[1] In a case where a provisional disposition for preserving the right to claim a transfer of a portion of the patent right has been completed, and the transferee of the share as the holder of the right to claim a transfer of the patent right has won in the lawsuit on the merits and the transfer of the share has been completed, whether the transfer of other shares not registered as the provisional disposition becomes null and void (negative)

[2] Legal nature of a patent-sharing relationship

[3] Whether a person who has agreed to acquire part of a patent right may seek a provisional disposition to preserve the right to consent to the transfer of other shares prior to the transfer registration of such shares, or a provisional disposition to prohibit the disposal of other shares (negative)

[4] In a case where a provisional disposition prohibiting the disposal of a portion of a patent right has been completed only after the provisional disposition prohibiting the disposal of the patent right was established, and the third party has won in the lawsuit on the merits and the right holder registered the transfer of a portion of the patent right, whether the establishment of the exclusive license becomes null and void in whole (affirmative)

[1] If a provisional disposition is completed in order to preserve the right to claim the transfer of a part of the patent right's share, and the transferee of the share, who is the provisional disposition authority, won the lawsuit on the merits and the transfer of the share was made in favor of a third party, then the transfer of the patent after the provisional disposition is registered shall be null and void only within the scope of shares transferred in the future of the transferee.

[2] In a case where a patent is jointly owned, each co-owner may not transfer his/her share or establish a pledge on his/her share without the consent of the other co-owners, and the co-ownership of the patent is similar to the co-ownership of the patent, such as where an exclusive license of the patent or a non-exclusive license

[3] A person who has agreed to acquire a part of a patent right cannot exercise the right to consent to the transfer of other shares that are not the object of the acquisition as co-owners of the patent right until the transfer of such shares takes place. Thus, barring special circumstances such as the existence of a special agreement prohibiting the disposal of other shares, it is not allowed to seek provisional disposition for preserving the right to consent or provisional disposition for prohibiting the disposal of other shares prior to the transfer of shares which are the object of the acquisition.

[4] An exclusive licensee of a patent has exclusive right to work the patented invention commercially and industrially within the scope prescribed by the act of creation, and the patent can not be worked even within the scope of the patentee. Thus, in the case of joint ownership of a patent, each joint owner is unable to establish an exclusive license for the patent without the consent of the other joint owners. In the case of joint ownership of a patent, the establishment of the exclusive license is not limited to the partial share of the patent right, but constitutes an act of disposal of the patent right itself, and the establishment of the exclusive license for the portion of the patent right is not possible due to the nature of the exclusive license. Thus, in the case where the exclusive license for the patent right was established in the third party after the provisional disposition prohibiting the disposal of a part of the patent right was made only for the portion of the patent right, the establishment of the exclusive license shall be deemed null and void as it goes against the intent of the provisional disposition. This is true even if the exclusive licensee does not have the consent to the establishment of the exclusive license at the time of the establishment of the exclusive disposition.

[1] Article 714 of the Civil Procedure Act, Article 99(2) and (4) of the Patent Act / [2] Article 99(2) and (4) of the Patent Act, Article 273 of the Civil Act / [3] Article 714 of the Civil Procedure Act, Article 99(2) and (4) of the Patent Act / [4] Article 714 of the Civil Procedure Act, Article 100(2) of the Patent Act

[2] Supreme Court Decision 87Hu111 delivered on December 8, 1987 (Gong1988, 282)

Seoul High Court Decision 200Na11488 delivered on August 2, 200

Defendant 1 and three others

Defendant 5 (Law Firm Hongk, Attorneys Kim Young-min et al., Counsel for the defendant-appellant)

Seoul High Court Decision 97Na791 delivered on July 1, 1997

The appeals by Defendant ATEX and Defendant 4 are dismissed. The Plaintiff’s appeals and by Defendants 1, 2, and 5 are dismissed. The costs of appeal between the Plaintiff and Defendant 5 are assessed against the same Defendant, and the costs of appeal between the Plaintiff and the remaining Defendants are assessed against each other.

1. As to the appeal by Defendant Etex Co., Ltd., and Defendant 4

An appeal may be filed only on the basis of the text of the judgment (see, e.g., Supreme Court Decisions 86Nu233, Apr. 14, 1987; 94Da16458, Nov. 22, 1994). The court below rejected all of the claim of this case against the above Defendants of the Plaintiff. Thus, the judgment of the court below is a judgment exclusively favorable to the above Defendants, and there is no benefit of appeal by the said Defendants, and all appeals by the said Defendants are unlawful.

