[1] Criteria for determining whether a person is a joint inventor

[2] The case affirming the judgment below holding that in case where Gap was a joint inventor of Eul company upon Eul's proposal that it will be entrusted with the commercialization of Pyribenzxm, etc., and contributed to Eul company's commercialization as "PPL", and Eul directly participates in various necessary tests at the main commercialization stage of PPL, and Byung's research institute's research team suggested joint research to the above research team and suggested that the productization was suspended due to weak damage, and completed Eul company's research team's patented invention as to the product of the Initial milk production and the product of the Initial PPzxima, it was found that Eul was a joint inventor of the above invention

[3] The extinctive prescription period of the right to claim the employee invention compensation (=10 years) and the starting point

[4] The meaning of "profit to be obtained by an employer" under Article 40 (2) of the former Patent Act that shall be considered when determining the amount of compensation for an employee invention

[1] In order for a joint inventor to become a joint inventor, there must be a relationship between the completion of the invention in substance and mutual cooperation for the completion of the invention. Thus, it is not limited to the extent that the researcher simply provided basic tasks and ideas for the invention, manages the researcher generally, adjusts data with the instruction of the researcher, or supports and entrusts the completion of the invention by providing funds, equipment, etc., but rather, newly presenting, adding, or supplementing specific features to solve the technical task of the invention, or embodys new features through experiments, etc., or practically contribute to the creative act of the technical idea, such as providing specific means and methods to achieve the purpose and effects of the invention, or providing specific advice and guidance. Meanwhile, in the case of the chemical invention of the so-called experiment science, there are many cases where there are differences between the contents and the technological level of the invention, but it is not possible to regard the invention completed without the experimental data presented due to lack of predictability or feasibility. In such case, it is necessary to determine whether the invention has actually contributed to the completion of the invention through the experiments.

[2] The case affirming the judgment below's decision that Gap entered Eul company as "Pyribenzx" and contributed to registration tests, toxicity tests, mass production process, and remaining tests, etc. which are necessary at the stage of the stimulative commercialization of PPenenench, and as Eul company's research team entered Eul company as "Pyribenzx" upon the proposal that Eul company's research team will be responsible for productization of stimulsium, which is the first material for stimulsive stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimulsary stimuls.

[3] If a claim for compensation for an employee invention is not exercised within ten years, as in general claims, the extinctive prescription shall expire, and the starting point shall generally be the time when the employer succeeds to the right to obtain a patent for an employee invention, but if the company's work rules provide for the payment time of compensation for the employee invention, the company's work rules, etc. have legal disabilities in exercising the right to claim compensation until the said time comes, the payment time stipulated in

[4] Article 40(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001; hereinafter “former Patent Act”) provides that when an employer succeeds to an employee’s invention with his/her employee, he/she shall determine a reasonable amount of compensation to be paid to the employee, and take into account the amount of benefits that the employer would obtain by the invention and the degree of contribution that the employer would contribute to the completion of the invention. Under Article 39(1) of the former Patent Act, the employer has a non-exclusive license on a patent right even if he/she does not succeed to the employee’s invention. As such, the term “profit that the employer would obtain” refers to the profit that the employer would obtain by acquiring the status that the employee invention can be conducted exclusively and independently beyond the non-exclusive license, and it does not mean the profit that the employer would obtain through the employee’s invention itself, regardless of the outcome of settlement of profits and expenses. If an employee’s product is manufactured and sold, the employer’s demand for the employee’s invention can be evaluated as a competitive product.

