[1] In a case where an employee, etc. subject to an agreement or employment regulation stipulating that the right to obtain a patent for an employee invention shall be succeeded to the employer, etc., has transferred the right to obtain a patent twice to a third party without notifying the employer, etc. of the completion of an employee invention, whether such act constitutes a tort (affirmative)

[2] Where two or more persons jointly make an invention and jointly own the right to obtain a patent, the criteria for determining the share ratio among the co-owners

[3] In a case where an employee subject to prior agreement on succession to an employee invention, etc. did not notify the completion of the employee invention to the employer and a third party transferred the right to obtain a patent twice under the third party’s active participation and the third party completed patent registration, whether the employer, etc., who became aware of the completion of the employee invention, becomes entitled to the right to claim patent transfer registration by notifying the employee, etc. in writing of his/her intent to succeed to the right (affirmative), and whether the aforementioned right to claim transfer registration against the third party by exercising the right to claim patent transfer against the employee,

[1] Employees, corporate executives, or public officials (hereinafter “employees, etc.”) subject to the agreement or employment regulations that stipulate that the right to obtain a patent for an employee invention shall be succeeded to by the employer, corporation, the State, or the local government (hereinafter “employers, etc.”) may not arbitrarily escape from the detention of the above agreement, etc. until the non-Succession becomes final and conclusive, and it is reasonable to view that the above employees, etc. have a fiduciary relationship where the employer should maintain confidential information about the contents of the invention and cooperate in the acquisition of patent rights, etc. by the employer, etc.

[2] If two or more persons jointly make an invention, the right to obtain a patent shall be jointly owned (Article 33(2) of the Patent Act (amended by Act No. 12753, Jun. 11, 2014; hereinafter the same). Although there is no provision as to how to determine the share in the above joint ownership under the Patent Act, since the right to obtain a patent is also a property right, the provisions on joint ownership under the Civil Act may apply mutatis mutandis to the extent that is not contrary to its nature (see Article 278 of the Civil Act). Therefore, if there is a separate agreement between the joint owners of the right to obtain a patent as to the share of a patent, such agreement shall apply, and if there is no agreement, the share ratio shall be presumed to be equal in accordance with Article 262(2)

[3] In a case where the transferor transferred the transferor's right to obtain a patent to the transferee, the transferee registered the establishment of the patent, but the transfer contract loses its effect on the grounds of invalidation or revocation, etc., if the right to obtain a patent and the patent right established and registered are related to the same invention, the transferor would lose his/her right to obtain a patent, which is a property interest, and the transferee would have obtained a patent without any legal grounds. Thus, the transferor may request the transferee to transfer the patent right.

Meanwhile, Articles 12, 13(1) and (3) of the Invention Promotion Act, Article 7(1) of the Enforcement Decree of the Invention Promotion Act, and Article 7(2) of the same Act require an employee, corporation, executive officer, or public official (hereinafter “employee, etc.”) to notify the employer, corporation, State, or local government (hereinafter “employer, etc.”) of the completion of an employee’s invention in writing, and where the employer, etc. fails to notify his/her employee, etc. of whether to succeed to the right to the invention within four months from the date of receipt of the above notification, the employer is deemed to waive succession. In light of the above, if the employer, etc. knew of the completion of the employee’s invention without any other notification, and notifies in writing the employee, etc. of the purport that he/she succeeds to the right to the invention in accordance with an employee’s prior succession agreement, etc., the succession of right

Therefore, in a case where an employee, etc. subject to an agreement on prior succession to an employee invention completed the employee invention but transferred the right to obtain a patent for the invention twice under the third party’s active participation and the third party completed the registration of the patent right, the employer, etc., who became aware of the completion of the employee invention, knows in writing the employee, etc. his/her intent to succeed to the patent pursuant to the prior agreement on succession to the employee invention, thereby having the right to claim a patent transfer registration against the said employee, etc. In addition, the aforementioned dual transfer is null and void as a juristic act contrary to social order under Article 103 of the Civil Act. Thus, the employer, etc. can exercise the right to claim a patent transfer registration against the third party, such as employees, by exercising the right

