DISPUTE RESOLUTION THROUGH TRIAL
1. The Significance of the Trial
Appealing a general administrative disposition usually only requires bringing a cancellation hearing to court, whereas appealing decisions of the Korean Intellectual Property Office (KIPO) requires appellants to request a trial at the Intellectual Property Tribunal (IPT) before initiating a cancellation hearing in court.
This is due to the �administrative trial prerequisite principle’, in which decisions of the KIPO and its examiners are respected as expert decisions. It is doubtful, however, that forcing an invalidation trial or a trial to confirm the scope of a patent right separately from a patent infringement suit is really beneficial to a patentee and his opponent because these two trials are, in essence, adversarial. Although in the past, the trials were allowed in the Supreme Court only after a decision by the Board of Appeals, the Supreme Court requested constitutional review to challenge this procedure on the grounds that it violated citizens’ right to trial according to law in the presence of judges. While the Constitutional Court was reviewing the case, the Patent Act was amended to create the Patent Court of Korea on March 1, 1998 and the Patent Court now exercises exclusive jurisdiction over all appeals from the decisions of the IPT.2. Invalidation Trial
An invalidation trial is a means, upon the request of an interested party or examiner, of retroactively invalidating a patent right if the right violates certain invalidation criteria as set forth in relevant law. The Patent Act, unlike Anglo-American law, requires that all patent invalidation claims be resolved in an invalidation trial. When the validity of a patent is in question as part of an infringement suit, the courts may suspend the proceedings in such a suit until an invalidation trial is conducted (Patent Act, Art.
164).Participation in a patent invalidation trial is limited to interested parties or the examiner. The scope of interested parties often becomes a main issue in such cases. Often, the assignee of the patent right and the licensee of the patent are both considered interested persons as assigning and licensing a patent usually involves compensation.[504] Although courts have sometimes ruled that the licensee of a patent does not constitute an interested party, this excessively limits the scope of interested parties such that invalid patent rights are left unchallenged. There have also been situations in which an interested party loses its status during trial and the parties (the interested party and the regisÂtered patentee) agreed to discontinue the proceedings or assign the rights to the patent.7 This interpretation, however, also excessively limits the scope of interested parties by preventing invalidation of so-called â€?weak patents’ and, as a result, only works to discourage technical innovation.
The patentee may request a correction of the patent during the course of an invalidation trial (Patent Act, Art. 133bis). The IPT may conduct an ex officio trial examination without the request of the parties and also discover necessary evidence without request (Patent Act, Art. 157-159). Grounds that have not been pleaded by a party or intervener in a trial may be examined; however, in such cases, the parties and interveners must be given an opportunity, within a designated period, to state their opinions regarding the grounds. The rationale behind allowing such statements is both to prevent unforeseen harm to the parties and also to preserve an appropriate and fair trial.[505] [506] On this view, the invalidation trial is, in essence, not a judicial proceeding - where the rights and obligations of parties are adjudged strictly based on law - because it allows patentees to correct their patents and enables the IPT to conduct ex officio trial examinations; it is, rather, a quasi-judicial proceeding where efficient dispute resolution is provided through similar means. 3. Trial to Confirm the Scope of a Patent Right A â€?trial to confirm the scope of a patent right’ is a quasi-judicial trial in which the IPT determines whether the allegedly infringing product falls within the scope of a patent right at issue in a patent right dispute. The Patent Act states that either a patentee or an interested party may request a trial to confirm the scope of a patent right (Patent Act, Art. 135). The trial to confirm the scope of a patent right, similar to any other confirmation trial (Feststellungsklage), consists of both an active confirmation trial and a passive confirmation trial; the former occurs where the patentee actively sets the scope of their patent right and the latter occurs where the opposing interested party requests confirÂmation on their working method’s non-infringement. The Patent Act also allows for multiple confirmation trials as the trials are instituted on a patent claim basis. There are two complex issues that arise in the context of trials to confirm the scope of a patent right: first, whether it is appropriate under this trial process to differentiate the scopes of two separately registered patent rights, and secondly, how to determine the scope of a patent right in relation to an invalidation trial where all or part of a registered patent is publicly known or worked. Regarding the first issue, it is questionable whether both an active trial to confirm the scope of a patent right (where the earlier registrant argues that the later registered patent infringes upon its patent) and a passive trial (where the later registrant argues that their patent does not infringe upon the earlier registered patent) are accepted. Some courts have held that the latter (passive trial) falls within the procedural purpose of the trial to confirm the scope of a patent right[507] whereas the former (active trial) does not because arguments set forth in it are essentially the same as those dealt with in an invalÂidation trial.[508] The second issue is whether it is legal to invalidate the scope of a patent right not through an invalidation trial but via a trial to confirm the scope of a patent right, when all or an integral part of an invention is publicly known or worked. 4. Appealing a Decision Appealing an IPT invalidation decision or trial to confirm the scope of a patent right occurs through the Patent Court of Korea (Patent Act, Art. 186). Although the Patent Court is similar in many ways to the United States Court of Appeals for the Federal Circuit (CAFC), the two differ immensely in that the Patent Court does not have jurisdiction in regular civil cases, such as claims for damages in patent infringement suits, whereas the CAFC does act as the appellate court in such cases. The Constitutional Court rendered a decision that the system was â€?uncon- formable to constitution’ in that although the Board of Appeals system violated the constitutional right to trial, the right to equality, and provisions relating to the Separation of Powers doctrine,[514] the system was deemed â€?unconformable to constitution’ so as to limit the repercussions and confusion of rendering the half-century-old Board of Appeals system wholly unconstitutional. Other reasons for the decision included the 27 July 1994 amendment to the Court Organization Act and the 5 January 1995 amendment to the Patent Act, which allowed for the Patent Court to replace the Board of Appeals system beginning on 1 March 1998.[515] The 27 July 1994 amendment to the Court Organization Act stipulated that a special High Court level Patent Court was to be established on 1 March 1998. The KIPO, on the other hand, integrated the existing examination board and Board of Appeals into a new IPT, and the appeals to this tribunal were to be lodged to the Patent Court. In this context, the Patent Court essentially replaces the Board of Appeals as the judicial body that determines questions of fact in order to protect the right to trial. In determining questions of fact in patent trials that require highly technical and professional knowledge, the Patent Court, however, is to have a Technical Examiner participate in the trial who states opinions throughout the adjudication process (Court Organization Act Art. 54bis). The Technical Examiner system is similar to the Technical Judge system of Germany’s Federal Patent Court in that a technical profesÂsional participates during trial but differs in that Korean Technical Examiners can only submit advisory opinions and cannot render final decisions. This is similar to Japan’s Appeal Examiner system, and in this sense, the Technical Examiner system in Korea is a creative hybrid of Germany’s Technical Judge and Japan’s Appeal Examiner system. III.