In a case where Party A filed a lawsuit against Party B, one of the co-owners, seeking the transfer of shares or the cancellation of shares arising from the cancellation of title trust, and Company B asserted that the said lawsuit was unlawful on the ground that no lawsuit was filed against all the co-owners due to this safety ground, the case holding that a lawsuit seeking the transfer of shares or the cancellation of shares due to the cancellation of title trust with respect to one of the co-owners of a patent right is not an essential co-litigation

In a case where Gap filed a lawsuit against Eul Co., Ltd. for the transfer of shares or the cancellation of shares due to the cancellation of title trust against Eul Co., Ltd., Eul Co., Ltd., and Eul filed a lawsuit for the transfer of shares or the cancellation of shares due to the cancellation of title trust, and Eul asserted that the lawsuit against all co-owners was unlawful due to this safety ground, barring any special circumstance such as contrary to other provisions of the Patent Act or the nature of patent, the general provisions of the Civil Act concerning co-ownership applies to co-ownership, and Article 99(2) of the Patent Act provides that each co-owner can transfer shares with the consent of all the other co-owners, and even if the claim is accepted in the lawsuit for the transfer of shares or the cancellation of shares due to the cancellation of title trust filed against one of the co-owners, the remaining co-owners need not consent to the transfer of shares or the cancellation of shares due to the lack of consent of all the co-owners and the remaining co-owners, and thus, all of the co-owners' claims against one of the co-owners and the co-owners cannot necessarily consent to the cancellation of shares.

Article 67 of the Civil Procedure Act, Article 99(2) of the Patent Act

Plaintiff

JinJ Co., Ltd.

Incheon District Court Decision 2015Gahap54918 Decided June 24, 2016

January 12, 2017

1. The plaintiff's appeal and the changed claim in the trial are all dismissed.

2. The costs of the lawsuit after the appeal shall be borne by the Plaintiff.

The judgment of the first instance shall be revoked.

The Defendant: (i) the procedure for the registration of transfer based on the termination of a title trust agreement on June 30, 2014 with respect to the patent right listed in attached Form 1; (ii) the procedure for the registration of transfer based on the termination of a title trust agreement on June 30, 2014 with respect to the Defendant’s co-ownership among the patent rights listed in attached Form 2; and (iii) the procedure for the registration of partial transfer on January 24, 2013 among the patent rights listed in attached Form 3, which was completed as the source of the termination of a title trust agreement on June 30, 2014.

[Plaintiff at the first instance trial against the Defendant, “Selectively, the Defendant, the Plaintiff, and the Plaintiff: (a) each transfer registration procedure based on the pronouncement of the instant judgment; (b) each transfer registration procedure based on the termination of title trust; or the return of unjust enrichment with respect to the portion of 1/2 out of the patent rights listed in the attached Table 3; (c) either the pronouncement of the instant judgment or the transfer registration procedure based on the termination of title trust or the return of unjust enrichment with respect to the portion of 1/2 out of the patent rights listed in the attached Table 3; or (d) Nonparty 1 of the above purport of the claim and the joint Plaintiff 1 of the first instance trial agreed to the implementation of each patent transfer registration procedure listed in the attached Tables 2 and 3; but at the same time, the claim for the patent right listed in the attached

1. Facts of recognition;

A. Status of the parties

1) The Defendant is a company established for the purpose of manufacturing industrial machinery, etc. on September 13, 2012. At the time of establishment, the Defendant’s executive officers were representative directors and inside directors, Nonparty 2 and Nonparty 3, etc., and on April 9, 2014, Nonparty 2 resigned from the office of representative director and Nonparty 3 was appointed as representative director.

2) The Plaintiff is the inventor of each patent right listed in attached Forms 1 through 3, and served as the Defendant’s adviser from the Defendant’s establishment to 2014.

B. Application, registration, transfer, etc. of each patent listed in the separate sheet

1) As to the patent right listed in attached Table 1 (hereinafter “instant patent right”), the Plaintiff filed an application for patent on October 26, 201, and the applicant was changed to the Defendant on the ground of “total transfer” on September 26, 2013, and the Defendant was registered as the right holder on October 4, 2013.

2) As to the patent right listed in attached Table 2 (hereinafter “instant second patent right”), the Plaintiff and the Defendant jointly filed a patent application on October 26, 2012 and registered the patent with the Plaintiff and the Defendant as the right holder on May 23, 2013.

3) As to the patent right listed in attached Table 3 (hereinafter “instant third patent right”), on September 27, 2012, the Plaintiff filed a patent application and registered the patent on January 7, 2013 with the Plaintiff as the right holder, and on January 7, 2013, the Plaintiff became the Defendant’s transfer registration of part of the Plaintiff’s shares on the ground of “transfer” on January 7, 2013.

4) The Defendant shared the foregoing change of name and the cost of patent registration.

5) On June 24, 2013, the Plaintiff transferred the entire shares of the instant patent Nos. 2 and 3 to Nonparty 1.

