2019.04.27

Vol.17 (BEAUTIFUL SKIN ROLLER)

IP High Court  H29 (ne) 10086

1. Conclusion 

The assertion for the invalidation against the patent made by the defendant was not accepted in the infringement lawsuit.

2. Summary

If the decision that the patent should not be invalidated is final and binding in an invalidation trial, which is examined by the JPO, the defendant cannot assert the invalidation defense anymore based on the same facts and proof in an infringement lawsuit.

3. My comments

Since this case is not based on the nature of patent, it should apply to design and trademark registrations. I suppose this judgment was affected by the latest decision in the Supreme Court.

It is usual for defendants in an infringement lawsuit to file an invalidation trial with the JPO as a defense against the infringement lawsuit. Considering this case, defendants in an infringement lawsuit should file an appeal if they fail in an invalidation trial. This would cost the defendants a lot. In the first place, if you are sued, you should be careful before you file an invalidation trial.

As an attorney, we cannot help informing our clients of such risks even if they might not entrust us with invalidation trials by getting the information.