CONTENTS
- 1. Patent Litigation, a Case in Which Issues of a Jointly Owned Patent Right and the Lawfulness of Litigation Representation Were Raised
- - Patent Litigation, the Plaintiffs' Arguments
- - Patent Litigation, the Defendant's Arguments
- 2. Patent Litigation, the Determinations of the First and Second Instances on the Issues of a Jointly Owned Patent Right and the Lawfulness of Litigation Representation
- 3. Patent Litigation, the Supreme Court's Determination on the Issues of a Jointly Owned Patent Right and the Lawfulness of Litigation Representation
- 4. Patent Litigation, Daeryun's Strategy?
1. Patent Litigation, a Case in Which Issues of a Jointly Owned Patent Right and the Lawfulness of Litigation Representation Were Raised
This is a case in which issues concerning a jointly owned patent right and the lawfulness of litigation representation in patent litigation were raised, and the matter proceeded all the way to a Supreme Court judgment.(Supreme Court, Decision of December 26, 2024, 2024 Hu 10825)
This case was a suit to revoke a trial decision concerning a patent application invention for a composition and method for treating neuropsychiatric disorders, in which the plaintiffs filed suit against the Commissioner of the Korean Intellectual Property Office.
The plaintiffs filed a trial to contest the Korean Intellectual Property Office's decision refusing the patent in order to have it revoked, but when the Intellectual Property Trial and Appeal Board dismissed the request for the trial (a request contesting an administrative action before an agency prior to court litigation, comparable to seeking administrative review), they filed a suit against the Korean Intellectual Property Office seeking revocation.
The issues in this patent litigation were the lawfulness of the plaintiffs' litigation conduct and whether the claimed invention involved an inventive step.
Patent Litigation, the Plaintiffs' Arguments
The plaintiffs' arguments in this patent litigation were as follows.
The plaintiffs argued that the Korean Intellectual Property Office's decision refusing the patent was improper and that the claimed invention involved an inventive step, so that patent registration was possible.
They argued that the patent attorney and the patent firm acting as litigation representatives of Plaintiff 1 Company were lawful litigation representatives of Plaintiff 1 Company, so that this suit was lawful, and Plaintiff 2 Company and Plaintiff 3 University argued that, as co-owners of the right to obtain the patent, they could independently file a suit to revoke the trial decision.
Patent Litigation, the Defendant's Arguments
The position of the Commissioner of the Korean Intellectual Property Office, the defendant in this patent litigation, was as follows.
-Plaintiff 1's litigation conduct had a procedural defect, and the suit itself was unlawful.
-Contrary to the arguments of Plaintiffs 2 and 3, Claim 1 of the claimed invention in this case lacked an inventive step, so that patent registration was not possible.
2. Patent Litigation, the Determinations of the First and Second Instances on the Issues of a Jointly Owned Patent Right and the Lawfulness of Litigation Representation
In this patent litigation, the court of first instance dismissed the plaintiffs' claims.
First, it pointed out the unlawfulness of the litigation conduct of Plaintiff 1 Company.
Patent Attorney A and Patent Firm B filed the suit in the capacity of litigation representatives of Plaintiff 1 Company, but the problem was that they had not received a lawful delegation from Plaintiff 1 Company.
The court of first instance found Plaintiff 1 Company's suit to be an unlawful suit filed by a person without authority of litigation representation, and rejected the plaintiff's claim.
It also dismissed the claims of Plaintiff 2 Company and Plaintiff 3 University.
The court found that the inventive step of the claimed invention in this case, for a ‘composition and method for treating neuropsychiatric disorders,’ was denied, so that patent registration was not possible.
The court of second instance reached the same conclusion as the court of first instance.
The second instance likewise found that Plaintiff 1 Company's final appeal had been filed by a person without authority of litigation representation, so that the final appeal itself was unlawful.
As for the claims of Plaintiff 2 Company and Plaintiff 3 University, while the court recognized the legal principle as to whether a co-owner of the right to obtain a patent may independently file a suit to revoke a trial decision, it found that Claim 1 of the invention could be easily made from the prior invention, so that the inventive step was denied, and it dismissed the plaintiffs' claims.