[1] Article 750 of the Civil Act; Articles 12, 13(1) and (2), 19, and 58(1) of the Invention Promotion Act; Article 7 of the Enforcement Decree of the Invention Promotion Act / [2] Article 33(2) of the Patent Act (Amended by Act No. 12753, Jun. 11, 2014); Articles 262(2) and 278 of the Civil Act / [3] Articles 12 and 13 of the Invention Promotion Act; Article 7 of the Enforcement Decree of the Invention Promotion Act; Article 101(1) of the Patent Act (Amended by Act No. 12753, Jun. 11, 2014); Articles 103, 404(1) and 741 of the Civil Act

[3] Supreme Court Decision 2003Da47218 decided Jan. 16, 2004 (Gong2004Sang, 354)

Rocu Quum Co., Ltd. (Bae & Yang LLC, Attorneys Lee Dong-interest et al., Counsel for the plaintiff-appellant-appellant)

Defendant 1 and two others (Law Firm continental Aju et al., Counsel for the defendant-appellant)

Seoul High Court Decision 201Na4577, 4584 decided August 17, 2011

The part of the lower judgment against the Defendants regarding the claim for damages against the patent right to Q22 invention is reversed, and that part of the case is remanded to the Seoul High Court. The Plaintiff’s supplementary appeal is dismissed.

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

1. As to the Defendants’ grounds of appeal

A. As to the occurrence of liability for damages

(1) Determination of an inventor of Q22

The main text of Article 33(1) of the Patent Act (amended by Act No. 12753, Jun. 11, 2014; hereinafter the same) provides that an inventor or his/her successor shall have the right to obtain a patent under the conditions as prescribed by the Patent Act. Article 2 Subparag. 1 of the Patent Act provides that “Invention” refers to the creation of a new idea by using rules of nature. As such, “an inventor” as provided in the main sentence of Article 33(1) of the Patent Act refers to a person who has performed such an invention immediately. Therefore, in order to be an inventor, only the basic task and idea of the invention were provided, the researcher was generally managed, or the researcher was able to support and entrust the completion of the invention by providing materials with funds, equipment, etc., but it should not be limited to the extent that it is difficult to achieve the purpose and effect of the invention by providing new experiments, additional experiments, experiments, etc., such as a person who newly presented a specific attachment to solve the technical task, and the so-called invention’s purpose and effect.

According to the reasoning of the judgment below and the record, it was found that ① Defendant 2 and 3 knew that there was a mixture of existing common gold AC8A and Z27, which is a common gold in June 2007, and that a new aggregate can be created with high strength, even if it was unhued, Defendant 2 filed a request for the development of e-mails Q27, respectively, at the rate of 6:4, 7:30 and 8:2; ② Defendant 1 asked Defendant 2 to conduct the e-mail analysis and optimal development of Q2, which included a new aggregate of Q2, which was conducted by Defendant 1, in light of the fact that Q2, which was conducted after August 208, 208, including Q2, which was conducted by Defendant Q2, to be conducted by Defendant Q1, at the time of research and development, and later, Defendant Q2, which included a new aggregate of R2, which was conducted by Defendant Q2, as a new aggregate of research and development.

Considering these circumstances comprehensively in light of the legal principles as seen earlier, it is reasonable to view that Q22 was completed by Defendant 2 and 1’s way to seek a specific appearance to solve the technical task of the invention and by making a beneficial contribution to the completion of the invention under the common recognition that Defendant 2 and 1 would actually cooperate throughout the entire process of the invention.

Therefore, the inventor of Q22 should be seen as Defendant 2 and 1.

(2) The validity of the instant invention agreement concluded between Defendant 2 and the Plaintiff Company

Article 2 subparag. 2 of the Invention Promotion Act provides that “an employee, an executive of a corporation, or a public official (hereinafter referred to as “employee, etc.”) shall be deemed to fall under the scope of work of the employer, the corporation, or the State or a local government (hereinafter referred to as “employer, etc.”) and the act of making the invention falls under the current or past duties of the employee, etc.” Article 10(3) provides that “An employee, etc. shall succeed to the right to obtain a patent, patent, etc. to an employee, other than an employee invention, or patent, etc., or establish an exclusive license for the employer, etc.” Article 2 subparag. 2 of the Invention Promotion Act provides that “An employee, etc. shall be deemed to be invalid if a contract or provision on the exclusive license or provision on the exclusive license or provision on the exclusive license or provision on the exclusive license or the provision on the exclusive license or the provision on the exclusive license or the provision on the exclusive license or the provision on the exclusive license or the provision on the exclusive license or the provision on the exclusive license or the provision on compensation for employee invention is invalid.”

