The case holding that if the defendant, as the inventor of the patent, applied for a patent under the name of the defendant and lawfully acquired the patent right, and the venture company that acquired the patent had registered the acquisition of the patent to the U.S. Intellectual Property Office, the above company fully acquired the patent under the U.S. Patent Act, and even if the defendant did not notify the above company that the legitimate right holder of the patent was another person while transferring the patent to the above company, it cannot be viewed as a deception against the above company.

The case holding that if the defendant, as an inventor of the patent, applied for a patent in the name of the defendant and lawfully acquired the patent, and the venture company that acquired the patent registered the acquisition of the patent to the U.S. Intellectual Property Office, the above company fully acquired the patent under the U.S. Patent Act, and even if the defendant did not notify the above company that the legitimate right holder of the patent was another person while transferring the patent to the above company, it cannot be deemed as a fraudulent act against the above company.

Article 347(1) of the Criminal Act; Article 3 of the Act on the Aggravated Punishment, etc. of Specific Economic Crimes; Article 38(1) of the Patent Act

Defendant

Prosecutor

Lee Jin-jin

Attorney Senior Gyeong-soo

Seoul Central District Court Decision 2005Gohap221 Decided November 25, 2005

The prosecutor's appeal is dismissed.

1. Summary of grounds for appeal;

In full view of the agreement made between the defendant and the victim non-indicted 1 and 2 on April 30, 200, the agreement made between the defendant and the victim non-indicted 1, 2 and 3 on June 2000, the defendant's promise made by the defendant on July 12, 2000, the defendant and the non-indicted 4 corporation (hereinafter "non-indicted 4 corporation")'s statements made on October 20, 200, the court below acknowledged the fact that the defendant did not deliver the above domestic patent rights to the U.S. Patent Foundation's new venture business, including patent rights registered under the name of the defendant on November 18, 197 (hereinafter "the patent right of this case"), and that the defendant did not transfer the stocks of this case to the new venture business owner, and that the defendant did not transfer the stocks of this case to the non-indicted 4 corporation's new venture business owner's new venture business, and that it did not transfer the stocks of this case to the defendant's new venture business owner's new technology development business.

2. Summary of the facts charged in this case

The defendant is (university name omitted) a person who serves as a professor at a university (university name omitted);

(1) On January 27, 195, the name of Samsung Engineering Technology Development Support Center (the Ministry of Commerce, Industry and Energy) was changed to the name of the Ministry of Commerce, Industry and Energy: The title of Samsung Engineering and Technology Development Support Center (the Ministry of Commerce, Industry and Energy: 60 million won for clean fuel; 450 million won for government-related expenses; 40 million won for private financing and technological development; 1.6 billion won for the purpose of developing the above Samsung Engineering & Technology Development Project under the name of the Ministry of Commerce, Industry and Energy; 1.6 billion won for the purpose of developing the above technology; 3.0 billion won for the purpose of patent-related development; 4.0 billion won for the purpose of patent-related development; 1.6 billion won for the purpose of patent-related development; 2.0 billion won for the purpose of patent-related development; and 3.0 billion won for the purpose of patent-related development; 3.0 billion won for the purpose of patent-related development; and 1.0 billion won for the entrusted development;

On April 30, 200 (up to June 30, 200 of the first agreement, revision was made to the last 40.0 billion won of the above 40 billion won of the shares of the company 50 billion won (up to 0.0 billion won of the above 19.6 billion won of the above 19.6 billion won of the above 19.6 billion won of the patent right and the patent right of the company 40 billion won of the above 19.6 billion won of the above 19.6 billion won of the patent right and the patent right of the company 40 billion won of the above 19.6 billion won of the above 19.6 billion won of the above patent right and the patent right of the company 5 billion won of the above 19.6 billion won of the above patent right and the patent right of the company 5 billion won of the above 19.6 billion won of the above 19.6 billion won of the above patent right and the patent right of the company were finally transferred to the defendant 300.6 billion won of the above shares of the company.

