특허의 중복심판

Abstract

With its revision on 3 March 2006 to Legislation No. 7869, the Patent Act introduced article 154(8) which applies article 259 of the Code of Civil Procedure on the prohibition of duplicative patent trial. It was to legislate the working-level customs of dismissing duplicative trial requests, according to the principle of prohibiting the duplicative litigation under the Code, as well as the principle of prohibiting abuse of the right to request trials. Under the Code, a duplicative litigation is formed if the parties and the object of the subsequent litigation are identical to those of the preceding one, and the subsequent litigation was filed during the preceding one is still pending. Both the Patent Court and the Patent Tribunal decide whether a trial is duplicative according to this principle. However, there is need to review the principle. Unlike civil suits the decision on which applies only to the relevant parties, decisions on the patent trials and decisions reversing previous decisions on patent trials could affect a third party. Therefore, it is generally accepted that the parties of the preceding trial request and those of the subsequent one do not need to be identical to form a duplicative trial request. It also has to be noted that the basis on which the object is defined differs depending on whether the trial is ex parte or inter partes. In ex parte proceedings, the object is identical regardless of the differences in the legal right under discussion, as long as the gist of the trial request is identical. On the contrary, in inter partes proceedings, the ground of the request as well as the gist should be the same to form identical objects. For instance, in patent invalidation trials, only by the grounds under each subparagraph of Article 133(1) of the Patent Act or within subparagraphs of Article 133(1)(i) is separated the patent invalidation trial not by the patented invention. The last point to discuss is whether "the pendency of the preceding request" is limited to continuing at the Patent Tribunal' or should be interpreted more broadly to include "continuing at the court". If it is limited to the Patent Tribunal, a subsequent trial request by the identical party on the identical object as the one continuing at the Patent Court or the Supreme Court does not form a duplicative request, and the decisions on the two requests might comprise a contradiction. Therefore it is considered to be proper to interpret the pendency so that it should include continuing at the court.