무권리자 출원‧특허와 정당한 권리자의 보호

According to the Article 35 of the Patent Act of Korea, a subsequent application filed by the legitimate owner of the right to a patent (i.e. replacement application) shall be deemed to have been filed at the time the invalidated patent application was filed (hereinafter "Article 35 remedy"). However, it has been uncertain whether the transfer of the patent is available as another remedy for the legitimate owner of the right because there has been no Supreme Court case law to clarify this legal issue. As a result, some commentators argued that it is available and other commentators argued that it is not available. Recent two Supreme Court Decisions held differently. On the one hand, 2012Da11310 held that even if a patent has been granted to the usurped application the legitimate owner of the right to the patent cannot claim the transfer of the patent because he has the remedy under the Article 35 of the Patent Act. On the other hand, 2011Da77313, 77320 held that the transfer of the patent is available as long as both the patent and the right to the patent is about the same invention if the legitimate owner (assignor) assigned the right to a patent to a third party ( assignee), the assignee acquired a patent thereafter, and the assignment is invalid. It seems to be that whether the transfer of patent is available as a remedy depends on the circumstances of the case. After the 2012Da11310 decision, the National Assembly of Korea is currently considering a proposed amendment to the Patent Act that would provide the transfer of patent as a remedy for the legitimate owner of the right to a patent (Actually, after this article has been submitted for peer review, the bill has been passed on Feb. 4th, 2016). This article considers three questions regarding the proposed amendment. First of all, the proposed amendment which provides both the old remedy (i.e. Article 35 remedy) and the new remedy (i.e. the transfer of patent) for the legitimate owner of the right would make sense at least for the time being. However, we need to review whether the old remedy is still necessary or not in addition to the new remedy in the near future. Next, the proposed amendment which places no time limit for the transfer of patent would not be problematic since it includes third-party protection devices. Finally, the need to remove the time bar (i.e. two years from the grant of the patent) for the old remedy is not that great although there exists little concern for the abuse of the remedy. With the broadening of the claims by the legitimate owner under the Article 35, the interests of third parties would be harmed. We need to continue to review this. It is the most important thing to balance between providing relief for the legitimate owner and protecting the interests of third parties when we consider remedies for the legitimate owner against usurped patents or usurped patent applications. This is what we have to watch out for.