In cases where the establishment of a patent right is registered in accordance with a patent application filed by an unentitled person who does not have succeeded to the right to obtain a patent from the legitimate right holder, whether the legitimate right holder may seek a registration of transfer of the patent directly against the unentitled person without following the procedure for remedy under the Patent Act (negative)

A person who makes an invention or his/her successor has the right to obtain a patent under the Patent Act (main sentence of Article 33(1) of the Patent Act). If the establishment of a patent right is registered with respect to a patent application filed by a person who is not a legitimate right holder, the patent constitutes grounds for invalidation of the patent (Article 133(1)2 of the Patent Act). If a trial decision invalidating a patent becomes final and conclusive for such reason, the legitimate right holder may be deemed to have filed a patent application at the time of filing the patent application by filing the patent application within two years from the publication date of the registration of the patent and within thirty days from the date the trial decision becomes final and conclusive (Article 35 of the Patent Act). In light of the purport of recognizing the specific exceptions of the earlier application system, and protecting the legitimate right holder, even if the establishment of the patent right was registered in accordance with the patent application filed by a person who is not entitled to obtain a patent from the legitimate right holder, the legitimate right holder who is entitled to remedy under the aforementioned procedure under the Patent Act cannot directly seek a registration of the patent right holder.

Articles 33(1), 35, and 133(1)2 of the Patent Act; Article 741 of the Civil Act

Gabus Co., Ltd. (Law Firm Yang Hun-Hun, Attorneys Jeong-sop et al., Counsel for the plaintiff-appellant)

KT Co., Ltd. (Attorney Kang Dong-chul, Counsel for the defendant-appellant)

Seoul High Court Decision 2011Na33513 decided December 22, 2011

The appeal is dismissed. The costs of appeal are assessed against the plaintiff.

The grounds of appeal are examined (to the extent of supplement in case of supplemental appellate briefs not timely filed).

A person who makes an invention or his/her successor has the right to obtain a patent under the Patent Act (main sentence of Article 33(1) of the Patent Act). If the establishment of a patent right is registered with respect to a patent application filed by a person who is not a legitimate right holder, the patent constitutes grounds for invalidation of the patent (Article 133(1)2 of the Patent Act). If a trial decision invalidating a patent becomes final and conclusive for such reason, the legitimate right holder may be deemed to have filed a patent application at the time of filing the patent application by filing the patent application within two years from the publication date of the registration of the patent and within thirty days from the date the trial decision becomes final and conclusive (Article 35 of the Patent Act). In light of the purport of recognizing the specific exceptions of the earlier application system, and protecting the legitimate right holder, even if the establishment of the patent right was registered in accordance with the patent application filed by a person who is not entitled to obtain a patent from the legitimate right holder, the legitimate right holder who is entitled to remedy under the aforementioned procedure under the Patent Act cannot directly seek a registration of the patent right holder.

The court below rejected the plaintiff's patent registration (hereinafter "patent of this case") on March 6, 2008 regarding "the mobile communication device with multiple number services and its control method," which can be used by giving more than two telephone numbers to one mobile phone, and on January 22, 2007, the patent application was filed with respect to the invention containing the service, but the plaintiff was ordered to make correction on the ground of the earlier application for the same invention and deleted paragraph (1) and completed the patent registration on June 18, 2008, "the method of supporting multi-use mobile phone numbers". Further, the court below rejected the plaintiff's patent application of this case as the plaintiff's patent right holder's right to obtain the patent of this case without any justifiable ground since the plaintiff's patent application of this case had the right to obtain patent application of this case and proposed the plaintiff's business based on the invention to the defendant, and thus, the defendant was not obligated to obtain the patent registration of this case from the plaintiff without a legitimate right holder's patent application of this case.

In light of the above legal principles and records, the judgment of the court below is just, and there is no error of law such as misunderstanding of legal principles or misunderstanding of facts as alleged in the grounds of appeal.

In addition, Supreme Court Decision 2003Da47218 Decided January 16, 2004 cited in the ground of appeal, where a person who has the right to obtain a patent transfers his right to another person after filing a patent application, and the transferee loses its validity due to the reason such as invalidation or revocation of the transfer contract where the transferee transferred the right to obtain a patent to another person, and the transferee acquired the registration of the patent under the name of the applicant, and the transfer contract became null and void, if the right to obtain a patent and the patent right, the registration of the establishment, are related to the same invention, the transferor may file a claim for the registration of transfer of the patent with the transferee, and

Therefore, the appeal is dismissed, and the costs of appeal are assessed against the losing party. It is so decided as per Disposition by the assent of all participating Justices.

Justices Kim So-young (Presiding Justice)