Whether a contract to transfer the right to obtain a patent may be impliedly made (affirmative), and whether the applicant has a co-ownership share in the registered patent right even if he/she is not the inventor in the case of a joint application for patent registration under such contract (affirmative)

Articles 33(1) and 37(1) of the Patent Act

Supreme Court Decision 2011Da67705, 67712 Decided December 27, 2012 (Gong2013Sang, 229)

Plaintiff (Counterclaim Defendant) (Law Firm LLC, Attorneys Choi Han-soo et al., Counsel for the plaintiff-appellant)

Coding Co., Ltd.

Defendant 2 (Law Firm Sejong, Attorneys Seo-ho et al., Counsel for the defendant-appellant)

Seoul High Court Decision 2013Na3189, 3196 decided August 22, 2013

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

The grounds of appeal are examined.

1. The right to obtain a patent, at the same time as the completion of an invention, is entirely attributed to an inventor, but this right has a transfer of all or part of the right through a contract or inheritance, etc. (Article 37(1) of the Patent Act). Any contract to transfer the right may be concluded explicitly and implicitly as well as explicitly. Where a patent is registered under such contract, the applicant has a co-ownership share of a registered patent, not an inventor (see Supreme Court Decision 2011Da6705, 67712, Dec. 27, 2012).

2. The lower court, based on its stated reasoning, determined that the Defendant Company, who solely succeeded to the right to obtain a patent from the Nonparty who is the inventor at the time of filing a patent application for the instant patent invention (patent registration number omitted), as a joint applicant by the Plaintiff (Counterclaim Defendant; hereinafter referred to as the “Plaintiff”) and the Defendant 2, did not have an implied agreement to transfer part of the right to obtain a patent to the Plaintiff and to share the patent right to obtain a patent for the future.

3. However, it is difficult to accept such judgment of the court below.

A. According to the reasoning of the judgment below and the records, even if the plaintiff cannot be deemed to have contributed substantially to the creation of the technical idea of the patented invention of this case, and thus, the plaintiff provided the non-party the basic task and idea regarding the patented invention of this case, and subsequently, on February 25, 2001, concluded an agreement on the development of anti-pacta using non-surine (hereinafter "the development agreement of this case") with the defendant company, thereby contributing a considerable amount of research and development under the development agreement of this case, including the patent of this case, to vest all research outcomes and patented inventions generated in the course of research and development under the development agreement of this case, including the patent of this case, in the defendant company's assets. After the development agreement of this case was concluded, the plaintiff supported the research monitoring and the non-party company's person responsible for the research and development as the non-party as the research supervisor and the defendant company.

B. In light of the legal principles as seen earlier, it is reasonable to view that the Plaintiff’s role and contribution up to the patent application of this case, the relationship between the Plaintiff and the Defendants, and the developments leading up to the patent application of this case, including ① normative determination of which person among those participating in the development of the technology of this case is an inventor, and ② the intent of the Plaintiff who participated in the development of the technology of this case as an inventor is not a matter of factual relations known to the parties through experience, and ② as such, the intent of the Plaintiff’s own assertion as an inventor is not only to the purport that the Plaintiff has a right recognized under the Patent Act as a matter of course, but also to the purport that the Plaintiff is entitled to share of the patent right at least when considering its actual role and contribution, rather than to the purport that the Plaintiff is entitled to share of the patent right in this case, regardless of whether the Plaintiff’s actual role and contribution to the patent application of this case are the inventor, the Plaintiff’s intent to accept the patent right as a co-owner, the Nonparty, as the inventor of this case, constitutes an implied agreement.

C. If so, the court below erred by misapprehending the legal principles on the transfer of the right to obtain a patent or exceeded the bounds of the principle of free evaluation of evidence against logical and empirical rules.

D. Meanwhile, the Plaintiff seeks confirmation that the Plaintiff can independently work the patented invention in the position of co-owner as a co-owner of the patent of this case. Thus, the Plaintiff’s part of the claim for confirmation of the status of co-owner of the patent of this case is reversed, as long as it reverses the Plaintiff’s claim for confirmation of the status of the co-owner

4. 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 Kim Shin (Presiding Justice)