|
|
| IP Newsletter | Winter 2014/15 | |
During prosecution of a patent directed to an oral liquid composition, a voluntary amendment was filed to add a working example evaluating the antibacterial effect of the claimed composition, along with a drawing showing the evaluation results. The examiner allowed the application, despite the amendment being improper for introducing new matter. Subsequently, the issued patent became subject to an invalidation action on the grounds that the amendment had improperly introduced new matter.
In response to the invalidation action, the patentee filed a request to correct the patent by deleting the new matter. Notably, the respondent to the correction petition did not object to the proposed correction. Nevertheless, the Korean Intellectual Property Tribunal ("IPT") denied the correction based on its ex officio review of the case. During an IPT proceeding, the ex officio principle may be applied when necessary in the name of public interest. Thus, the IPT is not limited to the issues raised by the parties but may actively investigate necessary facts or evidence on its own. The IPT eventually rendered the patent invalid for having been issued with new matter (IPT Decision in 2012Dang2859, rendered July 30, 2013).
The patentee appealed the decision to the Patent Court, arguing that the proposed correction is proper because it (i) removes subject matter that shows a superior effect, which indirectly narrows the claim scope; and (ii) cures an amendment which should have been rejected by the examiner during the prosecution stage.
Was the Patentee's Petition for Correction Proper?
Under Korean patent law, a petition for correction to amend a patent may be granted only where the correction (i) narrows the scope of a claim, (ii) corrects a clerical error, or (iii) clarifies an ambiguous description (Article 133-2 and Article 136, Section 1 of the Korean Patent Act).
The Patent Court held that a petition for correction to remove working examples or drawings does not "narrow the scope of a claim" since it does not alter the claim form. Moreover, simply deleting experimental results from the specification does not in any way change the rights afforded to the patentee.
The Patent Court also clarified that "correcting a clerical error" means correcting a description that is clearly an error in view of the patent application as a whole and the knowledge in the relevant art at the time of filing the application (see Supreme Court Decision in 2013Hu627, rendered February 13, 2014). Applying this definition, the Patent Court held that the proposed correction did not seek to "correct a clerical error" and failed to fall under the statutory category of "clarifying an ambiguous description."
The petitioner argued that the proposed correction should be allowed since it rectifies an amendment which was improperly allowed by the examiner during prosecution. In response, the Patent Court refused to entertain any attempt to place blame on the examiner for wrongfully allowing the amendment.
Was New Matter Introduced by the Amendment?
Under Article 47, Section 2 of the Patent Act, "any amendments to a patent application must be supported by the original specification or drawings." A feature "supported by the original specification or drawings" refers to that which is clearly described in the original application, or that which one of ordinary skill in the art would have recognized as being within the scope of the original application in view of the knowledge in the art at the time of filing (see Supreme Court Decision in 2005Hu3130, rendered February 8, 2007).
The Patent Court found the new working example and results added to the application contained testing conditions (e.g., sample volume, cultivation temperature or time, etc.) that were considerably different from those used in the working examples described in the original specification. Moreover, the Patent Court stated that one of ordinary skill in the art would not have readily expected the new evaluation results in view of the description in the original specification. Finding that one of ordinary skill in the art would not have recognized the newly added subject matter as falling within the scope of the original application, the Patent Court ruled that the new matter had been improperly introduced rendering the patent invalid.
Implications of the Patent Court Decision
While an improper or unclear amendment may be canceled to revert an application back to its previous form during prosecution, this may not be possible after patent issuance using the correction proceeding. Thus, it is advisable for applicants to be particularly mindful of amendments made during the prosecution stage.
|
Young Hwan YANG yhyang@ip.kimchang.com |
Tommy KIM tkim@ip.kimchang.com |
Miyoung NOH mynoh@ip.kimchang.com |