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IV. Amendment to Patented Claim
Amendment Trial and Invalidation Trial
Under the Korean Patent Act, the Patent Trial Tribunal has
an exclusive jurisdiction of invalidation of and/or amendment
to patented claims as the first instance tribunal.
When an invalidation trial is initiated by a competitor, the
patentee often finds his claims are too broad to be recognized
as valid ones. Then, the patentee may request a trial for
amendment of claims before the Patent Trial Tribunal.
In the past, however, during the trial for amendment of patented
claims was conducted before one trial board, the invalidation
trial board, which was not necessarily the same board hearing
amendment of claims, usually waited for the holdings of the
amendment trial. This has been one reason of delay in invalidation
trial proceedings and, in many cases, related patent infringement
proceedings.
Under the new law, the patentee whose claim(s) is contested
during an invalidation proceeding shall request to amend the
contested claim(s) before the board which is hearing the invalidation
trial, as a kind of a defense to invalidation request. This
limitation on the forum for hearing patentee's request for
amendment to patented claims will expedite the procedures
for patent invalidation and infringement disputes. (Art. 133
bis)
Not Applicable to Proceedings before the Patent Court
Above limitation on the forum for trial for amendment of patent
claims is applicable to the proceedings before the Patent
Trial Tribunal, the first instance court, and the opposition
proceedings before a panel of Patent Examiners. When the invalidation
decision of the Patent Trial Tribunal is appealed to the Patent
Court, the second instance court, the patentee is free to
request to amend his claims at the Patent Trial Tribunal (Art.
136 bis)
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