직무발명에 대한 발명자의 특허출원과업무상 배임죄의 성립여부－대법원 2012. 12. 27. 선고 2011도15093 판결을 대상으로－

The court’s ruling in this case was about liability for the criminal offence of occupational breach of contract when a patent application for an employee invention has been submitted without the company’s consent. The court ruled that if there is no employee confidentiality agreement or employee invention agreement regarding transfer rights of the patent application to the employer before invention or after invention, submission of the patent application by the employee inventor under his or her own name can be seen as exercising his or her own rights, and is not a commission of the offence of occupational breach of trust. Since, as a basic matter, an employee is engaged in the company’s business, an employee satisfies one of the conditions of the crime of occupational breach of trust- that is, to be a person managing another person’s business. Furthermore, this can be seen as satisfying another condition of the crime of occupational breach of trust, when an employee submits a patent application for an employee invention under his or her own name, attains financial profit therefrom and consequently causes damage to the employer’s profit. Hence, whether the requisite for the crime of occupational breach of trust is satisfied depends on whether there was an act of breach of trust by the employee. The Korean Invention Promotion Act provides that if there is no employee invention assignment agreement on transfer of all rights to the invention invented by the employee to the employer, the employer cannot claim the rights to the invention invented by its employee, and the Supreme Court determines if a crime of occupational breach of trust has been committed by examining whether there was a breach of trust. It is very important matter for the process of conducting reasonable allocation of profit between employer and employee to scrutinize whether the Supreme Court’s standard of judgment on breach of trust is reasonable or not. These days, many companies do not have a concrete plan on invention assignment and employment invention remuneration, thus in order to scrutinize the validity of the aforementioned standard of judgment, we should examine thoroughly how to regulate the legal relationship of employee invention and whether there may be any problems between the management of employee invention and the company’s prevention on technology leakages in the future regarding the current ruling. Furthermore, we should examine whether there is any equity problem compared with our precedents that regulate trade secret piracy as a crime of occupational breach of trust. Based on the abovementioned process, I would like to suggest a reasonable standard of judgment on employee inventors’ liability for the crime of occupational breach of trust.