Patent Litigation 2020

Last Updated February 10, 2020

South Korea

Law and Practice

Authors



Lee & Ko fields an IP Practice Group of around 100 highly experienced IP trial lawyers and patent attorneys with unrivalled industry and technical expertise in the electrical, mechanical, chemical and pharmaceutical fields, among others.  The firm provides legal services relating not only to local practice but also to other jurisdictions.  The trial attorneys have advised and represented numerous clients in IP disputes in other jurisdictions, including the US federal courts, the ITC, and European courts.  In particular, the group has set Korean Supreme Court precedents and litigated landmark cases, including Kimberly-Clark v P&G and LG Life Sciences, and Samsung v Apple.

Under Korean law, there are three types of intellectual property rights for the protection of inventions: patents, utility models and new plant varieties. 

In principle, under the civil law system adopted in Korea, these intellectual property rights are protected based on statutory law. Patents are protected based on statutory law, including the Patent Act (KPA) and the enforcement decree and rules thereof. Utility models are regulated by the Utility Model Act (UMA) and the enforcement decree and rules thereof. New plant varieties are protected based on the Act on the Protection of New Varieties of Plants (NVP) and the enforcement decree and rules of said Act, as well as the Seed Industry Act and its enforcement decree. The case law, however, also plays a role where precedents address various issues with the intellectual property rights that are not clearly provided by the codified laws, such as the rule for claim construction and the application of the doctrine of equivalence. 

Patents and utility models are granted under the following procedure:

  • an applicant files a patent/utility model application with the Korean Intellectual Property Office (KIPO);
  • an examiner scrutinises whether the invention is patentable and issues either a notice of approval or grounds for rejection;
  • if the examiner issues a notice of grounds for rejection, the applicant files remarks with or without amendment to the claims and specification to overcome the grounds;
  • a decision for registration is issued; and
  • a patent/utility model is registered upon the applicant’s payment of the registration fee.

A new plant variety is granted under the following procedure:

  • an applicant files an application for plant variety protection;
  • an examiner examines novelty and formality based on the documents, and distinctness, uniformity and stability based on cultivation test;
  • the examiner issues either a notice of approval or grounds for rejection;
  • the applicant files remarks with or without amendment to overcome office actions;
  • a decision of plant variety protection is issued; and
  • the new plant variety is granted and registered after the payment of plant variety protection fees.

The grant procedure for patents and utility models typically takes around 18 months. Specifically, an examiner typically issues an office action one year after the formality examination. This period can be reduced when an applicant files for an accelerated examination. Then the applicant has about two months to file a response to the grounds for rejection, and the examiner issues a decision within about four months of the applicant’s response. The grant procedure could take longer if the examiner issues an additional office action or the applicant requests an extension of the due date for filing its response to the rejection.

The timeline for the grant procedure of new plant varieties is unpredictable and differs on a case-by-case basis. Typically, the document examination takes around three months, and the examination by cultivation takes approximately two years. However, this procedure could take longer if the examiner issues an additional office action, or if the applicant requests an extension of the due date for filing its response to the rejection.

Inventors/applicants do not need to be represented by attorneys in order to initiate grant proceedings. However, if the applicant does not have an address in Korea, it shall be represented by an agent that does have an address in Korea in order to proceed with grant proceedings before the KIPO. Furthermore, the agent shall be a Korean Patent Attorney in the procedure for patents and utility models.

The costs for the grant procedure can be divided into attorney’s fees and official fees. The attorney’s fees are usually based on hourly rates, and depend highly on various factors that are unique to each invention, including the complexity of inventions, the volume of records and the number of claims. Therefore, public statistics on the legal cost are not available. The average costs for the grant procedure range from several thousand to tens of thousands of dollars, including fees for responding to office actions. The official fees includes a filing fee, an examination fee and a registration fee (or annuity). These fees are based on the number of claims and the number of years for registration. For a patent application with ten claims, the application fee and examination fee without fees for responding to office actions is approximately USD500 in total.

The term of a patent is 20 years from the filing date of the patent application, but the rights to the patent arise when the patent is registered. The rights to a utility model last ten years from the filing date of the utility model application and, similarly, such rights arise when the grant of the utility model is registered. The term of a new plant variety is 20 years from the registration date of the grant of the plant variety right, but 25 years for fruit trees and forest trees.

