|
CHAPTER ¥· TRIALS,
RETRIALS AND LITIGATION
Article 49 ¡¼Trial for Invalidation of
Utility Model Registration¡½
(1) Any interested party or an examiner may
request a trial to invalidate a utility model
registration pursuant to any of the following
subparagraphs. If the registered utility model
contains two or more claims, a request for
an invalidation trial may be made for each claim:
(¥¡) where the utility model has been registered
in violation of Article 25 of the Patent Law
as
applied mutatis mutandis under Article 4
of this Law, Articles 5, 7, 8(1) to 8(4), 9(3)
and 9(4)
of this Law, or Articles 33 and 44 of the
Patent Law as applied mutatis mutandis under
Article 20 of this Law;
(¥¢) where the utility model has been registered
to a person who is not entitled to obtain the
utility model right;
(¥£) where the utility model has been registered
in violation of a treaty;
(¥¤) where, following the registration of
the utility model, the owner of the utility
model right is
no longer capable of enjoying the utility
model right under Article 25 of the Patent Law
as
applied mutatis mutandis to Article 4 of
this Law, or the utility model registration
no longer
complies with a treaty; or
(¥¥) where the utility model has been registered
in violation of the proviso of Article 35(2)
of
this Law.
(2) A request for a trial under paragraph
(1) may be made even after the extinguishment
of a
utility model right.
(3) Where a trial decision invalidating a
utility model registration has become final
and
conclusive, the utility model right shall
be deemed never to have existed; however, where
a
trial decision invalidating a utility model
registration under subparagraph (1)(iv) has
become
final and conclusive, the utility model right
shall be deemed not to have existed from the
time
when the utility model registration first
became subject to said subparagraph.
(4) Where a request for a trial under paragraph
(1) has been made, the presiding trial
examiner shall notify the exclusive licensee
of the utility model right and any other persons
who have registered rights relating to the
utility model registration, of the contents
of the
request.
Article 50 ¡¼Trial to Confirm the Scope
of a Utility Model Right¡½
An owner of a utility model right or any
interested person may request a trial to confirm
the
scope of a registered utility model. A trial
may be requested for each claim if the registered
utility model contains two or more claims.
Article 51 ¡¼Trial for Correction¡½
(1) An owner of a utility model right may
request a trial for corrections to the specification
or
drawings for only the reasons specified in
the following subparagraphs:
(¥¡) to narrow a claim;
(¥¢) to correct a clerical error; or
(¥£) to clarify an ambiguous description.
However, these provisions shall not apply
where a technical evaluation or an opposition
to
the registration of a utility model is pending.
(2) Corrections to the specification or drawings
under paragraph (1) shall neither enlarge nor
modify the claims.
(3) Where a request for a trial for correction
under paragraph (1) does not comply with any
of
its subparagraphs, or is in violation of
paragraph (2), the trial examiner shall notify
the
petitioner, providing reasons for refusal,
of the request, and provide the petitioner with
an
opportunity to submit a written response
within a designated time limit.
(4) A trial for correction under paragraph
(1) may be requested even after the utility
model
right has been extinguished. However, where
the utility model registration has been revoked
by a decision of revocation under Article
74(3) of the Patent Law as applied mutatis
mutandis under Article 25(1) or 48, or invalidated
by a trial decision for invalidation, this
provision shall not apply.
(5) An owner of a utility model right shall
not request a trial for correction under paragraph
(1)
without the consent of an exclusive licensee,
a pledgee or a nonexclusive licensee, under
Article 39(1) of the Patent Law as applied
mutatis mutandis under Article 20 of this Law,
and
Articles 100(4) and 102(1) of the Patent
Law as applied mutatis mutandis under Article
42 of
this Law.
(6) The Commissioner of the Korean Industrial
Property Office shall make publication of the
corrected matters in the Utility Model Gazette
where a trial decision has been rendered to
the effect that the specification or drawings
of a registered utility model are to be corrected.
(7) Where a trial decision that the specification
or drawings of a registered utility model are
to be corrected becomes final and conclusive,
the utility model application and registration
of
the establishment of the utility model right
shall be deemed to have been made on the basis
of such corrected specification or drawings.
Article 52 ¡¼Trial for Invalidation of
Correction¡½
(1) An interested party or an examiner may
request a trial for an invalidation of a correction,
where the specification or drawings of a
registered utility model have been corrected
contrary
to the provisions of Article 51(1) or 51(2)
of this Law.
