민간기업과 공공기관이 공동소유하는 발명에 대한 특허출원

Consent of Patent Application on an Invention Jointly Owned by a Private Company and a Public Institute : From Joint Owner Consent Principle to Joint Owner Individual Principle

Section 44 of the Korea Patent Act prescribes that if the right to obtain a patent is jointly owned, a patent application is only possible upon consent of all joint owners. This paper coins this jurisprudence as “joint owner consent principle”. Such countries which apply this principle are exemplified as Germany, Japan, China as well as Korea. This paper aims to suggest a method to solve a deadlock situation where the right to obtain a patent is jointly owned by both a private company and a public institute and the private company cannot file a patent application due to objection of the public institute. According to analysis of foreign jurisprudence, in the U.S.A., Canada, Australia, India, etc., each joint owner can file a patent application notwithstanding other joint owners’ objection. This paper coins this jurisprudence as “joint owner individual principle”. This paper suggests the following reasons why the joint owner individual principle is more reasonable than the joint owner consent principle. Firstly, if all joint owners do not consent, maintenance of trade secret is almost impossible. Secondly, if a joint owner files a patent application without others’ consent, the application may result in the same situation where all joint owner are named as applicants. Thirdly, filing of a patent application can be interpreted as a maintaining action. Fourthly, section 30 of the Korea Patent Act would better be utilized under the joint owner individual principle. Fifthly, because section 99 demands consents of all joint owners for share assignment, section 44 could be utilized to force involuntary consents. This paper proclaims that the “joint owner consent principle” be changed to the “joint owner individual principle” and to realize the proclaim a new subsection be inserted into section 44, which reads as: “if one or more of joint owners object to the patent application or is not reached after due diligent, (an)other joint owner(s) can file a patent application.” Furthermore, it had better clarify that each applicant can request patent denial review trial without consent of other applicants in section 132. Considering such a situation where above proposals may not be passed in the National Assembly or where before legislation in the National Assembly, the deadlock problem could be solved by an agreement (contract) by the private company and the public institute. If the two become joint owner of a patent, both may face inherent risk of the joint ownership. To minimize such a risk, a kind of model agreement could be suggested. The model agreement may on the one hand allow the private company to freely utilize the patented invention and to maximize profits and on the other hand allow the public institute to receive allocation of the profits achieved by the private company. The amount of allocated remuneration could be calculated by a corresponding method to calculate that of employee invention remuneration.