<ABSTRACT> A study on licensee challenges to patent validity Dong-jun Kim Patent invalidation procedures are different from country to country. According to the Korean Patent Law, the only way of challenging a patent is an invalidation procedure. Any third party can file a request of invalidation against a granted patent within three months of the date of publication of the patent. After that, invalidation may be filed only by an interested party or a patent office examiner. Then, are licensees allowed to file a request of invalidation to challenge the patent right in Korea? The Supreme Court decisions on this issue conflict with each other. While the Court allows licensees to contest the validity of patent in some cases, including 82 Hu 30, the Court denies licensees standing to challenge patent validity in other cases, such as 80 Hu 77. This problem should be solved either by the Supreme Court decision or by legislative action. In the U.S., the Supreme Court waived the doctrine of licensee estoppel and opened the door to licensees to contest the validity of the licensed patent in Lear v. Adkins. Japanese law relating to challenging patent validity changed on January 1, 2004. Under the new system, except when challenging the inventorship of a patent, a challenger to patent validity need not have any specific interest in the matter. It is no doubt that the purpose of the invalidation procedure is to prevent defective patents from being protected by the patent law. Licensees may often be the only individuals with enough economic incentive to challenge the patentability of a granted patent. If they are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification. I think it plain that the doctrine of licensee estoppel must give way before the demands of the public interest. For the same reason, any power of a licensor to withhold from a licensee freedom to contest the validity of the licensed patent should be denied.

<ABSTRACT> A study on licensee challenges to patent validity Dong-jun Kim Patent invalidation procedures are different from country to country. According to the Korean Patent Law, the only way of challenging a patent is an invalidation procedure. Any third party can file a request of invalidation against a granted patent within three months of the date of publication of the patent. After that, invalidation may be filed only by an interested party or a patent office examiner. Then, are licensees allowed to file a request of invalidation to challenge the patent right in Korea? The Supreme Court decisions on this issue conflict with each other. While the Court allows licensees to contest the validity of patent in some cases, including 82 Hu 30, the Court denies licensees standing to challenge patent validity in other cases, such as 80 Hu 77. This problem should be solved either by the Supreme Court decision or by legislative action. In the U.S., the Supreme Court waived the doctrine of licensee estoppel and opened the door to licensees to contest the validity of the licensed patent in Lear v. Adkins. Japanese law relating to challenging patent validity changed on January 1, 2004. Under the new system, except when challenging the inventorship of a patent, a challenger to patent validity need not have any specific interest in the matter. It is no doubt that the purpose of the invalidation procedure is to prevent defective patents from being protected by the patent law. Licensees may often be the only individuals with enough economic incentive to challenge the patentability of a granted patent. If they are muzzled, the public may continually be required to pay tribute to would-be monopolists without need or justification. I think it plain that the doctrine of licensee estoppel must give way before the demands of the public interest. For the same reason, any power of a licensor to withhold from a licensee freedom to contest the validity of the licensed patent should be denied.

Licensee, Interested Party, Standing, Licensee Estoppel, Patent Invalidation, Patent Invalidity, To Contest the Validity of Patent, No-contest Clause, No-challenge Clause