On February 8, 2018, the Korean Supreme Court held that, even when a patent infringement suit is pending in a civil court on a particular patented invention, the defendant (alleged infringer) has an independent legal interest in seeking a negative scope determination of non-infringement with the Korea Intellectual Property Trial and Appeal Board (KIPTAB).


On February 27, 2014, plaintiffs filed a patent infringement injunction suit against the defendant, alleging infringement by the defendant of plaintiffs’ patented invention. On March 6, 2015, while the infringement suit was still pending, the defendant filed a negative scope complaint with the KIPTAB, alleging that the defendant’s product does not fall within the scope of the patented invention of the plaintiffs. A negative scope trial is a procedure held before the KIPTAB, where the determination is not binding on the civil courts. On September 30, 2015, the KIPTAB issued a determination that the defendant’s product is different from the plaintiffs’ patented invention and does not fall within the scope of the plaintiffs’ patent.

However, in the appeal to cancel the above KIPTAB judgment, the Korean Patent Court held on January 14, 2016 that it will not recognize the defendant’s legal interest in filing a negative scope complaint for non-infringement because (i) negative scope trials merely serve the narrow function of confirming patent scope, (ii) seeking a negative scope determination from the KIPTAB while a patent infringement suit is pending is neither valid nor appropriate from a judicial economy perspective, because the civil infringement suit would confirm the patent scope, and (iii) the negative scope determination under such facts creates an unnecessary excessive burden on the parties. The defendant filed an appeal with the Korean Supreme Court.


The Korean Supreme Court held that a negative scope determination by the KIPTAB is an uncomplicated and expeditious means to determine whether the cited invention (that is, the defendant’s product) falls within the objective scope of the patent. In particular, the Korean Supreme Court stated that Article 164 of the Korean Patent Act requires the court and the KIPTAB to notify each other when cases involving the same parties or issue are before them simultaneously, which is premised on the recognition that negative scope trials and court litigations are considered to be separate and independent procedures under the law. Accordingly, the Korean Supreme Court reversed the Patent Court’s decision by holding that a negative scope determination cannot be denied even if a court is deliberating on an infringement case.

[Lessons and Implications]

In patent practice, concurrent patent infringement litigation and KIPTAB patent judgments are highly common. The patentee may, as a part of its litigation strategy, seek a positive scope determination from the KIPTAB for infringement independent of the patent litigation suit, either prior to filing the complaint with a court or thereafter. Likewise, the alleged infringer may file a negative scope determination for non-infringement before or after being sued in court (but before a decision is rendered by the civil court on the issue of infringement). A party receiving a favorable decision in the KIPTAB scope trial can then submit the KIPTAB decision to the civil court as evidence in their favor. However, some scholars have argued for an abolishment of patent scope determinations because the legal nature of patent scope determinations is ambiguous and the outcome of a patent scope determination from the KIPTAB may differ from a civil court decision on the same patent.

The Korean Patent Court decision discussed here also seems to be based on the position that patent scope determinations by the KIPTAB are entirely unnecessary, or that their use should at least be limited, and that patent infringement should be left to the civil courts. However, prohibition of patent scope determinations during pending patent infringement cases would cause great confusion in currently pending or future KIPTAB proceedings, as well as civil infringement litigations.

The above Korean Supreme Court decision overturned the Korean Patent Court decision after stating the need and significance of patent scope determinations as an independent legal procedure. The Supreme Court’s decision cleared potential confusion in patent law practice. Nevertheless, debate over the legal nature of the patent scope determination procedure and its continued existence will likely continue.