2. We examine the Plaintiff’s grounds of appeal.

A. As to grounds of appeal Nos. 1 and 2

If a patent has been transferred to another person after a provisional disposition was made on the basis of a decision prohibiting a provisional disposition to preserve the right to transfer a part of the patent right's share and then the patent right was transferred to the other person, the transfer of the patent right after the provisional disposition registration shall be deemed null and void only within the scope of the share that has been transferred to the transferee in the future. Although each co-owner is unable to transfer his/her share or establish a pledge on his/her share without the consent of the other co-owners, and even if the co-ownership relation of the patent has a nature corresponding to the partnership-ownership relation (see Article 99 (2) and (4) of the Patent Act), it is not possible to seek a provisional disposition or a pledge on the share without the consent of the other co-owners, since the transferee of the share, who has decided to acquire a part of the patent right, can not exercise the right to consent to transfer the share that has not been acquired as a co-owner until the transfer of the share is registered, and if there is no special agreement prohibiting the transfer of the share prior to such provisional disposition or preservation of the share.

Furthermore, even if the transferee of a part of domestic shares can make a provisional disposition prohibiting the transferor's disposal of the entire patent right, if the transferee of a part of domestic shares applies for a provisional disposition prohibiting the disposal of a part of the shares he/she acquired without such provisional disposition and only becomes a provisional disposition registration based on the provisional disposition decision, it cannot be deemed as having the effect of prohibiting the disposal of the remaining shares, and it cannot be said that the right to consent to the transfer of other shares is naturally included in the preserved right of the provisional disposition.

In the same purport, the court below is just in holding that the disposition of the patent of this case, which was made after the provisional disposition of this case, is null and void only within the scope of the share that the plaintiff acquired by transfer, and there is no error of law by misunderstanding the legal principles as to the effect of the provisional disposition prohibiting the disposal of a part of a patent right

B. Ground of appeal No. 3

According to the reasoning of the judgment of the court below, the court below rejected the plaintiff's assertion that the transfer of the patent of this case is null and void because the patent of this case was the only property of the National Institute of Tekes Co., Ltd. (hereinafter "the non-party company") or there is no evidence to prove that the non-party company discontinued its business by transferring the patent of this case to Defendant 1. In light of the records, the judgment of the court below is just and there is no error of law by misunderstanding the facts against the rules of evidence as alleged in the grounds of appeal.

3. Defendant 5’s ground of appeal is examined.

The exclusive licensee of a patent has the exclusive right to work the patented invention commercially and industrially within the scope prescribed by the act of creation (see Article 100(2) of the Patent Act). Since the patent can not work even if the patentee is a joint owner, each joint owner is unable to establish an exclusive license for the patent without the consent of the other joint owners. Even if one joint owner establishes an exclusive license with the consent of the other joint owners, the establishment of the exclusive license is not limited to the partial share of the patent, but constitutes an act of disposal for the patent right itself, and the establishment of the exclusive license for a part of the patent right cannot be presented due to the nature of the exclusive license. Thus, if a provisional disposition prohibiting disposal for a part of the patent right has been made and a transfer of the above part of the patent right has been made in favor of the joint owner in the lawsuit on the merits, the establishment of the exclusive license shall be deemed null and void as it goes against the purport of the provisional disposition, and this shall also apply even if the exclusive licensee does not consent to the establishment of the exclusive license at the time of the establishment of the provisional disposition.

In the same purport, the court below is just in holding that the registration of establishment of exclusive license under the above defendant's name is null and void, and there is no error of law by misapprehending the legal principles as to joint ownership of patent rights or exclusive license.

4. As to the appeal by Defendant 1 and Defendant 2

The above Defendants did not state the grounds of appeal in each petition of appeal, and did not submit the appellate brief within a legitimate period.

5. Therefore, each of the appeals by Defendant 1, Inc. and Defendant 4 shall be dismissed. The Plaintiff’s appeal and the appeals by Defendants 1, 2, and 5 shall be dismissed. Of the costs of appeal, the part arising between the Plaintiff and Defendant 5 shall be borne by the same Defendant, and the part arising between the Plaintiff and the remaining Defendants shall be borne by each party. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Yong-hun (Presiding Justice)