On January 22, 2020, the Supreme Court ruled, en banc, that if a petition to correct a patent specification or drawings is granted after the conclusion of the appellate phase of a patent invalidation action, the decision granting such petition cannot be a ground for retrial under Article 451, Paragraph 1, Subparagraph 8 of the Civil Procedure Act.  In doing so, the Court reversed all prior Supreme Court decisions that remanded the case for a retrial based on the same ground (Supreme Court En Banc Decision No. 2016Hu2522).

Supreme Court’s prior view: patent corrections may serve as a ground for retrial after conclusion of the appellate phase.

Regarding the question of whether a decision to correct a patent specification or drawings constitutes a ground for retrial under the Civil Procedure Act, the Supreme Court’s prior view was that for patent invalidation or infringement lawsuits, a final and conclusive decision granting the petition for patent correction would serve as a ground for retrial. Based on such Supreme Court precedents, the general practice was that where there is a final and conclusive decision to correct the subject patent, the Supreme Court would remand the invalidation or infringement case for a retrial.

Supreme Court’s en banc decision reverses the course and disallows patentee’s strategic use of correction petition as a way of obtaining a retrial in the appellate phase of a patent invalidation or infringement action.

The Supreme Court, however, recently reversed the course, ruling that patent correction granted after the conclusion of the appellate hearing in a patent invalidation case cannot serve as a ground for retrial of that invalidation case. The Supreme Court further held that the same legal principle should apply to scope confirmation and patent infringement cases, and reasoned that disputing the appellate decision simply based on the patent correction that has been granted after the conclusion of the appellate hearing when the patentee could have easily taken preemptive measures against the original invalidation claim by filing a request for correction earlier, would unduly delay dispute resolution.

This en banc ruling now prevents patentees from employing their old correction strategy and forces them to obtain the best possible corrections before the conclusion of the appellate hearing

Before this en banc decision, even if the patentee did not prevail in a patent invalidation lawsuit, the patentee had an option of stopping the patent from being invalidated by filing a petition for patent correction while the invalidation case is pending and later obtaining a correction decision, even after the appellate decision affirming invalidation of the patent.

However, with this en banc decision, the Supreme Court now denies patent corrections granted after the conclusion of the appellate hearing from qualifying as a ground for retrial, preventing patentees from employing the old correction strategy and now forcing them to obtain the best possible corrections before the conclusion of the appellate hearing.

The Lee & Ko IP Practice Group is one of the largest and most prominent IP practices in Korea and is recognized by clients and adversaries alike as one of the strongest practices of its kind. From representing clients in Korea’s largest patent infringement cases and invalidity trials to helping clients evaluate patent invalidity, the Lee & Ko IP Practice Group has deep experience in a wide range of industries and remains the top choice in Korea and around the world.

If you have any questions regarding this article, please contact below:

Un Ho KIM ([email protected])

Tae H. KIM ([email protected])

For more information, please visit our website: www.leeko.com