On October 27, 2017, the Korean Patent Court
affirmed the IPTAB’ decision that a Licensee may challenge patent validity in
Korea. The licensee filed a petition for patent Invalidity and the case was
tried before the Patent Court. (Case No. 2017Heo27272 decision)
Typically, a licensee has been estoppel by the
clause of licensee agreement that “the licensee under a patent license
agreement could not challenge the validity of the licensed patent in a suit for
royalties due under the contract.”
However, the Korean Fair Trade Commission (KFTC)
made it clear that “Prohibiting licensees from challenging the validity of any
patents and using transacting terms that permit termination of the licensing
agreement if licensees challenge the validity of a patent” violated the Korean
Faire Trade Law and ordered a patentee to correct such illegal licensee term.
Like Medimmune decision, it is possible for a
licensee to challenge the validity of a licensed patent while still fulfilling
its contractual duty under a license agreement by paying contractually required
royalty fees.
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