1. Request for Correction

Where a patentapplication is granted a patent by the Korean Intellectual Property Office butthe patent has defects, such as prior arts being included, etc., a patentee maycorrect the issued patent. The correction can be made by filing a correctiontrial. When an invalidation trial is pending, a request for correction can befiled to correct the patent.

2. Requirements of Request for Correction inInvalidation Trial

- Timeframe for Filing Request for Correction

A request forcorrection may be filed (1) within the timeframe for filing a brief respondingto the invalidation action, (2) within the timeframe for filing a response accordingto the ex officio examination and (3) the timeframe granted by the presiding judge due tosubmission of evidence by the petitioner even after the deadline for filing aresponse brief has passed. Meanwhile, a request for correction may be filedseveral times. However, if a request for correction is made prior toinvalidation trial proceedings and another request for correction is madeduring the same procedures, the earlier filed request for correction is deemedto have been withdrawn.

- Allowable Scope of Request for Correction

A request forcorrection during invalidation trial proceedings is allowed if the correctionfalls within one of (1) narrowing the scope of claims, (2) correcting erroneousdescriptions and (3) clarifying unclear descriptions. Additionally, thecorrection should be made within the scope disclosed in the specification,claims or drawings of a patent. To correct erroneous descriptions, thecorrected matters should have been disclosed in the originally filedspecification, claims or drawings of the application. Further, the correctionshould not substantially expand or modify the scope of the claims.

- Difference between Request for Correction andCorrection Trial

A correctiontrial can be filed if the correction falls within one of (1) narrowing thescope of the claims and (2) correcting erroneous descriptions. The mattersrecited in the corrected claims should have been patentable at the time the applicationwas filed. However, these rules are not applicable to the request for correctionmade during invalidation trial proceedings.

3. Use of Request for Correction

The total number ofinvalidation trials filed during the past three (3) years (from February 1, 2011to December 31, 2013 calculated based on the decision date) is 1,844. Uponreview of the decisions made for the invalidation trials, the number of caseswhere the proprietors filed requests for correction is 557 and the percentageof cases using the requests for correction during invalidation trials is 30%.Among the cases, the number of cases where the requests for correction were acceptedis 476, which constitutes a considerably high percentage, 85%.

Among the invalidationtrial cases during which requests for correction were not filed, the percentageof affirmed requests for invalidation trial is 51%. This percentage is the sameas 51%, which is the percentage of affirmed requests for invalidation trialsduring which requests for correction were filed and such requests were then accepted.Considering that a request for correction is a response that the proprietor canadopt if the possibility of the patent being invalidated is very high, arequest for correction during invalidation trial proceedings can be a powerfuldefense means.

[Results ofInvalidation Trial Decisions] 1

1 Casesindicated by “others” include dismissed court decisions, dismissed IPTdecisions, partially affirmed cases, partially dismissed cases, etc.