(2) The provisions of Articles 49(2) and
49(4) shall apply mutatis mutandis to a request
for a
trial under paragraph (1).
(3) Where a trial decision that a correction
of the specification or drawings is to be
invalidated under paragraph (1) has become
final and conclusive, the correction shall be
deemed never to have been made.
Article 53 ¡¼Trial for Grant of Non-exclusive
License¡½
(1) If an owner of a utility model right,
or an exclusive or non-exclusive licensee, desires
to
obtain permission to exercise the registered
utility model provided for in Article 39, and
if the
other person refuses to grant permission
without justifiable reasons, or it is not possible
to
obtain such permission, said owner or said
exclusive or non-exclusive licensee may request
a trial for grant of a non-exclusive license
having a scope necessary to work the registered
utility model.
(2) Where a trial under paragraph (1) is
commenced, a non-exclusive license shall be
granted only where the registered utility
model of the later application constitutes a
substantial technical advance in comparison
to the other person's registered utility model
or
patented invention for which application
was filed prior to the filing date of the later
application.
(3) If the other person, who is ordered to
grant a non-exclusive license pursuant to a
trial
under paragraph (1), needs to work the registered
utility model of the party who has been
granted such non-exclusive license, and if
the latter refuses to give permission or if
it is
impossible to obtain such permission, the
former may request a trial for the grant of
a
non-exclusive license having a scope necessary
to work the registered utility model.
(4) The party granted a non-exclusive license
under paragraphs (1) and (3), shall pay
remuneration to the owner of the utility
model right, the patentee, the owner of the
design
right or an exclusive licensee thereof, provided
that if payment is not possible for reasons
beyond the control of said party, the remuneration
shall be placed in deposit.
(5) A non-exclusive licensee under paragraph
(4) shall not work the registered utility model,
the patented invention or the registered
design or a similar design, without payment
of said
remuneration or said placement in deposit.
Article 54 ¡¼Trial against Ruling of Revocation¡½
A person who has received a decision of revocation
under Article 25(1) of this Law or Article
74(3) of the Patent Law as applied mutatis
mutandis under Article 48 of this Law, and does
not agree with the ruling, may request a
trial within thirty days from the date of receipt
of a
certified copy of the ruling.
Article 55 ¡¼Formal Requirements
of Request for Trial¡½
(1) A person who desires to request a trial
shall submit a written request to the President
of
the Industrial Property Tribunal, stating
the following:
(¥¡) names and domiciles of the parties (in
case of a legal entity, its title, place of
business
and the name of its representative);
(¥¢) names and domiciles or place of business
of the agent, if any;
(¥£) identification of the trial case; and
(¥¤) the purpose of the request and the grounds
therefor.
However, for the request of a trial against
a decision of revocation under Article 54 of
this
Law, the provisions of Article 140bis(1)
of the Patent Law shall apply.
(2) No amendment to a request for trial submitted
under paragraph (1) may change the intent
or purpose thereof.
(3) A written request for a trial under Article
53(1) shall, in addition to the particulars
referred
to in paragraph (1), state:
(¥¡) the number and title of his utility
model registration which is required to be worked;
(¥¢) the number, title and date of the other
party's patented invention, registered utility
model
or registered design to be worked; and
(¥£) the scope, duration and remuneration
for the non-exclusive license for the patented
invention, the registered utility model or
the registered design.
(4) When a trial is requested to confirm
the scope of a utility model right under Article
50,
the relevant specification and drawings shall
be attached to the written request.
(5) When a trial for correction under Article
51(1) is requested, the corrected specification
or
drawings shall be attached to the written
request for trial.
Article 56 ¡¼Mutatis Mutandis Application
of Provisions of the Patent Law¡½
The provisions of Articles 139, 140bis(2),
141 to 166, 171(2), 172, 176 and 178 to 191
of the
Patent Law shall apply mutatis mutandis with
respect to trials, appellate trials, retrials
and
litigation. In this case, "the opponent"
in Article 140 bis(2) of the Patent Law shall
be
deemed to be "a person who requests
a technical evaluation or an opponent;"
"the decision
on a patent opposition" [in Article
164(1)] shall read "the decision on a request
for technical
evaluation or an opposition to the registration
of a utility model;" and "an examination
or an
opposition" [in Article 172] shall read
"an examination, technical evaluation of
a utility model
or an opposition to the registration of a
utility model."
|
