Trial decisions rendered by the Intellectual Property Trial & Appeal Board (IPTAB) with respect to appeals against final rejections at the Korean IP Office (KIPO), as well as invalidation trials etc., may appealed at next instance to the Korean Patent Court. For ease of understanding, the order of escalation for appeals of KIPO decisions is KIPO > IPTAB (an administrative tribunal within KIPO) > Patent Court > Supreme Court.
Below we will look at whether new prior art not submitted at the IPTAB trial stage may be submitted during the subsequent Patent Court proceedings, and what exceptions may exist.
What may be submitted?
At the outset, referring to court precedents we may say that the submission of new arguments and/or prior art is, in principle, permitted at the court stage.
An exception to this rule applies in appeal procedures to cancel a final rejection (in which KIPO is respondent to the action), where KIPO may not present new rejection reasons as this would have the effect of depriving the applicant of a chance to present arguments/amendments to overcome the rejection reasons. Such new rejection reasons should instead have been presented via an office action to which the applicant could have responded appropriately.
For this reason, even if listed as prior art in the detailed description of an applied-for invention, if the reference in question has not been used to deny inventive step then it may not be submitted at the court stage (Korean Supreme Court decision 2001Hu2757 [10 Oct 2003]). Further, unless the prior art listed in the detailed description of any reference cited at the IPTAB trial stage is described throughout the specification, or is a well-known or commonly-used art, its submission would be deemed to constitute a new rejection reason (Korean Patent Court decisions 2005Heo4713 [6 Sep 2006] & 2003Heo5569 [25 Jun 2004]).
Conversely, KIPO would be permitted to submit new materials if KIPO had already argued at the IPTAB trial stage that the feature in question is a well-known or commonly-used art and such new materials are to support KIPO’s argument.
Furthermore, KIPO may argue that it is improper to allow amendments at the Patent Court stage based on new refusal grounds not indicated in a dismissal of amendment or which had not been argued at the IPTAB trial stage (Korean Patent Court decision 2007Heo2681 [21 Nov 2007]). With regard to dismissals of amendment, there is no provision in the Korean Patent Act requiring KIPO to notify the applicant of its reasoning and allow submission of arguments/amendments before dismissing an amendment.
To sum up, in principle it is acceptable to submit new arguments and/or prior art at the court stage which were not previously submitted at the IPTAB trial stage. However, limitations apply when KIPO is respondent in a trial to cancel a final rejection, in cases where allowing new arguments and/or prior art could harm the applicant’s defense and procedural interests.