심사관 청구 특허무효심판 제도 개선 방안

The Examiner-Requested Invalidation Trial system, while not yielding a high volume of cases, appears to faithfully perform its public function of invalidating defective patents in necessary circumstances. Given that the United States and the United Kingdom also operate systems where the head of the patent office can ex officio initiate cancellation procedures to eliminate defective patents, it is necessary to maintain and effectively operate the Examiner-Requested Invalidation Trial system in Korea. Ostensibly, the petitioner in the Examiner-Requested Invalidation Trial is the examiner. However, in substance, the procedure can be viewed as being initiated at the level of the Ministry of Intellectual Property (MIPO), rather than by the individual examiner, to re-evaluate the appropriateness of the patent grant decision. Nevertheless, even after the procedure is initiated, the examiner, as a party, bears the burden of executing the procedure through the trial and even the subsequent litigation stages. Especially in a situation where one out of every three trial decisions in this system results in a lawsuit for cancellation, compelling an examiner with limited litigation experience to directly handle the lawsuit imposes a significant burden. Furthermore, this creates an inefficiency by failing to fully utilize highly experienced litigators in lawsuits that are, in fact, contesting a decision by the Ministry of Intellectual Property. Moreover, if the examiner who is named as the defendant in the cancellation lawsuit loses, the problem of the examiner potentially having to bear the litigation costs may arise. To resolve these issues, it is desirable that the examiner, even if a party to the trial stage, not be a party in the litigation stage. To this end, one can consider revising Article 187 of the Patent Act so that, in the case of the Examiner-Requested Invalidation Trial, the Minister is named as the defendant. However, if the request for an invalidation trial is dismissed, the resulting litigation structure—where the examiner (the petitioner of the trial) becomes the plaintiff and the Minister becomes the defendant—is awkward. To resolve this issue, making the President of the Intellectual Property Trial and Appeal Board (IPTAB) the defendant in the lawsuit for cancellation of the trial decision seems preferable. As an alternative, system improvements could be considered to minimize the examiner's involvement in the procedure from the trial stage onward. Specifically, one could examine changing the invalidity trial, which is adversarial in nature, to limit the standing of the petitioner to "interested parties," and converting the Examiner-Requested Invalidation Trial, which is public in nature, into a cancellation request system. If an Examiner-Initiated Patent Cancellation Request System is introduced, it would need a "ex parte" examination structure and judgment by an administrative panel, similar to the existing cancellation request system. However, the period for filing and the grounds for cancellation would need to be different. For the examiner's cancellation request, it is considered unnecessary to impose a time limit, as is the case for invalidation trials, allowing it to be filed even after the patent right has expired, and there is no need to restrict the grounds for cancellation. However, the disadvantage of introducing the patent cancellation request system is that it requires more extensive statutory revision compared to merely changing the defendant in the lawsuit for cancellation of the trial decision.