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The ex parte patent revocation procedure was introduced in March 1, 2017 as an alternative to a patent invalidation trial for challenging an issued patent in Korea. The major differences between a patent revocation procedure and a patent invalidation trial are summarized in the table below:
| Patent revocation procedure | Patent invalidation trial |
Petitioner | Any person | Interested party |
Timing for filing petition | Within six (6) months from the issue date of patent | Any time after registration of patent |
Reasons for cancellation of patent | (i) Lack of novelty/inventiveness based on a printed publication that has not been cited by the KIPO during the prosecution of the patent, and (ii) violation of the first-to-file rule | Same reasons for rejection of a patent application, except for violation of the unity of invention and claim dependency requirements |
Appealability | Decision revoking a patent appealable; decision maintaining a patent not appealable | Appealable |
This article examines the statistical trends of the ex parte patent revocation procedure in Korea, based on cases petitioned during the first five years of implementation, i.e., from March 2017 through December 2021.
▶ Number of Patent Revocation Cases
During the initial five-year period, there were a total of 733 patent revocation cases instituted (about 150 cases per year). The statistics show that 45% of the respondents, i.e., the patentees, in these patent revocation cases were foreign entities.
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Classification for patent revocation cases>
The most common technical field for these patent revocation cases resided in Section C of the International Patent Classification ("IPC"), i.e., chemistry/metallurgy, with 30% of the cases belonging to that field. The second most common field was Section H of the IPC, i.e., electronics, with 23% of the cases. These statistics reflect the current industry development trend in Korea, i.e., heightened competition in the fields of electronic materials and electronics.
▶ Patent Revocation Case Decisions
During the five-year period, the Trial Board of the KIPO rendered decisions in 599 patent revocation cases, resulting in 181 patent (about 30.4%) revocations. The revocation rate was lower than the invalidation rate (52.3% in 2021) from invalidation trials. (Revocation rate = number of revocation decisions/(number of revocation decisions + number of dismissal decisions + number of invalidation decisions + number of withdrawn cases))
Decision | Issuance of Revocation Notice* | Claim Amendment | Rate |
Revocation | Yes | Yes | 17% |
Yes | No | 15% | |
Dismissal | Yes | Yes | 34% |
Yes | No | 4% | |
No | - | 30% |
*Before the Board renders a decision to revoke the challenged claim(s), the patentee is notified of the reason(s) for revocation and given an opportunity to submit a response thereto (possibly together with amendments to the specification, claims and/or drawings).
In a nutshell, (i) around 30% of the cases were dismissed (i.e., the challenged patents were maintained) without the issuance of any Notice of Reason for Revocation by the Board; (ii) 34% of the challenged patents were maintained after claim amendments; (iii) 4% were maintained without any claim amendments; (iv) 17% were entirely or partially revoked even after claim amendments; and (v) 15% of the challenged patents were entirely or partially revoked without any claim amendments. These statistics underlie the difficulty of maintaining claims without any amendments once the Board issues a Notice of Reason for Revocation.
▶ Patent Revocation Appeal Cases Reviewed by the Patent Court
Among the 181 patent revocation decisions rendered by the Trial Board, 44 cases (about 24%) were appealed by the patentees to the Patent Court. Among them, the Patent Court reviewed 33 revocation appeal cases during the five-year period, deciding 13 cases in favor of the patentees (about 39%).
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