[1] The purport of Article 24(2) and (3) of the Civil Procedure Act and Article 28-4 subparag. 2 of the Court Organization Act that separate provisions concerning the jurisdiction of lawsuits relating to patent rights, etc.

[2] In a case where Gap research institute entered into an agreement with Eul corporation for the development of technology for both civilian and military purposes as one of the technology development projects for both civilian and military purposes under the former Act on the Promotion of Technology for both Civilian and Military Use, and subsequently filed a claim against Eul corporation for damages due to non-performance of the obligation to vest in patent rights pursuant to the above agreement, the case holding that the examination and determination of the above lawsuit shall be deemed as a lawsuit on intellectual property rights such as patent rights under Article 24(2) of the Civil Procedure Act, on the ground that the lawsuit was filed before the enforcement date of the Court Organization Act amended by Act No. 13522 on December 1, 2015, and the judgment of the first instance court rendered after the enforcement date falls under the exclusive jurisdiction of the Patent Court.

[1] Article 24(2) and (3) of the Civil Procedure Act amended by Act No. 13521, Dec. 1, 2015; Article 24(2) and (3) of the same Act shall be subject to the exclusive jurisdiction of the district court (Seoul Central District Court in the case of the location of the Seoul High Court) having jurisdiction over the location of the competent court pursuant to Articles 2 through 23; however, if the said district court is not the Seoul Central District Court, it may file a lawsuit with the Seoul Central District Court. The above amended provisions apply from the case first received by the warden after January 1, 2016, which was the enforcement date pursuant to Articles 1 and 2 of the Addenda (amended by Act No. 13521).

Meanwhile, Article 28-4 subparag. 2 of the Court Organization Act amended by Act No. 13522, Dec. 1, 2015 provides that the Patent Court shall judge a civil appeal case concerning intellectual property rights, such as patent rights, and Articles 28 and 32(2) exclude cases falling under the jurisdiction of the Patent Court from those subject to a trial by the collegiate panel of a high court and a district court. The aforementioned amended provisions apply to cases where the first instance judgment was rendered after the enforcement date of the said civil case concerning intellectual property rights, such as patent rights, which were pending before January 1, 2016, pursuant to Articles 1 and 2 of the Addenda (amended by Act No. 13522).

As such, the reason why a separate provision on the jurisdiction of a lawsuit on intellectual property rights to a patent right is ordinarily required for the deliberation and determination thereof, and therefore, it can contribute not only to a faithful deliberation and prompt trial but also to the appropriate protection of intellectual property rights by concentrating cases in a specialized panel equipped with a system and advanced experience suitable for the deliberation and determination.

[2] In a case where Gap research institute entered into an agreement with Eul corporation as one of the joint civil and military technology development projects under the former Act on the Promotion of Technology for Joint Civilian and Military Use (amended by Act No. 7217 of Sept. 23, 2004), and sought damages against Eul corporation for non-performance of the obligation to vest in patent rights pursuant to the above agreement, the case holding that the lawsuit disputing the existence and scope of the right to claim damages due to non-performance of the obligation to vest in patent rights pursuant to the above agreement constitutes a civil legal relation, and the lawsuit is deemed a civil lawsuit, and the trial and determination of the above lawsuit shall be deemed as a lawsuit for intellectual property rights such as patent rights under Article 24(2) of the Civil Procedure Act, since the lawsuit requiring expert knowledge or understanding of technology related to intellectual property rights such as patent rights, etc. is brought before the enforcement date of the judgment of the Patent Court prior to the enforcement date of the lawsuit as to the first instance case.

[1] Article 24(2) and (3) of the Civil Procedure Act, Articles 1 and 2 of the Addenda ( December 1, 2015), Articles 28, 28-4 subparag. 2, and 32(2) of the Court Organization Act / [2] Articles 24(2) and (3) of the Civil Procedure Act, Articles 1 and 2 of the Addenda ( December 1, 2015), Articles 28, 28-4 subparag. 2, and 32(2) of the Court Organization Act

[1] Supreme Court Decision 2017Da259988 Decided December 22, 2017 (Gong2018Sang, 322)

The Agency for Defense Development (Attorneys Lee Jae-in, et al., Counsel for the plaintiff-appellant)

Seoul High Court Order 2017Na204122 dated November 23, 2017

The reappeal shall be dismissed. The costs of reappeal shall be borne by the re-appellant.

The grounds of reappeal are examined.

1. A. The record reveals the following facts.

On October 24, 2003, the Plaintiff (hereinafter “Plaintiff”) entered into an agreement on the development of technology for both civilian and military purposes (hereinafter “instant agreement”) with the Defendant (the other party; hereinafter “Defendant”) on October 24, 2003 for the development of the first small-sized batteries in the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line of the front line (hereinafter “instant agreement”).

