Jurisdictional Overlap between Courts and the Intellectual Property Tribunal - Discussion of Recent Notable Patent Cases in Korea -

This study addresses two issues observed from the Korean Supreme Courts’ recent notable patent cases: the questionable existence of the Intellectual Property Tribunal’s (“IPT”) patent scope declaration trial and the questionable authority of courts in their review of the inventive step for ‘certain to be invalid’ cases. Besides being a rarity in the world and a remnant of the old Japanese patent regime, the existence of the patent scope declaration trial had been under constant attacks due to its substantial similarities with a patent infringement civil action. A recent Supreme Court case even exemplified the superiority of a patent infringement action over the declaration trial by not permitting the inventive step analysis and the defenses in the declaration trial under the reasoning of its narrowly crafted purpose. Nevertheless, backed by statistical data demonstrating continued popularity and usefulness of the declaration trial, the trial will solidify its unique position in the Korean patent regime that provides many advantages to the interested parties with or without the counterpart infringement lawsuit. The issue of the Korean courts challenging the exclusive authority of the IPT over certain patent matters became evident with a 2012 Supreme Court en banc decision. The exclusive jurisdiction of patent invalidation is given to the IPT’s invalidation trial as exercise of its administrative right under the Patent Act. Yet, the Supreme Court’s 2012 holding permits the court to review the inventive step requirement of the patent at issue for cases with ‘certainty’ that the patent will be invalid due to lack of the inventive step in the patented invention. The certainty requirement acts as a gatekeeper for the courts, so that only those cases involving patents that certainly to be invalid can have its inventive step requirement reviewed by the courts. Although the courts now had the authority to review difficult and subjective patent questions such as the inventive step, without reliance on the records of the IPT proceedings, nor specialization in the patent law and technology, unpredictable and conflicting decisions became the norm. The newly implemented centralization of all patent appeals to the Patent Court may naturally resolve the problems of these two issues caused by the deficiencies in the previous decentralized court framework. Now that the Patent Court is the exclusive court to handle appeals to patent related actions from both the IPT and district courts, effective as of January 1, 2016, appeals to all patent infringement actions will be handled by the Patent Court, with share of helpful information from the IPT decision cancellation proceedings and expertise in the patent law and technology involved. Although the centralized patent adjudicatory forum is a remarkable progress made in Korea’s patent history, a problem of disconnection between the IPT and the Patent Court is yet to be resolved. Despite of what appears to be a direct appellate relationship between the two institutions, lack of such relationship has weakened the authority of the IPT and made the Patent Court the first forum where actual arguments and evidence are presented and reviewed for an IPT proceeding. Without clarification of relationship between the IPT and the Patent Court, courts will continue to step into the jurisdiction of the IPT.