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25 January 2021
Party A files a scope confirmation trial, seeking a determination on whether Party B's working of an invention (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.
The question of whether requests for scope confirmation trials are improper in this manner is examined ex officio by the IP Trial and Appeal Board (IPTAB) regardless of the assertions of the involved parties (ie, Parties A and B).
However, a recent Patent Court decision states that if the IPTAB ex officio dismisses a scope confirmation trial after judging it to be improper for the reasons described above but fails to give the involved parties an opportunity to submit an opinion, such IPTAB trial decision would be a procedural violation.(1)
In this case, the original respondent (hereafter 'Party B', as per the example above) confirmed that the invention subject to confirmation and its later-registered patent were not the same, and so it did not intend to argue that its opponent's ('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 provide Parties A and B with 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:
Under South Korean practice, the party which 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.(2) 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, so the IPTAB would have rendered the same decision. As such, the IPTAB's failure to provide Party A with such opportunity did 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 it had been able to submit an opinion. Moreover, as neither party contested the point that the inventions were different, if they had known that the IPTAB intended to deny this point, they could have negotiated and agreed to a withdrawal of the trial. Therefore, in addition to the Patent Court's judgment that the IPTAB's trial decision was a procedural violation, it could also be seen as infringing the disposition rights of the involved parties.
(2) A Patent Act revision dated 3 January 2017 permits an invention subject to confirmation to be amended 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 not apply to the case discussed herein.
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