According to the instant agreement, as the Defendant is a private research institute, the share of government contributions in the patent right for applied research technology belongs to the Plaintiff (Article 9(2)), and the above patent right shall be jointly filed and registered by the Plaintiff and the Defendant, and the Defendant shall bear the necessary expenses (Article 9(3)). The Defendant may pay the royalties corresponding to the share of government contributions and request the Plaintiff to transfer the said share to the Plaintiff, and the Plaintiff shall gratuitously transfer the share, unless there is any special reason (Article 9(4)).

The application research under the instant agreement was completed on November 30, 2016, and the Defendant filed an application for patent rights with respect to the technologies developed in the course of the application research under the instant agreement (hereinafter “instant patent right”).

B. Technology related to “small-sized batteries prior to low-income storage” developed through the instant agreement is of the nature that can be widely used in both public and private sectors. In addition, while the provisions on legal relations in the instant agreement include some provisions on legal relations in the context of public law, such provisions do not directly relate to the determination and attribution of the ownership of a patent as the result of application research under the instant agreement, and the equivalent value thereof. Moreover, the instant lawsuit is not seeking the implementation of the instant agreement, but seeking compensation for damages arising from the nonperformance of the duty of attribution of patent rights, and thus cannot be deemed as having affected legal relations contained in the instant agreement, and it is difficult to find a direct relation with the exercise of public authority, etc.

Therefore, the existence and scope of the right to claim damages due to the non-performance of the obligation to vest in the patent share under the Convention constitutes a civil law relationship, and thus, a lawsuit disputing the subject matter of a lawsuit shall be deemed a civil lawsuit.

2. A. Article 24(2) and (3) of the Civil Procedure Act amended by Act No. 13521, Dec. 1, 2015; Article 24(2) and (3) of the said Act shall be subject to the exclusive jurisdiction of the district court (in the case of the location of the Seoul High Court, the Seoul Central District Court) having jurisdiction over the location of the competent court under Articles 2 through 23; however, if the said district court is not the Seoul Central District Court, the said district court may file a lawsuit with the Seoul Central District Court. The foregoing amended provisions shall apply from the case first received by the complaint after January 1, 2016, the date of enforcement pursuant to Articles 1 and 2 of the Addenda (amended by Act No. 13521, Dec. 1, 2015).

Meanwhile, Article 28-4 subparag. 2 of the Court Organization Act amended by Act No. 13522, Dec. 1, 2015 provides that the Patent Court shall judge a civil appeal case concerning intellectual property rights, such as patent rights, and Articles 28 and 32(2) exclude cases falling under the jurisdiction of the Patent Court from those subject to a trial by the collegiate panel of the high court and the district court. The aforementioned amended provisions apply to cases where the first instance judgment was rendered after the enforcement date of the civil case concerning intellectual property rights, such as patent rights, which were pending before January 1, 2016 pursuant to Articles 1 and 2 of the Addenda (amended by Act No. 13522) (see Supreme Court Decision 2017Da25988, Dec. 22, 2017).

As such, the reason why a separate provision on the jurisdiction of a lawsuit on intellectual property rights to a patent right is ordinarily required for the deliberation and determination thereof, and therefore, it can contribute not only to a faithful deliberation and prompt trial but also to the appropriate protection of intellectual property rights by concentrating cases in a specialized panel equipped with a system and advanced experience suitable for the deliberation and determination.

B. The Plaintiff filed a claim against the Defendant for damages due to the Defendant’s nonperformance of the obligation to vest in the patent rights according to the instant agreement. Therefore, in order to determine whether the cause of the claim exists, it is necessary to determine the Plaintiff’s share ratio in the patent right of this case along with the Plaintiff’s share in the patent right of this case. In order to determine the Plaintiff’s share ratio, not only the Plaintiff’s share ratio but also the value of the patent right of this case registered under the Plaintiff’s name, the degree of technology development for “the first small medium medium medium medium medium medium medium medium medium medium medium medium technology before the conclusion of the instant agreement, and whether such technology has been reflected to the patent right registered by the Defendant, and the characteristics of

The instant lawsuit is a lawsuit that requires expert knowledge or understanding of intellectual property rights such as patent rights, etc. in its deliberation and determination, and is deemed a lawsuit on intellectual property rights such as patent rights under Article 24(2) of the Civil Procedure Act. On June 16, 2014, a lawsuit was filed in the first instance court and the judgment of the first instance court was rendered on July 12, 2017, which was after the enforcement date of the said amended Court Organization Act, and thus, the appeal case is subject to the exclusive jurisdiction of the patent court.

3. In the same purport, the lower court is justifiable to have determined that the instant lawsuit falls under the jurisdiction of the Patent Court. In so doing, it did not err by misapprehending the law that affected the conclusion of the judgment as otherwise stated in the grounds of reappeal. Therefore, the reappeal is dismissed. It is so decided as per Disposition

Justices Park Jung-hwa (Presiding Justice)