Practice on Final Appeal to the Supreme Court in Korea

The losing party in an appeal proceeding of the second instance may again appeal the decision of the appeal court to the Supreme Court. The notice of appeal to the Supreme Court must be filed with the appeal court within 14 days from the receipt date of the high court decision. That is the deadline which is not extendible. The court of appeal will send the dockets of the case to the Supreme Court.

The Supreme Court dockets the case and order the petitioner to submit a final appeal brief within 20 days from the receiving date of the court order. The period cannot be extended and the case will be dismissed if the final brief has not been filed within the period.

The respondent (opposing party) will be served the final brief the Supreme Court, and then can submit a rebuttal brief within 10 days of the date of the service. By having submit each brief by both parties, official procedures of briefing have been finished.

However, it is common for parties to submit supplemental briefs after that stage. In principle, the Supreme Court is not required to consider them. In practice, the Supreme Court may take into their consideration some arguments from supplemental briefs in case the arguments are within the appeal brief and the rebuttal brief. If the arguments from supplemental briefs are new, out of the scope of the appeal brief or the answer brief, the Supreme Court will not review them and may not consider as relevant and legal arguments.

After briefings, the Supreme Court will review the final brief of the petitioner and the rebuttal brief of the respondent, and will decide whether the case will be fully reviewed by a panel of 4 justices. 

The scope of appeal to the Supreme Court in Korea is limited to legal issues. Parties may not appeal facts and may not submit any evidences to the Supreme Court. Accordingly the Supreme Court reviews only a matter of law and in case the appeal is based on factual errors of the low courts, the case will be dismissed within 4 months.

Even though the appeal is directed to legal errors of the low courts, due to the excessive number of appeals to the Supreme Court, the Supreme Court can dismiss the appeals if the decision follows the statutes and precedents. It is such a gate keeping quick review process called a refusal of further consideration in the Supreme Court. 

After that stage, a panel of 4 Justices will fully review the appeal case. Or all members of 14 Justices in the Supreme Court may decide the issue through en banc reconsidering the case. Such a full review will takes about 1 and half years or 2 years.

The Supreme Court has given deference to the decisions of the High Courts, and therefore we can see only about 5% of winning rate among final appeal cases to the Supreme Court. The Korean patent court plays the final decision maker as a matter of practice like the CAFC in the U.S.

Functional Language in Claim

In general, a claim with functional language is very often objected by the Examiner in Korean patent practice. Examiners usually consider functional wordings or expressions used in claims rendering the scope or constitution of the claimed invention unclear and indefinite. Further, they seem to surely have the opinion that such functional expressions make the scope of the functional language claim to be unduly broader than the subject matter supported by the specification.

However, functional wordings or functional expressions are surely allowed under Korean patent practice when no alternative and effective expressions that can clearly and definitely describe the claimed subject matter; the meanings of the functional expressions are fully supported by the detailed description of the invention; and the functional expressions do not pose any problems in defining the scope of the claimed invention. For example, for the specifications of electronic technology field, functional wordings are usually and often allowed in claims. An examiner who is in charge of examinations for chemistry, biotechnology or pharmaceutical patent applications, has relatively high tendency to reject functional language claims.

Recently the Supreme Court held that the scope of protection for an invention is limited to the embodiments clearly specified in the detailed description and drawings when means-plus-function features are exceptionally allowed. The detailed descriptions and drawings of the invention are critical factors to be considered in narrowly interpreting functional claims for purposes of determining the scope of protection. Therefore, it is advisable to keep in mind that many examples should be described in the detailed description when the applicant files an application for a functional claim.