For patents, however, the term can be extended in two instances:

  • First, if permission or registration is required under the laws to practise a patented invention, and if it takes a long time to undergo the necessary tests for efficacy, safety, etc, for obtaining such permission or registration, the term of the patent may be extended once for an additional period of up to five years to compensate for the period during which the invention cannot be practised, unless the delay is attributable to the owner (Article 89(1) of KPA). This rule applies to inventions for pharmaceutical products or finished or raw agrochemical products.
  • Second, when the registration date of the grant of the patent is later than four years after the application date or three years after the date of request for examination, the term of the patent may be extended for the delayed period. If the delayed period is attributable to the owner, then it is excluded from the extension of the term (Article 92-2 of KPA).

The owner of an intellectual property right has the right to initiate both civil and criminal actions against alleged infringers. For civil actions, the owner can file an action for injunction of infringement (Article 126 of KPA, Article 30 of UMA, Article 83 of NVP), an action for damages (Article 131 of KPA, Article 30 of UMA, Article 85 of NVP) and an action for reinstatement of reputation (Article 131 of KPA, Article 30 of UMA, Article 87 of NVP). These statutes do not establish procedural requirements to be met before filing an action, but a lawsuit seeking damages must be filed within ten years from the date of the last infringing act, and within three years from the date of the owner’s learning of the infringing act. The owner also has a right to file preliminary injunctions if there is an imminent infringement.

The owner can also initiate a criminal action by filing a criminal complaint against alleged infringers. If the infringers are found liable, they can be punished by imprisonment of not more than seven years or a fine not exceeding KRW100 million (Article 225(1) of KPA, Article 45 of UMA, Article 131 of NVP), and infringing products can be confiscated or ordered to be delivered to the owner upon the owner’s request (Article 231(1) of KPA, Article 51 of UMA, Article 136 of NVP).

With regard to obligations, the owner must pay annual registration fees in order to maintain the intellectual property right.

Korean law does not provide protection for patents/utility models/new plant varieties after the maximum term (including the extended term). Patents/utility models/new plant varieties that are published after the registration cannot be protected as trade secrets.

Third parties can provide the KIPO with information that a patent application lacks patentability by filing third-party observations (TPO), along with evidentiary documents, which may include publications, patent applications, etc. A TPO can be filed at any time when the application is pending at the KIPO. However, an examiner is not obligated to reject a patent application based on the information provided by the TPO, and has discretion on whether to use such information for examination.

Furthermore, the KPA provides a patent cancellation procedure as a post-grant position procedure. In contrast to an invalidity action, the patent cancellation procedure can be filed by anyone, and must be filed within six months of the patent publication.

If the grant of the intellectual property right is refused, the applicant may file a remark and amend the application within the timeframe set by the examiner. If the grounds for rejection is unity of invention, the applicant may file a divisional application to overcome the rejection.

If the application is finally rejected, however, the applicant may file an appeal to an IP Trial and Appeal Board (IPTAB) established under the umbrella of the KIPO in the case of a patent or a utility model application, or to the Plant Variety Protection Trial and Appeal Board (PVPTAB) under the Ministry of Agriculture, Food and Rural Affairs (MAFRA). The decision by the IPTAB or the PVPTAB can be appealed to the Patent Court, which is a specialised appellate court for IP matters, and then to the Supreme Court.

For patents and utility models, if the owner fails to pay the annual fees within the due date, the owner has six months to make late payment of the annual fees (or one month from the receipt of an order if the payment is under-paid). The late payment is higher than the amount that the owner should have paid, and prescribed by the relevant rules. If the owner still fails to make the late payment within such period, the owner will be deemed to have abandoned the patent application, and the patent is deemed to expire as of the original due date.

If the late fee was not paid due to circumstances that are not attributable to the owner, the owner can reinstate the patent by paying the late payment within two months of the date when such ground ceases to exist, and within one year of the due date for the late payment. On the other hand, if the failure of payment was due to circumstances that are attributable to the owner, the owner can request reinstatement by paying twice the annual fees that they should have paid, within three months of the due date for the late payment.

The same rules apply to new plant varieties, except that in the case of expiration due to non-payment under grounds not attributable to the owner, the due date for the reinstatement by the late payment is within 14 days of the date when such ground ceases to exist, and within six months of the due date for the late payment.

The owner of a patent or utility model can take several actions against an infringer, under the rubric of a civil action, a border action, or a criminal action.