Note
Under the Patent Act, where the right to obtain a patent is jointly owned, in light of the need for a unified determination, a patent application and a request for a trial against a patent examiner's decision refusing a patent and the like must be made jointly by all of the co-owners.
However, the Act contains no provision as to whether a suit to revoke a trial decision following a refusal of a patent and the like must be filed jointly by all of the co-owners. Therefore, even if one of the co-owners of the right to obtain a patent independently files such a suit seeking revocation of the trial decision, when the judgment revoking the trial decision becomes final in that suit, the effect of the revocation reopens the trial proceedings in relation to all of the other co-owners.
Where a judgment dismissing the claim to revoke the trial decision becomes final and the trial decision is maintained, it does not affect the rights of the other co-owners who did not contest the trial decision.
However, a suit to revoke a trial decision following a refusal of a patent and the like is not an indispensable joint litigation, because treating it as an indispensable joint litigation would lead to the unjust result of the remaining co-owners being obstructed in exercising their rights or having their rights extinguished.
3. Patent Litigation, the Supreme Court's Determination on the Issues of a Jointly Owned Patent Right and the Lawfulness of Litigation Representation
The Supreme Court's determination in this patent litigation also maintained the determination of the lower court and dismissed the plaintiffs' claims.
As for Plaintiff 1 Company's final appeal, the Supreme Court likewise found that the patent attorney and the patent firm had not received a delegation of litigation authority, and that Plaintiff 1 Company's ratification of the act of filing the petition of final appeal was not recognized either.
It held, in accordance with established precedent, that, absent special circumstances, ratification of litigation conduct performed by an unauthorized agent must cover the litigation conduct as a whole, and that ratifying only part of the litigation conduct is not permitted.
In short, it found Plaintiff 1 Company's final appeal to be an unlawful final appeal filed by a person without authority of litigation representation, and rejected it.
As for the final appeals of Plaintiff 2 Company and Plaintiff 3 University, the Supreme Court also maintained the determination of the lower court and dismissed the plaintiffs' claims.
Like the lower court, the Supreme Court found that, while at the patent application stage all of the co-owners must proceed with the application jointly, a suit to revoke a trial decision may be filed independently by one of the co-owners.
However, it found that Claim 1 of the claimed invention could be easily made from the prior invention by a person having ordinary skill in the art, so that the inventive step was denied, and that the final appeals of Plaintiff 2 Company and Plaintiff 3 University were without merit.
4. Patent Litigation, Daeryun's Strategy?
This was a case in which issues concerning a jointly owned patent right and the lawfulness of litigation representation in patent litigation were raised.
This patent litigation once again highlights the lawfulness of a representative in patent litigation, the rights and responsibilities of co-owners under the Patent Act, and the criteria for determining the inventive step of an invention.
As can be seen from the case of Plaintiff 1 Company, if there is no lawful authority of representation when filing a suit or a final appeal, the suit itself may be rejected as unlawful. For this reason, before commencing litigation proceedings, it is most important to thoroughly review the qualifications of the representative and the delegation procedures.
The judgment also made clear that, where a claimed invention is at a level that can be easily made compared with a prior invention, an inventive step is not recognized.
On December 17, the Supreme Court found that the inventive step of a patented invention for an ‘electrode plate stacking apparatus for secondary batteries’ was not denied, and it ordered a rehearing of the plaintiff's claim, reversing and remanding the lower judgment.
When determining whether an invention involves an inventive step, after first ascertaining the scope and content of the prior art, the differences from the prior art, and the evidence regarding the level of skill of a person of ordinary skill in the art, one must examine whether a person of ordinary skill in the art could, in light of the level of technology at the time of the patent application, easily make the invention subject to the inventive-step determination from the prior art by overcoming the differences from the prior art.
This means that the determination must not be made retrospectively, on the premise that a person of ordinary skill in the art is aware of the technology disclosed in the specification of the invention subject to the inventive-step determination, as to whether such a person could easily make the invention.
Daeryun Law Firm LLP has 🔗attorneys handling intellectual property matters with experience in resolving numerous disputes, including patent litigation. They provide the legal procedures required in patent litigation and offer technical protection solutions that meet applicable legal standards.
Before a patent trial dispute such as the one in this case arises, you may wish to obtain advice on patent law in advance and develop a multifaceted response strategy so as to avoid wasting the valuable resources of corporate clients.
