공유특허의 법적 성격 및 지분분할에 관한 고찰

There are certain limitations on a jointly-owned patent right. Except for the case of working the patent invention by himself/herself, each joint owner is required to have the consent of the other joint-owners in order to shares transfer, establishment of a pledge right, exclusive license and non-exclusive license, registration of extension of term and adjudication request. In addition, where a trial is requested against any of the joint owners of a patent right, all the joint owners must be made defendants. These limitations are due to the fact that a patent right is a right to intangible property. The legal characteristics of a joint-ownership of a patent right has been understood as a type of partnership-ownership. However, according to the recent court’s ruling, it is possible for a joint owner of a patent right to claim for auction and segmentation. That is, joint-owners of a patent right such as universities and government-funded research institute who lack capacity to work the patent invention by themselves, may pursue claim for segmentation of their rights. This may result in a serious damage to the other joint-owners of the patent rights such as companies. If one of the joint-owners of a patent pursue claim for segmentation, that may result in disposition of the patent by auction, infringing upon other joint-owners’ rights to work that patent. Therefore, an amendment to the Patent Act is necessary in order to alleviate such potential damages to the other joint-owners and the Korean Intellectual Property Office(KIPO)’s proposal for an amendment to the Patent Act seems timely. Yet, there are certain concerns over the KIPO’s amendment proposal regarding the jointly-owned patent rights. In an attempt to solve the problem resulting from the recent court’s decision, the amendment could undermine the legal certainty or the rationality of the institution as a whole. That is, when a jointly-owned patent right is disposed by auction as in the court case, the other joint-owners can be sufficiently protected by setting an onerous statutory non-exclusive license instead of what the current amendment proposes. In addition to the statutory non-exclusive license, granting redemption of shares to the joint-owners can also prevent the unintended dispose of the jointly-owned patent rights. Therefore, these two alternatives should also be taken into consideration in the amendment.