Matters to Note When Deciding upon Whether to Request a Patent Correction Trial in Korea
Hong-Joo Ahn, C&S Patent and Law Office (Korea)
According to the precedent Supreme Court decision, in invalidation cases, claim scope confirmation cases, and patent infringement cases, when a decision of a correction trial is confirmed during an appeal procedure after the conclusion of a fact-finding pleading, it is regarded as a reason for retrial under Article 451(1) 8 of the Civil Procedure Act by retroactive effect, except for special cases.
However, the Supreme Court changed the previous decision, and ruled in 2016Hu2522 Decision on January 22, 2020 and 2019Hu10456 Decision on June 16, 2022 that it would not be grounds for retrial under Article 451(1) 8 of the Civil Procedure Act, even if the decision of a correction trial was confirmed after the fact-finding pleadings were concluded. However, since the patent applications for which the correction trial was requested in the above Decisions had been filed before the provision of Article 136(2) of the Korean Patent Act was introduced in February, 2016, there are criticisms about the Supreme Court ruling because it conflicts with old Article 136 (1) of the Patent Act, which limits the timing of the request for a correction trial to only when the invalidation trial continues before the Korean Intellectual Property Trial and Appeal Board.
Despite many criticisms, according to the recent 2019Hu10456 decision by the Supreme Court on June 16, 2022, considering that the Supreme Court has continued to rule that a decision of a correction trial made after the conclusion of the fact-finding pleading is not a ground for retrial, there may be matters for patent holders to be aware of when deciding whether to request a correction trial in a patent litigation, we would like to introduce a recent Supreme Court decision related to the above.
- Decision by Supreme Court
When a patented invention was filed before the provisions of Article 136(2) of the Korean Patent Act were introduced in 2016, a correction trial for the patent was requested while a case regarding the validity of the patent was pending before the Patent Court, and a decision of the correction trial was issued while an appeal is in process before the Supreme Court, the previous Supreme Court decisions held that there were grounds for retrial under Article 136 of the old Patent Act, and it was ordered that the retrial be proceeded with in the Patent Court.
In the 2016Hu2522 case, the appellants requested a correction trial after the pleadings concluded in the Patent Court based on the prior Patent Act and the prior Supreme Court decision, and after receiving a decision recognizing the correction, they asserted in the appeal that the decision of the Patent Court was grounds for retrial.
However, in the 2016Hu2522 Decision issued on January 22, 2020, the Supreme Court changed the previous Supreme Court decision, and held that the correction decision after the conclusion of the fact-finding trial was not grounds for retrial by stating that (1) even if the correction decision was finalized, it could not be seen that the administrative disposition underlying the decision was changed, (2) it is difficult to conclude that the content of the patented invention was definitively changed, even if the correction decision was confirmed, (3) it is difficult to interpret the provisions of Article 136(10) of the Patent Act regarding retroactive effect that all public and judicial legal relationships occurring in accordance with the specifications before correction are retroactively changed, (4) a dispute on the decision of the fact-finding pleading on the grounds that the reason of the claim has been changed according to the correction decision after the conclusion of the fact-finding pleading significantly delays not only legal proceedings but also the dispute resolution.
In accordance with this new legal principle, the Supreme Court consistently determined that, as for similar cases, even if a correction decision is finalized after the conclusion of pleadings in the lower court, it cannot be asserted as a ground for appeal, and the appeal court shall decide on invalidity of the patent based on the specification before the correction decision is finalized.
In light of the fact that Korean courts set a relatively low amount of damages in the patent infringement litigation, the fact that the invalidation rate of patent rights is high in invalidation litigations, and the fact that the courts try to proceed with the trial quickly rather than giving the patentee an opportunity to respond during pleadings, it seems necessary for the patentee to request a correction trial after carefully examining the relationship between corrections and requirements for correction in various aspects.
In addition, Korean courts sometimes often exhibit a prejudice that a patentee is trying to delay the litigation when a patentee files a correction trial while an action in progress before the Patent Court, and tends to interpret the corrected wordings in the patent claim in a difficult manner. From this point of view, even if the patentee won in the invalidation trial, there is a great need to request a correction trial when proceeding before the Patent Court.
Considering the circumstances of the Korean courts, the agent should provide the information to the patentee by carefully and promptly examining the need for a request for a correction trial for a patented invention for which an invalidation trial is in progress, and the patentee should decide whether to file a request for a correction trial after at least the first pleading in the Patent Court case considering the particular circumstances of the Korean courts.
 Article 136(1) of the current Patent Act ② Notwithstanding the provision in section ①, a correction trial cannot be requested during the period falling under any of the followings: <Newly established on February 29, 2016>
- The period from the time the application for cancellation of a patent is pending before the Korean Intellectual Property Trial and Appeal Board until the decision is finalized. However, if a litigation action against a decision for an invalidation trial or a correction invalidation trial is pending before the Patent Court, the correction trial shall be requested until the date when the Patent Court concludes the pleading (in the case of a decision made without holding a plea, it refers to the pronouncement of the decision).
 Article 136(1) of the old Patent Act ① A patentee may request a correction trial for correcting the specification or drawings of a patented invention in any of the following cases: However, this is not applied when a trial for invalidation of patent or a trial for invalidation of correction is pending before the Intellectual Property Trial and Appeal Board.