3. The judgment of the court below

According to the facts duly examined and adopted evidence, the patent right of this case was transferred to Nonindicted Co. 4 in the form of free donation between the Defendant and Nonindicted Co. 4 in accordance with the agreement on Oct. 2000. Thus, it cannot be deemed that the Defendant acquired 240,00 shares of Nonindicted Co. 4 in the form of free donation, and even if there was a quid pro quo relationship between the two parties, succession of the right to obtain a patent in the patent application before the patent application cannot be asserted against the third party unless the successor files the patent application (see Article 38(1) of the Patent Act). As long as the Defendant, an inventor of the patent of this case, after completing the patent registration under his name, transferred the patent right of this case to Nonindicted Co. 4 and completed the transfer registration procedure, the Republic of Korea and Samsung Engineering cannot oppose the Nonindicted Co. 4, a third party, and thus, the Defendant did not notify the legitimate right holder of the patent right of this case as a fraudulent act, and the Defendant’s act did not constitute a crime of fraud under the latter part of Article 2454.

4. The judgment of this Court

(a) Basic facts

According to the evidence duly examined and adopted by the court below and the trial court, the following facts can be recognized:

(1) On January 27, 1995, the Energy Resource Development Support Center, affiliated with the Ministry of Commerce, Industry and Energy, the Ministry of Commerce, Industry and Energy, under the Republic of Korea, entered into an agreement on alternative energy technology development projects with the Samsung Engineering Technology Research Center on the following contents: ① The project title is “development of elements for the construction of clean fuel alcohol plants”; ② the project period is from January 1, 1995 to December 31, 1995; ③ the total amount of the Convention project cost is KRW 650,00,000,000,000,000,000,000,000, and ④ the industrial property rights, tangible products, prototypes, and research reports generated during the implementation of the project, the government-related portion of the government-related subsidies shall be owned by the Energy Resource Development Support Center (Article 9(2)); ⑤ the Samsung Engineering Technology Research Center shall prepare 10 copies of the report by February 28, 1996, and report it to the Energy Development Support Center (Article 4).

(2) Under the above project agreement, the Samsung Engineering Technology Research Institute entered into a basic agreement on consignment with the supervising agency and the entrusted agency on the following terms between the (university name omitted) university and the university’s college (university name omitted). ① The title of the entrusted task is “the continuous development of Ethomy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in Ethy in E

(3) At the time, the latter part of Article 27(1) of the Regulations on Operation of Alternative Energy Technology Development Project provides that “The portion of government contributions in the industrial property rights, tangible occurrences, prototypes, and sales rights of reports acquired as a result of the project in question may be owned by the government or a dedicated institution.”

(4) According to the above Framework Convention on Entrustment, Samsung Engineering Research Institute remitted each of the amount of KRW 60 million on April 12, 1995, KRW 60 million on June 29, 1995, KRW 60 million on September 15, 1995, KRW 30 million on September 15, 1995, and KRW 30 million on November 13, 1995, at the Defendant’s request on October 6, 1995.

(5) On September 14, 1995, through the media including each daily newspaper, the Defendant developed a large volume of alcohol-related extraction process using low agricultural products such as spawn, sugar spawn, spawn and spawn, spawn and spawn, and announced not only the Republic of Korea but also the United States, Japan, etc., and filed an application for a patent with the Korean Intellectual Property Office on September 29, 1995 (the method of continuous manufacture of spawn Spas by entry into force: the method of continuous manufacture of spawn Spawns by entry into force). On February 27, 1996, the Defendant applied for a patent with the U.S. Patent Office with Nonindicted 6, a joint inventor, and applied for the acquisition of his patent right from Nonindicted 6 (see Investigation Records 711, 713 pages).

