CoP Co., Ltd. (Law Firm Sejong, Attorneys Seo-ho et al., Counsel for the plaintiff-appellant)

Defendant 1 and one other (Patent Attorney or higher-ranking Counsel for the defendant-appellant)

April 26, 2012

1. The plaintiff's claim is dismissed.

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

The decision made by the Intellectual Property Tribunal on November 10, 201 on the case No. 2011Da2096 shall be revoked.

1. Basic facts

A. Patent invention of this case

(a) Name: Aviation cancer products containing mertazye;

(2) Date of application/registration date/registration number: April 25, 2002 / November 3, 2004 / No. 10-456831

(3) Claims: Claim 1. Products created with the characteristic of containing Mealycer salt as active ingredients.

(4) A patentee: Copi, Ltd., Defendant 2, and Defendant 1

(5) An inventor: Defendant 1 and Defendant 2

B. Details of the instant trial decision

(1) The Plaintiff asserted against the Defendants that “the Plaintiff succeeded to the right to obtain a patent from the Nonparty, the genuine inventor of the instant patent invention, while the Defendants are not the inventor of the instant patent invention,” and filed a petition for trial to invalidate the Defendants’ right to share in the instant patent invention.

(2) On November 10, 201, the Korean Intellectual Property Tribunal rendered the instant trial ruling dismissing the Plaintiff’s request on the ground that “The invalidation trial of a patent may be requested where the patent falls under any of the subparagraphs of Article 133(1) of the Patent Act, but the Plaintiff’s request for a nullity trial on a part of the patent cannot be filed, as it is unlawful.”

[Reasons for Recognition] Evidence No. 1-2, Evidence No. 2, Evidence No. 2, Evidence No. 4, the purport of the whole pleadings

2. Whether the plaintiff's request for adjudication is legitimate

A. Summary of the plaintiff's assertion

(1) The plaintiff is the only successor to the acquisition of the right to obtain a patent from the non-party who is the true inventor of the patented invention of this case. On the other hand, the defendants are not the inventor of the patented invention of this case, and there is no right to the patent of this case.

(2) Article 133(1)2 of the Patent Act provides that “Where a person does not have the right to obtain a patent under the main sentence of Article 33(1)” as grounds for invalidation of registration, Article 33(1) of the Patent Act provides that an inventor or his successor has the right to obtain a patent under the conditions as prescribed by the Patent Act, and Article 33(2) of the Patent Act provides that a joint inventor co-ownership of the right to obtain a patent. Thus, Article 133(1)2 of the Patent Act allows a request for a trial to invalidate a part of the patent’s right against a person who is not a joint inventor.

(3) In addition, if all the co-owners of a registered patent become a party to a patent invalidation trial, it shall be deemed that there is no violation of Article 139(2) of the Patent Act.

B. Determination

A patent right is a right to exclusively and exclusively control a patented invention, which is generally created by registration of establishment and its duration expires upon the expiration of its duration.

The patent invalidation trial system is retroactively extinguished at the request of an interested party or examiner when it is found that there is a ground for invalidation in a registered patent which has been approved as effective by the Korean Intellectual Property Office, and the patent invalidation trial system is retroactively extinguished at the request of an interested party or examiner.

Article 133(1) of the Patent Act provides that a person who falls under any of the subparagraphs of the same paragraph may file a petition for invalidation trial, which is so-called restrictive list and cannot be asserted as the grounds for invalidation except as provided in the above provision.

Article 133(1)2 of the Patent Act provides that “Where a person does not have the right to obtain a patent under the main sentence of Article 33(1) or violates the provisions of Article 44, the patent shall be invalidated.” The main sentence of Article 33(1) of the Patent Act provides that “the person who makes the invention or his successor has the right to obtain a patent under the conditions as prescribed by this Act,” and Article 133(2) of the Patent Act provides that “if two or more persons jointly make an invention, the right to obtain a patent shall be jointly owned.”

From the above provisions, it is examined whether some of the co-owners of a patent can file a petition for the invalidation trial on only the share.

(1) Article 133(1) of the Patent Act provides that "if a patent is claimed within the scope of a patent claim two or more claims, a trial for invalidation may be requested for each claim." It does not provide that a trial for invalidation of part of a patent invention which forms the concept of a general invention as described in the application procedure is possible, but it does not provide that a trial for invalidation of part of a patent right can be requested for a trial." ② Article 139(2) of the Patent Act provides that "if a trial is requested against a patentee who is a public-owned patent, all the co-owners shall be requested for a trial for invalidation." This does not allow a trial for invalidation of part of a patent right among the co-owners, and the purport of Article 44 of the Patent Act provides that "if a part of a patent right is jointly owned by a right holder under Article 33(2) and becomes final and conclusive, all the co-owners shall jointly file a patent application, and that the remaining right holder's right to a patent shall be deemed extinguished if it becomes final and conclusive among the co-owners' rights in accordance with Article 12(3) of the Patent Act.

For the foregoing reason, a request for an invalidation trial against a part of a patent right is not permissible under Article 133(1)2 of the Patent Act.

3. Conclusion

Therefore, the plaintiff's appeal for invalidation of patent of this case shall be dismissed in an unlawful manner, and the decision of this case is legitimate in conclusion, and the plaintiff's appeal of this case seeking revocation is dismissed as it is without merit. It is so decided as per Disposition.

Judges Dolo film (Presiding Judge) Kim Il-young