특허 통상실시권의 대항력에 대한 검토 - 미등록 실시권을 중심으로 -

Abstract

This article focuses on the legal issue of third party effect for unregistered patent license. Being affected by Japanese adoption of 'third party effectiveness for non-registered license' system in patent act, a number of proposals for similar legislation are being made in Korea recently. However, the empirical research shows that large portion of Korean enterprises prefer assignment of patent right to license as means of obtaining necessary technologies for their business. In addition, the 'self utilizing rate' of patented invention turned out to be higher than 'transfer rate' in Korea. Taking that to render unlimited third party effect for licensee may undermine stability of subsequent patent right transferee's legal position and enhance transaction cost, it is desirable to design a system that can balance the interests of both parties and reflect market reality. In the mean time, such may be prudential strategy to harmonize the goal between 'widespread of technology' and 'protection of credit to mobilize transaction'. This article examines current system in view of 'necessity', 'possibility' and 'side-effect' of renovation. As consequence, this author proposes to protect non-registered licensee against subsequent transferee only when he/she transacted patent under awareness or unawareness from negligence about prior license. The substance of 'third party effect' here shall be interpreted as 'succession' of contract party's position by transferee. However, the scope of succession needs to be limited to reasonable extent not to harm transferee's credit excessively. Current Korean intellectual property laws show confusing manners describing third party effect in respective provisions. Instituting new article to provide non-registered license's third party effect, articulation to eliminate this confusion is required to be a model for other IP laws. This article also proposes such wordings.