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TRADEMARK AND PATENT RIGHTS NOT ENFORCEABLE AFTER UNREGISTERED ASSIGNMENT
Article 59 of the Patent Act provides that if the holder of an invention patent assigns or entrusts the patent rights, licenses them to another for practice, or makes them the subject of a pledge, such arrangements may not be asserted against a third party unless registered with the Patent Au-thority. The Trademark Act contains similar provisions. However, what is the precise meaning of the wording "may not be asserted against a third party unless registered"? As the wording of the legislation is unclear and abstract, no definitive answer had emerged in legal prac-tice so far.
In a 2007 civil judgment in a case involving a claim for damages for patent infringement, the Supreme Court held that the provision under Article 59 of the Patent Act that an unregistered assignment cannot be asserted against a third party, means that if a third party infringes against the patent, and the patent rights have been as-signed but the assignment has not been registered, then the assignee may not assert its rights against the infringer. However, registration is not a necessary condition for an assignment to be ef-fective, and therefore the assignment of the pat-ent between the parties to the assignment is ef-fective notwithstanding any failure to register the assignment, and is binding on the parties. Fur-thermore, it is also binding on any successor to the patent rights; in other words, a successor to the patent rights may not use the fact that the assignment was not registered as a basis for as-serting that the assignment of the patent rights to the assignee is ineffective.