Civil actions include main actions and preliminary injunction actions. A patentee may bring what is generally referred to as a “main action” for patent infringement, seeking damages, a permanent injunction, and/or the destruction of infringing goods before a district court. A “main action” typically lasts from ten to 18 months; in exceptional cases, a case may last for two years or longer. A permanent injunction almost always attaches upon an infringement decision. Main actions are the most widely utilised form of patent infringement actions.

A preliminary injunction may be issued when there is immediate or present danger of irreparable harm being caused to the patentee. A preliminary injunction action is a separate and distinct legal proceeding from the main action, and is brought before the district court. Preliminary injunction actions are always inter partes. A district court will render a decision typically within three to eight months, depending on the judicial panel that hears the case, and the complexity of the issues at hand.

The Korea Customs Service (KCS) has the authority to seize and hold imported goods that are suspected of infringing intellectual property rights, including patents. In addition, the Korea Trade Commission (KTC) has the administrative authority to impose certain corrective and/or penal measures. Specifically, the KTC may investigate the import or export of goods that infringe a Korean patent as an unfair trade practice. Available remedies include:

  • corrective measures (eg, seizure and withholding of infringing goods at the border, or destruction of the infringing goods);
  • administrative fines; and
  • criminal penalties in case of non-compliance.

Under the KPA, an act of infringing a patent may constitute a crime. An injured patentee may file a criminal complaint with the authorities (ie, the police or a public prosecutor’s office) against an infringer, in conjunction with, or independent of, a civil action. Because the authorities have investigative powers, filing a criminal complaint can help in collecting evidence and providing the means of discovery. In the past, investigation authorities lacked the resources for conducting patent validity and infringement assessment, but nowadays there are patent attorneys hired at Seoul District Prosecutors’ Offices, as well as KIPO personnel dispatched to Daejeon Prosecutors’ Office to support and expedite investigations for patent-related crimes.

Third parties can remove the effects of patents and utility model rights in various ways:

    1. During prosecution, anyone may present evidence and arguments supporting denial of the application to the KIPO.
    2. After registration of the intellectual property right, anyone may file a cancellation action within six months of registration with the IPTAB.
    3. Regardless of this six-month window, interested parties (ie, anyone that can show a legal or commercial interest in the effect of the intellectual property right at issue) may file an invalidation action with the IPTAB.
    4. When certain conditions are met, a third party seeking to practise a patent or utility model right may apply for a decision of compulsory licence with the KIPO.
    5. Lastly, an interested party may file a trial for confirmation of non-infringement with the IPTAB. It is to be noted, however, that the IPTAB’s decision in this trial for confirmation of non-infringement does not bind a court in an infringement action, although the courts generally respect the decision.

Remedies a), c) and d) are also available for plant variety rights, with some differences in procedural requirements. An invalidation action as described in c) can be filed with the PVPTAB, and an application for a compulsory licence as described in d) may be filed with either the MAFRA or the Ministry of Oceans and Fisheries, depending on the plant variety protection right at issue.

Korea has a bifurcated system for handling intellectual property disputes. IP infringement actions for damages and/or permanent injunctions are handled at first instance by the district courts, while invalidation proceedings for patent, utility model, trade mark and design protection rights are handled by the IPTAB within the KIPO, and the PVPTAB within the MAFRA performs a similar function exclusively for plant variety protection rights.

The first instance civil trial of an IP infringement action is heard by the Seoul Central, Daegu, Suwon, Busan, Daejeon or Gwangju District Court, although a plaintiff in any IP infringement case may file an action before the Seoul Central District Court at its discretion.

IP invalidation actions are tried exclusively before the IPTAB or PVPTAB, depending on the IP at issue. The IPTAB and PVPTAB are both administrative tribunals under the auspices of either the KIPO or the MAFRA, and manage administrative actions relating to intellectual property rights.

Appeals of decisions regarding IP infringement from the district courts (excluding decisions of preliminary injunctions, appeals of which are heard by the High Courts) and IP invalidation from the IPTAB or PVPTAB are both heard exclusively by the Patent Court, which is located in Daejeon and exclusively hears IP matters. A losing party may appeal a decision of the Patent Court to the Supreme Court.

Korea has various specialised organisations for the resolution of IP disputes. In addition to the Patent Court, which exclusively hears IP matters, the IPTAB and the PVPTAB are specialised organisations for the resolution of IP disputes. Furthermore, the Industrial Property Dispute Resolution Committee is available for the resolution of IP disputes via mediation. The Committee is established by the Invention Promotion Act, which stipulates that decisions recording the results of mediation by the Committee have the same legal effect as a final court judgment.

