The Intellectual Property Trial and Appeal Board (IPTAB) at the Korean Intellectual Property Office (KIPO) recently issued internal guidelines clarifying the proper handling of certain aspects of patent cancellation actions. 

Background

Since being introduced in 2017, the Korean patent cancellation system has allowed anyone to file a petition to the IPTAB to cancel a registered patent within six months after publication of the registration (the "Cancellation Window"). A cancellation petition is limited to asserting invalidation grounds based on: (i) lack of novelty or inventive step in view of "written" publications; and (ii) violation of the first-to-file rule. If the IPTAB determines that there is at least one cancellation ground with merit, it will institute proceedings and issue a notice to the patentee giving an opportunity to respond and/or request a patent correction. More details on the patent cancellation system can be found in our previous newsletters in 2017 (link) and in 2019 (link). 

The IPTAB hears both patent cancellation and patent invalidation actions, and while both types of actions involve invalidating issued patents, they have a number of important distinctions. Most basically, patent cancellation actions are supposed to be handled as ex parte proceedings between the IPTAB and the patentee, in contrast with patent invalidation actions which are inter partes proceedings between the patentee and the patent challenger. However, because the IPTAB handles far more invalidation actions than cancellation actions overall (on average, the number of cancellation actions filed per year is about a third of the number of invalidation actions), certain aspects of cancellation actions may be inappropriately allowed to be handled in the same manner as invalidation actions (which has often led to significant delays in cancellation actions). The recent internal guidelines seek to address this issue and ensure that patent cancellation actions are being conducted as intended. 

Key highlights of the guidelines and their implications are discussed below.

Cancellation Grounds Must be Submitted Within the Cancellation Window

A petitioner filing a cancellation petition with the IPTAB must now submit all its cancellation grounds within the Cancellation Window (i.e., from the patent registration date until six months after the publication of the registered patent). This is in contrast to invalidation actions, in which a petitioner can submit new invalidation grounds at any time while the action is still pending. 

The guidelines now require IPTAB examiners to determine whether any cancellation grounds submitted after the Cancellation Window ("Late Grounds") are substantially different from the original grounds submitted during the Cancellation Window, and to reject and disregard any Late Grounds that are substantially different from the original grounds, except in the rare case where the Late Grounds clearly destroy the novelty of the patent subject to the cancellation petition. 

Therefore, Petitioners should now make sure to submit all potential cancellation grounds within the Cancellation Window, while Patentees on the other hand should carefully monitor whether any submitted grounds constitute substantially different Late Grounds, and seek to exclude such grounds accordingly. 

Prohibition of Service of Additional Documents to the Parties

Since patent cancellation actions are supposed to be ex parte proceedings, other than the cancellation petition itself (which is served on the petitioner after filing), the IPTAB is not required to serve any briefs submitted in the action to either party. If the IPTAB serves all documents filed in a cancellation action on the patentee and the petitioner, that could lead to unnecessary delays. In order to ensure that cancellation actions proceed in an ex parte manner, the guidelines now clarify that the IPTAB should not deliver any briefs filed after the cancellation petition itself to either the petitioner or the patentee. 

Petitioners and patentees can still obtain briefs that are not officially served by filing a request to the IPTAB to copy the relevant records of the proceeding. Parties will now need to carefully monitor the progress of cancellation action proceedings to be sure they are aware when they may need to file a request to the IPTAB to obtain documents submitted by the other party relating to the cancellation action. 

Cancellation Must Be Based on Strong and Clear Evidence

As noted in our 2019 newsletter (link), about 26% of all cancellation petition cases result in cancellation of the patent (and about 58% of instituted cases result in cancellation of the patent, a relatively high number). The guidelines provide a reminder that any decision to cancel a patent should be made carefully based on strong and clear evidence, given that the patent cancellation system cancels patents that have only just been registered, and that too-frequent cancellation may erode public trust in the Korean patent system. The guidelines indicate that if there is any uncertainty regarding whether or not a patent should be cancelled, the IPTAB should tend to dismiss, rather than grant, the cancellation petition. 

While it is not yet clear what impact this reminder will have on actual cancellation decisions by examiners, the inclusion of this reminder in the guidelines suggests that the rate of patent cancellation may decrease in the future. Cancellation petitioners should ensure to timely submit their strongest prior art and cancellation grounds, while patentees should repeatedly remind examiners in cancellation actions of the need to establish a strong and clear basis for cancellation going forward.