[1] Article 33 (2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [2] Article 33 (2) and Article 39 (see Article 10 of the current Invention Promotion Act) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) / [3] Articles 39 (see Article 10 of the current Invention Promotion Act), 40 (see Article 15 of the current Invention Promotion Act), 162 and 166 (1) of the Civil Act / [4] Article 39 (1) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) (see Article 10 (1) and (3) of the current Invention Promotion Act) (see Article 40 (1) and (1) of the current Invention Promotion Act) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001)

[1] Supreme Court Decision 9Hu468 delivered on November 27, 2001, Supreme Court Decision 2001Hu65 delivered on November 30, 2001 (Gong2002Sang, 216)

Plaintiff (Law Firm Apex, Attorneys Park Chn et al., Counsel for the plaintiff-appellant)

ELbio Science Co., Ltd. (Law Firm Square, Attorneys Lee Hong-hoon et al., Counsel for plaintiff-appellant

Seoul High Court Decision 2008Na119134 decided August 20, 2009

Each appeal is dismissed. The costs of appeal are assessed against each party.

We examine the grounds of appeal.

1. As to the Defendant’s grounds of appeal Nos. 1 and 2

A. In order for a joint inventor to become a joint inventor, there must be a relationship between the completion of the invention (see, e.g., Supreme Court Decision 9Hu468, Nov. 27, 2001). Thus, a joint inventor is a person who has to substantially contribute to the creation of a technical idea, such as a person who has provided only basic task and idea for the invention, who has generally managed researchers, or has supported and entrusted the completion of the invention by organizing data or conducting experiments at the researcher's instruction, or by providing funds and equipment, etc., but has not been limited to the extent that he or she newly presented, added, or supplemented specific points to solve the technical task of the invention, or a person who newly presented, added, or supplemented specific means and methods to achieve the purpose and effect of the invention, or a person who has made it possible to provide specific means and methods to achieve the purpose and effects of the invention, and thus, constitutes a joint inventor. Meanwhile, in case of a chemical invention of the so-called experiment, it can be different in accordance with the substance and level of technology, but it is not possible.

B. According to the reasoning of the lower judgment, the lower court determined that: (a) the Plaintiff’s research team’s 191 research team (“Defendant 1”) changed spybribac that is a primary substance for 191 and spreaded spybrix materials to the effect that it would have been experimentally dyribenzx materials; (b) if it created dysium products using dysive agents used in manufacturing dysive agents for practical use; and (c) the Plaintiff was unable to engage in dilution research without developing a specific dysciffics for 197 at the first time; and (d) the Plaintiff’s 9G research team’s dysiffics for dysium 1 to the effect that it would have been difficult for the Plaintiff to commercialize the 9G research team’s dysiffics to the effect that it would have been possible for the Plaintiff to engage in the 9G research project.

In addition, the lower court determined that the Plaintiff offered joint research to Nonparty 3 to develop the patented invention for the first time (K1451, K1293, etc.) by Nonparty 3 doctoral team of Korea around 1998, and that the Plaintiff was provided with the first time candidate materials (K11451, K1293, etc.) to the effect that it will overcome the harm by adding other protective devices to the above candidate materials (K1451) and new effective assessment methods, and that the Plaintiff participated in the experiment process, thereby inducing the development of the patented invention for the second time to develop the patented invention for the second time on the basis of LG 1293, which was recognized as having been able to develop the patented invention for the second time.

In light of the above legal principles and records, the above fact-finding and judgment of the court below are all justified.

The court below did not err in the misapprehension of legal principles as to whether a joint inventor is a joint inventor or in the rules of evidence.

2. As to the Defendant’s third ground of appeal

If the right to claim for compensation for employee's invention is not exercised for ten years, as in general claims, the extinctive prescription shall be completed, and the starting point shall generally be the time when the employer succeeds to the right to obtain a patent for the employee's invention from the employee. However, if the time for payment of compensation for employee's invention is prescribed in the company's work regulations, there is a legal obstacle to the exercise of the right to claim compensation until the said time comes.