(6) On February 29, 1996, Samsung Engineering Research Institute submitted a final report to the Minister of Commerce, Industry and Energy under Article 4 of the Convention on Alternative Energy Technology Development. The contents are the same as each of the patents listed in the above paragraph (5) which the Defendant had already filed, and in particular, the current status of industrial property generated in the above report, the application number of the application number 95-32844 is stated as the application number 95-32844.

(7) On November 18, 1997, the patent of this case was registered in the name of the defendant in the U.S. Intellectual Property Office, and on June 27, 1998, the Korean Patent Act No. 0152482 was registered in the name of the defendant.

(8) On April 30, 200, Nonindicted 1 and Nonindicted 2 agreed to establish a venture company related to biotechnology based on the Defendant’s technology and patent right. ① Nonindicted 1, as non-standing major shareholders of the company to be incorporated in the future, has overall control over major policies and finance fields of the company as non-standing chairpersons of the company to be incorporated, and the Defendant has continued to engage in research activities in the genetic biotechnology. ② Nonindicted 1 has issued to the Defendant without compensation shares equivalent to 25% of the company’s incorporation capital, ③ has to be owned by the company, and the patent right owned by the Defendant should be transferred to the maximum extent possible, to grow into the global bio-company.

(9) Around June 200, the Defendant, Nonindicted 1, 2, and Nonindicted 3, who had to be entrusted with the representative director of Nonindicted Company 4, concluded a new agreement by amending and supplementing the agreement described in the foregoing paragraph (8) as follows. ① The Defendant is to participate in the future research institute of Nonindicted Company 4; Nonindicted 1 is to be a non-permanent president of the company; Nonindicted 2 is to support major policies and finance of the company; and Nonindicted 2 is to engage in external development as a management adviser; the representative director is to be appointed; the Defendant is not responsible for management and management of all companies; and the Defendant does not participate in all other companies except for technology and research and development. ② Nonindicted 1 is to grant the Defendant’s equity and ice options to be owned by the Defendant free of charge and at least 40% of the capital stock for the incorporation of the company; and ④ The amount of the Defendant’s capital shall be reverted to KRW 100,000,000 for research and development of the patent right to be owned by the Defendant.

(10) On August 9, 200, pursuant to the above agreement, the (title omitted) center in the university (university name omitted) where the Defendant works as the research institute and the (name omitted) Nonindicted Company 4 was established with capital of KRW 3 billion. The Defendant received 240,000 (in the face value of KRW 5,000) shares equivalent to the shares of KRW 3 billion in the above establishment capital without compensation, and borrowed the names of KRW 120,000 among the names of KRW 120,000, the names of KRW 7,600, and 60,000 shares each (in this case, the total number of shares recorded in the Defendant’s name is 2,43,600 shares, and 3,600 shares among them are shares acquired by the Defendant through a loan to another person, and thus, the number of shares actually acquired by the Defendant is 240,000 shares).

(11) On October 20, 200, the Defendant agreed to donate 3 patent rights, including research equipment and equipment, and the patent rights of this case, located in the laboratories of the (university name omitted) University (university name omitted) Center to Nonindicted Co. 4 free of charge. Accordingly, Nonindicted Co. 4 registered the fact that the Defendant acquired the patent of this case with the U.S. Intellectual Property Office on February 5, 2001 (see, e.g., investigation records).

B. Whether the Defendant’s acquisition of the above shares and the acquisition of the patent right of this case by Nonindicted Party 1, etc. are in a compensatory relationship

According to the above facts and the evidence duly examined and adopted by the court below and the court below, it is sufficiently recognized that Non-Indicted 1, 2, and 3 et al. established a venture company with the defendant who was actively engaged in research activities while holding several patents including the patent right of this case as professor at (university name omitted) university (university name omitted), and they did not transfer three patent rights including the patent right of this case, and their experimental equipment, etc., including the patent right of this case, and received three patent rights from the defendant (actually receiving investment in kind), instead of giving about 40,000 shares equivalent to about 40% of the company's capital to be newly established to the defendant, instead of giving about 3,00,000 shares to the defendant. Although the parties concluded each agreement above again, although Non-Indicted 1, 2, and 3 et al. delivered the above shares to the defendant "free," or the defendant used the patent right of this case, etc., the defendant did not actually acquire or use the above shares, such as the patent right of this case, etc.

