PARK, KIM & PARTNERPATENT & TRADEMARK ATTORNEYS

Overview

When a person has received a certain kind of examiner's decision on an application for patent, utility model, trademark, and design, that person may demand an appeal. An intellectual property (IP) rights holder (e.g., patentee) or an interested person having a conflict with those IP rights may demand a trial as well. Here, the former situation is called an Ex Parte Case, and the latter is called an Inter Parte Case.
The trial system related to Intellectual Property rights in Korea is a three instance procedure which consists of the Korean Intellectual Property Tribunal (KIPT), the Patent Court and the Supreme Court. The IPT is the first instance for settlement of IP-related disputes and is independently operated within the KIPO.

Types of appeals and Trials

1. ( 1 ) Ex Parte Cases
   1. - Trial against a Decision of Rejection (Final Rejection)
      - Trial against a Decision of Revocation
      - Trial for Correction
      
      A Trial against a Decision of Rejection (Final Rejection) may only be demanded by the applicant, and a Trial against a Decision of Revocation may only be demanded by the Patentee, and a Trial for Correction may only be demanded by the Patentee.
2. ( 2 ) Inter Parte Cases
   1. - Trial for Invalidation
      - "Offensive" Claim Scope Confirmation Trial
      - "Defensive" Claim Scope Confirmation Trial
      - Trial to Establish a Non-Exclusive License
      - Trial for Correction
      - Trial for Invalidation of Correction
      
      A Trial for Invalidation, A Trial for Invalidation of the Registration of an Extension of Patent Right Duration, and a Trial for the Invalidation of a Patent Correction may only be demanded by an interested party or an examiner. However, any person may request an invalidation trial on the grounds that the patent falls under any of the subparagraphs of Article 133 of Korean patent Act (except sub paragraph(ii), registration provided the request is made after the and not more than establishment of the patent right date of the registration of the patent right.)
      
      A Trial for Confirmation of the Scope of the Patent Right may be demanded by the Patentee or by an interested party.
      
      When a later patentee is not able to work his/her patented invention without using the patent right of a prior patentee, or when the prior patentee refuses to grant permission to use the patent right without justifiable reasons, the later patentee may request a trial for the grant of a non-exclusive license.

Suit Against Trial Ruling & Trial Examiner's Decision

The Patent Court was established under Article3(1) of the Court Organization
Act of Korea in order to reduce the former two-step administrative trial procedure to a single step and to secure the independence and specialization of the Intellectual Property related trials. That is, appeals brought against rulings of the trial board(Intellectual Property Tribunal) will come under the exclusive jurisdiction of the Patent Court, and appeals against decisions of the Patent Court will lie before the Korean Supreme Court, so that a factual and legal relationship can be sufficiently examined to the satisfaction of those concerned.

Considering Korea's three-level court system including District Courts that hear cases in the first instance, High Courts that hear appeals from the District Courts, and the Supreme Court for deciding appeals from the High Courts, the Patent Court has a status equivalent to the High Courts.

Suits of dissatisfaction against any rulings of the KIPT and suits of dissatisfaction against a KIPT's Trial Examiner's Decision remain under the exclusive jurisdiction of the Patent Court.

Suits of dissatisfaction against the rulings, etc. of the KIPT may be brought by the parties concerned, interveners, or parties whose intervention was rejected despite their petition for intervention in a parent trial or its re-trial. In a suit in the Patent Court, the Commissioner of the KIPO is named as a defendant in principle. Thus, an applicant who demands a trial against an Examiner's Decision of Rejection (Final Rejection) and then receives a ruling rejecting his/her demand from the KIPT and is dissatisfied with the KIPT's ruling, must institute a suit against the Commissioner as a defendant before the Patent Court. However, a suit against the ruling in an invalidation trial, a claim scope confirmation trial or a trial to establish a non-exclusive license requires that its counterpart (i.e., winner of the parent trial) be named as the defendant.

Where a patent suit is held to be well-grounded, the Patent Court will reverse the ruling on the trial or the decision of rejection. Where the ruling on the trial or the decision of rejection is reversed by the suit in the Patent Court, the trial examiner of the KIPT will reexamine the case on remand, and the reasons constituting the basis for the reversal are binding upon the trial examiner with respect to the case.

Appeal to the Supreme Court

A party dissatisfied with a judgment of the Patent Court with regard to a suit against the KIPT's ruling or trial examiner's decision may appeal finally to the Supreme Court within two (2) weeks from receipt of the original copy of judgment, on the grounds that the judgment appealed from is contrary to the law and regulations. A demand for final appeal is to be submitted to the Patent Court instead of to the Supreme Court.