The Korean Patent Act (KPA) includes a basis for patent invalidation that allows an applicant to file an invalidation action. This is based on a so-called principle of distribution of power, in which patent grant and invalidation is the exclusive authority of the Korean Intellectual Property Office (KIPO) as the administrative agency, while judgment for the legal disputes regarding patent rights is the exclusive authority of the courts.
Based on this principle, the Korean Supreme Court strictly adheres to its position that "even if a ground for patent invalidation exists, the courts cannot rule that the patent should be invalidated at a lawsuit". At the same time, the Court showed some flexibility by limiting patent rights due to a patent having grounds of invalidation, by ruling that the rights of a patented invention cannot be recognised when the patented invention has been disclosed and has no novelty upon filing; when it is impossible to specify the technical scope of a patented invention due to a lack of description; and when it is impossible to implement a patented invention.
In this regard, a potential, practical matter would be whether it is possible to limit patent rights based on the lack of an inventive step of a patented invention during a patent infringement action. Previously, the Court has consistently taken a position that the inventive step should not be judged during a patent infringement action. However, recently, the Court announced an opinion which differed from its previous position: "Even before a decision of patent invalidation has been confirmed, if it is obvious that a ground for patent invalidation exists, a demand to stop infringement and recover damages based on a patent to be invalidated would be an abuse of patent rights which should not be allowed."
Recently in the lower courts, reflecting the new opinion of the Supreme Court, rulings on whether a patented invention has an inventive step during infringement cases are increasing. Considering that under the previous system, despite a patented invention not having an inventive step, it was impossible to assert that such a patent invention has no inventive step, this is welcome news. However, since it is unknown whether the Supreme Court has completely changed its position, monitoring of court rulings is needed.
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| Chad (ChangHoon) Lee |
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SungBo Yang |
MUHANN Patent & Law Firm
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