Recent statistics Appeals against final rejections Invalidation actions Further changes

Recent statistics

Recent statistics show that the Patent Court is making efforts to strengthen patent rights. The Patent Court is an intermediate appeal court which reviews decisions rendered by the Intellectual Property Trial and Appeal Board (IPTAB). The IPTAB is the first-level tribunal with respect to all IP matters except the infringement of IP rights. The IPTAB reviews actions, among other things, seeking to invalidate patents and appeals from final rejections of patent applications. The Patent Court has exclusive jurisdiction over appeals of IPTAB decisions. Further, from January 1 2016 the Patent Court has exclusive jurisdiction over appeals of patent infringement actions (main actions) filed with district courts.

Recent statistics released by the Patent Court suggest that the decisions rendered in favour of applicants and patentees have been steadily increasing over the last four years (2012 to 2015). The following tables show statistics for decisions rendered by the IPTAB and Patent Court regarding appeals against final rejections and invalidation actions.

Appeals against final rejections

Year

IPTAB decisions

(affirming examiner's final rejection issued for lacking inventiveness of claimed invention)

Patent Court decisions

Affirming IPTAB decisions

Cancelling IPTAB decisions

2012

168 cases

162 (96.4%)

6 (3.6%)

2013

114 cases

107 (93.9%)

7 (6.1%)

2014

95 cases

80 (84.2%)

15 (15.8%)

2015

119 cases

95 (79.8%)

24 (20.2%)

In 2012, the Patent Court affirmed 96.4% of IPTAB decisions that affirmed final rejections of patent applications. However, this rate dropped to 79.8% in 2015. Accordingly, the rate of Patent Court decisions cancelling IPTAB's decisions that were unfavourable to applicants has risen sharply from 3.6% in 2012 to 20.2% in 2015. These statistics show that the Patent Court is making efforts to strengthen patent rights.

Invalidation actions

Year

IPTAB decisions (invalidating patent)

Patent Court decisions

Affirming IPTAB decisions

Cancelling IPTAB decisions

Others*

2012

131 cases

119 (90.8%)

6 (4.6%)

6

2013

117 cases

101 (86.3%)

13 (11.1%)

3

2014

101 cases

82 (81.2%)

13 (12.9%)

6

2015

67 cases

53 (79.1%)

13 (19.4%)

1

 

Year

IPTAB decisions (upholding validity of patent)

Patent Court decisions

Affirming IPTAB decisions

Cancelling IPTAB decisions

Others*

2012

105 cases

29 (27.6%)

71 (67.6%)

5

2013

87 cases

28 (32.2%)

58 (66.6%)

1

2014

86 cases

25 (29.1%)

55 (64%)

6

2015

78 cases

44 (56.4%)

33 (42.3%)

1

*This includes the number of cases withdrawn and dismissed before the Patent Court's decision was rendered.

Between 2012 and 2014, the number of IPTAB decisions invalidating patents far exceeded those upholding the validity of patents. However, as shown in the table above, this trend was reversed in 2015. Further, the rate at which the Patent Court affirmed IPTAB decisions invalidating a patent dropped from 90.8% in 2012 to 79.1% in 2015. Along the same lines, the rate of Patent Court decisions cancelling IPTAB decisions that were unfavourable to patentees (ie, invalidating a patent) has increased from 4.6% in 2012 to 19.4 % in 2015.

During the same time, the rate of Patent Court decisions affirming IPTAB decisions that were favourable to patentees (ie, upholding the validity of a patent) increased from 27.6% in 2012 to 56.4% in 2015.

Further changes

As part of the Patent Court's efforts to allow parties to present their cases better, the Patent Court has encouraged judges and parties to present witness testimony at hearings and allow onsite inspections. Statistics show that the number of cases with witness testimony increased from just 12 cases in 2012 to 53 in 2014. Further, the number of onsite inspections increased from just five cases in 2012 to 12 cases in 2013.

Thus, it can safely be assumed that the Patent Court is taking a more favourable stance towards patentees. Accordingly, applicants and patentees are encouraged to take these recent trends into account when establishing an overall strategy for patent prosecution, patent litigation and licensing in South Korea.

For further information on this topic please contact Yoon Ki Kim or Daniel Kim at Kim & Chang by telephone (+822 3703 1114) or email (ykkim1@kimchang.com or daniel.kim@kimchang.com). The Kim & Chang website can be accessed at www.kimchang.com.

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