25 July 2017

NEW PATENT CANCELLATION SYSTEM FOR SOUTH-KOREA

In South-Korea, the validity of a patent can be challenged regardless of an infringement litigation. A granted patent can be revoked only by the Korean Intellectual Property Office (KIPO), and not by the infringement court. Therefore, KIPO is one of the most important venues in the Korean patent litigation system. In a typical patent infringement litigation, an accused infringer counter-attacks the patentee by filing an invalidation action with KIPO.

In the past, patent could be revoked only through an invalidation trial. Starting from March 1, 2017, a patent can be revoked also by the new patent cancellation system.

Cancellation
Regarding cancellation, any person (not limited to an interested party) may file a request. Furthermore, an interested party may intervene to assist the patentee, but not the petitioner (=challenger). Cancellation proceedings must be initiated within 6 months of the granted patent publication. Grounds for cancellation are limited to novelty, inventive step, double patenting, and extended novelty (= conflicting application), for which the challenger should submit detailed grounds and evidences. It is important to notice that grounds for cancellation may not be based on the same prior art the KIPO examiner cited during the examination. Cancellation is an ex parte procedure between the Intellectual Property Trial and Appeal Board (IPTAB) of the KIPO and the Patentee.

If the IPTAB finds reasons to cancel, it will notify the patentee the reasons in advance.

- The patentee can submit a written opinion and/or correct (=amend) the
specification or claims.
- The scope of correction is limited to:

o (i) narrowing the scope of claims,
o (ii) correcting clerical errors, or
o (iii) clarifying ambiguous descriptions,

- This correction should not broaden or change the scope of claims.

If the IPTAB finds no reasons to cancel the patent, the request will be dismissed and the patent remains valid.
If the IPTAB makes a decision to cancel the patent, the patentee can appeal to the Patent Court.
If the IPTAB makes a decision to dismiss the request (= maintain patent), the challenger cannot appeal the decision.
Hence, keeping a family application pending is usually helpful for a patentee to deal with various situations.

Invalidation
Invalidation instead resolves disputes between a patentee and a third party. Only an interested person or a KIPO Examiner may lodge an invalidation trial. An interested party may intervene to assist either the patentee or the challenger. Invalidation trial may be filed anytime from the registration date of a patent, it may even be filed after expiration of a patent term. Invalidation trial can be withdrawn until a decision thereon becomes final and conclusive. However, a written consent by the patentee is required to withdraw invalidation trial if he submits a response to the request. Grounds for invalidation are broader than the cancellation and may be based on:

- Novelty, inventive step, double patenting, extended novelty (= conflicting
application).
- Description requirements (e.g.,lack of enablement, support, or clarity)
- Misappropriated application, violation of the join application provision, etc.
Public working of the patented invention can be a basis for invalidation.

Invalidation is an inter partes procedure between the challenger (= Demandant) and Patentee. In response to the challenger’s request, patentee can file a reply brief and correct (=amend) the specification or claims. Both parties may submit additional brief(s). Further, the IPTAB may hold a technical hearing to discuss facts or technical issues involved in the case.

It usually takes about 10 to 18 months to receive a trial decision, but if a request for accelerated is accepted, a trial decision will be rendered within 4 to 6 months. A losing party (demandant or patentee) may appeal the trial decision to the Patent Court within 30 days of the receipt of the decision.

When choosing which proceeding to use, challengers may consider the following factors

- Necessity of hiding identity
- (Non) availability of strong prior arts
- Possibility of preparing complete brief in time
- For cancellation, additional argument or prior art may not be submitted
after 6 month period
- Nature of procedure – ex parte or inter partes
- Coordination with international litigation
- Application of doctrine of estoppel
- Legal cost
- Timing of initiating procedure
- Type of grounds - Other grounds than prior arts


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