국내 미등록 특허권 사용료의 한미조세협약상 국내원천소득 해당 여부

Article 6(3) and 14(4)(a) of the Convention between the Republic of Korea-United States of America for the Avoidance of Double Taxation and the Prevention of Fiscal Evasion with respect to Taxes on Income and the Encouragement of International Trade and Investment (hereinafter “Korea-U.S. Tax Treaty”) stipulates that royalties for the use of patents shall be treated as income from sources within one of the Contracting States (“the place of use rule”), while not providing a separate definition of “use of patents.” Based on the premise that “use of patents” refers to practicing a patented invention within a country where the patent right is registered in accordance with the principle of territoriality of patent rights, the previous decisions held that the domestic use of a patent registered in a foreign country but not in the Republic of Korea (hereinafter “domestically unregistered patent”) or royalty payments therefor is inconceivable. In brief, the lower court determined that the royalty income from domestically unregistered patents is not deemed domestic source income. The subject decision abolished the legal doctrine based on the principle of territoriality of patent rights established by the previous decisions, and explained that “use of patents” in the Korea-U.S. Tax Treaty refers to the “actual use of licensed patent technology for the manufacture and sale of goods.” It determined that the domestic use of even a domestically unregistered patent is inherently conceivable, and remuneration for the actual use of a patent technology for the domestic manufacture and sale constitutes domestic source income. The major reasons of the subject decision are as follows: ① Any other term used in the Treaty and not defined in the Treaty shall have the meaning which it has under the laws of the Contracting State whose tax is being determined (main text of Article 2(2)). The latter part of Article 93 Subparag. 8 proviso of the former Corporate Tax Act states that if patent was registered overseas and has been used for manufacture and sale in the Republic of Korea, such patent shall be deemed used in the Republic of Korea, irrespective of whether they are registered in the Republic of Korea, and the context provides no basis for a contrary interpretation. ② Article 14(4)(a) of the Korea-U.S. Tax Treaty stipulates that not only rights requiring registration such as patents but also intangible property such as know-how is eligible for the payment of royalties, and the meaning of “use” applicable to intangible property as a whole is not the use of a right itself but the use of technology (patent technology), etc. that comprises intangible property. ③ The principle of territoriality of patent rights is related to the effect of patent rights or patent infringement, and it is not concerned with the place of use of a patent technology. A patent technology can be used anywhere regardless of whether a patent is registered. The principle of territoriality of patent rights does not provide sufficient grounds for arguing that the domestic use of a domestically unregistered patent and payment of royalties therefor are inconceivable. The subject case is meaningful in that it changed and corrected the legal doctrine established by the previous decisions, which was difficult to be considered as corresponding to the ordinary meaning of the term “use of patents” or the context of the Korea-U.S. Tax Treaty. The significance of the subject case is also found in its presentation of the method of interpretation of terms that are not defined in a tax treaty. The key point of the cases concerning royalty payments for the use of domestically unregistered patents going forward will be identifying and apportioning the part of the royalty payments made as “remuneration for the actual use of a patent technology for the domestic manufacture and sale,” which constitutes domestic source income. Thus, a fact-finding court will have to establish the principle governing the allocation of the burden of proof, which considers the equity principle and difficulty of proof, and provide a reasonable conclusion.