C. The Plaintiff’s joint and several guarantee against Nonparty 3 and Nonparty 2

1) From around 2007 to Nonparty 4, the Plaintiff manufactured and sold the products and accessories of the wheeled Machinery Co., Ltd. (hereinafter “One-wheeled Machinery”). On August 30, 2012, a one-wheeled Machinery was discontinued as business dust on August 30, 2012.

2) On September 4, 2012, Nonparty 3 and Nonparty 2 jointly and severally guaranteed the Plaintiff’s debt amounting to KRW 940 million against Nonparty 4, and Nonparty 4 did not thereafter demand the Plaintiff to repay the debt.

[Ground of recognition] In the absence of dispute, Gap evidence 1, Eul evidence 2-1 through 3, Gap evidence 3, Gap evidence 4-1, 2, Gap evidence 5, Gap evidence 11-1, 2, Eul evidence 1, Eul evidence 4-1 through 8, the purport of the whole pleadings

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

A. As to the assertion that a lawsuit seeking cancellation of a patent is unlawful

On the other hand, the defendant can not seek the implementation of the procedure for the change of the title of registration on the ground of the cancellation of title trust contract. Thus, the part of the claim for the cancellation of registration in this case is unlawful. However, the ground as alleged by the defendant is not a litigation requirement prior to making a decision on whether the same ground as alleged by the defendant should be determined within the main text, and it is not a litigation requirement that should be met prior to making a decision on the main text, and as such, a claim for the cancellation of the registration in the name of the trustee can be made in a way that the relation of registration is consistent with the substantive legal relationship (see Supreme Court Decision 97Da4416,

B. As to the assertion on the shared patent right

The defendant asserts that since the patent rights of this case Nos. 2 and 3 are owned by the defendant and the non-party 1, the lawsuit seeking the registration of transfer or cancellation against the defendant who is a co-owner is unlawful.

However, in full view of the following circumstances, a lawsuit seeking the transfer of shares or the cancellation of shares due to the cancellation of title trust against one of the co-owners of a patent right cannot be deemed as an essential co-litigation to be filed against all the co-owners. Therefore, the defendant's argument is without merit.

① In general, insofar as a joint owner of a patent cannot be deemed to possess a patent right by forming a partnership body based on a common purpose or a partnership relationship, and the patent law does not stipulate that a joint ownership of a patent is deemed a joint ownership relationship, barring special circumstances, such as where other provisions of the Patent Act or the nature of the patent are contrary to the joint ownership (see Supreme Court Decision 2013Da41578, Aug. 20, 2014). (2) Article 99(2) of the Patent Act provides that where a patent is jointly owned, each joint owner may transfer his/her share with the consent of all the other joint owners, and it is only necessary to obtain the consent of the other joint owners in order to transfer his/her share or cancel the registration of cancellation, and thus, the purport of Article 99(2) of the Patent Act, which restricts the disposal of the joint owner’s share, does not necessarily require the remaining joint owners to participate in a lawsuit against the joint owner’s declaration of intent or cancellation of the share.

3. The plaintiff's assertion and judgment

A. The plaintiff's assertion

The Plaintiff, Nonparty 3, and Nonparty 2 jointly established a company to take over the factories and facilities of one-wheeled Machinery, which was closed, and established the Defendant. The Plaintiff was subject to compulsory execution by creditors, including Nonparty 4, etc., in order to obtain a loan from the Korea Technology Credit Guarantee Fund, and in order to obtain a loan from the Korea Technology Credit Guarantee Fund, and in title trust the right to the instant No. 1 or 3 patent for the Defendant’s overseas business activities. However, on June 30, 2014, the above title trust agreement was terminated on June 30, 2014, and thus, the said title trust agreement was terminated on the part of Nonparty 3 unilaterally. Accordingly, the Defendant is obligated to implement the procedure for registration of cancellation or registration of transfer with respect to the instant patent rights No.

B. Determination

(1) In addition to the following facts: (a) the ground for change in the name of the applicant for the instant patent No. 1 is “total transfer”; (b) the patent right No. 2 was jointly applied by the original and the Defendant; (c) the transfer of shares to the Defendant on the ground of “transfer”; (d) the Defendant bears the expenses for filing an application, registration, and transfer registration with respect to the instant patent No. 1 through 3; (c) Nonparty 3 and Nonparty 2 guaranteed the Plaintiff’s obligation to Nonparty 4 immediately before the establishment of the Defendant; and (d) the Plaintiff appears to have failed to bear any expenses incurred in the establishment and operation of the Defendant; (e) the evidence submitted by the Plaintiff alone is insufficient to acknowledge that the Plaintiff trusted the Plaintiff’s right to the instant patent No. 1

4. Conclusion

Therefore, the plaintiff's claim for the registration of the transfer of shares in the Nos. 1 and 2 patent of this case is without merit, and the claim for the registration of cancellation for the No. 3 patent of this case is also without merit, and it is dismissed in all of the plaintiff's appeal and trial. It is so decided as per Disposition.

[Attachment 1] The indication of a patent: omitted

[Attachment 2] The indication of a patent: omitted

[Attachment 3] The indication of a patent: omitted

Judges Kim Jong-soo (Presiding Judge)