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IP Newsletter | Winter 2016/17
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PATENT
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Recent Statistics on Patent Court Decisions Reflect More Favorable Stance Towards Patentees
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Notably, recent statistics show that the Korean Patent Court is making efforts to strengthen patent rights. The Patent Court is an intermediate appeal court which reviews decisions rendered by the Intellectual Property Trial and Appeal Board ("IPTAB"). The IPTAB is the first level tribunal with respect to all intellectual property matters except for infringement of IP rights. The IPTAB reviews actions, among others, seeking to invalidate patents and appeals from final rejections of patent applications. The Patent Court has exclusive jurisdiction over appeals of IPTAB decisions. Furthermore, starting January 1, 2016, the Patent Court has exclusive jurisdiction over appeals of patent infringement actions (main actions) filed with district courts.
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Recent statistics released by the Patent Court suggest that Patent Court decisions rendered in favor of applicants/patentees have been steadily increasing over the past four years (2012-2015). The following tables show statistics for decisions rendered by the IPTAB and Patent Court regarding appeals against final rejections and invalidation actions:
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1. Appeals Against Final Rejections
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(Unit: cases, %)
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| Year |
IPTAB decisions
(affirming examiner's final rejection issued for lacking inventiveness of claimed invention) |
Patent Court decisions |
| Affirming IPTAB decisions |
Canceling IPTAB decisions |
| 2012 |
168 |
162 (96.4%) |
6 (3.6%) |
| 2013 |
114 |
107 (93.9%) |
7 (6.1%) |
| 2014 |
95 |
80 (84.2%) |
15 (15.8%) |
| 2015 |
119 |
95 (79.8%) |
24 (20.2%) |
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In 2012, the Patent Court affirmed 96.4% of IPTAB decisions that affirmed final rejections of patent applications. However, this rate dropped to 79.8% in 2015. Accordingly, the rate of Patent Court decisions canceling IPTAB's decisions that were unfavorable to applicants has sharply risen from 3.6% in 2012 to 20.2% in 2015. These statistics show that the Patent Court is making efforts to strengthen patent rights.
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2. Invalidation Actions
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(Unit: cases, %)
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| Year |
IPTAB decisions
(invalidating patent) |
Patent Court decisions |
Affirming IPTAB
decisions |
Canceling IPTAB
decisions |
Others* |
| 2012 |
131 |
119 (90.8%) |
6 (4.6%) |
6 |
| 2013 |
117 |
101 (86.3%) |
13 (11.1%) |
3 |
| 2014 |
101 |
82 (81.2%) |
13 (12.9%) |
6 |
| 2015 |
67 |
53 (79.1%) |
13 (19.4%) |
1 |
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(Unit: cases, %)
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| Year |
IPTAB decisions
(upholding validity of patent) |
Patent Court decisions |
Affirming IPTAB
decisions |
Canceling IPTAB
decisions |
Others* |
| 2012 |
105 |
29 (27.6%) |
71 (67.6%) |
5 |
| 2013 |
87 |
28 (32.2%) |
58 (66.6%) |
1 |
| 2014 |
86 |
25 (29.1%) |
55 (64.0%) |
6 |
| 2015 |
78 |
44 (56.4%) |
33 (42.3%) |
1 |
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* Others include the number of cases withdrawn, dismissed etc. before the Patent Court's decisions were rendered.
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In 2012-2014, the number of IPTAB decisions invalidating patents far exceeded those upholding the validity of patents. However, as shown in the table above, this trend was reversed in 2015. Further, the rate that the Patent Court affirmed IPTAB decisions invalidating a patent dropped from 90.8% in 2012 to 79.1% in 2015. Along the same lines, the rate of Patent Court decisions canceling IPTAB decisions that were unfavorable to patentees (i.e., invalidating a patent) has increased from 4.6% in 2012 to 19.4 % in 2015.
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During the same time, the rate of Patent Court decisions affirming IPTAB's decisions that were favorable to patentees (i.e., upholding the validity of a patent) has increased from 27.6% in 2012 to 56.4% in 2015.
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Additionally, as part of the Patent Court's efforts to allow parties to better present their cases, the Patent Court has encouraged judges and parties to have witness testimony at hearings and allow on-site inspections. Statistics show that the number of cases having witness testimony increased from just 12 cases in 2012 to 53 in 2014. Further, the number of on-site inspections increased from just 5 cases in 2012 to 12 cases in 2013.
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Thus, we can safely assume that the Patent Court is taking a more favorable stance towards the patentee. Accordingly, applicants and patentees are encouraged to take these recent trends into account when establishing an overall strategy for patent prosecution, patent litigation, and licensing in Korea.
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Back to Main Page
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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