IP Newsletter | Spring/Summer 2018
	PATENT
	Korean Supreme Court Confirms that Scope Confirmation Actions May Be Filed Regardless of Co-Pending Infringement Actions
	A unique feature of Korean patent practice is the scope confirmation proceeding, which is an administrative proceeding filed at the Intellectual Property Trial and Appeal Board (IPTAB) of the Korean Intellectual Property Office for the purpose of confirming whether a given product or process is within or outside the scope of a particular patent. They are often filed by accused or potential infringers to get a quick decision that their product/process does not fall within the scope of a particular patent with which they are threatened, which they then hope to use as persuasive evidence in a court infringement proceeding. However, scope confirmation actions have always been somewhat controversial - while they are effectively a sort of infringement determination, they have no binding authority (only Korean courts may determine patent infringement), so some parties have questioned their purpose in the Korean patent system. Particularly in situations where an infringement action has already been filed, a scope action may still be filed by the defendant knowing that the IPTAB will generally expedite the action, thereby forcing the patentee to make its infringement argument twice in two different proceedings.
	This very situation was the subject of a recent Supreme Court decision (Supreme Court Case No. 2016 Hu328, issued February 8, 2018), which determined that an alleged infringer is entitled to file a scope confirmation action in response to a pending court patent infringement action, thereby reversing the lower court decision (Patent Court Case No. 2015Heo6824).
	In this case, the Plaintiff filed a court patent infringement action against the Defendant's product in 2014, and the Defendant subsequently filed a scope confirmation action after the oral hearing in the infringement case. Because the Defendant filed the scope action quite late in the proceedings, the infringement decision actually issued first (in favor of the Plaintiff), but the scope confirmation action issued several months later and reached the opposite conclusion (that the Defendant's product was outside the scope of the patent). The scope confirmation decision and the infringement decision were both appealed to the Patent Court.
	Interestingly, without reviewing the substantial merits of the case, the Patent Court cancelled the IPTAB decision simply on the basis that the Defendant lacked sufficient legal interest to file the scope confirmation action in the first place. The Court reasoned that such legal interest was lacking because i) filing a scope confirmation action after an infringement action had already been filed was an improper attempt to obtain an interim determination on infringement and thus a waste of judicial resources; ii) the Plaintiff was unduly burdened by having to respond to the scope confirmation action in addition to the infringement action; iii) only the infringement court had authority to grant an injunction against patent infringement; and iv) allowing scope confirmation actions and patent infringement actions on the same patent to proceed independently involves the substantial risk of inconsistent outcomes, which may have a detrimental effect on the integrity of the patent system and patent litigation procedures.
	However, the Supreme Court reversed the Patent Court's ruling, on the basis that 1) even if a scope confirmation action is not legally binding, it still has a purpose in that it is a relatively quick and inexpensive way to confirm whether a product or process is likely infringing, and therefore may prevent or quickly resolve infringement disputes, and 2) the Patent Act separately provides for scope confirmation actions and infringement actions as independent procedures, and therefore the fact that an infringement action is filed does not negate the independent legal interest of the defendant in filing a scope confirmation action in response.
	The tension between the two decisions clearly illustrates the larger debate concerning the role of scope confirmation actions in Korean patent litigation. While the Patent Court decision would have virtually eliminated the main basis for most scope confirmation actions by focusing on the burden of litigating them in parallel with an ongoing infringement action, the Supreme Court was not willing to go that far in recognition of the utility that scope confirmation actions can have in some cases. In addition, it should be noted that in the context of pharmaceutical patents, scope confirmation actions can have clear legal consequences, since a scope confirmation decision can provide a basis for generic marketing exclusivity as well as a stay of generic sales.
	Unless there are future amendments to the Patent Act, it appears clear for the time being that reactive scope confirmation actions remain legal and must be litigated regardless of any burden they may present. However, future courts may still seek to address the potential burden of reactive scope confirmation actions on a less absolute basis than the Patent Court.
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	Jung Ae SUH jasuh@kimchang.com Alice Young CHOI aychoi@kimchang.com
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