According to the reasoning of the judgment below, Defendant 2 entered into an agreement with the Plaintiff Company to the effect that “any invention developed by himself/herself or together with another person during the period of his/her employment in the Plaintiff Company shall be immediately disclosed in writing to the Plaintiff Company, and all rights to the invention shall accrue exclusively and exclusively to the Plaintiff Company” (hereinafter “instant invention agreement”).

Examining in light of the above legal principles, the invention agreement of this case concluded by Defendant 2 with the Plaintiff Company is effective within the scope of the so-called prior succession agreement for Defendant 2’s invention to succeed to the right to obtain a patent, patent, etc. with respect to the Plaintiff Company. In addition, if Defendant 2 succeeds to the right to obtain a patent, patent, etc. with respect to his employee invention, it shall be deemed that the Plaintiff Company has the right to obtain a reasonable compensation.

(3) Whether Q22 constitutes an employee’s invention

(5) According to the reasoning of the judgment below and the records, the Plaintiff Company was a corporation established for the purpose of manufacturing and supplying parts of Aluminium 207. However, around October 2007, the Plaintiff Company acquired the assets of the acquired company, and operated the business of the acquired company for the purpose of manufacturing and selling parts of information and communications devices. ② The representative director of the acquired company was a director of the acquired company at around June 2007, combining AC8A 27 ZA27 m27 mix with the existing AC8A 27 m27 m27 m27 m20 m220 m20 m27 m20 m27 m20 m20 m2 m20 m2 m20 m2 m27 m2 m27 m2

In full view of these circumstances, the development of light-weight and multi-bruckings suitable for the manufacture of parts of portable electronic and electronic equipment belongs to the Plaintiff Company’s business. Defendant 2 is a director of the Plaintiff Company who conducts the manufacture and sale of parts for information and communications devices and was in charge of the development of light-weight and high-bruths that are suitable for the manufacture of parts for portable electronic and electronic equipment from the time when the Plaintiff Company acquired the acquired the acquired company, and was in charge of the development of light-weight and high-bruths that are compared to the existing common equipment, such as Q22 gold, and the efforts to develop light-weight and multi-bruths suitable for the manufacture of parts for portable electronic equipment are expected to be generally expected

Therefore, Defendant 2’s contribution to Q22 should be deemed as an employee’s invention in relation to the Plaintiff Company.

(4) Defendants’ liability for damages

Article 12 of the Invention Promotion Act provides that "Any employee, etc. shall, if he/she completes an employee invention, notify the employer, etc. of the fact without delay." Article 13(1) provides that "the employer, etc. (excluding the State or a local government) who has received notification under Article 12 shall notify the employee, etc. of whether he/she succeeds to the right to the invention within the period prescribed by Presidential Decree: Provided, That if the employer, etc., succeeds to the right to patent, patent, etc., or establishes an exclusive license for the employer, etc., he/she may not claim the succession of the right to the invention differently from his/her employee, etc.," Article 12(2) provides that "if the employer, etc., notifies the employer, etc. of his/her intention to succeed to the right to the invention during the period prescribed in paragraph (1) above, he/she shall also be deemed to have succeeded to the right to the invention, etc., for which Article 13(1)2 of the Enforcement Decree of the Invention Promotion Act provides that "if an employee, etc., who succeeds succeeds to the right to the invention shall succeed to the right within the employee invention,".

Therefore, an employee, etc. subject to an agreement or employment regulation that stipulates that the right to obtain a patent for an employee invention shall be succeeded to by the employer, etc., may not arbitrarily escape from the restraint of the above agreement, etc. until it becomes final and conclusive that the employer, etc. does not succeed to the invention, and it is reasonable to view that the above employee, etc. has a fiduciary relationship where the employer, etc. should maintain confidential information about the contents of the invention and cooperate in the acquisition of patent rights, etc. by the employer, etc..

