WHY ARE MOST OF KOREAN PATENTS INVALID?

Despite of Korea’s short history of patent law, which was first enacted in 1961, as a member country of IP5, as the 10th PCT International Searching Authority and the 9th International Preliminary Examination Authority, as Korean being PCT's one of the official publication languages, as the 3rd country to have registered the most number of patents in the U.S., Korea became a powerhouse for patents. Unfortunately, there is also a dark side to the success story. According to the recent statistics from the Korean Intellectual Property Office (KIPO), more than 70% of patents are invalidated at the Intellectual Property Tribunal’s patent invalidation trials. What is worse is that the appeals of the invalidations trials at the Patent Court will hold more than 77% of the patents to be invalid. The focus of this study is to find the causes and solutions for the high invalidity problem in Korea. We have divided up our study into the pre-registration and the post-registration phases of a patent right. A patent examiner will make a decision to reject or grant a patent based on Article 62 of the Patent Act. Even though such decision-making right is the right solely granted to the examiner, Article 63 bis provides that anyone can participate in the examination by providing information and evidences of grounds for rejection anytime during the examination. This mechanism will improve quality of examination, ultimately the quality of patents, by providing helpful information to the examiner in his decision making. The KIPO also provides the examiner’s Examination Guidelines to the public for transparency, accuracy, and fairness. A post-registered patent invalidation trial is conducted via inquisitorial system due to its effect on the public and its public-serving purpose. Thus, the patent administrative judges conduct the trial proceeding ex officio, review the grounds and evidences ex officio without much limitations. However, as patents are granted after 2 years of extensive examination and negotiation with the examiner, invalidation is equivalent to an admission of a serious mistake made by the examiner. Because of its devastating impact on the government approved right, the decision of invalidation should require heavier burden of proof and higher threshold for the IPT and the Patent Court. On a different note, interpretation of the 'inventive step' requirement is made differently among the examiners, patent administrative judges, and judges, as the case laws are not yet settled on that point and the hindsight analysis are often implemented. Uniformity and consistency in the interpretation of the patentability requirements will help reduce the high invalidity problem. Unrestricted reviewing power of the Patent Court is another area that needs to be changed. The court's role should be limited to its role as the appellate court of the patent trial to ensure continued and meaningful effectiveness of the IPT’s invalidation trial.