An International Guide to
Patent Case Management for Judges

8.2.2 Administrative review proceedings

There are two types of IPTAB proceedings: ex parte and inter partes proceedings. An ex parte case is an appeal against an examiner’s decision to reject an application and involves only the petitioner. From March 2017, the IPTAB has also started hearing “patent opposition” challenges ex parte. In inter partes cases, a petitioner and a defendant dispute over a granted right. Ex parte and inter partes trial cases include the following trials:

• ex parte proceedings:

  • appeal against a decision to reject an application;
  • trial for correction;
  • patent opposition;

• inter partes proceedings:

  • trial for invalidation; and
  • trial to confirm the scope of rights.

The majority of IPTAB patent proceedings can be classified into the following categories based on their subject matter:

• appeal against a decision to reject an application – when an applicant receives a decision of rejection from an examiner, they may pursue an appeal within 30 days of the date of receipt of the certified copy of the decision (Article 132-17 of the Patent Act);
• trial for correction – a patent holder may pursue a petition for the correction of a granted patent or utility model for the reasons of narrowing a claim, correcting a clerical error, or clarifying an ambiguous description (Article 136 of the Patent Act);
• trial for invalidation – an interested party may seek a trial to retroactively invalidate the granted patent right based on statutory invalidation grounds (Article 133 of the Patent Act);
• trial to confirm the scope of rights – an interested party may seek a trial to confirm whether a technology that is being practiced or will be practiced by a third party falls within the scope of a granted patent (Article 135 of the Patent Act); and
• patent opposition – any person may request a patent opposition, within six months of the publication of the grant of the patent, to revoke the patent based on prior art (Article 132-2 of the Patent Act).

8.2.2.1 Patent trial procedures

Hearings may be held orally or in writing. Unless requested otherwise, hearings are conducted generally in writing. An oral hearing is held upon request from the parties or if the presiding administrative judge finds it necessary.⁵

A panel of three or five administrative judges hears a case and participates in deliberations to reach a conclusion by a majority vote before rendering the final decision.⁶ An applicant who is dissatisfied with the final decision of the IPTAB may appeal to the Patent Court. A Patent Court decision is appealed to the Supreme Court.

8.2.2.2 Effects of Intellectual Property Trial and Appeal Board decisions: non bis in idem

If an IPTAB decision on a case becomes final and conclusive, no person may demand a retrial based on the same facts or evidence. However, this requirement does not apply where the final and conclusive ruling is a rejection.⁷ The term “same facts” means certain facts that stem from the same cause with respect to the same right. Thus, although causes such as lack of novelty, inventive step or industrial usability would all result in the same outcome of patent invalidity, they all constitute separate facts. The term “same evidence” includes not only the evidence submitted before a previously confirmed IPTAB decision but also any supplementary evidence that is not compelling enough to overturn the confirmed decision. Therefore, if new evidence is submitted, but it is compelling enough to overturn the confirmed decision, it is not in breach of the non bis in idem principle.⁸

8.2.2.3 Relationship between revocation suits and administrative patent trials

Litigation for the revocation of an IPTAB decision is a judicial process carried out by the Patent Court under the judicial branch of the government prioritizing the adversarial system and the principle of pleadings that the parties are responsible for making arguments and submitting materials for the court to consider to reach its conclusion. Administrative patent trials are administrative appeal procedures handled by the IPTAB under the executive branch of the government and operate under the inquisitorial system. In this regard, revocation suits and administrative trials are fundamentally different.⁹

An IPTAB trial has some similarities to a (judicial) appellate proceeding in that an IPTAB decision is the subject matter of a revocation suit, as a district court decision is the subject matter of an appeal. However, it should be noted that IPTAB trials are fundamentally different from appellate trials in general due to the aforementioned aspect. They are not linked to each other in terms of instance, such as the courts of the first and second instance. This means that arguments or materials presented in an IPTAB trial cannot be automatically treated as presented in a revocation suit in a court because the latter requires arguments and materials to be newly presented or submitted for the court to consider them.