Lawsuit to Cancel a Trial Decision Procedure

Which step are you at?

Select your current step and the content for that step will appear below.

1. 1Receiving the certified copy of the trial decision
2. 2Filing with the Patent Court
3. 3Complaint and trial records
4. 4Technical examiner and hearings
5. 5Judgment
6. 6Final appeal to the Supreme Court
7. 7Finality and reopening of the trial

• Basic step
• Additional action / option
• Rejection / objection
• End of procedure

Time required

At both the Patent Court and Supreme Court stages, it varies greatly with the issues and technical difficulty of the case; check the progress with the court division in charge

Cost

Stamp fee of KRW 455,000 (based on a claim value of KRW 100 million; 10% reduction for e-litigation) and service fee, patent attorneys' and lawyers' fees

Procedure guide

Read from start to finish in order. Red text marks deadlines set by law.

1. 1

   The IPTAB sends you a certified copy of the trial decision (the decision in the trial) in an invalidation trial, a trial contesting a decision to reject, a trial to confirm the scope of rights or the like. The day you receive the certified copy is the starting point of the period for filing a lawsuit, so keep the envelope and the date of receipt. Calculate the remaining time from this date right away.

   Current step
2. 2

   File a lawsuit to cancel the trial decision with the Patent Court (Daejeon) within 30 days from the day you receive the certified copy of the trial decision (Patent Act §186). This period is a peremptory period and in principle is not extended (the only exception is when the presiding trial examiner sets an additional period on their own authority, Patent Act §186(5)). If you miss it, the trial decision becomes final as it is, and you can no longer contest it even if it was wrong.

3. 3

   Decide whom to name as defendant. In cases with an opposing party (inter partes cases), such as invalidation trials and trials to confirm the scope of rights, it is that party; in cases against the Ministry of Intellectual Property (formerly the Korean Intellectual Property Office) (ex parte cases), such as trials contesting a decision to reject, it is the head of the Ministry of Intellectual Property (Patent Act §187). In the complaint, state the grounds for cancellation, that is, which findings in the trial decision were wrong, and organize the trial records and evidence. Clear grounds for cancellation narrow the issues at trial.

4. 4

   A technical examiner joins the court division to assist on technical issues, and a technology explanation session is held if necessary. At the hearings, the court examines claim interpretation, comparison with prior art (technology disclosed earlier) and whether there is an inventive step. The patent holder can respond during the lawsuit with a correction trial narrowing the claims (in a lawsuit to cancel an invalidation decision, up to the date the Patent Court closes the hearings, proviso to Patent Act §136(2) item 1). If a correction is made, the claims in dispute change, so reorganize your arguments accordingly.

5. 5

   If the trial decision was wrong, the Patent Court gives a judgment canceling it; if not, it gives a judgment dismissing the claim. It only cancels the trial decision and does not itself decide whether the patent is valid or invalid. So even with a cancellation judgment, the final conclusion comes from the reopened trial.

6. 6

   File a final appeal to the Supreme Court within 2 weeks from the day you receive the written judgment. Submit the statement of grounds for final appeal within 20 days from the day you receive notice that the records have been received (Civil Procedure Act §425, §427). The Supreme Court reviews only whether the law was wrongly applied, so the statement of grounds must also focus on that point.

7. 7

   Once a judgment canceling the trial decision becomes final, the IPTAB examines the case again and issues a new trial decision in line with the reasons for cancellation in the judgment (Patent Act §189). If a dismissal becomes final, the trial decision stands as it is. You can file a lawsuit again within 30 days against the trial decision in the reopened trial too. So the whole procedure may take longer than expected.

Frequently asked questions

Practical questions that come up right away in this procedure.

QFrom when are the 30 days counted, and can they be extended?

It is counted from the day after you receive the certified copy of the trial decision. If the last day falls on a Saturday or public holiday, the deadline runs to the next weekday.Because it is a peremptory period, it is not extended. There is only one exception.That is when the presiding trial examiner, on their own authority, sets an additional period for a person who lives far away or in an area with poor transportation. Rather than relying on the exception, it is safer to prepare on the basis of filing within the original deadline.

QWhom do I sue?

In cases with an opposing party, such as an invalidation trial (a trial to treat the patent as never having existed) or a trial to confirm the scope of rights, that opposing party is the defendant. In cases against the Ministry of Intellectual Property (formerly the Korean Intellectual Property Office), such as a trial contesting a decision to reject, the head of the Ministry of Intellectual Property is the defendant.Naming the wrong defendant can complicate the procedure, so check before filing the complaint.

QHow much does it cost?

There is a stamp fee (court fee) and a service fee. For a lawsuit to cancel a trial decision, the value of the claim is deemed to be KRW 100 million, so the stamp fee is KRW 455,000.If you file through e-litigation, you pay only nine-tenths (9/10). Patent attorneys' and lawyers' fees are set separately by the engagement contract.

QCan a patent attorney represent me alone?

Yes, that is possible. A patent attorney can represent you alone in IPTAB trials and in lawsuits to cancel a trial decision at the Patent Court.However, only a lawyer can represent you in an infringement lawsuit. So if an infringement lawsuit is running at the same time, prepare with a lawyer so that your arguments in the two cases are consistent.

QCan I submit materials in the lawsuit that I did not submit at the trial?

Yes, you can. According to Supreme Court precedent, in a lawsuit to cancel a trial decision you can argue and prove grounds of illegality that were not decided in the trial decision.The court can examine them without restriction. However, in a case contesting a decision to reject, the head of the Ministry of Intellectual Property cannot raise new grounds for rejection that differ from the reasons for the decision to reject.

QIf I win, does the patent immediately become valid (or invalid)?

No. The Patent Court only cancels the trial decision.Once the judgment becomes final, the IPTAB examines the case again in line with the judgment and issues a new trial decision. If you also find that decision hard to accept, you can file a lawsuit again within 30 days.So the whole process can take a long time. It is best to plan for a long schedule from the start.