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For Patents Registered as Technology Usurpation, Claim an Invalidation Trial!

For Patents Registered as Technology Usurpation, Claim an Invalidation Trial!

-Patent Tribunal takes the lead in protecting true owners

Cases of a patent being filed/registered in one person’s name by taking over technology invented by another person may be remedied through an invalidation trial under the text of Article 33(1) of the Patent Act by the reason of an unentitled person’s application.

Since 2010, the Patent Tribunal has been publishing the results of their analyses of 96 invalidation trials (limited to cases of completed trials, and not including trials in progress or trials with no decision due to reasons such as abandonment or withdrawal) in relation to such patent applications claimed to be from an unentitled person.

Claimants involved were Small and Medium-sized Enterprises (SMEs) (52 cases), individuals (32 cases), foreign corporations (3 cases), and large companies (2 cases), while the claimees (patentees) were SMEs (60 cases), individuals (28 cases) and large companies (3 cases). In most cases, the parties were individuals or small businesses.

By dispute, most of the disputes were between individuals and SMEs, and by technological field, the disputes occurred in electrical and electronics (29 cases), machinery (27 cases), convergence (22 cases), and chemistry (18 cases).

In a case in which an unentitled person does not file an application completely identical to an invention of the true owner (hereinafter referred to as a 'misappropriated invention') and achieves registration by somewhat improving or modifying the true owner’s invention, the main issue is the identities of the misappropriated invention and the patent invention (the misappropriated invention will not be invalid unless both inventions are identical).

In the past, the same criteria for identity were strictly applied to both such inventions, but recently, even if an unentitled person has made some changes to the composition of a misappropriated invention, decision criteria (2009HU2463 judged in 2011) are applied so that the patent invention is invalid if the changes involved are only a matter of ordinary adoption by a skilled person.

The Patent Tribunal is taking the lead in protecting true owners in cases of technology usurpation by actively utilizing these criteria.

Regarding the results of the 96 invalidation trials related to patent applications of unentitled persons, 66 cases (69%) were dismissed and 30 cases (31%) were affirmed as invalid. Among these, 22 cases (23%) were filed in the Patent Court against a trial decision, and only 3 such cases (14%) were overturned by the Patent Court. This is half of the 27% cancellation rate for trial decisions of all invalidation trials (average over five years, 2014~2018), and from this it is considered that the decisions of Patent Judges are being supported by the Patent Tribunal at a high rate.

The Patent Tribunal stated, "In order to provide relief for the true right holder in relation to a patent registered by technology usurpation, accurate judgment of the relevant invalidation trial is important, so we will take the lead in protecting true right holders by adding the latest judgment standard to the judgment manual."

<Status Analysis charts for invalidation trials related to patent applications of unentitled persons>

1. Number of invalidation trials related to patent applications of unentitled persons by year

* Limited to cases in which trial has been completed, and not including those in progress or with no decision for the subject case such as due to abandonment of decision or withdrawal

2. Result

3. Claimant Status

4. Status of Respondent (Patent Holder)

5. Dispute Aspect

* Others: Medium-sized Enterprise (Claimant) - Medium-sized Enterprise (Claimee), Medium-sized Enterprise (Claimant) - SME (Claimee), SME (Claimant) - Medium-sized Enterprise (Claimee), SME (Claimant) - Foreign Corporation (Claimee), Public Institution (Claimant) - SME (Claimee), Research Institute (Claimant) - SME (Claimee), Government (Claimant) - Individual (Claimee), Individual (Claimant) - Medium-sized Enterprise (Claimee), Individual (Claimant) - University (Claimee), Foreign Corporation (Claimant) - Korean Individual (Claimee). Total: 10 cases of 1 such case each

6. Technology Field Status

[Source: KIPO]

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