- 1) Invalidation Trial
- a) Where a patent falls under any one of the following subparagraphs,
an interested party or examiner may demand an invalidation trial of
the patent. In this regard, if there are two or more claims such trial
may be demanded for each claim:
- ( i ) where a patent has been granted in violation of Article 25
[Capacity of Enjoyment of Rights by Foreigners], Article 29
[Requirements for Patent], Articles 31~33, 36 (1) to (3)
[First-to-File Rule], Article 42 (3) and (4) [Patent Application] or
Article 44 [Joint Applications];
- ( ii) where a patent has been granted to a person who has no right
to obtain a patent;
- (iii) where a patent has been granted in violation of a treaty; or
- (iv) where, after the grant of the patent, a patentee is no longer
capable of enjoying a patent right under Article 25 [Capacity of
Enjoyment of Rights by Foreigners], or a patentee no longer
complies with a treaty.
- b) An invalidation trial under Paragraph (a) may be demanded even
after extinguishment of the patent right.
- c) Where a trial decision that a patent is to be invalidated has become
final and conclusive, the patent right shall be deemed never to have
existed; however, under Paragraph (a) (iv) where a trial decision
that the patent is to be invalidated has become final and conclusive,
the patent right shall be deemed not to have existed from the time
when the patent first fell under that subparagraph.
- d) Where a trial under Paragraph (a) has been demanded, the
presiding trial examiner shall notify the exclusive licensee thereof
with respect to the patent right and other persons who have any
registered rights relating to the patent.
- 2) Trial to Confirm Scope of Patent Right
- a) A patentee or an interested party may demand a trial to confirm the
scope of a patent right in order to confirm the protective scope of a
patented invention.
- b) Where the trial to confirm the scope of a patent right is demanded
under Paragraph (a) and there are two or more claims, such a trial
may be demanded for each claim.
- 3) Trial for Correction
- a) a patentee may demand a trial for correction of the specification,
claims or drawings of a patented invention only to:
- ( i ) narrow the claim;
- ( ii) correct clerical errors; or
- (iii) clarify an ambiguous description.
- b) In the case of correcting the specification, claims or drawings under
Paragraph (a), the claim(s) shall be neither extended nor modified
substantially.
- c) In the cases under Paragraph (a) (i), the matters which are
described in the claims after correction shall be regarded as having
been patentable at the time of filing the patent application.
- d) Where a demand for a trial for correction does not come under any
subparagraphs of Paragraph (a), or Paragraph (b) or (c), the trial
examiner shall notify the demandant, stating the reasons for refusal
of the demand, and give the demandant an opportunity to submit a
reply, designating a period for that purpose.
- e) Where a demand for a trial for correction corresponds to any of
subparagraphs of Paragraph (a) and complies with the provisions of
Paragraphs (b) and (c), the trial examiner shall render a decision
regarding publication of the demand.
- f) Article 66 (1) to (3) and (5) [Publication of Applications], Article 70
[Opposition to Grant of Patent], Article 71 [Amendment to Reasons
for Opposition], Article 72 [Ruling on Opposition], Article 73 [Decision
of Rejection Taken Ex Officio after Publication of Patent Application],
and Article 74 [More than One Opposition] shall apply mutatis
mutandis with regard to a trial for correction.
- h) A trial for correction under Paragraph (a) may be demanded even
after the patent right has been extinguished. However, this
provision shall not apply where the patent has been invalidated by
an invalidation trial in accordance with Article 133 (1) [Invalidation
Trial for Patent].
- i) A patentee shall not demand a trial for correction under Paragraph
(a) without the consent of an exclusive licensee or pledgee, or a
nonexclusive licensee under Article 39 (1) [Nonexclusive License on
Employee's Inventions], Article 100 (4) [Nonexclusive License on
Exclusive License], or Article 102 (1) [Nonexclusive License by
Grant].
- j) When a trial decision has become final and conclusive that the
specification, claims or drawings of a patented invention are to be
corrected, the patent application, the laying-open of the application,
the publication of the application, the examiner's decision or the trial
decision that the patent is to be granted, and the registration of the
patent right shall be deemed to have been made on the basis of
the corrected specification, claims or drawings.
- 4) Trial for Granting Nonexclusive License
- a) If a patentee, exclusive licensee or nonexclusive licensee wishes
permission to work the patented invention which falls under Article
98 [Relationship with Another's Patented Invention, etc.] and if the
other party refuses said permission without justifiable reasons thereto
or it is impossible to obtain the permission from said other party,
such patentee, exclusive licensee, or nonexclusive licensee may
demand a trial for granting a nonexclusive license within the scope
necessary to work the patented invention.
- b) The nonexclusive license demanded under Paragraph (a) shall be
granted only where the patented invention of the later application
brings a substantial technical advance compared with the other
party's patented invention or registered utility model for which an
application was filed prior to the filing date of the later application.
- c) If a person who has granted a nonexclusive license by virtue
of the trial in accordance with Paragraph (a) needs to work the
patented invention of a person who has been granted such
nonexclusive license and if the latter refuses to give permission of
working, or if it is impossible for the former to obtain said
permission from the latter, the former may demand a trial for
granting a nonexclusive license within the scope of the patented
invention of the latter.
- d) A nonexclusive licensee under Paragraphs (a) and (c) shall pay a
remuneration to the patentee, owner of the utility model right, owner
of the design right or exclusive licensee thereof. However,
if the payment is not possible for reasons beyond his control,
the remuneration shall be deposited.
- e) A nonexclusive licensee in accordance with Paragraph (d) shall not
work the patented invention, registered utility model, or registered
design or its similar design unless he makes payment of the
remuneration therefor or makes a deposit thereof.