What is a Trial for Confirmation of Scope of Rights? From Affirmative/Negative Differences to Practical Response Strategies
Pine IP Firm
March 22, 2026
Patent disputes ultimately boil down to one question: “Does the other party’s technology fall within the scope of my patent rights?” or conversely, “Does my product/service fall outside the scope of another’s patent rights?” The procedure to officially confirm this issue is called a scope confirmation trial. Current patent law stipulates that a patent holder or exclusive licensee can file for a scope confirmation trial to confirm the scope of protection of their patented invention, and an interested party can do so to confirm the scope of protection of another’s patented invention. This procedure also operates on the premise that the registered right is still in effect.
The Intellectual Property Trial Board (IPTB) has expedited and priority trial systems for scope confirmation trials related to infringement cases pending in court, or for scope confirmation trials in the pre-litigation or preventive stages of infringement disputes indicated by warning letters, etc. Thus, it is utilized as a means to clarify the direction of a dispute at a relatively early stage.
The above distinctions are based on Article 135 of the Patent Act, official guidance from the IPTB, and FAQs from the Patent Customer Consultation Center. Notably, the negative scope confirmation trial can be used to cover inventions not yet launched, making it a frequently considered tool for managing commercialization risks.
The core of a scope confirmation trial is not to determine the “validity of a right,” but to confirm “the extent to which the scope of a validly existing patent right extends.” The IPTB also explains this system as a procedure to resolve disputes over the interpretation of patent rights between patent holders and third parties through objective judgment by a state agency. Therefore, scope confirmation trials are closely linked to sending warning letters, license negotiations, decisions on product launches, and strategies for filing or defending infringement lawsuits.
Furthermore, according to IPTB guidance, if a decision confirming that the invention falls “within the scope of the patent rights” becomes final, the invention subject to confirmation is deemed to constitute significant infringement, and if a decision confirming that it does “not fall within the scope” becomes final, it is deemed not to constitute significant infringement. While claims for damages or injunctions themselves involve separate civil proceedings, in practice, these judgments significantly influence negotiation power and the structure of litigation.
The scope of protection of a patented invention is, in principle, determined by what is written in the claims. The Supreme Court holds that claims should be interpreted objectively and reasonably based on the ordinary meaning of the wording, taking into account the specification and drawings, but arbitrarily limiting or expanding the claims using the specification or drawings is not permitted. In other words, scope confirmation trials should not be approached with a mere feeling of similarity; a precise comparison must be made on a component-by-component basis for each claim.
Even more important here is the specification of the invention subject to confirmation. The Patent Act requires that when filing for a scope confirmation trial, a description that allows comparison with the patented invention and necessary drawings must be attached. In an affirmative scope confirmation trial, if the invention subject to confirmation specified by the trial applicant differs from the invention actually asserted by the other party, the very legality of the trial may be called into question. The Supreme Court has ruled that the burden of proof that the other party is actually asserting that invention lies with the trial applicant, and if the invention specified by the applicant is not identical to the invention actually asserted, the trial application may be deemed unlawful.
In practice, most trial-and-error occurs in this area. If a trial is rushed without sufficient acquisition of evidence such as the other party’s product manuals, promotional materials, user interfaces, service flows, disassembly photos, purchased samples, or test reports, the core issue of “what constitutes the invention subject to confirmation” can become unstable. Conversely, if the invention subject to confirmation is clearly specified and the comparison table is meticulously constructed, it becomes much easier to maintain a consistent framework in subsequent negotiations or litigation.
First, from the patent holder’s perspective, if a competitor’s product or service is believed to infringe their patent, but they wish to obtain an objective judgment to organize negotiation power and evidence structure before immediately proceeding to an infringement lawsuit, an affirmative scope confirmation trial can be considered. Second, from the perspective of a company preparing to launch a product or a business that has received a warning letter, a negative scope confirmation trial can be utilized to proactively seek a determination that their asserted invention or planned invention does not fall within the scope of another’s patent rights. The IPTB explicitly states that the scope of negative scope confirmation trials includes inventions planned for future assertion, in addition to currently asserted inventions.
Furthermore, according to IPTB guidance, if there are multiple claims, a scope confirmation trial can be filed separately for each claim. Therefore, if the point of dispute is concentrated on a specific claim, it may be more efficient to design the structure around the core claims rather than trying to address all claims unnecessarily.
These two are often discussed together in practice, but their purposes are clearly different. An invalidity trial is a procedure to dispute whether a registered patent has legal grounds for invalidity and to extinguish its effect retroactively or prospectively. A scope confirmation trial is a procedure to confirm the extent of protection of a valid patent, assuming its existence. Therefore, if the opposing patent itself is deemed weak, an invalidity trial is central, whereas if the core issue is whether one’s product falls within the scope of a valid opposing patent, a scope confirmation trial is central. In actual disputes, it is common to pursue both procedures concurrently or to design a strategy that combines scope confirmation trials with amendment and invalidity procedures.
A scope confirmation trial can only be filed while the right is still alive. The Supreme Court holds that there is no legal interest in seeking scope confirmation for an already expired patent, and the IPTB’s practice follows this. Therefore, for cases where the expiration date is imminent, the timing of the filing itself becomes part of the strategy.
Another issue is amendment. The Patent Act generally stipulates that amendments to the trial application cannot change the gist. However, certain exceptions are allowed in scope confirmation trials. For example, in an affirmative scope confirmation trial, if the respondent argues that the invention is “different from the actually asserted invention,” the applicant may be allowed to amend the description or drawings of the invention subject to confirmation to align it with the actually asserted invention. Nevertheless, it is much safer to meticulously specify the invention subject to confirmation from the initial filing stage.
A scope confirmation trial is not a procedure decided by a single document. In reality, the following four factors determine success:
First, establishing the basis for interpreting the claims.
A comparative standard must first be set, including claim interpretation, the scope of consideration for the specification, and the possibility of applying the doctrine of equivalents.
Second, evidencing the invention subject to confirmation.
For products, securing samples and performing disassembly/photography; for services, capturing screenshots and recording usage flows; for method inventions, securing materials showing the procedural structure must be done in advance.
Third, selecting the type of trial.
It must be determined early in the case whether an affirmative type is appropriate for the right holder, a negative type for the asserted party, or if an invalidity trial should be pursued in parallel.
Fourth, coordination with business schedules.
The timing of filing the trial must be designed considering launch schedules, investment schedules, negotiations with business partners, responses to warning letters, and the possibility of infringement litigation.
At this point, a scope confirmation trial becomes not just a legal procedure, but an IP strategy linked to business decision-making.
Yes. A negative scope confirmation trial can cover inventions planned for future assertion, as well as currently asserted inventions. This means it can be considered as a tool for assessing patent risks before launch.
In principle, no. The Supreme Court has ruled that there is no legal interest in seeking scope confirmation for an already expired patent, and the IPTB’s practice is the same.
Caution is advised. In an affirmative scope confirmation trial, the invention subject to confirmation specified by the applicant must be identical to the invention actually asserted by the opponent, and the burden of proof lies with the applicant. If the specification of the invention subject to confirmation is incorrect, the application itself may be deemed unlawful.
The success or failure of a scope confirmation trial ultimately comes down to two sentences:
“How will the claims be interpreted?”
“How accurately has the invention subject to confirmation been specified?”
Patent disputes are not resolved by emotion or conjecture. Patent claims, specifications, actual assertion forms, market data, warning letters, and launch schedules must be integrated into a single strategy. Pine IP Firm views scope confirmation trials not as mere procedures, but as practical strategies that connect dispute prevention, negotiation, and litigation.
