종업원에 의한 직무발명의 사용·공개와 영업비밀 침해

Abstract

This article reviews the trade secret issues for the employee’s invention where the employee discloses the contents against the confidentiality engagement. Korean Supreme Court and the majority of academic opinions takes the logic that it does not constitute any infringement for the employee is the owner of trade secret as long as the right to be patented is yet belonged to her. However, said perspective is misleading because the attribution of right to be patented shall not necessarily accord with the possession of interest to keep the secrecy of technical information. As an alternative, Supreme Court has been regulating employee who double transferred the invention to a 3rd. party by the clause of Occupational Breach of Trust (Criminal Act §356), However, this approach bears a numbers of theoretical problems and disables to utilize the institutional strategies in Unfair Completion Act customized against trade secret infringement. Moreover, there in no actual merit to rule it as the Occupational Breach of Trust because the statutory punishment of trade secret infringement in Unfair Competition Act has been raised to exceed that of Criminal Act. This article also performs critical review against additional solutions that Supreme Court offers to handle employee’s trade secret disclosure. Conclusively, the employer’s effort to prevent the disclosure of employee’s invention by means of confidentiality engagement with employee qualifies as a ‘management of trade secret’. Hence, if the employee discloses the secret in the manner of breaching contract shall constitute an infringement of employer’s trade secret falling onto Art. 2-3-Ra. of Unfair Competition Act. Meanwhile, it is still necessary to balance the interest between employer and employee by limiting the recognition of trade secret infringement to some extend. The logic shall be instituted as to immunize employee’s obligation of secrecy as from the employer’s renunciation of secession of right for the employee’s invention, other than aforementioned logic of Supreme Court to equate the attribution of right to be patented and to demand confidentiality of the invention. After the retirement, to guarantee property right and freedom of job opportunity of the employee, the extension of confidentiality engagement shall be limited to a reasonable degree. The case law and its rationale to constraint the effectiveness of ‘job-transfer limitation contract’ between employer and employee shall be bench-marked.