[1] The requirements for service by public notice to the joint applicants of the patent application invention

[2] Where a patent-related procedure is initiated without return documents submitted by an overseas resident without a patent administrator, whether a subsequent procedural defect can be asserted (negative)

[3] Time limit to allow amendments to add a joint applicant omitted at the time of a request for a trial against a decision of refusal to grant a patent

[1] In order for a joint applicant to serve a service by public notice under Article 219(1) of the Patent Act, service by public notice should be deemed to fall under “when service by public notice is not possible because the address or place of business of all joint applicants is unclear.” In a situation where the requirements for service by public notice are not satisfied, service by public notice given to one of the joint applicants are illegal and invalid.

[2] According to Article 5(1) of the Patent Act and Article 11(1)6 of the Enforcement Rule of the Patent Act, a non-resident cannot initiate a patent-related procedure unless the non-resident is a patent administrator, and the Commissioner of the Korean Intellectual Property Office may return documents submitted by the non-resident without a patent administrator. However, the patent administrator system has its significance to ensure smooth execution of procedure by avoiding the spread and delay of procedure due to the non-resident's direct execution of procedure with the non-resident. According to Article 5(1) of the Patent Act, if the non-resident stays in Korea even if the non-resident is staying in Korea, a direct procedure may be taken, and Articles 62 and 133(1) of the Patent Act do not provide that the non-resident is not a ground for rejection or invalidation of a patent if the non-resident takes the procedure without a patent administrator, and the Commissioner of the Korean Intellectual Property Office shall not return documents submitted without a patent administrator to the non-resident and then shall not claim the defect of documents submitted for a violation of Article 5(1) of the Patent Act.

[3] According to Articles 33(2), 44, 132-3, 139(3), and 140(2) of the Patent Act, if a person who received a decision of refusal to grant a patent is dissatisfied therewith, he/she may request a trial within 30 days from the date of receipt of the certified copy of the decision. If the right to obtain a patent is jointly owned, all the joint owners shall make the patent application jointly, and if the joint owners of the right to obtain a patent request a trial on the right jointly owned, all the joint owners shall request a trial on the right to obtain a patent. An amendment to a written request for a trial cannot be changed except for the reasons for the request. If a part of the joint applicants have filed a request for a trial, an amendment adding the remaining joint applicants to the request for a trial cannot be permitted as a change to the summary, but if the period for a request for a trial has yet to expire, it is reasonable in view of the parties’ rights protection and the economy of litigation.

[1] Article 219(1) of the Patent Act / [2] Article 5(1) of the Patent Act / [3] Article 140(2) of the Patent Act

Plaintiff

The Commissioner of the Korean Intellectual Property Office

Patent Court Decision 2002Heo598 delivered on December 6, 2002

The judgment below is reversed, and the case is remanded to the Patent Court.

1. According to the reasoning of the lower judgment, the lower court determined to the following purport as to the legitimacy of the instant petition for a trial seeking revocation of the decision of refusal of a patent regarding the invention of this case, which is based on the name of Nonparty 1 and Nonparty 2, which was jointly filed by the Nonparty 1 and Nonparty 2, as a safety device for the location of vehicles.

A. The decision of refusal to grant a patent was served on January 15, 200 by public notice. The service by public notice was made on the grounds that both Nonparty 1 and Nonparty 2, the co-applicant of the invention of this case, were deprived of their objection to the United States, and no longer lawful change of address was made on the part of the non-party 1, the co-applicant 1, who represents all the co-applicants, in a situation where the service place cannot be known, and therefore there was no error in law. Accordingly, the decision of refusal to grant a patent became effective on January 30, 200 after two weeks from the above date. Thus, the request of this case made on August 6, 2001 was filed 30 days, which is its request period, and thus is unlawful.

B. The appeal of this case was filed on August 6, 2001 by the non-party 2, one of the co-applicants alone, but the name of the applicant and claimant on October 9, 2001 while the trial is in progress, is changed to the plaintiff. According to Articles 139(3) and 140(2) of the Patent Act, if the co-owner of the right to obtain a patent requests a trial as to the right under joint ownership, all the co-owners jointly request the trial, and the correction of the appeal cannot be changed except for the reasons for the request. Thus, as in the case of this case, it cannot be permitted to change the name of the claimant in the name of the co-applicant to whom only one of the co-applicant was the claimant was transferred from all the co-applicants while the trial is pending, and eventually, the appeal of this case is unlawful in that it is filed only by one of the co-applicants, and it is not unlawful in the case where the appeal of this case is filed by the above co-applicant.