C. Whether Nonindicted Co. 4 can wholly acquire the patent right of this case under the U.S. Patent Act

Since the Defendant acquired the instant patent from the U.S. Patent Trademark Office and transferred it to Nonindicted Company 4, whether Nonindicted Company 4 obtained a complete patent without any burden should be determined by the U.S. Patent Code, first of all, the U.S. Patent Act should be examined as to this part.

(1) Legal doctrine of U.S. Patent Act

Even if a contract for transferring the right to obtain a patent was concluded before filing an application for a patent in the United States, only the inventor (or the person to whom the patent application is delegated by the inventor) is entitled to file a patent application, and no independent patent application is recognized because the inventor succeeded to the right to obtain a patent from the inventor, and even if the patent application is filed by a person who is not the inventor, the right to obtain a patent after filing the patent application may be transferred to a third person (see Articles 11 and 261 of the United States Patent Act). Accordingly, even if only the user is entitled to have the right to obtain a patent under an employment contract, a true inventor must file a patent application, unless the exception provisions under the U.S. Patent Act (Articles 116 through 118) are applied.

In addition, a patent applicant, a patentee, or his/her assignee or agent may, in writing, transfer a patent application or patent right, which is an exclusive right, to the Intellectual Property Office of the United States of America, unless the transfer is registered with the Intellectual Property Office of the United States of America within three months from the date of transfer or subsequent purchase or mortgage (see Article 261 of the United States Patent Act). If the transfer is not registered with the Intellectual Property Office of the United States of America, the transfer is null and void against a subsequent purchaser or mortgagee who paid a reasonable price without knowledge of the transfer (see Article 261 of the United States Patent Act).

(2) In light of the aforementioned legal principles under the U.S. Patent Act, the Defendant, as an inventor of the instant patent, can file an application for a patent under the U.S. Patent Act, and thus, the Defendant lawfully acquired the instant patent by filing an application for a patent under his name. Furthermore, as stated in the facts charged, there is room to deem that the legitimate title of the patent right or the patent license exists in the Republic of Korea and Samsung Engineering, and even if the Defendant assumed that the Republic of Korea and Samsung Engineering are obligated to transfer the instant patent right to the Republic of Korea and Samsung Engineering, the Defendant did not demand the transfer of the instant patent right to the Defendant because the Republic of Korea and Samsung Engineering did not have interest in the succession to the patent right, or did not file an application for registration with the U.S. Patent Office for the registration of the instant patent right, the Defendant acquired three patent rights, including the instant patent right, and experimental equipment and materials, to Nonindicted 4 Co. 4, who did not know such circumstances, received 240,00 stocks of Nonindicted Co. 4 in return for the transfer of the patent right.

(d) Markets:

Therefore, since the non-indicted 4 completely acquired the patent right of this case under the U.S. Patent Act, even if the defendant did not notify the fact that the legitimate right holder of the patent of this case was the Republic of Korea and Samsung Engineering as shown in the facts charged, such act cannot be deemed as a deception against the non-indicted 4 (see, e.g., Supreme Court Decision 71Do1480, Dec. 21, 1971). Thus, the facts charged of this case constitute a case where the facts charged of this case are not a crime or there is no proof of a crime, although the court below was just in the conclusion that acquitted the above facts charged, and the prosecutor's above assertion is without merit.

5. Conclusion

Therefore, the prosecutor's appeal of this case is without merit, and it is dismissed in accordance with Article 364 (4) of the Criminal Procedure Act. It is so decided as per Disposition.

Judges Don Man (Presiding Judge) and Dok Kim Yong-han