2013년 특허법 개정안에 대한 검토 및 제언

Comments on Proposed Amendments to Patent Act of 2013

In March 2013, Korean Intellectual Property Office (KIPO) called for comments on proposed amendments to Patent Act. The draft amendments include the following: First of all, the filing date of a patent application shall be the date on which a description of the invention, even without claims, is received in the Patent Office. Furthermore, for the purposes of the filing date, an application may be filed in a designated foreign language, that is English for the time being. Next, the amendments include changes to patent trials. A trail for post-grant amendments shall not be requested where a trial for invalidation of post-grant amendments is pending before the Intellectual Property Tribunal. A trail for invalidation of post-grant amendments may be requested to nullify post-grant amendments made during a previous trail for invalidation of post-grant amendments. Where a patent ('the second patent') cannot be exploited without infringing another patent ('the first patent'), a non-exclusive licensee of the second patent shall not request a trail for the grant of non-exclusive license to practice the first patent. Finally, terms and phrases have been changed for easy understanding. The draft provisions regarding the filing date reflect international trends and are necessary steps for accession to the Patent Law Treaty (PLT). However, the provisions adopt a little bit different approach from those of European Patent Convention and the Japanese Patent Act, regarding how to deal with translations of foreign language applications. Since foreign language applications are new to the Patent Act, we need to scrutinize relevant provisions considering the practices of European Patent Office (EPO) and Japanese Patent Office (JPO). The revisions regarding patent trials are not good ideas. A trail for invalidation of post-grant amendments should be abrogated because it is one of the reasons for prolonged patent disputes. Rather, it should be a part of a invalidation trial of patent. In addition, a non-exclusive licensee of the second patent needs to be able to request a trail for the grant of non-exclusive license to practice the first patent. Finally, terms and phrases should be changed consistently throughout the Patent Act for easy understanding.