In Korea, IP infringement actions can only be brought by the registered IP right holder or the registered exclusive licensee. Therefore, the recordal of the ownership or the exclusive licence to the IP right is a prerequisite for bringing an infringement action. While formal demand letters/warning letters are commonly sent to potential infringers, they are not a requirement for filing a lawsuit. Mediation prior to litigation is rare, and likewise is not a legal requirement for filing a lawsuit.

To file invalidation actions before the IPTAB or the PVPTAB, the party filing such action must be an interested party that can show a legal or commercial interest in the effect of the intellectual property right at issue, as explained in 2.2 Third-Party Remedies to Remove Effects of Intellectual Property.

Parties in IP matters are not required to retain legal representation, and can bring cases on their own behalf before either the courts or the relevant administrative tribunals. If the applicant does not have an address in Korea, however, it must be represented by an agent that does have an address in Korea in order to proceed with the proceeding before the IPTAB or PVPTAB.

If parties do obtain legal representation for IP infringement actions before the district courts, they must be represented by a Korean attorney-at-law. For actions before the IPTAB, including invalidation actions, parties must be represented by a Korean patent attorney.

At the Patent and Supreme Courts, parties appealing district court decisions regarding infringement may again only be represented by a Korean attorney-at-law, while parties appealing IPTAB/PVPTAB decisions may be represented by a Korean attorney-at-law, a patent attorney, or both.

A preliminary injunction (PI) action is an instrument for obtaining an interim (preliminary) injunction. The requirements for a successful PI action are the right to claim injunction (current or imminent infringement of the patent), and a need for preservation (irreparable harm to the patentee). A PI action proceeds separately from the main action and is reviewed by a separate department of a district court that focuses on PI actions. A plaintiff in a PI action must make a prima facie showing of patent infringement based on the proffered evidence. PI actions based on patent infringement are reviewed inter parte and, in most cases, two to three hearings will be scheduled at two to three week intervals.

In response to a complaint, a potential opponent can file a response brief and is allowed to rebut the owner’s arguments during the hearing. The main grounds for rebuttal are that the opponent’s product does not fall within the scope of the patent, and that the patent at issue is invalid or corresponds to a free-to-practise technology.

In a PI action, if a PI order is issued, the owner is required to post a bond in the amount determined by the court, and the court may order the owner to store the infringing products. Such bond is not required in permanent injunction actions. After the grant of a PI, if the patent at issue is found invalid or a final decision of non-infringement is issued, the opponent is entitled to file a claim for damages arising out of the PI.

Protective briefs as used in some European countries are not available in Korea. Instead, an alleged patent/utility model infringer may file a trial for confirmation of non-infringement to the IPTAB in order to obtain a decision of non-infringement.

Korean patent law does not provide a special limitation for filing an injunction; they can be filed at any time if there is an ongoing or imminent infringement. A lawsuit seeking damages, however, must be filed within ten years of the date of the last infringing act, and within three years of the date of the patentee’s learning of the infringing act.

While Korea does not adopt extensive discovery processes, certain types of limited court-supervised discovery are available during patent litigation proceedings. The KPA allows the court to order – upon one party’s request – the other party (usually the alleged infringer) to submit evidentiary materials necessary to prove patent infringement or damages. Where the accused infringer cites a justifiable excuse (eg, trade secret), the court may conduct in camera inspection to assess the accused infringer’s proffered excuse. However, if the material is deemed to be essential for proving infringement or damages, the accused infringer may not refuse to submit the material for the reason that it constitutes a trade secret. In addition, the parties may procure evidence via requests for inquiry to third parties (eg, customs, tax offices, customer companies).

Before the commencement of litigation proceedings, parties may file a petition for the preservation of evidence to the court. This process can be effective because the parties have no obligation to preserve their own documents or evidence under the Korean civil procedure law. This petition may be reviewed ex parte and granted if there is an urgent need for preservation (ie, a high probability of modification or spoliation), and a high probability of infringement is recognised. If such a request is granted, the court will investigate the evidence prior to the commencement of an infringement action.

Intellectual property proceedings are handled no differently from non-intellectual property proceedings in the context of the initial pleading standards. The court conducts review of all evidence presented by the parties, and requires the owner to prove infringement under a basis that a reasonable person would not raise a doubt on the owner’s argument. For the initial pleadings, the court does not require a certain form of evidence, but the owner must prove to the level of high probability that the defendant has infringed the owner’s intellectual property.

