The National Assembly passed amendments to the Patent Act, Trademark Act and Design Protection Act (collectively, the “Amendments”) on July 23, 2021 to improve  administrative trial proceedings relating to intellectual property (“IP”).  The Amendments, which will become effective as of November 18, 2021, seek to make patent, trademark and design disputes at the Intellectual Property Trial and Appeal Board (the “IPTAB”) more swift and efficient by adding provisions that (i) codify a “timely submission requirement” for arguments and evidence, and (ii) allow trial examiners to refer cases for mediation even if not requested by the parties.

Currently, new arguments or evidence can be submitted virtually at any point during an IPTAB IP dispute proceeding, as long as the proceedings have not yet been closed.  While the trial examiners in an IPTAB case may set “deadlines” for submission of arguments or evidence, as a practical matter such deadlines have little force because a party can file a brief with minimal content to meet the “deadline,” and then simply submit additional briefs or evidence later to further supplement its arguments.  This often leads to delays and prolonging of cases in order to ensure the other party has an adequate opportunity to respond to any such additional submissions.

In addition, mediation procedures are only available in IPTAB proceedings if requested by the parties, and thus rarely utilized.  This means that resolution of most disputes end up requiring a formal decision from the IPTAB, potentially involving unnecessary cost and time.

The Amendments empower the presiding trial examiner of an IPTAB panel hearing a dispute to refer the case to mediation by the Industrial Property Dispute Mediation Committee (the “Mediation Committee”), with both parties’ consent.  As the new provisions will allow the trial examiner to exercise discretion regarding cases that he or she believes may be amenable to mediation, more cases are expected to be informally resolved rather than formally decided.  If a mediation is initiated, the Mediation Committee will review the referred case, and the parties will have three months to reach a mediation agreement.

The Amendments also include a new provision requiring timely submission of arguments and evidence with the goal of expediting review of cases, incorporating by reference the relevant provisions of the Code of Civil Litigation (the “Code”) (Article 158-2 of the Patent Act, Article 145-2 of the Trademark Act and Article 146-2 of the Design Protection Act).

The Code adopts the principle of “timely submission” to require that offensive and defensive arguments in a court proceeding shall be submitted at an appropriate time in accordance with the stage of litigation (Article 146).  The Code authorizes the presiding judge to determine a deadline for submission of arguments and motion for evidence (Article 147 (1) – deadline for submission).  If a party fails to meet the deadline without showing a justifiable reason, it will be prohibited from making a belated submission or filing a motion after the deadline (Article 147 (2)).  Further, if the judge believes a party’s belated submission was done intentionally or with gross negligence to cause delay in conclusion of the litigation, or that a party has failed to adequately elaborate its arguments despite lack of clarity being indicated in the submitted offensive or defensive arguments, then the judge has the power to reject the submitted offensive or defensive arguments, either at its own discretion or on motion from the other party (Article 149 – rejection of untimely submitted offensive or defensive means).

It is expected that these measures will help both streamline individual IPTAB cases by encouraging parties to submit their arguments and evidence in a timely fashion as specified by the trial examiner panel, and reduce some of the litigation burden on the IPTAB overall by referring more cases to mediation that may be amenable to early resolution.