발명권 및 지식재산권의 귀속에 대한 대학연구자들의 이해

Intellectual property litigation involving universities is common, often resulting from conflicts between researchers and institutions about the ownership of inventions. These legal disputes can inhibit the progress of research and innovation. This article uses actual U.S. cases to examine basic concepts in intellectual property ownership – including inventorship, the judicial correction of inventorship, joint inventorship and ownership, and the transfer of inventors’ rights. In the process, it addresses specific challenges that university researchers will face in applying these concepts. The main body of the article is summarized as follows:The law defines an “inventor” as a natural person who conceives at least (an element of) one claim of an invention, and defines a “conception” as the formation of a definite and permanent idea of the complete and operative invention in the inventor’s mind. A “joint inventor” is a person who makes an inventive contribution to the conception of at least one of an invention’s claims. An inventive contribution must be more advanced, in terms of knowledge or skill, than a contribution that a person with an ordinary skill in the art could have made. Although it is crucially important that a patent application correctly list all the names of joint inventors, this requirement can present a challenge for researchers. Not only may researchers have trouble identifying the “conceptions” that define a particular invention, but the patent prosecution process affords no opportunity for them to learn more about this key legal concept. The date on which a conception was complete has great practical significance, determining the formal date of invention, and also closing the list of joint inventors. Nevertheless, it can be hard to say when a conception was completed, particularly as relates to emerging technological fields. Courts will, under certain limited circumstances, correct issued patents to reflect errors in the identification of inventors and joint inventors. However, any person who seeks to have his or her name added to an issued patent must be able to provide clear and convincing evidence demonstrating an inventive contribution. An inventor owns a patent unless that inventor’s right to the patent is assigned to others, whereas a joint inventor has an undivided equal right to a patent. An inventor may assign or license its right to others, subject to the laws and regulations related to employment contract, employer’s shop right, research contract, etc., if applicable. The author argues that researchers must understand the legal and regulatory environment in which they work for the technology transfer and commercialization processes to be effective, and that universities should therefore give their researchers the opportunity to learn core principles of intellectual property law during regular intellectual property or research ethics courses.