특허를 받을 수 있는 권리를 양수한 자가 우선권을 주장한 경우 출원인의 동일성 판단 기준 대법원 2019. 10. 17. 선고 2016두58543 판결을 중심으로

When a person who has inherited the right to obtain a patent for first-filed invention makes a priority claim based on the first-filed invention when filing an application for the later invention, the lower court’s decision and the practice of the KIPO required the identity of the applicants for the first-filed and later-filed inventions. These were the result from applying Article 38(4) of the Patent Act to the priority claims. Article 38(4) of the Patent Act, however, does not apply to the procedure concerning priority claims, as it is a regulation that seeks convenience and swiftness in application screening by easily confirming the participant and the person to register the patent. Given that the domestic priority system allows inventors to protect their accumulated performance with patent rights in consideration of continuous technological development, it is reasonable to assume that the inventors can claim priority even if they have not reported amendment of the patent applicant at the time of the filing of the later invention if the inheritance was made in a legitimate manner. There are some cases where, after the filing of an application of the earlier invention, new inventors are involved, or some of the inventors are replaced and apply for the later-invention, the modified version of the earlier invention. The conventional practice has been denying the identity of the applicant. The subject case is significantly meaningful in that it has removed these absurdities and reached a reasonable conclusion by interpreting the provisions of the Patent Act with regard to the purpose of the priority system, divisional application and conversion of application in harmony with Article 55 of the Patent Act concerning domestic priority claims. The foregoing decision is expected to provide much implications for priority disputes in the future.