특허정정심판 청구시기 제한에 대한 고찰

Abstract

A patentee may request a trial to amend the description or drawing(s) of a patented invention in cases (ⅰ) where the scope of claims is narrowed; (ⅱ) where a clerical error is corrected; or (ⅲ) where an ambiguous description is clarified, except when an invalidation trial against the patent is pending. If a post-grant amendment is allowed while an action against invalidation trial is pending before the Supreme Court, the action should be remanded to the Patent Court so that the Patent Court reconsider the trial decision according to the amended claims. To avoid this kind of duplicating efforts, in Japan, a request for a trial for post-grant amendment may not be filed from the time the relevant trial for patent invalidation has become pending before the Patent Office to the time the trial decision has become final and binding; provided, however, that this shall not apply to a request for a trial for post-grant amendment filed within 90 days from the day an action against the trial decision in the trial for patent invalidation is instituted. In the UK, where there are pending before the court or the comptroller proceedings in which the validity of the patent may be put in issue, post-grant amendment may be allowed only in such proceedings by the Comptroller or by the court. Finally, in the US, post-grant amendment may be made in the form of disclaimer, certificate of correction, reexamination, or reissue and action in reissue applications in which there is an indication of concurrent litigation usually will be suspended. This article suggests that a request for a trial for post-grant amendment should be filed only within certain period of time from the day an action against the trial decision in the trial for patent invalidation is instituted. This article also suggests as a long term solution that where there are pending before the court or the comptroller proceedings in which the validity of the patent may be put in issue, post-grant amendment may be allowed only in such proceedings.