Scenario: Party A files a scope confirmation trial, seeking a determination on whether Party B’s working of an invention (hereafter the “invention subject to confirmation”) falls within the scope of Party A’s patent. However, if the invention subject to confirmation is identical to a later-registered patent belonging to Party B (filed and registered later than Party A’s patent), Party A’s trial request is considered improper, as this could effectively result in the validity of Party B’s later-registered patent being denied without it being subject to an invalidity trial.

Whether requests for scope confirmation trials are improper in this manner are examined ex officio by the IP Trial & Appeal Board (IPTAB) regardless of the assertions of the involved parties (i.e. Parties A and B in our example).

However, a recent Patent Court decision (Case 2019Heo8932 dated September 25, 2020) has stated that if the IPTAB ex officio dismisses a scope confirmation trial after judging it to be improper for the reasons described above but does not give the involved parties an opportunity to submit an opinion, such IPTAB trial decision itself is in violation of procedure.

Patent Court Case 2019Heo8932

In this case, the original respondent (hereafter “Party B” as per our general example above) confirmed that the invention subject to confirmation and their later-registered patent were not the same, and so they did not intend to argue that their opponent (“Party A”)’s trial request was improper. In other words, there was no dispute between the parties on the point that Party B’s invention subject to confirmation and later-registered patent were different.

Regardless of this agreement, the IPTAB did not allow Parties A and B an opportunity to submit opinions on the identity of Party B’s invention subject to confirmation and later-registered patent. The Patent Court stated that if such an opportunity had been given, Party A could have amended the invention subject to confirmation or argued that Party B’s later-registered patent was different, and the IPTAB’s rendering of an ex officio decision without affording such an opportunity to the involved parties was a procedural violation.

Comment

Under Korean practice, the party who files a scope confirmation trial is permitted to amend the invention subject to confirmation, but the identity of the invention must be maintained before and after such amendments[1]. Therefore,  even if Party A had been afforded an opportunity to amend the invention subject to confirmation, after amendment it would still have been identical to Party B’s later-registered patent and the IPTAB would have rendered the same decision, meaning that not giving such opportunity does not make the trial decision improper.

However, Party A could still have argued the differences between the invention subject to confirmation and Party B’s later-registered patent if they had been able to submit an opinion. Moreover, as neither party contested the point that the inventions were different, if they knew that the IPTAB intended to deny this point, Parties A and B could have negotiated and agreed to a withdrawal of the trial. Therefore, in addition to the Patent Court’s judgement that the IPTAB’s trial decision was a procedural invalidation, I believe it could also be seen as infringing on the disposition rights of the involved parties.

Notes:

[1]A Patent Act revision dated January 3, 2017 permits amendment of the invention subject to confirmation to conform to the invention that the opposing party actually works when the opposing party argues that the invention subject to confirmation is different from the invention that the opposing party actually works. However, this does apply to the case discussed herein.