Appropriateness
of Recognized Amount for Trial Cost
(Patent &
Trademark Newspaper on January 20, 2023)
Myung-Shin
KIM
Advisor,
The Korean Patent Attorneys Association
In case of an appeal trial against a
rejection decision by an examiner regarding a patent or trademark application
case or permission trial for correction of a patent claim by a patentee,
Article 165, Para.3 of the Patent Law stipulates that the trial cost shall be
born by the plaintiff. However, in the case of inter-parties trials, including
patent invalidation trials, trials for confirmation of the patent claim's scope
and cancellation trials, etc. (excluding ex parte appeal trials), suits in the
Patent Court, and suits in the Supreme Court, the lost party shall bear the
trial or suit costs.
Now, let us review how much the trial
or suit cost the won party can request compensation to the lost party when the
decision of the Intellectual Property Trial and Appeal Board (IPTAB), the
judgment of the Patent Court, or that of the Supreme Court has been finalized.
Suppose the plaintiff wins the
invalidation trial and requests compensation of the trial cost to the
defendant. In that case, the plaintiff shall apply a decision regarding the
trial cost with the President of the IPTAB after the conclusion of the IPTAB,
according to the Patent Law and the Notification of the Korean Intellectual
Property Office (KIPO). The President of the IPTAB renders the decision of trial
cost to the plaintiff and defendant. The trial cost includes the official
filing fee of 240,000 Won (Korean currency), the patent attorney charges of
240,000 Won, and other expenses for witnesses or experts. Therefore, in a usual
case, a plaintiff who won a trial can request compensation amounting to 480,000
Won to the defendant. A defendant who won a trial can request only the
compensation amount of 240,000 Won because there is no official filing fee. Further,
when the Patent Court or Supreme Court finalizes a cancellation suit against a
decision of the IPTAB, the won party can submit an application for
determination of the suit cost with the Patent Court, and based on this
decision, the won party can request compensation to the lost party. According to
the Civil Procedure Code, the Official Fee Law for the Civil Procedure, and the
Regulation of the Supreme Court, the official filing fee for the Patent Court
is about 410,000 Won, whereas the official filing fee for the Supreme Court is
about 820,000 Won. The recognized amount for the maximum attorney charges at
the Patent Court or the Supreme Court is 7,400,000 Won each.
The recognized amount for attorney
charges in the Patent Court and Supreme Court must be increased realistically,
and that for patent attorneys in the IPTAB must also be increased by
at least 5,000,000 Won because the present amount is significantly beyond
common sense. Therefore, it must be balanced with the Patent Court's and
Supreme Court's costs.
The decision of IPTAB, like the judgment
of the Patent Court and Supreme Court, has a fundamental principle that the
lost party must pay the trial cost to the won party. However, even when a party
wins the trial, the party rarely requests the recognized amount for the trial
cost to the lost party because the recoverable amount is minimal. According to
Article 165 of the Patent Law, and Article 98 of the Civil Procedure Code, the
decision of the IPTAB stated that the lost party must pay the trial cost to the
won party. However, the practical precedents of the IPTAB were different from
the laws concerned. Notably, the suit costs of the Patent Court and Supreme
Court are more than 30 times the trial cost. As such, the notification of the
KIPO will likely violate the basic principle of the Patent Law and the Civil
Procedure Code.
Considering the dignity of the IPTAB
and the legal status of a patent attorney, the recognized amount for trial
costs should be increased reasonably. Further, if the lost party compensates
the trial cost reasonably, a party concerned may be more careful when demanding
a trial with the IPTAB. This trend will prevent vexatious problems and also
decrease the number of unnecessary trials.
On the other hand, if the right of a
patent or trademark is invalidated, the lost party may have a possibility to
raise a complaint against the KIPO as to why the KIPO gave an imperfect right
to the patentee or trademark owner. To settle this complaint, the KIPO should
decrease the ratio of invalidation trials by employing more examiners and an
exact prior technical search. For this reason, we cannot change the principle
of the burden of trial cost.
Currently, if the IPTAB cancels the
examiner's decision and returns the case to the Examination Bureau, the KIPO
pays back only the official filing fee to the applicant.
Now, let us review why the plaintiff
has the burden of the trial cost in the inter-parties appeal case.
The parties in the inter-parties
appeal cases are the applicant and the KIPO. Although the IPTAB belongs to the
KIPO and the Commissioner of the KIPO has authority over the human resources of
the IPTAB, the IPTAB is an independent organization with a unique
administration system. Moreover, as far as an industrial property right is
concerned, the IPTAB is acting as the first instance because the Patent Court
handles an appeal case against the decision of the IPTAB as the second
instance. Therefore, if the KIPO loses the trial of the IPTAB in the
inter-parties appeal case, the KIPO must bear the burden of the trial cost. But
when a patentee demands a permission trial for correction of a patent claim
among the inter-parties appeal cases (unless there is a mistake of examination
by an examiner), the patentee must bear the burden of the trial cost because
the legal benefit is only for the patentee.
I presume that the plaintiff has
burdened the trial cost because an examiner and a trial examiner belonged
to the KIPO. From now on, if the lost party burdens the trial cost, even in the
inter-parties appeal cases, then an examiner will pay more attention when
rejecting a patent or trademark registration. This environment will lead to a
more detailed examination and decrease the number of unreasonable rejection
cases on a patent or trademark registration.
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