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| IP Newsletter | Spring 2014 |
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PATENT |
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The Korean IP Correction System – An Important Tool for Your Enforcement Strategy Toolbox |
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The Korean Patent Act provides for a post-grant correction system for correcting errors and formalities in issued patent claims, specification and drawings. Amendments are limited by statute to those that (i) narrow claim scope, (ii) correct a clerical error, or (iii) clarify an ambiguous description. Further, corrections made to the patent must be supported by the original specification or drawings, and may not substantially expand or alter the scope of any of the original claims. However, recent developments in Korean IP law have increased the importance of post-issuance patent correction as an element of a patentee's overall strategy for enforcement, allowing a patentee to clarify the patented subject matter and address potential validity issues in advance of a dispute, as well as possibly to resolve weaknesses in its claim for infringement. |
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For example, Korean courts recently have relaxed their formerly strict position on what constitutes "substantially expanding or altering" claim scope, and thus appear to have opened up the types of amendments possible through correction. In a case involving a patent relating to images obtained by using rotation-symmetrical wide-angle lenses, the Supreme Court granted a correction to amend "X-Y plane" in the claims to "X-Z plane" as a "clear error" (Korean Supreme Court 2012 Hu 627, rendered February 13, 2014). The Court held that this was not a substantial alternation or expansion of claim scope, because such a determination must be made in view of the whole patent disclosure, and not just the claims. In other words, because the correction did not change the intended objective and effect of the invention, and was fully disclosed in the original specification/drawings (and thus did not abridge the intervening rights of a third party), the correction did not substantially expand or alter the original claim scope. |
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Patent correction also may become increasingly important as a defense in infringement actions. It has become common in patent infringement lawsuits for alleged infringers to raise a defense of unenforceability as an abuse of patent rights, on the basis that the asserted patent is clearly invalid. However, it appears a correction proceeding may be able to negate this defense, as the Seoul Central District Court has recently ruled that an otherwise invalid patent remains enforceable if the grounds for invalidation can be overcome by a legitimate correction of the patent, even if a decision to grant correction has not yet become final and conclusive (Seoul Central District Court 2011 Gahap 138404, rendered February 5, 2013; and Seoul Central District Court 2012 Kahap 515, rendered May 20, 2013).1 |
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It is important to consider the need for patent correction in advance of any enforcement effort, to avoid negative procedural complications. Under the Korean correction system, a patentee can correct the claims, specification or drawings of its registered patent in two ways, through either a "correction trial" or a "correction petition" filed with the Intellectual Property Tribunal ("IPT"). Where an invalidation proceeding relating to the patent at issue is already ongoing at the IPT, a "correction petition" (within the existing proceeding) rather than a "correction trial" (an independent proceeding) must be used. Although correction may be accomplished both ways, there are significant procedural differences between the two methods that can impact the patentee's IP strategy, most significantly in that a decision on a "correction petition" is not final until the underlying invalidation proceeding is final, whereas a "correction trial" is a discrete proceeding that is appealed on its own schedule (and usually resolved more quickly in practice). As an accused infringer will typically file an invalidation action in response to an infringement suit, failure to consider in advance whether patent correction may be needed may result in added delay in resolving the patentee's rights. |
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In short, when used properly, IP correction proceedings in Korea can be a valuable tool for a patentee to obtain resolution of its patent rights in the most expedient way possible. Patentees may wish to consider correction proceedings at the outset as an integral part of their enforcement strategy in Korea. |
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1 See Kim & Chang Newsletters – Spring 2013 and Summer/Fall 2013. |
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