A scope confirmation trial, somewhat analogous to a U.S. declaratory judgment action, is a unique inter partes IP trial adjudicated by the Board of Trials (“BoT”) of the Korean Intellectual Property Office, to confirm whether or not a given product or process falls within the scope of a patent claim. This article reviews the scope confirmation trial in general, with the particular emphasis placed on the significance of accurately defining the subject matter for comparative adjudication.

▶Scope Confirmation Trial

Scope confirmation petitions are often filed with the BoT either by accused or potential infringers or by patentees to obtain a prompt decision regarding the scope of a patent claim vis-à-vis a subject matter presented by the petitioner for comparative determination. A dissatisfied party may appeal the BoT decision to the IP High Court and then to the Supreme Court.

There are two types of scope confirmation trials: (i) a negative confirmation trial, normally instituted by an accused infringer seeking a decision that its product/process falls outside a patent claim; and (ii) a positive confirmation trial, brought by a patentee seeking a decision that a third party’s product/process falls within the scope of the petitioner’s patent claim.

The subject matter for adjudication should be clearly specified in the petition submitted by the petitioner, including a description of the subject matter and supplementary drawings supporting the description. If the subject matter is not sufficiently specified in the petition to provide a meaningful comparison of the subject matter with a patent claim, the BoT may issue a corrective order directing the petitioner to amend the petition.

However, even if the subject matter for adjudication is adequately defined for comparison with a patent claim, the utility of a scope confirmation trial may be questioned if the subject matter specified does not materially correspond to the product or process actually practiced by the petitioner (in case of a negative scope confirmation trial) or the respondent (in case of a positive scope confirmation trial).

▶Positive Scope Confirmation Trial where the Subject Matter Specified Does Not Match Respondent’s Actual Product

The Supreme Court has held that where a patentee requests a positive scope confirmation trial, with a subject matter presented for adjudication that is not materially identical to the technology being practiced by the respondent, such request lacks merit and should be dismissed (see, e.g., Supreme Court Case No. 2011Hu2626, decided on October 25, 2012). The Court reasoned that, even if a final decision is issued affirming that the subject matter presented for adjudication falls within the scope of a patent claim, such a decision is effective only for the hypothetical technology specified in the patentee’s petition and is tantamount to an abuse of judicial process.

The above reasoning has been consistently applied in similar circumstances and followed in a recent decision by the IP High Court for a positive scope confirmation trial case where the patentee of a pipeline replacement method patent sought a confirmatory decision that the accused infringer's method fell within the scope of a patent claim (IP High Court Case No. 2023Heo10163, rendered on September 7, 2023).

▶Negative Scope Confirmation Trial where the Subject Matter Specified is Different from Petitioner’s Actual Product

In contrast, the Supreme Court has recognized the benefit of confirmation in a negative scope confirmation trial where the subject matter presented by the petitioner for adjudication differs from the technology actually practiced by the petitioner, if there is a possibility of future implementation of the former (Supreme Court Case Nos. No. 2007Hu2735 rendered on August 19, 2010 and 89Hu1431 rendered on February 9, 1990).

Recently, the Supreme Court rejected the patentee’s argument that the petitioner’s request lacked merit because the technology actually practiced by the petitioner differed from the subject matter presented by the petitioner for adjudication. The Court made it clear that the subject matter of adjudication in a negative scope confirmation trial (presumably, therefore, the effect or reach of the court decision, as well) should be confined to the specific subject matter defined and presented by the petitioner, regardless of whether the technology actually implemented by the petitioner differs from the specified subject matter (Supreme Court Case No. 2020Hu11813, rendered on January 12, 2023).

▶Comments

As discussed above, in a positive scope confirmation trial utilized by the patentee to ascertain whether a third party's product/process currently in use infringes on its patent, the benefit of a scope confirmation trial may accrue only if the subject matter presented for adjudication is materially identical to what is currently implemented by the respondent.

In a negative scope confirmation trial, however, where the accused or potential infringer seeks a decision that the subject matter described in its petition does not fall within the scope of a patent claim, the merits of the confirmation will not be denied even if the petitioner describes a subject matter that materially differs from what is actually being implemented by the petitioner.

Such position taken by the Court is not without criticism, however. For the accused may be tempted to camouflage or justify its infringing activities with a cloak of legitimacy by falsely describing its actual mode of practice through the presentation of a seemingly innocuous subject matter for comparative adjudication, which may force the patentee to bring another (positive) scope confirmation with a correct identification of the infringing article/process or pursue a full-fledged infringement action.