In Korea, the Intellectual Property Trial & Appeal Board (IPTAB), the administrative tribunal of the Korean Intellectual Property Office (KIPO), handles appeals of final rejections from KIPO, as well as invalidation trials, cancellation (opposition) actions, etc. for patent, utility model, trademark and design rights. This article focuses on patents.
The rate of patent invalidity in Korea is 40-50%, a relatively high figure compared to a rate of around 20% in the US and Japan. For this reason there has been somewhat of a lack of trust in patents, with difficulties in patent-based investment, technology finance, IP commercialization etc. being a knock-on effect.
Recognizing these issues, the IPTAB has recently re-organized their trial boards, increasing the number from 11 to 36. The IPTAB president commented that this change is intended to reduce the rate of patent invalidity and subsequently promote a greater trust in patents.
One particular limitation of the former 11-board system was a limited capacity to conduct oral hearings. In 2019, of a total 5,282 inter-partes trials, oral hearings were held for only 497 cases — 9% of the total. The increase to a 36-board system will mean more time available for review, allowing for the three trial judges to reach a reliable consensus, and for in-depth oral hearings to be held for inter-partes trials.
Thus, in patent invalidation trials, judges will be better placed to construct logical reasons to exhaustively refute grounds or evidence presented to support a claim of invalidity, leading to an improvement (reduction) in the invalidity rate.
KIPO has recently beefed up provisions to protect patent holders, such as allowing for up to treble damages in cases of intentional patent infringement, and for method of manufacture patents it has been made obligatory for alleged infringers to disclose their actual method of manufacture if a patent holder alleges a specific method is being used. However, if the rate of patent invalidity remains high, the practical effectiveness of such provisions will be limited, and so these efforts by the IPTAB to lower the patent invalidity rate are expected to be beneficial to patent holders.
Written by Young-min KIM