Whether a non-exclusive license for an employee invention is acquired by the employer at the time of completion of the employee invention (affirmative)

According to Article 17(1) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990), or Article 39(1) of the Patent Act, an employer who acquires a non-exclusive license for an employee invention is an employer at the time of completion of the employee invention, and the employer at the time of registration is not the non-exclusive license on the ground that the patent was registered after the completion of the employee invention.

Article 17(1) of the former Patent Act (amended by Act No. 4207 of January 13, 1990); Article 39(1) of the Patent Act; Article 11 of the Utility Model Act

Defendant

Defendant

Attorney Park Young-ho

Seoul District Court Decision 96No6482 delivered on January 29, 1997

The appeal is dismissed.

The grounds of appeal are examined.

1. According to the reasoning of the lower judgment and the reasoning of the first instance judgment, the judgment on the instant criminal facts and the Defendant’s assertion is as follows

A. As to the facts of the instant crime, the lower court recognized the following facts: “The Defendant is the representative director of Nonindicted Co. 1 (hereinafter “Nonindicted Co. 1”) in Ansan-gu, Anyang-si, 204-4, and between July 21, 1993 and September 6, 1994, the Defendant manufactured and sold 23,00 electric charge boards and electric charge boards containing the total market price of KRW 138,00,000, and 23,000 electrical charge boards and electrical charge boxes, which are attached to the said victims’ utility model registration, registered with the Korean Intellectual Property Office on November 6, 1990, and registered with the Korean Intellectual Property Office on November 6, 1990.”

B. Accordingly, the Defendant, as stated in the above holding, proposed the temperature control device of the electric heat apparatus to be designed by the victims, who are employees of the original (hereinafter referred to as “non-indicted 2”) in relation to their duties, and acquired the non-exclusive license by the non-indicted 2 Company, which is the employer. Since the Defendant transferred it to the non-indicted 1 Company, which is the representative director, it is argued that the Defendant’s manufacture and sale of the electric heat apparatus temperature control device in the judgment of the non-indicted 1 Company, who is the representative director, constitutes a legitimate exercise of the right.

On July 13, 1987, the first instance court: (a) maintained the utility model right for the temperature control device in the above order under the above company’s name on July 13, 1987; (b) transferred the right to the above utility model to the above victims, who are employees of the company, on March 31 of the same year; (c) changed the name of the applicant to the above victims; (d) pursuant to the bankruptcy of the non-indicted 2, the above utility model right was registered under the name of the above victims; (e) prepared a list of assets to be transferred to the non-indicted 1, who is the representative of the claim group, while transferring the right to the above company’s assets and authorization or permission to the non-exclusive license to the non-indicted 2, the above utility model right was not included in the list; and (e) thereafter, it was difficult to view the above utility model right to be transferred from the above non-indicted 1 corporation to the above non-indicted 2 corporation’s representative to the above non-indicted 1 corporation’s non-exclusive license agreement to be transferred to the above non-exclusive license agreement.

2. In light of the records, the fact-finding and judgment of the court below are justified, and there is no violation of the rules of evidence or misapprehension of the legal principles as to the Patent Act and the Utility Model Act, as otherwise alleged in the ground of appeal. The grounds of appeal on this point are not acceptable.

3. In addition, according to Article 17(1) of the former Patent Act (amended by Act No. 4207 of Jan. 13, 1990), or Article 39(1) of the Patent Act, an employer acquiring a non-exclusive license for an employee invention is an employer at the time of completion of the employee invention, and the registration of the patent was completed after the completion of the employee invention, and thus, the employer at the time of registration does not acquire the non-exclusive license. The grounds for appeal pointing out the lower judgment on other opinions cannot be accepted.

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

Justices Park Jong-chul (Presiding Justice)