Date of
Judgment: April 22, 2003
Issuing
Authority:
Supreme Court
Level of
the Issuing Authority: Final Instance
Type of
Procedure: Judicial（Civil）
Subject
Matter: Patent (Inventions)
Main
text of the judgment (decision):
1.
The jokoku
appeal shall be dismissed.
2.
The first
paragraph of the main text of the judgment of the first instance shall be
corrected as follows:
(1)The defendant shall pay the plaintiff
2,289,000 yen plus interest at a 5% annual rate from March 23, 1995 until it is
completely paid.
3. The
jokoku appellant shall owe the cost of the jokoku appeal.
Reasons:
No.1
Summary of the case
1. This is a case where the jokoku appellee, a
former employee of the jokoku appellant, demands the jokoku appellant to pay a
reasonable remuneration for the assigning of the right to obtain a patent with
respect to an employee's invention according to Article 35(3) of the Patent
Law.
2. Following is a summary of facts legally
settled by the original instance.
(1) The jokoku appellant is a company running a
business of production and sales of optical apparatuses. The jokoku appellee
joined the company of the jokoku appellant in May 1969. From 1973 until 1978,
the jokoku appellee belonged to the research and development division of the
jokoku appellant and engaged in research and development of videodisc
apparatuses. In November 1994, the jokoku appellee retired from the company of
the jokoku appellant.
(2) The jokoku appellee made an invention
entitled "pick up apparatus" described in item 3 of the patent list
attached to the judgment of the first instance (hereinafter referred to as the
"invention of the case"). The invention of the case is regarded as
the employee's invention designated by Article 35(1) of the Patent Law because
it falls within the scope of the business of the jokoku appellant and the act
resulting in the invention is part of the jokoku appellee's duties.
(3) With respect to the employee's invention,
the jokoku appellant provided a "handling regulation of inventions and
utility models" (hereinafter referred to as the " jokoku appellant's
regulation"). Following are items provided in the jokoku appellant's
regulation:
The right to obtain a patent with respect to the
employee's invention is assigned to the jokoku appellant;
the jokoku appellee shall pay a form of
remuneration to the employee who made the employee's invention, for example, remuneration
at the time of obtaining income from industrial property right;
in the case that the jokoku appellant receives
income continuously from a third party resulting from industrial property right
with respect to the employee's invention - judged from the two year period from
the start date of receiving said fees - the jokoku appellant shall pay the
employee remuneration during the time of obtaining income from the industrial
property right, up to a maximum of 1,000,000 yen, in one single payment.
(4) In accordance with the jokoku appellant's
regulation, the right to obtain a patent with respect to the invention of the
case was assigned to the jokoku appellant from the jokoku appellee, whereby the
jokoku appellant made an application for, and obtained the patent right. In
addition to the aforementioned patent right, based on multiple patent rights
and utility model rights concerning the pick up apparatus, since October 1990,
the jokoku appellant concluded working license agreements with production companies
of the pick up apparatus and has continuously received license fees.
(5) With regard to the jokoku appellee assigning
the right to obtain a patent with respect to the invention of the case to the
jokoku appellant, in accordance with the jokoku appellant's regulation the
jokoku appellee received 3,000 yen as compensation for application on January
5, 1978, 8,000 yen as compensation for registration on March 14, 1989, and
200,000 yen as remuneration at the time of obtaining income from industrial
property right on October 1, 1992.
3. Based on the above facts, the original
instance decided as follows; acceptance of the jokoku appellee's claim within a
limit of 2,289,000 yen calculated by deducting the remuneration at the time of
obtaining income from industrial property right that the jokoku appellee has
already received from 2,500,000 yen - determined as the reasonable remuneration
for the case.
(1) In cases where the remuneration with respect
to the employee's invention calculated by the service regulations or other
stipulations of an employer is less than the amount provided by Article 35(3)
and (4) of the Patent Law, an employee, etc., is eligible to demand a
reasonable remuneration according to said article, irrespective of the amount
calculated by the employer, etc., according to the above mentioned stipulation.
(2) The income from industrial property right as
a basis for calculation of a reasonable remuneration was not evident when the
jokoku appellee received remuneration at the time of obtaining income from
industrial property right in October 1992, therefore the amount of remuneration
that should have been received by the jokoku appellee was uncertain, and the
jokoku appellee could not be expected to exercise his right of receiving a
reasonable remuneration. Accordingly, extinctive prescription did not start
until said day, therefore, on March 3, 1995, when the jokoku appellant brought
the lawsuit of the case, the extinctive prescription had not expired.
No.2 Concerning the grounds for application of
the jokoku appeal No.1 by the jokoku appeal attorneys OBA Masanari, SUZUKI
Osamu, and OHIRA Shigeru
1. Article 35 of the Patent Law is stipulated,
on the assumption that the right to obtain a patent with respect to an
employee's invention originally belongs to the employee, etc., who has made the
invention of the case (see Article 29(1) of the Patent Law), concerning the
attribution and use of the right to obtain a patent and patent right
(hereinafter referred to as the "right to obtain a patent, etc.")
