정정청구가 수반된 취소결정의 일부가 위법한 경우 그 취소의 범위 -특허법원 2025. 7. 24. 선고 2024허13442 판결에 관하여

In cases involving decisions to revoke a patent or invalidate registration, the IP High Court’s practice regarding the scope of revocation when only some claims are unlawful has not been consistent. The subject case under review, even while acknowledging the precedent on simultaneous confirmation and indivisibility of corrections, found no logical necessity to revoke the correction-accepted portion or Claim 1 along with Claim 2, which alone was unlawful. On this basis, the court annulled only the part of the IPTAB’s decision concerning Claim 2 and dismissed the remaining claims, thereby adopting a partial revocation. There is no binding precedent on the scope of revocation that the IP High Court may order in an action for revocation of an IPTAB decision. In principle, although a trial decision is formally a single act, when it substantively consists of independent administrative trial matters (that is, separate administrative trial issues consolidated into one IPTAB decision), partial revocation is permissible. Where distinct determinations are made on such administrative trial matters and the orders are divided, the divisibility of administrative trial matters may be recognized unless the issues must necessarily be adjudicated together within the IPTAB’s discretion. The doctrine of simultaneous confirmation and indivisibility of corrections does not, by itself, negate such divisibility. Revoking an entire decision also creates problems. First, total revocation conflicts with the principle of party disposition: if a correction requested by the plaintiff, a patentee, has been accepted, it should not be treated as subject to revocation. Second, total revocation undermines finality: if the entire decision is revoked, the correction and other claims already lawfully adjudicated may again fall within the IPTAB’s authority, producing outcomes inconsistent with the court’s judgment. Third, total revocation is inefficient: if the entire decision is revoked, the plaintiff may be unable to appeal the claims substantively rejected on the grounds that the plaintiff would have no interest in appeal. Accordingly, in patent revocation decisions or trials on the invalidity of patents accompanied by a request for correction, if only certain claims are found to be unlawful while others are not contested, it is legally and practically appropriate for the IP High Court to revoke only the unlawful portion of the IPTAB decision, leaving the remaining administrative trial matters intact.