새로운 특허무효심판이 이전의 확정심결과 동일 심판물 및 비동일 심판물을 포함하는 경우의 일사부재리 원칙의 적용 - 특허법원 2022허4796 판결을 중심으로 -

It is necessary to prevent the repetition of invalidation trials. Therefore, Article 163 of the Patent Act (Non Bis In Idem) prohibits the filing of an trial based on “the same fact and the same evidence” (hereinafter referred to as ‘the same subject matter’) as tha in the final decision. It is contrary to the principle of Non Bis In Idem prescribed in Article 163 of the Patent Act to assert in a new invalidation trial the same subject matter that has already been heard and decided in a final decision. This point is beyond dispute. However, how should the principle of Non Bis In Idem be applied when a new invalidation trial has the same subject matter as that in the final decision, but also has a non-same subject matter? In the subject patent case, 2022Heo4796, even though it contains the same subject matters as those in the final decision, the patent court examined and decided the entire subject matter because of the addition of non-same subject matters, so that the same subject matters were examined and decided again. This paper argues that such a treatment renders the principle of Non Bis In Idem meaningless because a petitioner can avoid the application of Article 163 by simply adding a new subject matter (even though it is obvious that the claim will be rejected) while requesting that the same subject matter be examined and decided again. In this sense, the subject decision creates a huge loophole in Article 163. The subject case resulted in three more examinations and decisions on the same subject matter as the subject of the final decision. The authors sympathize with the patentee’s pain and anger. This paper aims to criticize the attitude of the subject decision and propose a proper way to deal with it. After analyzing the relevant principles of law in China, the United States, etc., the authors propose the following solutions. First, the IPTAB should not order the petitioner to delete the same subject matter from the purports and grounds of the petition. If the petitioner fails or denies to comply with the order, the IPTAB will ultimately have to dismiss the petition on the same subject matter part. Second, the practice of neither dismissing nor examining same subject matters is contrary to the plain meaning of Article 163. Since Article 163 provides that based on the same subject matter, “no person may demand a trial again.” it is appropriate to dismiss the same subject matter. Third, it is not prudent to dismiss the entire petition with non-same subject matters because it contains same subject matters. Rather than apply a “claim as a whole” principle to invalidity claims, it makes sense to apply a “claim by claim” principle. This is in line with the plain wording of Article 133(1), which provides that the invalidity trial may be “filed for each claim”. Third, the same subject matters should be dismissed and the non-same subject matters should be examined and decided. Forth, the subject case illustrates that non-same subject matters can easily be presented and thus invalidation trials can be repeated several times. Such repetition of invalidation trials is a patentee’s nightmare. It is necessary to establish a system that prevents or at least discourages the repetition of invalidation trials.