공유특허권의 불실시보상금청구권제도 도입방안

Abstract

Each co-owner of the co-owned patent right can do a self-implementation without the agreement of the other co-owner however if assigning his(or her) co-owned share or granting the non-exclusive licence, the agreement should be received. If the company and the university do the co-research to register the co-owned patent right, the company can do the self-implementation to obtain profits directly, but the university or the research institute cannot do the self-implementation and thus the profit can be obtained by assigning his(or her) co-owned share to the third party or granting the non-exclusive licence. However it is impossible if the company who is the co-owner does not agree and there is no way to return the research and development costs. In case where the university would request the agreement to the company who is the co-owner for assigning the co-owned share or transferring the technology to the third party, there is many cases of rejecting the agreement by the reason why they suffer economic loss such as a decline in sales if the third party would be in competition with their company and participate markets as the larger business in scale than their company. There is no specific problem if they agree in the joint research contract to assign his(or her) co-owned share or grant the non-exclusive licence for the university without agreement of the company, however the company opposes to have such a special contract in the joint research contract and thus the technology transfer has not been made actively. Accordingly as the plan for activating the technology transfer and the implementation in the co-owned patent invention, it is needed to introduce the non-implementation compensation claim system to request a partial division of profits obtained by the implementation of the company under the condition where the university does not grant the implementation or the non-exclusive licence to the company who rejects the agreement. As a way to introduce this system, it is needed to refer to the compensation system for non-conductors stipulated in the French Intellectual Property Law and suggested in German precedents. Based on this, it is needed to introduce the non-implementation compensation claim system in accordance with the circumstances of Korea in Article 99 of the Korean Patent Act, referring to the related regulations on the transfer of shares of shared patent rights, permission of non-exclusive licenses, and establishment of exclusive licenses related to self-implementation.