As seen in the above, Q22 joint inventions by Defendant 2 and 1. The invention agreement of this case concluded between Defendant 2 and the Plaintiff Company should be valid within the scope of the employee’s prior succession agreement, and the portion of Defendant 2’s contribution among Q22 invention should be deemed to constitute Defendant 2’s employee’s employee’s invention in relation to the Plaintiff Company. Meanwhile, according to the reasoning of the lower judgment, even though the Defendants were well aware that, even if there was high strength as Q22, it was adequate for the Defendants to manufacture the parts of the portable electronic equipment that require minor characteristics, such as Q22, but it was necessary for the Plaintiff Company, even though they were well aware of the fact that a light-scale and high-scale multi-level diverization invention was appropriate for manufacturing the parts of the said portable electronic equipment that require minor characteristics, they did not follow the procedure for transferring Defendant 2’s portion of the right to obtain the patent therefor to the Plaintiff Company, and they jointly obtain profits through Defendant 1’s business (MIB) registered in the name of Defendant 1 with the Plaintiff Company.

Examining these facts in light of the legal principles as seen earlier, the Defendants conspired to manage the Plaintiff Company as a director of the Plaintiff Company, and jointly claimed Q22 amount in relation to their duties, and Defendant 2, the employer, who was the Plaintiff Company, violated the duty of cooperation under a fiduciary relationship to cooperate in the acquisition of the Plaintiff Company’s patent rights and other rights, and did not notify the Plaintiff Company of the completion of Q22 invention, thereby having Defendant 1 complete the patent registration solely by transferring Defendant 2’s portion of the right to obtain a patent for the invention to Defendant 1, and by allowing Defendant 2 and Defendant 3 to enter into a license agreement with other companies on the invention, thereby causing damage to the Plaintiff Company.

Therefore, the defendants are liable for damages to the plaintiff company as joint tortfeasor.

B. Regarding the scope of damages

Meanwhile, on the premise that Defendant 2’s sole invention of Q22 was made, the lower court determined that the full amount of KRW 15,658,814, which the Defendants received from Sung Pung Pung metal Co., Ltd. as royalties for patent of the said combined gold should be attributed to the Plaintiff Company, even though it should be attributed to the Plaintiff Company.

However, as seen above, Q22 joint inventions by Defendant 2 and 1. Of this, Defendant 2’s share is part of the invention agreement of this case where the Plaintiff Company was entitled to transfer from Defendant 2 by completing the succession procedure under Articles 12 and 13(1) of the Invention Promotion Act, but Defendant 2 did not perform the obligation under the above agreement and transferred the above share to Defendant 1 in collusion with Defendant 3 and 1. As such, the amount equivalent to the profits the Plaintiff Company did not have obtained by the Defendants’ breach of trust shall be limited to the amount equivalent to Defendant 2’s share. In addition, when two or more persons jointly make an invention, the right to obtain a patent shall be jointly owned (Article 33(2) of the Patent Act). However, since the right to obtain a patent is also a property right, it is reasonable to assume that Article 27(2) of the Civil Act can be applied mutatis mutandis to the presumption of share of patent under Article 27(2) of the Patent Act to the extent that it does not go against its nature (see, e.g., Article 268(2) of the Civil Act).

If so, the court below should have deliberated and decided the shares of Defendant 2 among the rights to obtain a patent for Q22 invention, and should have ordered compensation by calculating only the amount corresponding to the shares among the above royalties as damages.

C. Sub-committee

Ultimately, the lower court determined that Q22 was the sole invention by Defendant 2. On the premise of this premise, the Defendants determined that the entire amount of KRW 15,658,814, which was paid from Sung Pung Pung metal Co., Ltd. as royalties for patent of the said joint invention, was the amount of damages suffered by the Plaintiff Company. In so determining, the lower court erred by misapprehending the legal doctrine on inventor judgment, thereby failing to exhaust all necessary deliberations, thereby adversely affecting the conclusion of

2. As to the grounds of incidental appeal by the Plaintiff Company

A. In a case where the transferor transfers the transferor's right to obtain a patent to the transferee, the transferee is registered to establish the patent right, but the transfer contract loses its effect on the grounds of invalidation, revocation, etc., if the right to obtain the patent and the patent right established and registered are related to the same invention, the transferor shall lose his/her right to obtain a patent, which is a property interest, and the transferee shall have gained a profit without any legal ground. Thus, the transferor may request the transferee to register the transfer of the patent right (see Supreme Court Decision 2003Da47218, Jan. 16, 2004).

