The trial system for IPR-related disputes is a three instance procedure which consists of the Intellectual Property Trial and Appeal Board (IPTAB), the Patent Court and the Supreme Court. The aim of these institutions is to promote and strengthen the protection of IPRs while guaranteeing fair and prompt settlements of IPR-related disputes. More detailed explanations on the IPTAB and the trial system/procedures can be found below:
Overview of the IPTAB
The IPTAB was established following the merger of the former Trial Board and Appellate Trial Board. In concurrence with the establishment of the Patent Court, the IPTAB commenced its operations on March 1, 1998. The IPTAB is a quasi-judicial body of Korean Intellectual Property Office (KIPO), which serves as the court of first instance for intellectual property-related dispute resolution, and is independently operated within KIPO.
Since its inauguration, the IPTAB has increased the number of administrative patent judges, strengthened oral hearings, and focused on enhancing administrative patent judges' expertise, fairness, and efficiency of trials and appeals.
Organization of the IPTAB
The IPTAB consists of 36 Boards, a trial policy division and a litigation division. Each Board consists of 1 presiding administrative judge and 2 administrative judges, who are in charge of conducting a trial/appeal case. Meanwhile, the trial policy division is responsible for receiving documents, conducting a formality examination, trial quality evaluation, etc., and the litigation division is responsible for litigation proceedings for cases in which the Commissioner of the KIPO is the defendant.
As mentioned above, the 36 trial boards consist of 3 administrative judges each, including the presiding administrative judge. Each board makes decisions by a majority vote among the panel of three administrative judges. For matters of grave concern which is considered legally and technically significant, a panel of five administrative judges, including the President of the IPTAB, will hear a case and make a decision.
Patent Trial and Appeal System
Significance of a Patent Trial and Appeal System
A 'patent trial and appeal' refers to a procedure in which the IPTAB makes an administrative judgment for the settlement of IP-related disputes or dissatisfaction with the rejection of a patent application, etc. In practice, the IPTAB makes first-instance decisions in the three-instance patent litigation system. Only after receiving a decision from the IPTAB can an applicant/agent appeal to the higher courts, that are, the Patent Court and the Supreme Court.
Structure of the Patent-related Disputes Trial System
Types of Trials and Appeals
1. Ex Parte Cases
Appeal against examiners' decision to reject patent application, etc. (Patent Act Article 132-17, Utility Model Act 33)
If a person has an objection to an examiner's decision to reject a patent application or to a decision to reject an application to register the extended term of a patent, he/she may file an appeal within 30 days from the date when he/she is served with a certified copy of the examiner's decision. An exception may be applied in cases where a person resides in an area that is remote or difficult to access. In such case, the Commissioner of KIPO may extend the period to 2 months
Requests for Re-Examinations (Patent Act Article 67-2, Utility Model Act 15)
With respect to a patent application filed on or after July 1, 2009, an applicant may make a request for re-examination or trial, selectively, following a decision of rejection.
A patent applicant may file a request to re-examine his/her patent application after amending the specification or drawings of the patent application within 30 days after receipt of a certified copy of the decision to reject the patent application; however, an applicant is not allowed to make a request for a re-examination once a petition for trial has been filed.
Appeal for Correction (Patent Act Article 136, Utility Model Act 33)
A patent holder may request for a trial to correct specifications or drawings in any of the following cases:
- to narrow a claim;
- to correct a clerical error; or
- to clarify an ambiguous description.
However, this shall not apply when a patent opposition is pending with the IPTAB.
Trial for correction is intended to protect a patent invention by providing an opportunity for a patentee to make corrections on the condition that there are not any unexpected losses or damages incurred upon any third parties.
When a trial decision to correct specifications or drawings of a patented invention becomes final and conclusive, it shall be deemed that filing and laying open the relevant patent application, a decision or trial ruling to grant a patent, and the registration of the grant of the patent have been made according to the corrected specification or drawings.
2. Inter Partes Cases
Trial for Invalidation (Patent Act Article 133, Utility Model Act 31)
Due to a mistake of an examiner, some patents which should not have been granted may exist. In such cases, an interested party or an examiner may request for a trial to invalidate the defective patent. For a patent containing two or more claims, a request for trial for invalidation may be made for each claim.
Grounds for invalidation are generally the same as the grounds for rejection of a patent application.
A trial for invalidation may be requested even after the expiration of the patent right. Where a trial decision to invalidate a patent has become final and conclusive, the patent right shall be deemed never to have existed; however, where a patent is invalidated by any reason that arose after the granting of a patent, the patent right is deemed not to have existed from the time when such reason is originated.
Trial to Invalidate Registration for Extension of Patent (Patent Act Article 134)
An interested party or examiner may request for a trial to invalidate the registration for extension of a patent right due to any defect in the registration measure.
Trial to Confirm the Scope of Rights (Patent Act Article 135, Utility Model Act 33)
A patentee or an interested person may request a trial to confirm the scope of a patent right. When a request for trial is filed to confirm the scope of a patent right, the confirmation shall apply to each claim if the patent contains two or more claims.
Trial to Invalidate Corrections (Patent Act Article 137, Utility Model Act 33)
An interested party or examiner may request for a trial to invalidate corrections, where the specifications or drawings of a patented invention have been corrected in violation of Article 136.
When a decision to invalidate corrections of specifications or drawings becomes final and conclusive, the correction shall be deemed never to have been made.
Trial for Grant of Non-Exclusive Licenses (Patent Act Article 138, Utility Model Act 32)
When a patentee requires the use of the patent right of a prior patentee to operate his/her patented invention, or when a prior patentee refuses to grant permission to use the patent right without justifiable reasons, the later patentee may request a trial for grant of a non-exclusive license. To make a such request, it is required that the patented invention of the later patentee should constitute a substantial technical advance in comparison with the patented invention or registered utility model of the prior patentee.
Patent Administrators for Foreign-domiciled Applicants (Patent Act Article 5, Utility Model Act 3)
In accordance with the Patent Act Article 5, a foreign-domiciled applicant (a person who has neither a domicile nor a place of business in the Republic of Korea), shall not initiate any patent-related procedure, such as application, trial, etc., unless he/she is represented by a patent administrator (an agent with respect to his/her patent, who has a domicile or a place of business in the Republic of Korea). When a request for a trial is made against him/her, there may be problems in receiving the copy of the written request for trial and other documents without a patent administrator, and this often causes difficulties, such as the lapse of a right.
Trial and Appeal Procedure
Ex Parte Cases
Inter Parte Case
For more information about IPTAB, please refer to the following brochure. Download
- Last updated 09 June 2022
- Trial Policy Division