Stanford v. Roche 판결이 재확인한 우리 직무발명제도의 허점

A Loophole in the Korean Employee Invention System, Reconfirmed by Stanford v. Roche

According to the current Korean employee invention system, the right for a patent is originally vested to the inventor, and the right is assigned to the employer when it notifies its intent to take over the right. The same principle is being applied to inventions created by government-sponsored researches. In Stanford v. Roche, the U.S. Supreme Court explains that the U.S. Patent Act follows the same inventorship principle, that the same principle applies to inventions created by government-sponsored researches, and that each respective contract decides on the assignment of the right for a patent. In the facts of the case, the contract with plaintiff (Stanford) promises to assign (in the future) the right for a patent, on the other hand, the contract with defendant (Roche) hereby (at the time of signature) assigns the right for a future invention. The Court acknowledges that the Roche contract has priority over the Stanford contract and Roche legally took over the right. This Stanford v. Roche opinion shows that the sooner the relevant assignment of an employee invention is, the more stable the right for a patent is. In that regard, our employee invention system is much unflexible. Therefore, it is strongly recommended to amend a relevant provision of the Invention Promotion Act and thereby to make possible assignment of employee inventions at the time of company entering or of employee invention reporting.