with respect to the employee's invention, for the purpose of protecting the
interests of the employee, etc.,. and employer, etc., as well as harmonizing
the interests between the two. In other words, Article 35 stipulates that (1)
the employer, etc., has a non-exclusive license on the patent right with
respect to the employee's invention (Article 35 (1) of the Law), (2) with
respect to the invention made by the employee, etc., which is not an employee's
invention thereof, any stipulation providing that the right to obtain a patent,
etc., shall assign to the employer, etc., is null and void (Article 35 (2) of
the Law); and therefore, interpretation of the contrary, i.e. with respect to
the employee's invention, such stipulations are valid, (3) when an employee
assigns the right to obtain a patent, etc., to the employer, etc. the employee
shall have the right to a reasonable remuneration (Article 35(3) of the Law),
(4) the amount of such remuneration shall be decided by reference to the
profits that the employer, etc., will make from the invention and to the amount
of contribution the employer, etc., made to the making of the invention
(Article 35(4) of the Law). According to the stipulation, irrespective of
whether the employee, etc., has an intention of assigning the right to obtain a
patent, etc., with respect to the employee's invention to the employer, etc.,
the employer can make in advance a provision in the service regulations or
other stipulations (hereinafter referred to as the "service regulation, etc."
purporting that the right to obtain a patent shall be assigned to the employer,
etc., and in such stipulations, they can also specify that a remuneration shall
be paid for the succession of the right as well as the amount of the
remuneration and the date of payment. However, before the employee's invention
is made and the content and value of the right to obtain a patent, etc., to be
assigned becomes definite, it is apparent that the amount of the remuneration
cannot be determined in advance. Therefore, even in light of the purpose and
content of said article, it cannot be interpreted as permissible. In short, the
remuneration provided in the service regulation, etc., although it can be
regarded as a part of the reasonable remuneration provided by Article 35(3) and
(4), it cannot be regarded as the whole amount of a reasonable amount that can
be paid immediately. When the amount of the remuneration finally corresponds to
the purpose and content of Article (4), it can be regarded that the amount is
equivalent to the reasonable remuneration provided by Article 35(3) and (4).
Therefore, it is a reasonable interpretation that, although there is a
stipulation concerning the remuneration to be paid for the employee, etc., by
the employer, etc., the employees, etc., who assigned the right to obtain a
patent, etc., with respect to the employee's invention to the employer, etc.,
according to the service regulation, etc., can demand the remuneration for the
deficit in accordance with Article 35(3), when the amount of the remuneration
by the service regulation, etc.,. is less than that decided by Article 35(4).
2. In this case, as mentioned in No.1, 2., in
the jokoku appellant's regulation, it was stipulated that the right to obtain a
patent, etc., with respect to the employee's invention made by an employee of
the jokoku appellant shall be assigned to the jokoku appellant, and in the case
where the jokoku appellant receives income from the industrial property right,
the jokoku appellee would receive remuneration at the time of obtaining income
from the industrial property right, however, it was also stipulated that the
amount would be no more than 1,000,000 yen. The Jokoku appellee received the
remuneration for the invention of the case according to the Jokoku appellant's
regulation. From all of the above, when the reasonable amount decided by
Article 35(3) and (4) exceeds the amount of the remuneration provided by the
jokoku appellant's regulation, the jokoku appellant shall be eligible to claim
this point and demand the deficit.
3. The decision of the above No.1, 3(1) of the
original instance can be accepted because it is a claim under the
aforementioned reasoning. In the end, this line of argument cannot be accepted
because it does nothing more than reproach the original decision from its own
viewpoint.
No.3. Concerning the grounds of No3. for the
application of jokoku appeal
1. In a case that service regulation stipulates
that the right to obtain a patent, etc., which is an employee's invention shall
assign to the employer, etc., the employee, etc., shall have the right to a
reasonable remuneration when they enable the right to obtain a patent, etc.,
with respect to an employee's invention to assign to the employer, etc., in
accordance with the service regulation, etc.(Article 35(3)). Article 35(4)
provides for the amount of the remuneration, therefore, when the amount
calculated by the service regulation, etc. is less than the amount decided by
Article 35(4), it shall be corrected to said amount, however, there is no
stipulation for the date of payment. Therefore, when the service regulation,
etc.,. stipulates the date of payment, until the date arrives, due to the legal
obstacle to exercising of the right to a reasonable remuneration, payment
cannot be demanded. Therefore, when the service regulation, etc., stipulates
the date of payment to be paid to the employee, etc., by the employer, etc., it
is reasonable to understand that extinctive prescription of the right to a
reasonable remuneration starts from that date of payment.
2. In this case, the jokoku appellant's
regulation stipulated that when the jokoku appellant receives income
continuously from a third party resulting from industrial property right-
judged from the two year period from the starting date of receipt of such
income - the jokoku appellant shall pay the employee a remuneration just one time,
whereby the jokoku appellant actually received license fees for the invention
of the case, as described by the above No.1, 2. In which case, extinction
prescription of the right to a reasonable remuneration started from the date
when the remuneration to be paid in accordance with the jokoku appellant's
regulation, which makes it apparent that the extinction prescription of the
jokoku appellant's right was not completed on March 3, 1995 when the jokoku
appellant brought the lawsuit of the case to trial.
3. In conclusion the decision of the above No.1,
3(2) in the original instance concerning the argument is justifiable, and there
is no illegality in the original judgment that was claimed by the argument. In
the end, the line of argument cannot be accepted.
No.4 Additionally, it is apparent that there is
an obvious error in the first paragraph of the main sentence of the original
judgment in the line of the grounds, it shall be corrected in the form of the
main text in accordance with Article 257(1) of the Code of Civil Procedure.
In the end, the judgment was rendered in the
form of the main text by the unanimous consent of the Justices.
(This translation is provisional and
subject to revision.)