Meanwhile, Articles 12, 13(1) and (3) of the Invention Promotion Act, and Article 7(1) of the Enforcement Decree of the Invention Promotion Act require employees, etc. to notify the employer, etc. of the completion of an employee invention in writing, and where the employer, etc. fails to notify his/her employees, etc. of whether to succeed to the right to the invention within 4 months from the date of receipt of the above notification, the effect that succession is deemed to have been given to give up his/her right to the invention is deemed to have been given. In light of the above, if the employer, etc. knew of the completion of the employee invention without the above notification by employees, etc., and notifies the employee, etc. in writing of the purport that he/she succeeds to the right to the invention under the prior agreement on succession

Therefore, in a case where an employee subject to an employee invention pre-assignment agreement, etc. completes the employee invention while notifying the employer of the completion and a third party transfers the right to obtain a patent for the invention twice under the third party's active participation and the third party completes the registration of the patent right, it is reasonable to view that the employer, etc., who became aware of the completion of the above employee invention, becomes entitled to a claim for patent transfer registration against the above employee, etc. by notifying the aforementioned employee, etc. in writing of his/her intent to succeed to the right in accordance with the prior agreement on succession to the employee invention. Furthermore, the above double transfer is a juristic act contrary to social order as stipulated in Article 103 of the Civil Act, and thus the above double transfer is null and void. Thus, the employer, etc. can exercise the right to claim for transfer

B. As to the instant case, Defendant 2’s agreement is valid within the scope of the agreement on prior succession to employee’s invention, and Defendant 2’s contribution to Q22 constitutes an employee’s invention in relation to the Plaintiff Company. Nevertheless, Defendant 2 transferred Defendant 2’s share among the rights to obtain a patent for the said invention to Defendant 1 without notifying the Plaintiff Company of the completion of the said joint invention. In addition, in light of the factual basis as to the occurrence of the Defendants’ liability for damages, it is reasonable to deem that the dual transfer of Defendant 2’s share between Defendant 2 and Defendant 1 constitutes a juristic act contrary to social order as stipulated in Article 103 of the Civil Act, as it constitutes a juristic act committed under Defendant 1’s active participation, and thus, it is reasonable to deem that the said double transfer constitutes a juristic act contrary to social order as stipulated in Article 103 of the Invention Promotion Act until the closing of arguments in the instant case. Furthermore, according to the records, it can be known that there was no procedure for Defendant 2’s succession to the right to obtain a patent for Q222 invention.

Thus, the plaintiff company notified the defendant 2 of his intention to succeed to the shares of the defendant 2 in accordance with the prior agreement on succession to employee invention among the rights to Q22, and requested the defendant 2 to transfer the above invention to the defendant 2 by subrogation of the defendant 2 on behalf of the defendant 1, among the patent rights registered in the defendant 1's future, and at the same time, the plaintiff 2 may request the plaintiff 2 to transfer the above patent rights in sequence. Thus, the plaintiff company cannot request the plaintiff company to transfer the above patent rights directly.

C. The lower court determined that, even if Defendant 1’s patent application for Q22 constitutes “patent application filed by an unentitled person,” the Plaintiff Company cannot make a patent application for the patent right against Defendant 1 on the ground that the patent application for Q22 constitutes “patent application filed by an unentitled person,” the Plaintiff Company’s succession to the right to obtain a patent may not make a patent application for the patent right against Defendant 1 on the ground that the patent application filed by Defendant 1 constitutes patent application filed by an unentitled person under the name of the Plaintiff Company. The lower court determined that the lower court was premised on the premise that the right to obtain a patent for Q22 invention belongs to all the Plaintiff Company without a succession procedure under Articles 12 and 13(1) of the Invention Promotion Act, and that the conclusion is inappropriate, but the conclusion is justifiable. The Plaintiff Company’s ground of incidental appeal cannot be accepted.

3. Conclusion

Therefore, the part of the judgment of the court below against the Defendants regarding the claim for damages regarding patent rights shall be reversed, and that part of the case shall be remanded to the court below for further proceedings consistent with this Opinion. It is dismissed. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Poe-young (Presiding Justice)