[Patent Talk] KT&G's Suit Against EMTEC Seeking Transfer of Patent Registration

On the 7th of this month, KT&G filed a suit seeking transfer of patent registration against EMTEC, the original design manufacturer (ODM) of its "lil" e-cigarettes. KT&G claims that EMTEC registered KT&G's patents without authorization and must therefore transfer the patents into the name of KT&G, the rightful owner. KT&G is known to have maintained a cooperative relationship with EMTEC since 2017 under an e-cigarette development service agreement, so the suit is considered unusual.

Under the Patent Act, only the inventor and the inventor's lawful successor have the right to obtain a patent (Article 33 of the Patent Act). If a patent application filed by an unentitled person who is neither the inventor nor a lawful successor is rejected, the rightful owner is given the right to file a patent application within 30 days (Article 34 of the Patent Act), and if a decision invalidating the unentitled person's patent becomes final, the rightful owner is given the right to file a patent application within 30 days (Article 35 of the Patent Act).

Despite these remedies, it was debated whether the rightful owner could demand transfer of the registration of a patent held by an unentitled person. In 2014, the Supreme Court ruled that a demand for transfer of registration is not permitted because the Patent Act provides separate remedies for the rightful owner (Supreme Court Decision 2012Da11310, rendered 2014.05.16.). Following that decision, Article 99-2 of the Patent Act was newly introduced in 2016 to strengthen remedies for rightful owners, allowing them to demand transfer of patent registration.

KT&G's suit seeking transfer of patent registration appears to be based on Article 99-2 of the Patent Act. If KT&G's claims are accepted, the inventions registered by EMTEC ...