Whether the proviso to Article 163 of the Patent Act, which provides that a final and conclusive trial ruling which has no effect of res judicata, applies to a case where the newly submitted evidence may be reversed by a prior final and conclusive trial ruling, and then a final and conclusive trial ruling which has been rejected on the ground that it was a request for a trial based on the same evidence as the previous final and conclusive trial ruling (affirmative)

Article 163 of the Patent Act regarding the doctrine against double Jeopardy provides, “No person shall file a petition for a trial again on the same facts and evidence: Provided, That this shall not apply where a final and conclusive trial ruling is a rejection of a petition for trial.” Therefore, where the final and conclusive trial ruling fails to meet the lawful requirements of a petition for trial and is a final and conclusive trial ruling dismissed, the same shall not apply.”

Considering the following points, the foregoing proviso shall be equally applied to cases where the new evidence submitted was examined and determined as to whether it was a valuable evidence to the extent that it can reverse the previous final and conclusive trial decision, and where the new evidence was rejected on the ground that it was an appeal for a trial by the same evidence as the previous final and conclusive trial decision

① In a case where a trial decision which was rejected as a result of failing to meet the lawful requirements of the previous request for a trial became final and conclusive, there was a disagreement as to whether it has the effect of res judicata. However, by newly establishing the said proviso under the Patent Act amended by Act No. 6411 on February 3, 201, the said proviso was newly established, and clarifying that it has no effect of res

(2) The “same evidence” under Article 163 of the Patent Act includes not only the same evidence as the evidence of a trial ruling rendered before and after the trial ruling, but also the addition of not-fitable evidence to the extent that it may reverse the trial ruling. Accordingly, in order to determine whether the newly submitted evidence is the same as the evidence of a trial ruling rendered after the subsequent trial ruling, the determination of whether to reverse the prior final and conclusive trial ruling may be reversed and the same result may arise as the preceding judgment is prior to the final and conclusive trial ruling in the process. However, the principle of res judicata is only the lawful requirement of a trial request, and even in the above case, it goes beyond the permissible scope of interpretation of the text to treat a rejection trial ruling rendered as identical to a rejection trial ruling rendered by a trial ruling

③ Even in light of the purport of the res judicata system in order to prevent abuse of a petition for trial and prevent the occurrence of multiple trial decisions inconsistent with and causing contradictions, guaranteeing the right to request for a trial is also an important value, and Article 163 of the current Patent Act provides that the effect of res judicata shall be limited to a third party, and it is difficult to justify the extension of the scope of application by recognizing exceptions to the proviso to Article 163 of the Patent Act.

Article 163 of the Patent Act

[Plaintiff-Appellant-Appellee] Plaintiff 1 and 2 others (Law Firm Gyeong, Attorneys Park Jong-soo et al., Counsel for plaintiff-appellant-appellant-appellee)

[Defendant-Appellant] Yum Co., Ltd. (Attorney Yu-jin et al., Counsel for defendant-appellant-appellant)

[Plaintiff-Appellant] Plaintiff 1 and 3 others (Law Firm LLC, Attorneys Gyeong-ok et al., Counsel for plaintiff-appellant)

Patent Court Decision 2020Heo3584 decided Dec. 10, 2020

The judgment below is reversed, and the case is remanded to the Patent Court.

The grounds of appeal are examined.

1. Article 163 of the Patent Act on the doctrine against double Jeopardy provides, “When a trial ruling under this Act becomes final and conclusive, no person may request a trial again on the same facts and evidence: Provided, That this shall not apply where the final and conclusive trial ruling is a rejection trial ruling.” Therefore, where the final and conclusive trial ruling fails to meet the lawful requirements of a trial request and is thus dismissed, the same shall not apply.”

Considering the following points, the foregoing proviso should be equally applied to a case where the new evidence submitted was examined and determined as to whether it is valuable evidence to reverse a prior final and conclusive trial decision, and where the new evidence was rejected on the ground that it was a trial request based on the same evidence as the previous final and conclusive trial decision.

A. Although there was a disagreement as to the validity of the res judicata in a case where a trial decision, which failed to meet the legal requirements of the previous request for a trial, became final and conclusive, the said proviso was newly inserted in the Patent Act amended by Act No. 6411 on February 3, 2001, and made clear that the rejection does not have the validity of the res judicata.

B. The term “same evidence” under Article 163 of the Patent Act includes not only the same evidence as the evidence of a trial decision which became final and conclusive but also the addition of not-proof evidence enough to reverse the trial decision (see, e.g., Supreme Court Decision 2004Hu42, Mar. 11, 2005). Accordingly, in order to determine whether a new evidence is the same as the evidence of a trial decision which became final and conclusive in a subsequent trial, it is necessary to examine and determine whether to reverse the prior final and conclusive trial decision, and the same result as prior to the judgment on the merits in the process may arise. However, the principle of res judicata is only a legitimate requirement of a trial request, and even in such a case, it is more than the possible scope of interpretation of the text.

C. Even if considering the purport of the res judicata system in order to prevent abuse of a request for a trial and prevent the contradictions and conflicts, the guarantee of the right to request a trial is also an important value, and Article 163 of the current Patent Act provides that the effect of res judicata shall be limited to a third party, it is difficult to recognize the exception of the proviso of Article 163 of the Patent Act and expand the scope of its application.

2. Nevertheless, the lower court determined that the instant petition for a trial was unlawful in accordance with the res judicata effect of the final and conclusive trial decision which was dismissed on the ground of a violation of the res judicata, on the ground that, in cases where a claimant’s property right based on the same evidence was determined as a final and conclusive trial decision having the effect of res judicata, the said final and conclusive trial decision may be deemed as a final and conclusive trial decision having the effect of res judicata. In so determining, the lower court erred

3. Therefore, without further proceeding to decide on the remaining grounds of appeal, 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 Park Jung-hwa (Presiding Justice)