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IP Newsletter | Spring/Summer 2019
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PATENT
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Current Status of Korean Patent Cancellation System and the Implications
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It has been over two years since the patent cancellation system was introduced in Korea on March 1, 2017. Based on our extensive experience in handling patent cancellation cases thus far, we evaluate the Korean Patent Cancellation System in detail below.
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Patent Cancellation Statistics
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According to statistics released by the Korean Intellectual Property Office (KIPO), 287 patent cancellation petitions have been filed as of the end of March 2019. The number of petitions filed peaked in November 2017 when 39 petitions were filed, but it appears that other than the first few months after the new cancellation system began, there have consistently been about 10 to 15 petitions filed each month.
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As of March 2019, the Intellectual Property Trial and Appeal Board (IPTAB) has completed review of 117 cases, or 41% of the filed petitions. The average duration of each case has been about 9.4 months.
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Of all reviewed petitions, about 26% result in cancellation and about 62% result in rejection of the petition (the remaining 12% are terminated for other reasons). Nearly half of filed petitions do not result in institution of substantive cancellation proceedings. However, counting instituted petitions only, the cancellation rate is as high as 58%.
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In terms of technologies at issue, 54% of filed petitions involved patents in the chemical field, 16% involved patents in the electrical and electronics field, 15% involved patents in the mechanical field, and another 15% involved patents involving two or more of the above fields, or covering other technologies. KIPO has noted that a major target of cancellation actions appear to be foreign chemical companies.
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Implications for Cancellation Strategy
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The institution stage appears to be critical to determining whether a cancellation action is likely to be successful. A substantial portion of the total filings (about 44%) have been dismissed without institution. However, about 58% of instituted cases result in cancellation of the patent. Thus, if the IPTAB decides that at least one of the asserted cancellation grounds has merit and decides to institute, it is difficult for the patentee to overcome the cancellation grounds at that point.
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Therefore, a focus on the institution decision is extremely important for both the petitioner and the patentee. One tool available to either party, in addition to filing or responding to a cancellation petition, is to request that the trial examiner conduct an oral technical presentation hearing before the institution decision where one or both parties can more clearly explain the merits of its case.
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By default, patent cancellation cases are conducted based on examination of documents only, but either the patentee or the petitioner may request that the IPTAB conduct a technical presentation hearing to review issues before deciding a case (or even before the case is instituted). Whether to hold a technical presentation hearing is within the discretion of the trial examiner, but such technical presentation hearings are commonly granted absent special circumstances. The format of a technical presentation hearing is somewhat flexible and depends on the trial examiner's needs. Further, while patent cancellation actions in principle are ex-parte proceedings between the patentee and the IPTAB, technical presentation hearings are one way where the cancellation petitioner can be directly involved in the proceeding (at the examiner's discretion).
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Patentees responding to a petition for cancellation should consider making a claim correction (post-grant amendment) as part of the initial response to the petition. A claim correction within a patent proceeding may only be filed in response to submission of a new argument or new evidence by the other party, and commonly there is no new evidence submitted after the initial filing in cancellation proceedings, so a patentee may only get one chance to correct the claims in response to a cancellation filing. In particular, there is no opportunity to file a correction once the IPTAB renders a decision to cancel the patent.
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Back
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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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