실질적 권리 원칙과 일본의 ‘독점적 통상실시권’ 도그마

Abstract

In this article, I discuss the legality of assignment and license agreements with focus on an issue that an exclusive license can stand at a bar in a suit and the tax treatment. An exclusive license of a patent right is a mere license. Under the law of Korea, a licensee may use a patent under a permit to use. It is also true under an exclusive license. Neverless, the Korea court and majority of scholars agree that an exclusive licensee may bring a suit on his own name to a patent inf ringer. It is the reason that the inf ringer inf ringes the exclusiveness of an exclusive licensee. This reason is also alleged as to the trademark right license. However, this interpretation is orginated from the interpreatation in Japan that misunderstands the license is given to one person. The license which is given to a person is just a license which do not have any exclusive right to others. A license is a basic types of a license that aggregates an non-assertion agreement which means not to sue against a licensee and a representation and warranty which represents and warrants that the licensor has a right to license. In the U.S., the Substantial Right Doctrine, which requires transferring a ownership applies to a licensee, a successor provided in 35 U.S.C. 101 (d), who wants to sue. Namely the American court decides on whether the rights of patent owner are transferred to license. However, in Korea, a license is only a permit to use a patent invention. Then it is different from a license under the U.S. law. At the point of those differences, a reason that Korea Patent Act does not expressly provide a right to bring a suit to a mere licensee is a basic license that only permits to use without any violation of law.