Earlier this year, the Korean Intellectual Property Office (KIPO) announced revisions to the Guideline for Trial Handling Procedure ("Guideline") that went into effect on July 1, 2023. The revisions introduce a requirement for notification of the scheduled date of the decision in patent trial cases, stipulate a requirement for holding an oral hearing in inter partes trial cases, clarify criteria for changing the date of an oral hearing, and overhaul the system for priority trials and expedited trials. The requirement for notification of the scheduled decision date is applicable to patent trial cases for which the decisions are scheduled to be announced after the effective date, while the other revisions are applicable to trial cases lodged after the effective date.

▶Notification of the Scheduled Date of Decision in Patent Trial Cases

Under the Korean Patent Act, when a proceeding before the Board of Trials has sufficiently matured to the rendering of a decision, the presiding Trial Examiner shall notify the parties of the closure of the trial and the decision shall be rendered within 20 days from the date of notification.

Prior to the revisions, a notice merely indicating the closure of the trial examination was sent to the parties, leaving parties uncertain as to when the decision would be rendered.

The revisions to the Guideline address this inconvenience and require the Trial Board to specify the scheduled date of the decision in the notice of the closure of trial examination. In addition, if it is necessary for the Trial Board to change the scheduled date of the decision, such change of the scheduled date should also be notified.

▶Oral Hearing in Inter Partes Trial Cases

Prior to the revisions, oral hearings in inter partes trial cases were not mandatory and were held at the discretion of the presiding Trial Examiner, either upon request by the parties or ex officio. To resolve this uncertainty, the revised Guideline stipulates that, in principle, an oral hearing shall be held in inter partes trial cases, except for the following instances:

(i) Trials where the respondent has failed to submit their reply brief after the delivery of a copy of the trial petition;

(ii) Trials that are expected to be closed due to, e.g., withdrawal or dismissal of the trial petition prior to the date of the oral hearing; and

(iii) Trials that are deemed easily decidable solely based on the trial documents submitted by the parties.

▶Clarification of Criteria for Changing the Scheduled Date of an Oral Hearing

Under the previous Guideline, there were no restrictions on the reasons for a party to request a change in the scheduled date of an oral hearing. To address this issue, the revised Guideline now allows changes to the scheduled oral hearing date only for compelling reasons, such as scheduling conflicts with court hearing dates, or mutual agreement between the parties.

▶Overhaul of Priority Trial and Expedited Trial Systems

Prior to the revisions, the criteria for allowing priority trials (entitled to a priority review) and expedited trials (entitled to a faster review than a priority trial) were often in disarray and abused even in cases with relatively lower urgency, resulting in delays in the review of other trial cases. In the revised Guideline, similar criteria for priority and expedited trials have been consolidated, and trial cases with lower urgency have been excluded from the criteria, as further explained below.

Priority Trial

A trial falling under one of the following categories may be entitled to priority review (by the presiding Trial Examiner ex officio in categories (i) to (v), or upon request by a party in categories (vi) to (xvii)):

(i) An appeal against a rejection of an amendment made for an application;

(ii) A trial remanded by the IP High Court or the Supreme Court;

(iii) An invalidation trial requested by an Examiner;

(iv) A second appeal filed after a first final rejection made by the Examiner was overturned by the Trial Board;

(v) An appeal against the Examiner's final rejection of an application relating to advanced technology, e.g., semiconductor, which has been examined on a priority basis;

(vi) A correction trial only seeking an amendment of the title of the invention (utility models);

(vii) A trial requiring urgent review for an application vital to the national economy or for carrying out war, e.g., to supply certain military goods;

(viii) A trial regarding a patent registered in the green list provided under the Pharmaceutical Affairs Act;

(ix) An appeal against the Examiner's final rejection of an application classified as A61K (medicinal preparation) or C07K (peptide) (if 3.5 years have elapsed from the filing date or 2.5 years have elapsed from the date requesting examination);

(x) A scope confirmation trial or invalidation trial for a company selected or confirmed under the Act on Special Measures for Strengthening Competitiveness in Materials, Components, and Equipment Industries;

(xi) An appeal against the Examiner's final rejection of an application subject to a package examination of a patent, utility model, design, and trademark;

(xii) A scope confirmation trial or invalidation trial for a patent or utility model application related to a new patent classification under the Fourth Industrial Revolution;

(xiii) A trial involving a company provided with benefits from government-supported programs under the Act for Supporting Small or Medium Enterprise Establishments or the Act for Promoting Solopreneur Creative Enterprises;

(xiv) An invalidation trial of a patent owned by a person without rights to the patent;

(xv) An inter partes trial between a small or medium-sized company and a large company;

(xvi) A trial related to policies for regulatory sandbox; and

(xvii) A trial where mediation has failed after transfer to the Intellectual Property Dispute Mediation Committee by the presiding Trial Examiner.

Expedited Trial

A trial falling under one of the following categories may be entitled to a review faster than a priority trial upon request by a party:

(i) An IP trial (scope confirmation trial, invalidation trial, cancellation trial or correction trial) related to a pending court infringement action, an investigation of unfair international trade conduct as notified by the Trade Commission, a pending investigation by the police or the Public Prosecutor’s Office; and a scope confirmation trial, invalidation trial or cancellation trial filed by a respondent to a warning letter from an IP right holder; and

(ii) A correction trial of a registered IP right being held while an appeal against an invalidation trial decision involving the same right is being reviewed by the IP High Court.