Article 164(1) of the Patent Act provides that a trial procedure may be suspended until a presiding trial examiner completes the litigation procedure; Article 164(2) provides that a court may suspend the litigation procedure until a trial decision on a patent becomes final and conclusive; Article 164(3) provides that a court shall notify the purport thereof to the President of the Intellectual Property Tribunal when a litigation for infringement is instituted or completed; and Article 164(4) provides that the President of the Intellectual Property Tribunal shall notify the court falling under paragraph (3) of the purport where a trial for invalidation, etc. of a patent right is requested in response to a litigation for infringement of a patent right or an exclusive license pursuant to paragraph (3). As such, the Patent Act provides on the premise that a trial to confirm the scope of a patent right and a litigation procedure are recognized as a separate and independent procedure irrespective of

In light of the nature and function of the system to confirm the scope of a patent right, and the contents and purport of the patent law, even if the scope of the patent right can be determined in the said lawsuit, the interests of the petition for adjudication of the scope of a patent right claimed separately from the infringement lawsuit cannot be deemed to be denied.

1. A. The reasoning of the lower judgment reveals the following facts.

1) The Plaintiffs filed a lawsuit against the Defendant seeking prohibition of patent infringement (hereinafter “related infringement lawsuit”) with the Suwon District Court on the ground that the challenged invention in the judgment of the lower court rendered by the Defendant infringed the Plaintiffs’ patented invention (patent registration number omitted) of this case.

2) The Defendant filed a claim for the confirmation of the scope of a patent right of this case before the pleading of the relevant infringement lawsuit is concluded and the judgment is pronounced.

3) In addition to the instant case in relation to the instant patented invention, the Plaintiffs are in dispute as a party in multiple lawsuits and trials.

B. Based on such factual basis, the lower court determined that it is difficult to recognize the benefit of the petition for a trial on the ground that the claim is an effective and appropriate means in light of the litigation economy, and it is difficult to separately claim a trial to confirm the scope of the right of the patented invention in the instant lawsuit, even though the relevant infringement lawsuit is pending, and even if it is possible to determine the scope of the right of the patented invention in the instant lawsuit, the claim for a trial to confirm the scope of the right of the instant patent invention is an effective and appropriate means

2. However, we cannot accept the judgment of the court below.

A. The adjudication to confirm the scope of a patent right under Article 135(a) of the Patent Act is not a procedure to finally confirm the relationship between the disputing parties, such as a claim for prohibition of infringement or a claim for damages, as in a civil lawsuit (hereinafter referred to as “infringed lawsuit”), but does not have binding force on the litigation for infringement (see, e.g., Supreme Court Decisions 9Da59320, Jan. 11, 2002; 2012Hu4162, Mar. 20, 2014; 2012Hu4162, Mar. 20, 2014). The adjudication to confirm the scope of a patent right has a unique function in that it contributes to preventing or immediately concluding disputes between the disputing parties by deciding whether the invention subject to confirmation is included in the objective scope of patent rights.

Article 164(1) of the Patent Act provides that a trial procedure may be suspended until a presiding trial examiner completes the litigation procedure; Article 164(2) provides that a court may suspend the litigation procedure until a trial decision on a patent becomes final and conclusive; Article 164(3) provides that a court shall notify the purport thereof to the President of the Intellectual Property Tribunal when a litigation for infringement is instituted or completed; and Article 164(4) provides that the President of the Intellectual Property Tribunal shall notify the court falling under paragraph (3) of the purport where a trial for invalidation, etc. of a patent right is requested in response to a litigation for infringement of a patent right or an exclusive license pursuant to paragraph (3). As such, the Patent Act provides on the premise that a trial to confirm the scope of a patent right and a litigation procedure are recognized as a separate and independent procedure irrespective of

In light of the nature and function of the adjudication system to confirm the scope of a patent right, and the contents and purport of the patent law, even if the infringement lawsuit is pending and the scope of the patent can be determined in the lawsuit, it cannot be deemed that the benefits of the adjudication to confirm the scope of a patent right claimed separately from the infringement lawsuit are denied.

B. The judgment of the court below is erroneous in the misapprehension of legal principles as to the interest in a request for a trial to confirm the scope of a patent right, which affected the conclusion of the judgment. The ground of appeal

3. Therefore, the lower judgment is reversed, and the case is remanded to the lower court for further proceedings consistent with this Opinion. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Lee Ki-taik (Presiding Justice)