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Free-to-Work Technology Defense in a Patent Right Scope Declaration Trial

(Review of Supreme Court Decision 2016Hu366 Decided November 14, 2017)

 

 

1. Introduction

 

The Patent Act separately regulates patent right scope declaration trials (‘declaration trial’ hereinafter) and patent Invalidation trials (‘invalidation trial’ hereinafter). A patentee can ‘confirm’ that, assuming a patent invention is valid, an implementation article falls under the scope to be protected by the patent invention at the official organization, the Intellectual Property Tribunal, whereas an implementing person can ‘confirm’ that any patent invention is valid at the official organization, which is also the Intellectual Property Tribunal. Generally, since the two trials are proceeded with at the same time and the results thereof may come out at a similar time, a patentee and an implementing person can make reasonable decisions through both results and the two trials are divided and operated so as to be fit for that purpose and objective.

 

However, the Korean Supreme Court has approved prior art defenses of patent inventions in declaration trials (Supreme Court en banc Decision 81Hu56 decided Jul. 26, 1983 and so on) and has also consistently accepted free-to-work technology defenses (Supreme Court Decision 99Hu710 decided Oct. 30, 2001).

 

Regarding such Supreme Court Decisions, there is the criticism that it is also possible to permit an invalidation trial which is separately maintained in the process of a declaration trial. In particular, in a free-to-work technology defense in a declaration trial, it is argued by an implementing person that his/her confirmation subject invention could have easily been made by laid-open or published technology from prior art at the time of the filing of the patent application. Accordingly, there is the criticism that free-to-work technology defenses are applied as an ‘expedient’ regarding judgment of inventive step of patent inventions which could not be originally judged in declaration trials.

 

However, there was a recent decision[i] in Patent Court Decision 2015Hoe4019 Decided January 15, 2016 (Supreme Court Decision 2016Hu366 Appeal) that did not accept the free-to-work technology defense, so this Supreme Court Decision has been observed with keen interest.

 

2. Supreme Court Decision

 

(1) Summary of Issue

 

This case was initiated when a plaintiff (patentee) claimed an affirmative patent right scope declaration trial on July 14, 2014 in relation to a defendant (an implementing person) (claim reason: the confirmation subject invention belongs to the scope of right of Claims 1 and 3 of Patent No. 0649140). Regarding this, the defendant protested that References 3 and 4 were published before the filing of the present application and that the confirmation subject invention is a free-to-work technology invention that could have easily been made from Reference 1, References 1 and 2, Reference 3 or Reference 4.

 

The Intellectual Property Tribunal stated that 「The confirmation subject invention could have easily been made from Reference 3 (‘ABH-602 floor panel’ manufactured and sold by the plaintiff) and thus comes under free-to-work technology, so the confirmation subject invention does not belong to the scope of right of Claims 1 and 3 of the present application」, thereby accepting the fee-to-work technology defense.

 

However, the Patent Court stated that 「Since the confirmation subject invention of this case includes the whole constitutions of Claim 1 of the present application as they are and thus literally infringes the scope of right, the free-to-work technology legal doctrine cannot be applied」, and thus does not accept a fee-to-work technology defense in the case of literal infringement.

 

(2) Supreme Court Decision

 

The Supreme Court, in decision 2016Hu366 Decided November 14, 2017 which is an appeal of said patent court decision, stated that 「In a case where a confirmation subject invention, which is compared with a patent invention in a patent right scope declaration trial, is comprised solely of prior art and could have easily been made by a person having ordinary skill in the art to which the invention pertains from prior art, the confirmation subject invention is so-called free-to-work technology and shall be deemed to not fall under the scope of right of the patent invention without it being necessary for it to be compared with the patent invention (refer to Supreme Court Decision 99Hu710 decided Oct. 30, 2001 and so on). As it is determined that a confirmation subject invention belongs to the scope of right of a patent invention with a way to compare a confirmation subject invention with prior art without directly judging invalidity of a patent invention using such said method, quick and reasonable dispute resolutions can be promoted」, so it still accepts free-to-work technology defenses.

 

Also, in the same decision, it is stated that 「In view of the inherent nature and function of the free-to-work technology legal doctrine and a subject compared thereto, etc., such legal doctrine is generally applied when judging infringement of patent right scope. Accordingly, the same is applicable in cases pertaining to literal infringement, that is, where a confirmation subject invention resultingly has the whole constituents of the scope of claims of a patent invention and the organic combination relationships therein as they are」, so it is confirmed that the Patent Court Decision was revoked and free-to-work defense can be also applied to cases of literal infringement.

 

3. Meaning of Decision

 

From a critical stand point, the subject decision may be somewhat disappointing in that it is thus also possible for a separately maintained invalidation trial to be permitted in the process of declaration trial.

 

However, it is considered that the subject decision has the meaning of confirming that the Supreme Court consistently approves free-to-work technology defenses in declaration trials. In other words, it is considered that the Supreme Court consistently approves free-to-work technology defenses by giving priority to public interest when faced with a contradiction between conflicting systems and the social requirement that technology shall be freely implemented in the public domain.[ii]

 

Also, the subject decision consistently judges that free-to-work technology in the public domain at the time of the filing of a patent application does not belong to the scope of a right, without the necessity of a comparison with a patent invention. In addition, there is the meaning of confirming that a free-to-work technology defense also can be applied to cases of literal infringement.

 

4. Reference

 

For reference, arguments for and against in patent right scope declaration trials are as given below.[iii]

 

Argument of lack of novelty

Argument of lack of inventive step

Argument against a prior-applied for invention

Argument of defective description

Argument of an application filed by an unentitled person

X

X (Superiority)

81Hu56

2012Hu4162

2007Hu2827

82Hu36

- Disapproval (2014Heo1341, 2006Heo466, 2003Heo1857)

- Approval (2008Heo3001)

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

[i] Since free-to-work technology legal doctrine is to limit expanding the scope of rights by applying the doctrine of equivalents up to the part that a patent invention could not originally be granted, it is stated that this does not apply to cases where a confirmation subject invention includes the whole constitutions described in the scope of claims of a patent invention and thus literally infringes the scope of right of the patent invention.

 

[ii] In relation to this, there is the criticism that a declaration trial has no legal duty or right, so there is no reason to approve a correction to a patent invention in the process nor an infringer’s Prior Art Defense.

 

[iii] Hyun-Soek Lee, ‘Regarding for and against judgment on invalid reason of a patent in a patent right scope declaration trial’, LAW & TECHNOLOGY, Vol. 12 No. 2: pp25~51, March 2016

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