after a patent application was filed first in the Republic of Korea, the designated State may be deemed the Republic of Korea (hereinafter referred to as “PC self-designated application”). In such cases, the conditions and effect of the priority claim shall be as prescribed by the Korean law (Article 8 (2) (b) of the PC).

A person who intends to obtain a patent may claim priority over the invention described in the specification or drawings initially accompanying the earlier application filed earlier (hereinafter referred to as " earlier application") for which he/she has the right to obtain a patent (Article 55(1) of the Patent Act). Of the inventions filed with a priority claim, the patent application shall be deemed to have been filed at the time the earlier application was filed (hereinafter referred to as "priority date") when applying certain patent requirements, such as newness and inventive step, with respect to the same invention described in the first specification, etc. of the earlier application claiming the relevant priority (hereinafter referred to as " earlier application"), among the inventions described with a priority claim (Article 55(1) of the Patent Act).

Therefore, if an inventor claims priority while filing an application for a subsequent invention containing a professional engineer of the earlier application, he/she shall claim the priority on the filing date of the same part of the earlier application.

The purpose of this domestic priority system is to protect the inventor's accumulated performance as a patent right in consideration of the fact that the technology development is continuously implemented.

A person who has made an invention or his successor has the right to obtain a patent under the Patent Act (the 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, he/she shall not complete a report on change of the patent applicant with respect to the earlier application. Article 38(4) of the Patent Act, which provides that the succession of the right to obtain a patent after the patent application, shall not take effect unless the report on change is filed, except in cases of inheritance or other general succession, by readily confirming the participant and the person to obtain a patent in the patent procedure to seek convenience and swiftness in the examination of the patent application, cannot be deemed as having been applied to the procedure on priority claim. Accordingly, if an applicant has succeeded to the right to obtain a patent different from the applicant of the earlier application even if the applicant of the patent application

(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 course of the application for self-designation of the pT shall be conducted pursuant to Article 8 (2) (b) of the pT

After entering the domestic stage, Korea’s law must be followed. If a person who succeeds to the right to obtain a patent intends to initiate a patent-related procedure, the Commissioner of the Korean Intellectual Property Office may require the successor to submit documents evidencing that person is the successor (Article 7(1) of the Enforcement Rule of the Patent Act). If necessary, he/she may examine whether the right is succeeded by requiring supplementation. Furthermore, Article 38(4) of the Patent Act is interpreted to require the subsequent applicant to complete a report on change of the patent applicant before the applicant succeeds to the right to obtain a patent, before filing the PC international application

Inasmuch as the latter applicant loses an opportunity to supplement procedural defects at the domestic stage, it cannot be deemed that it conforms to the purport of the domestic priority system. Moreover, in the process of improving the earlier application’s invention, only a part of the applicants of the earlier application may be included in the later application, or may vary between the applicant of the earlier application and the subsequent applicant, and may not duly complete the procedure for title change at the time of the later application. In such a case, denying the validity of the priority claim on the grounds that there is a difference between the applicant of the earlier application and the subsequent applicant would be contrary to the purport of the priority claim system.

② Article 55(1) of the Patent Act only stipulates that “a person who is entitled to a priority claim” is “a person who intends to obtain a patent.” This is compared with the requirement that a divisional applicant or a person who is entitled to a patent should obtain a patent by stipulating that a divisional application (Article 52) and a converted application for a utility model registration (Article 53) are “an applicant”. Since a person who is entitled to a patent has the right to obtain a patent, a person who acquires the right to obtain a patent falls under “a person who intends to obtain a patent” under Article 55(1) of the Patent Act and “a person who is entitled to a patent”. Article 26(1) of the Enforcement Rule of the Patent Act, which provides that a report on the change of a patent applicant before the registration of the patent, supports such interpretation.

B. According to the reasoning of the lower judgment and the evidence duly admitted, the following circumstances are revealed.

1) Nonparty 1 acquired the right to obtain a patent for the instant earlier application (hereinafter referred to as “instant earlier application”) filed by Nonparty 2. Nonparty 3 (Trademark name omitted) entered into a contract with Nonparty 1 to have the right to claim priority on the basis of the instant earlier application and transfer the right to file the PC international application from Nonparty 1. Nonparty 1 claimed priority on the basis of the instant earlier application (hereinafter referred to as “instant later application”). Nonparty 1 claimed priority on the basis of the instant earlier application in the name of “the method and device leading the PC prediction to the Chinese Korean Intellectual Property Office” (hereinafter referred to as “instant later application”).

3) GEN LEN (hereinafter referred to as GEN) transferred from Nonparty 3 the right to the subsequent application in this case, and the Plaintiff transferred the right to obtain a patent for the subsequent application in this case from the GEN and changed the patent applicant’s title after the Plaintiff acquired the right to obtain a patent for the subsequent application in this case from the GEN.

4) Pursuant to Article 203 of the Patent Act, the Plaintiff submitted to the Commissioner of the Korean Intellectual Property Office a domestic document containing a priority claim based on the instant earlier application, and the Plaintiff registered the establishment of the patent on October 13, 2014 as the patent number No. 1452195, following the examination by the examiner of the Korean Intellectual Property Office.

C. We examine these circumstances in light of the legal principles examined earlier.

1) At the time of filing the instant later application, Nonparty 3 did not report the change of the patent applicant regarding the instant earlier application to the Commissioner of the Korean Intellectual Property Office at the time of filing the instant later application, but cannot be deemed to have completed the report on the succession of the right to obtain a patent for the instant earlier application at the time of the instant later application. This is because Nonparty 3 is allowed to prove the succession of the right to obtain a patent for the instant earlier application after the filing date. Moreover, the succession of the right to obtain a patent for the instant earlier application submitted by the Plaintiff to the Commissioner of the Korean Intellectual Property Office may be deemed to have been duly submitted pursuant to Article 26(1) of the Enforcement Rule of the Patent Act because the instant later application was submitted before the registration of the instant later application, and the applicant of the instant earlier application was not identical, and thus, it is necessary to verify whether Nonparty 3 properly succeeded to the right to claim a priority pursuant to the instant transfer contract, etc., and it should not be viewed that the priority of the applicant of the earlier application and the applicant after the filing date was not completed.

D. Nevertheless, the lower court did not recognize the Plaintiff’s priority claim on the ground that the patent applicant did not report the change of patent applicant at the time of the later application of this case, and determined that the nonobviousness of the instant patent invention ought to be denied on the ground that the prior invention disclosed after the date of priority claim and the patented invention in this case were substantially identical. In so determining, the lower court erred by misapprehending the legal doctrine on the domestic priority claim, thereby adversely affecting

2. Therefore, without further proceeding to decide on the remaining grounds of appeal, 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

Justices Kim Jae-in

Justices Min You-sook of the District Court

Justices Lee Jae-hwan