2. We examine the grounds of appeal.

A. As to the ground of appeal on service by publication

(1) Article 219(1) of the Patent Act provides that "if it is impossible to serve a document because the address or place of business of the person who is to serve the document is unclear" refers to the case where the person who is to serve the document investigates the address or place of business of the person who is to serve the document with due care of a good manager, but his address or place of business is unknown. Meanwhile, according to Article 11(1) of the Patent Act, if two or more persons initiate a patent-related procedure, they represent all of them except for the reasons falling under any of subparagraphs of the same paragraph. Thus, the service of a certified copy of the decision of refusal shall also take the same effect on all of the co-applicants. However, this legal principle means that the service made on one of the co-applicants takes effect even to the other co-applicant, and it does not mean that service on the other co-applicants who are not deemed to be impossible to serve the document if it is impossible to serve the document to one of them.

Therefore, in order to implement service by public notice to a joint applicant pursuant to Article 219(1) of the Patent Act, service by public notice should be deemed to fall under “when service by public notice is not possible because the address or place of business of all joint applicants is unclear,” and service by public notice to one of the joint applicants is illegal and invalid when the requirements for service by public notice are not satisfied.

In addition, according to Article 5(1) of the Patent Act and Article 11(1)6 of the Enforcement Rule of the Patent Act, a non-resident cannot initiate a patent-related procedure unless the non-resident is appointed by the patent administrator, and the Commissioner of the Korean Intellectual Property Office may return documents submitted by the non-resident without the patent administrator. However, the patent administrator system has its significance to ensure the smooth execution of the procedure by avoiding the spread and delay of the procedure due to the non-resident's direct execution of the procedure with the non-resident. According to Article 5(1) of the Patent Act, if the non-resident stays in the Republic of Korea even if the non-resident is staying in the Republic of Korea, a direct procedure may be taken, and Articles 62 and 133(1) of the Patent Act do not provide that the non-resident is not a ground for rejection or invalidation of the patent-related procedure if the non-resident takes the procedure without the patent administrator and without returning the documents submitted by the patent administrator and proceed with the patent-related procedure.

(2) Examining the background of service by public notice in this case in light of the above legal principles and records, the defendant served a certified copy of the decision of refusal on the basis of the "Seoul (Seoul)" (Seoul) where one of the co-applicants was the recipient and was not served, and immediately served on the non-party 1 as the recipient, and the co-applicant 2 did not appear to have served on the non-party 2 at all. Furthermore, upon the non-party 1's telephone request, the examiner sent the notice of opinion to the "Seoul (Seoul)" (Seoul) where the non-party 2 did not appear to have served on the non-party 1 as the above address, the defendant did not appear to have served on the non-party 2's non-party 2's non-party 2's rejection order without being served on the non-party 1 as the non-party 1's non-party 2's rejection order. Furthermore, even if the amendment was submitted on July 3, 199, the defendant did not appear to have served on the non-party 2's rejection.

Therefore, the above service by public notice cannot be deemed to have satisfied the requirements of service by public notice under Article 219 of the Patent Act, so it shall be illegal and its validity shall not occur.

(3) Nevertheless, the court below, unlike its opinion, concluded that service by public notice on a certified copy of the decision of refusal was lawful, and held that the appeal in this case was in excess of the period of time. This constitutes a case where the court below erred by misapprehending the legal principles as to service by public notice and failing to exhaust all necessary deliberations, which affected the conclusion of the judgment. The ground of appeal assigning this error

B. As to the ground of appeal on the joint trial

(1) According to Articles 33(2), 44, 132-3, 139(3), and 140(2) of the Patent Act, if a person who received a decision of refusal to grant a patent is dissatisfied therewith, he/she may request a trial within 30 days from the date of receipt of the certified copy of the decision. If the right to obtain a patent is jointly owned, all the joint owners shall apply for a patent. If the right to obtain a patent is jointly owned, all the joint owners shall jointly request a trial on the right to obtain a patent. An amendment to a written request for a trial cannot be changed except for the reasons for the request. If a part of the joint applicants have filed a request for a trial, an amendment to add the remaining joint applicants as a matter of principle cannot be permitted, but if the period for a request for a trial has yet to expire, it is reasonable to allow the addition of the remaining joint applicants to remedy the defect and to ensure the remedy for the defect in the rights and the economy of litigation.

(2) In light of the above legal principles and records, although the court below did not err in finding that the change of claimant made during the trial as stated in its holding constitutes a change in the gist, in this case, service by publication of the certified copy of the decision of refusal cannot be effective as it did not take effect as it was unlawful as seen earlier, and thus, the period of request for a trial cannot be determined based on this point. Thus, if the correction added to the plaintiff as the claimant was submitted within the period of request for a trial, the correction may be permitted. However, without examining the above, the court below's decision that concluded that the change of claimant from the non-party 21 to the plaintiff from the non-party 21 constitutes a change in the purport of the

3. Therefore, the judgment of the court below is reversed, and the case is remanded to the court below for a new trial and determination. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Hong-hoon (Presiding Justice)