In principle, the parties can present additional arguments or evidence until the closing of the trial. Furthermore, the owner can present new arguments or evidence at the appeal stage.

Korea has not yet adopted a class action procedure for IP rights litigation.

Korea restricts the owner of an IP right from asserting its rights against others if the claim is considered a patent misuse or abuse. In an infringement action, if the court finds the IP right at issue to be clearly invalid, the IP right owner would be restricted from asserting its rights against others as such claim would be considered patent misuse or abuse. Also, if the asserted IP right falls under the scope of Freedom to Operate (FTO) technology, the court will not examine the patentee’s claim because it is clear that the scope of the patent at issue cannot reach the FTO technology.

Patent misuse may also occur if the patent owner’s conduct is a violation of the relevant antitrust laws. The Korea Fair Trade Commission sets out a guideline for the regulation of patent misuse.

In addition, Korea adopts the exhaustion doctrine in IP rights litigation, which limits claims against patented products that are sold under the authorisation of the patent owner. Also, the prior use defence may be a bar to patent infringement claims.

A patentee has standing to bring a patent infringement action. An exclusive licensee can also bring a patent infringement action independently from the patentee, provided that the exclusive licence is registered with the KIPO. Non-exclusive licensees do not have standing to bring a patent infringement action in Korea.

Under Korean patent law, in the case of a device/product patent claim, acts of direct patent infringement include the manufacture, use, sale, lease, import and offer (including exhibits) for sale or lease of the patented invention.

On the other hand, liability for indirect infringement arises when a person makes, sells, leases, imports, offers (including exhibits) for sale or leases an article that is used solely for making a patented invention (if the patent at issue is a device patent), or using a patented process (if the patent at issue is a process patent).

There is no significant difference between the means of remedies under either claim (provided that indirect infringement claims are not entitled to criminal remedies).

It is a central principle that the scope of an intellectual property right is determined by the limitations recited in each patent claim. However, the Korean Supreme Court has held that the claim language should be interpreted in an objective and reasonable manner based on its common meaning. It has also held that, in a case where the technical meaning of the patented invention cannot be specifically understood from the languages of the claims alone, the detailed description of the invention and drawings shall provide help.

The Korean Supreme Court also adopts the doctrine of equivalents. The Korean courts would find a product to infringe under the doctrine of equivalents (DOE) if:

  • the technical idea or principle to solve a problem is identical between the patented invention and the accused product;
  • the accused product with the modified element accomplishes substantially the same function and exhibits substantially the same effect; and
  • the modification of an element in the patented invention to the corresponding element in the accused product is obvious to a person skilled in the art.

Equivalents cannot be found if the accused product was already known or could have been easily conceived from the prior art, or if the prosecution history of the patented invention indicates that the accused product was deliberately excluded from the claims of the patented invention.

Korea adopts a defence based on the doctrine of prosecution history estoppel to prohibit the patentee from construing its claims in a way that would resurrect a subject matter previously surrendered during prosecution of the patent application.

Other than non-infringement claims, key defences to patent infringement include the claim that the patent at issue is invalid or that it falls under the FTO technology.

A defence of non-infringement may be asserted if the allegedly infringing product/process does not include all of the components set forth in the patent claim. Defence by claiming licence either by law or contract is treated as a non-infringement defence (the existence of a licence may be argued if the requirements for a compulsory licence or prior-use rights under the Patent Act are met).

A defence of patent misuse or abuse may be asserted (by claiming patent misuse or abuse) if there is a ground for invalidating the patent. Filing a separate invalidation lawsuit is also recommended, as obtaining an invalidation judgment may act in favour of overcoming the infringement lawsuit.

If the infringement claim involves a patented product purchased from an authorised licensee, an affirmative defence of patent exhaustion may be available. A defence based on the doctrine of prosecution history estoppel may be available to prohibit the patentee from construing its claims in a way that would resurrect a subject matter previously surrendered during prosecution of the patent application. If there is a violation of the relevant antitrust laws by the patentee, a defence based on patent misuse may be available. Statute of limitations (as defined under the Patent Act) defences may be available for damages compensation claims.

In patent infringement proceedings, the testimony or written opinion of an expert retained by either party can be submitted as evidence since the parties bear the burden to procure and submit evidence to support their positions on technical issues. The common practice is to use experts appointed by the parties.