According to the reasoning of the judgment below, the court below determined that the plaintiff's exercise of the right to claim the employee's invention compensation for the patented invention for the patented invention 1 can only be made after the evaluation of the performance for the year following the fiscal year following the 197 accounting year after the products were manufactured, and since there is no evidence to prove that the above deliberation or evaluation was made, the starting point of the statute of limitations is 198 years following the accounting year after the products were manufactured, and thus, since the employee's invention compensation for the patented invention 1 was paid after the deliberation by the head of the relevant business and the executive in charge of intellectual property, and in particular, as long as the first subcommittee was filed on August 31, 2007 after the accounting year following the product release, the plaintiff's exercise of the right to claim the employee's invention compensation for the patented invention 1 can only be made after the evaluation of the performance for the fiscal year following the 1997 accounting year after the products were manufactured, the starting point of the statute of limitations.

In light of the above legal principles and records, we affirm the above judgment of the court below as just.

The court below did not err in the misapprehension of legal principles as to the starting point of extinctive prescription.

3. As to the Defendant’s ground of appeal No. 4 and Plaintiff’s ground of appeal

A. Article 40(2) of the former Patent Act (amended by Act No. 6411 of Feb. 3, 2001) provides that when an employer succeeds to an employee invention from an employee, the amount of reasonable compensation to be paid to the employee shall be determined by considering the amount of profit that the employer would obtain by the invention and the degree of contribution that the employer would have contributed to the completion of the invention. According to Article 39(1) of the same Act, even if an employer does not succeed to an employee invention, the term “profit that the employer would obtain” refers to the profit that the employer would gain by acquiring the status that the employee invention can be conducted exclusively and independently beyond a non-exclusive license. Meanwhile, the profit that the employer would obtain does not mean the profit that the employee would obtain by the employee invention itself after the settlement of profits and expenses, and if an employee invention is manufactured and sold, regardless of the profit and expense settlement, the employer would be able to assess the amount of profit from the employee invention as a product that could not be conducted by the employer as an employee invention.

B. According to the reasoning of the judgment below, the court below deemed, on the above premise, 3% of the sales revenue that the defendant company may obtain by exclusively or separately executing or possessing the patented invention 1 as the royalty rate for the first patented invention, even if the product does not fall under the scope of the right of the first patented invention, it can be deemed that the sales increase as a substitute for the demand for the first patented invention implementation product, and the competition company could not execute the first patented invention, and the monopoly of the first patented invention outside the country has weak characteristics of the first patented invention, considering the fact that the royalty rate of the pesticide industry's work royalty rate of the second patented invention is 3%, and the royalty rate of the second patented invention related to the second patented invention is determined as 1/4 of the estimated total sales revenue for the respondent's invention, and calculated profits from the defendant company's investment in the first patented invention by the defendant company until 207 as the royalty rate for the first patented invention, and the plaintiff had to pay the compensation rate of 12.8 billion won to the non-party company's 12.

In addition, on the above premise, the lower court considered 3% of the royalty rate in the agricultural chemical industry recognized in consideration of the sales that the Defendant Company may obtain by exclusively or indirectly executing the second patented invention as 1/3 of the estimated total sales of the Plutop loan products, and the royalty rate of the patent related to the second patented invention as 3% was determined, and calculated profits that the Defendant would obtain from the second patented invention, and then calculated the profits that the Defendant would obtain from the second patented invention, by 207, the research and development expenses invested by the Defendant Company in the Plutop loan was 12.7 billion won, and the production expenses of the Plutop loan was based on the candidate materials already made by the Korean Chemical Research Institute, and the Defendant Company obtained the permission for the third patented invention and obtained the two separate patents related to the second patented invention, and calculated the compensation rate for the invention invention to the Plaintiff in relation to the second patented invention.

In light of the above legal principles and records, the above fact-finding and judgment of the court below are all justified.

The court below did not err in the misapprehension of legal principles as to the calculation criteria of employee invention compensation or in violation of the rules of evidence.

The Supreme Court precedents cited in the ground of appeal by the defendant are inappropriate to be invoked in the case of this case.

4. Conclusion

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

Justices Yang Chang-soo (Presiding Justice)