Jointly owned patent rights occur by various causes including succession of partial patent rights, interest assignment and joint research or development. In Korea, the number of patent applications filed by joint owners has been rapidly increasing for...
Jointly owned patent rights occur by various causes including succession of partial patent rights, interest assignment and joint research or development. In Korea, the number of patent applications filed by joint owners has been rapidly increasing for the last 10 years due to proactive joint development or research among universities, companies and research institutes. In particular, the importance of joint research or development has been increasing in the aspect of reducing research expense and development period, complementing technical cooperation, and extracting valuable intellectual property like patent. Nevertheless conflict of interest between joint patentees in relation to exercising jointly owned patent rights and difficulties in exercising their patent rights due to imperfect legislative basis or different legislative scope between countries in cooperation have caused big barriers in activating joint research or development in national or international level. According to Korean Patent Law, each joint owner can freely exercise the patented invention without the consent of the other joint owners, but cannot transfer his/her share, establish a pledge, or grant exclusive and non-exclusive license to a third party without the consent of the other joint owners. The Patent Law regulates if an adjudication request with respect to jointly owned patent is made by a joint owner, it shall be made by the names of all the joint patent owners. However it doesn’t prescribe whether each joint owner can file an infringement law suit without the consent of the other joint owners. In this thesis, disputing points concerning the exercise of patent rights by joint owners and the limitations thereof are studied in detail through examining related laws and regulations, views of academic field and precedents, comparing with corresponding regulations of major foreign countries such as U. S. A., Japan, China, Germany, France and Great Britain.
It is noteworthy that regulations of U.S.A, China and France permit each joint owner to grant a non-exclusive license to a third party without the consent of the other joint owners. In addition, the law of China, France and Germany provides that profit obtained by granting a license shall be shared between joint owners. The Patent Act of France provides that each joint owner can file a patent infringement law suit asserting a jointly owned patent, independently of the other patent owners while in U.S.A and China, it is provided by the law or precedents that all of the joint owners should be the litigant parties to a patent infringement law suit. Related academic sectors presented diverse opinions and suggested legal alternatives on the disputing points above including profit sharing and litigants of the infringement suit with respect to jointly owned patent rights. This thesis also proposes the amendment directions of the regulations at issue as discussed above, based on the problems shown in the related cases and merits and demerits associated with the suggested legal alternatives. In conclusion, the thesis emphasizes that respective legal amendment should be considered in a balanced perspective after thoroughly addressing and investigating how it would affect the protection of jointly owned patent rights, the utilization of jointly owned inventions, the improvement of technology and the contribution to industry development.