[Patent Talk] Does an Employee Invention Always Belong to the Company?

The Korea Gas Safety Corporation recently filed a lawsuit against a former employee. The corporation claims that the former employee filed, in his own name, a patent application for an employee invention he completed while employed and obtained a patent, and that by failing to report the invention to the company he deprived it of the patent. The former employee, for his part, claims that the patent was discussed while he was employed but that the company chose not to take it.

Issues concerning employee inventions include disputes over the amount of compensation, as in Samsung's Cheonjiin (Korean text input) case and Professor Shuji Nakamura's blue LED case. In practice, however, the question that arises more often is the one seen in the Korea Gas Safety Corporation case: whether the rights to an employee invention belong to the employee or to the company.

Article 2 of the Invention Promotion Act defines an employee invention as "an invention made by an employee, etc. in connection with his or her duties, which by its nature falls within the scope of the employer's business, and where the act of making the invention falls within the employee's current or past duties." Accordingly, even if an employee makes an invention, if it is not related to his or her duties, it is the employee's personal or free invention, and the rights belong to the employee. For example, if a researcher in an automotive parts development department invents a new computer mouse, the invention is the employee's free invention.

On the other hand, if the invention relates to the employee's duties, it is an employee invention, and the employee must notify the company in writing of its completion without delay (Article 12 of the Invention Promotion Act). Ownership of the employee invention then depends on whether the company's work rules or similar regulations contain an advance succession provision under which employee inventions are assigned to the company in advance.

If there is an advance succession provision, the company may decide within four months whether to succeed to the rights. That is, if the company gives notice of its intention to succeed within four months, the rights belong to the company; if it gives notice that it will not succeed, or gives no notice either way within four months, the rights belong to the employee. One point to note is ...

LNB IP Law Firm