X20. Job invention and patent

1. Types of inventions and job inventions

1) Types of inventions

 *If a new use of a substance is discovered, is it protected under patent law?

> Original discoveries are not protected under patent law. However, use inventions, that is, inventions in which creative elements exist in the process of discovering new functions from known substances and using them, are protected as use inventions under the Patent Act.

(1) Types of inventions under the Patent Act

-       Invention of a thing: an invention embodied in a thing or substance itself

-       Method invention: invention in which a plurality of actions or phenomena are specified in time series

(2) academic/practical invention types

Basic invention/improved invention, independent invention/dependent invention, combined invention - combination invention (synergistic effect, inventive step)/ Joint invention (synergistic effect, no inventive step, no patentability), selective invention, independent/joint invention, major/small invention, use invention, electronic commerce related invention, microorganism invention, plant invention, animal related invention

 

2) Job invention

*Does the employee who made the job invention have the right to receive fair compensation from the employer?

Article 15 of the Invention Promotion Act guarantees the right to receive fair compensation for employees who have made a job invention. For fair compensation, the job invention must be succeeded to the user or an exclusive license must be established.

(1) Concept of job invention: When the act of invention belongs to the present or past job of the employee, it is called a job invention, and in Korea, it follows the inventor's rule.

(2) Legal Relations of Job Inventions

-       If there is no reservation succession rule, the employee has the rights for the job invention, and the employer has a free non-exclusive license (there is no free non-exclusive license in the case of large companies)

-       If there is a reservation succession rule, the employee notifies the user of the completion of the invention without delay, and within 4 months from the notification, the user must decide whether to succeed or not and notify the employee. In the case of succession, the patent qualification is transferred from the employee to the employer. If the statutory period has expired, the invention becomes a free invention.

-       If the succession notice is given, the employee has the right to receive a fair compensation (50% or more compensation for public technology)

 

2. Patent application and specification

1) Patent application

Documents that must be submitted when filing a patent application include a patent application, specification, drawings, and abstract. Drawings are to be taken only where necessary, and the specification includes both the description of the invention and the claims.

* Deferment of submission of claims and foreign language patent applications: If the claims are not stated or a Korean translation is not submitted when filing a patent application, the Korean Intellectual Property Office gives a period of one year and two months from the filing date of the patent application, and claims or translation must be submitted within the period. However, if a third party files a request for examination of the patent within this time period of one year and two months, select the earlier of three months from the date of application or one year and two months from the filing date, and request the submission of claims or translations during that period.

 

2) Method examination

If a minor files a patent application, the Commissioner of the Korean Intellectual Property Office sets a period and orders the amendment. If the amendment (parent or agent) is not made within the specified period, the patent becomes invalid.

(1) Rejection of Patent Documents

When the Commissioner of the Korean Intellectual Property Office intends to return application documents, etc. pursuant to Article 11 of the Patent Act, the applicant must be given an opportunity to explain by sending a document stating the purpose of rejection, reasons for rejection, and the period of explanation. If the clarification is not submitted within the clarification period, the application documents will be returned as soon as the clarification period ends.

(2) Invalidation of procedure

Violation of capacity, violation of scope of agent, violation of method, violation of payment of fee, etc. are grounds for invalidation of procedure, and in this case, the Commissioner of the Korean Intellectual Property Office must set a period and order correction. If no amendment is made during the amendment period, the application will be invalidated.

*If the specification is not attached, the procedure will not be invalid, but will be subject to non-acceptance.