Patent Invalidation Trials Under the Korean Patent Act (Article 133)

Translation & Commentary

Patent Invalidation Trials Under the Korean Patent Act (Article 133)

특허법 제133조 (특허의 무효심판)

As amended through October 19, 2021

Translated by Corey Colling, Certified Korean to English Translator

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Korean Source Text (원문)

제133조(특허의 무효심판)

① 이해관계인(제2호 본문의 경우에는 특허를 받을 수 있는 권리를 가진 자만 해당한다) 또는 심사관은 특허가 다음 각 호의 어느 하나에 해당하는 경우에는 무효심판을 청구할 수 있다. 이 경우 청구범위의 청구항이 둘 이상인 경우에는 청구항마다 청구할 수 있다.

1.

제25조, 제29조, 제32조, 제36조제1항부터 제3항까지, 제42조제3항제1호 또는 같은 조 제4항을 위반한 경우

2.

제33조제1항 본문에 따른 특허를 받을 수 있는 권리를 가지지 아니하거나 제44조를 위반한 경우. 다만, 제99조의2제2항에 따라 이전등록된 경우에는 제외한다.

3.

제33조제1항 단서에 따라 특허를 받을 수 없는 경우

4.

특허된 후 그 특허권자가 제25조에 따라 특허권을 누릴 수 없는 자로 되거나 그 특허가 조약을 위반한 경우

Note: 이해관계인 = interested party (a term of art requiring legal standing); 청구범위 = scope of claims; 청구항 = individual claim

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English Translation

Article 133 (Invalidation Trial of a Patent)

(1) An interested party (limited, in the case of subparagraph 2, to a person holding the right to obtain a patent) or an examiner may file a request for an invalidation trial where a patent falls under any of the following subparagraphs. Where the scope of claims contains two or more claims, the request may be filed on a per-claim basis.

1.

Where the patent violates Article 25, Article 29, Article 32, Article 36 paragraphs (1) through (3), Article 42 paragraph (3) subparagraph 1, or Article 42 paragraph (4);

2.

Where the patentee does not hold the right to obtain a patent under the main clause of Article 33 paragraph (1), or where Article 44 has been violated. Provided, however, that this shall not apply where the patent has been transferred and re-registered pursuant to Article 99-2 paragraph (2);

3.

Where the patent cannot be granted under the proviso to Article 33 paragraph (1);

4.

Where, after grant of the patent, the patentee becomes a person ineligible to hold a patent right under Article 25, or where the patent comes to violate a treaty.

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Commentary

There is no clean English word for 무효심판.

"Invalidation trial" is the term used here, but it carries a weight that neither English word quite captures on its own. 무효 (無效) means not merely "invalid" in the sense of "open to challenge." It means null and void, without legal effect, as though the thing never existed. And 심판 (審判) is not a trial in the American sense of a courtroom proceeding with judge and jury. It is a quasi-judicial proceeding before the Korean Intellectual Property Trial and Appeal Board (특허심판원), an administrative tribunal that sits within KIPO.

What Article 133 establishes, then, is a quasi-judicial process by which a granted Korean patent can be retroactively declared to have never existed. That retroactive effect is the heart of it. If an interested party or an examiner brings a 무효심판 and prevails, the patent is treated as if it had never been granted from the outset. This differs meaningfully from a cancellation, which has prospective effect. Translations that render 무효심판 as "cancellation trial" miss the distinction, and the distinction has consequences. A licensee who paid royalties under a now-invalidated patent has a different set of claims available to them than one whose patent was merely cancelled going forward.

Two other points are worth flagging. First, the article expressly allows challenges to be brought on a per-claim basis (청구항마다). This matches international practice but is sometimes obscured in older translations that refer only to "the patent" being challenged as a whole. Second, the inclusion of 심사관 (the examiner) among those who may file an invalidation petition is distinctive. Patent office examiners in the United States and most European jurisdictions cannot initiate invalidation against patents their own office granted. In Korea, they can.

The 2021 amendment that added the standing limitation in subparagraph 2 is recent enough that older translations may not reflect it. It restricts who may invalidate on inventorship and joint-applicant grounds to the person who actually has the right to obtain the patent, narrowing what had been general interested-party standing. Worth checking the effective date of any translation you rely on.

Sources:

특허법 (Patent Act), Article 133, as amended by Act No. 14112 (Feb. 29, 2016) and Act No. 18505 (Oct. 19, 2021). Korean Legislation Information Center (law.go.kr).

특허심판원 (Korean Intellectual Property Trial and Appeal Board), "당사자계 심판" (Inter Partes Trials), kipo.go.kr/ipt.

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