On January 22, 2020, the Supreme Court rendered an en banc decision (the “Decision”) holding that an independent Intellectual Property Trial and Appeal Board (“IPTAB”) “correction” action (post-grant amendment to narrow or clarify the patent claims or specification) that is (i) filed in response to invalidation challenges and (ii) only finalized after the close of a Patent Court (intermediate appeal) proceeding reviewing the validity of the patent in the prior-correction form, is not a basis for retrial of patent validity.¹  This was a reversal by the Supreme Court of its previous position that such late correction decision would provide valid grounds for retrial of appellate invalidation, scope confirmation and infringement decisions.

A patentee may bring a post-grant action for correction to amend the written description, patent claims and/or drawings of a patent at essentially any time while the patent is still in force. 

In the past, the Supreme Court took the position that if, during a patent litigation, scope confirmation or validity proceeding, an IPTAB correction action is filed but only finalized after the Patent Court or High Court closes its substantive review of evidence and arguments, the correction decision constituted ground for retrial under Article 451 (1) 8² of the Civil Procedure Act due to the retroactive effect of the correction (Article 136 (10) of the Patent Act) (that is, because the patent as corrected is deemed to have been in force from the date of registration).  The Supreme Court’s position was presumably intended to protect patent rights by guaranteeing patentees a sufficient opportunity to correct challenged patents.  However, this practice has been criticized as causing unnecessary back-and-forth proceedings between the Patent Court or High Court and the Supreme Court, lengthening the process of adjudicating patents and resulting in more frequent overturning of lower court decisions, and thereby undermining the stability of legal determinations.

In the Supreme Court’s recent Decision, it reversed its prior position and essentially ruled that such late-decided correction actions are no longer a basis to overturn Patent Court or High Court decisions that are rendered regarding the pre-correction patent. 

The Decision was based on the following grounds:

(1)    A patent examiner is required to grant a patent if the examiner finds no grounds to reject the patent application.  Under the Patent Act, the Patent Court has jurisdiction to review decisions that are “administrative dispositions” of the IPTAB, but cannot directly review a patent examiner’s decision regarding patentability, which must first be appealed to the IPTAB for a decision (i.e., an “administrative disposition”) that is then reviewed by the Patent Court.  Therefore, the subsequent correction of the patent at issue does not constitute a ground for retrial under Article 451 (1) 8 of the Civil Procedure Act, as there is no change to the administrative disposition on which the Patent Court’s judgment was based, i.e., the IPTAB decision, even if the decision on patentability is deemed to have been made with respect to the corrected patent due to the retroactive effect of the correction.

(2)    Under the Patent Act, a correction decision is an ex parte decision that is finalized without appeal or challenge from other interested parties, and has a retroactive effect on the patent (Article 136 (10) of the Patent Act).  Instead of an appeal, an interested party may still file an invalidation action against the correction decision, and if a decision invalidating the correction decision is finalized, then the retroactive correction is cancelled.  As such, patent claims and specifications after a correction decision alone, even if the decision is finalized, are in fact not final, nor can be deemed to have a truly retroactive effect on all legal matters.

(3)    Under Article 1 (1) of the Civil Procedure Act, a court is required to make efforts to conduct the litigation proceeding in a fair, efficient and economical manner.  A patentee is given opportunities to respond to patent invalidation arguments and to file a correction action during the invalidation action proceedings at both the IPTAB and the Patent Court.  If a patentee is further allowed to challenge the Patent Court decision based on a correction decision issued after the close of Patent Court review, this would result in undue delay of resolution of disputes, and thus should not be permitted. 

It is common practice in Korea for a patentee to file one or more independent IPTAB correction actions to narrow claims in response to arguments or evidence made during an appeal of a patent invalidation action, and such correction actions are often not finalized until after the Patent Court issues a negative validity decision.  Until now, the Supreme Court generally has simply reversed the Patent Court’s invalidation decision in view of the correction, and remanded for further proceedings on the corrected claims. 

In view of the Supreme Court’s recent Decision, patentees will no longer be able to rely on such reversal and remand if a correction action is not filed early enough to be resolved before the Patent Court completes its review of patent validity.  As such, patentees should take care not to unduly delay filing independent correction actions if needed, and adjust their litigation strategies accordingly.