In a case where the restriction on exclusive license contract is not registered, whether the violation of the Patent Act is established against the exclusive licensee who implemented the patented invention in violation of the restriction (negative)

Article 101(1) of the Patent Act provides that “no matter which falls under any of the following subparagraphs shall take effect unless it is registered.” Article 101(1)2 of the Patent Act provides that “The establishment, transfer (except in the case of inheritance or other general succession), modification, extinguishment (except in the case of confusion), or restriction on disposal of an exclusive license.” Therefore, a contract establishing a contract does not take effect unless it is registered even with special restrictions on the scope of an exclusive license. Thus, even if an exclusive licensee executes a patented invention beyond the registration limit, the patent infringement is not established, apart from the fact that the exclusive licensee is liable for nonperformance to the patentee.

Articles 100 and 101(1)2 of the Patent Act

Defendant

Prosecutor

Seoul Central District Court Decision 2010No3214 Decided April 1, 2011

The appeal is dismissed.

The grounds of appeal are examined.

Article 101(1) of the Patent Act provides that “no matter which falls under any of the following subparagraphs shall take effect unless it is registered.” Article 101(1)2 of the Patent Act provides that “The establishment, transfer (except in the case of inheritance or other general succession), modification, extinguishment (except in the case of confusion), or restriction on disposal of an exclusive license.” Therefore, a contract establishing a contract does not take effect unless it is registered even with special restrictions on the scope of an exclusive license. Thus, even if an exclusive licensee executes a patented invention beyond the registration limit, the patent infringement is not established, apart from the fact that the exclusive licensee is liable for nonperformance to the patentee.

The court below affirmed the first instance court which acquitted the defendant, on the ground that the patent right of this case (patent number omitted) under the name of the non-indicted corporation as "the patent right of this case (patent number omitted) was granted by the non-indicted corporation and promised to "shall not use the patent at will without the return's consent," but such restriction was not effective under the Patent Act unless it is registered. Thus, even if the defendant worked the patented invention of this case for which the exclusive license was granted, it cannot be deemed that the patent right was infringed.

In light of the above legal principles and records, the above judgment of the court below is just, and there is no error of law in the misapprehension of legal principles as to the validity of registration under the Patent Act.

Therefore, the appeal is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee In-bok (Presiding Justice)