In addition, parties may request inspection/appraisal by a court-appointed expert; if the request is granted, the court appoints a third-party expert (individual or institution), who analyses the technical issues and submits his or her opinion. The court relies heavily on the court-appointed expert’s opinion in deciding infringement.

There is no separate procedure for claim construction; the decision on the claim construction and the infringement are rendered at the same time.

Cancellation

The patent cancellation procedure is ex parte (ie, there is no involvement from the petitioner after filing a petition) and must be filed within six months of the patent publication. The cancellation claim must be based on:

  • lack of novelty and/or inventive step based on at least one prior art publication not cited by the KIPO examiner;
  • lack of industrial applicability; or
  • violation of the first-to-file rule.

If the KIPO determines that there is a cause for revocation, the patentee will be given an opportunity to submit a written opinion before the final revocation decision is rendered, at which point the patentee may request a correction.

Invalidation Trial

An interested party or an examiner may file a petition for trial to seek the invalidation of a patent with the IPTAB. The reasons for patent invalidation are generally the same as those for rejection of a patent application, such as:

  • lack of industrial applicability, novelty or inventiveness;
  • inadequacy of the written description, or enablement requirements; or
  • lack of support/clarity.

In response to the request for invalidation, while traversing the grounds of appeal brief, the patentee may request a correction of the patent. Such a request may be made multiple times during the invalidation proceeding. Specifically, correction can be filed in response to newly submitted evidence or arguments; the submission of evidence/arguments is not limited to the first answer brief.

Partial cancellation or invalidity are possible in Korea. The KIPO and/or IPTAB will review the cause of cancellation and invalidation for each requested claim. If grounds for cancellation or revocation exist for only some of the claims, partial cancellation or revocation will be granted for such portion of the claims, while the remainder of the claims are valid.

If a request for cancellation/revocation is filed and the KIPO determines that there is a cause for cancellation/revocation, the patentee will be given an opportunity to submit a written opinion before the final decision is rendered, at which point the patentee may request for a correction.

The patentee can file a request for correction to amend the patent during the invalidation proceeding.

A request for correction may be filed either within the deadline to submit the respondent’s answer to the petitioner’s claim, or within a period prescribed by the examiner. Correction may also be requested if the petitioner submits evidence or new grounds for invalidation.

Amendment by way of a correction trial or request for correction may be made only for the purpose of narrowing the scope of the claims, correcting obvious errors, or clarifying ambiguous language. Furthermore, corrections can only be made within the disclosure made in the specification and the drawings, and cannot widen or substantially change the scope of the claims. If the amendment is effectuated, the patent is deemed to have been filed, published and allowed in the amended form.

Korea has a bifurcated system for handling patent disputes. Patent infringement actions are handled at first instance by the district courts, while patent invalidation proceedings are handled exclusively by the IPTAB.

Patent invalidation actions before the IPTAB normally take less time than infringement actions in most cases. The IPTAB also offers cases to be assigned to an expedited track: where an infringement action is concurrently pending in a district court, the corresponding invalidation action is placed on an expedited track. According to the IPTAB’s internal guideline, once a case is placed on an expedited track, it will only take four months for the IPTAB to render a decision. In practice, however, cases may take longer to be resolved.

In Korea, patent proceedings before the IPTAB are largely prescribed by the Patent Act, with the Civil Procedure Act supplementing the procedural rules relating to patent litigation to the extent necessary. Patent litigation (cancellation of the decision of the IPTAB and infringement actions) before the court is based on the Civil Procedure Act, with some additional provisions relating to patent litigation prescribed by the Patent Act. Accordingly, in order to proceed with a patent litigation in Korea, both the Patent Act and the Civil Procedure Act must be considered. The Enforcement Decree of the Patent Act (which is a subordinate statute to the Patent Act) also prescribes some of the procedures relating to patent litigation. The Administrative Rules of the KIPO provide specific procedures for proceedings before the IPTAB.

Since most of the provisions of the Utility Model Act and the Act on the Protection of New Varieties of Plants apply the provisions of the Patent Act mutatis mutandis, procedural rules for utility model and new plant varieties proceedings are generally similar to the patent proceedings described above.

First instance invalidation proceedings under the IPTAB (which handles patent and utility model invalidations) are reviewed by a panel of three trial examiners. The IPTAB examiners are mostly former patent examiners with good technical understanding.

Korea does not adopt a jury trial system; infringement cases before the district courts are reviewed by non-technical judges. First instance infringement proceedings can be heard by one of the six district courts in Korea (with a panel of judges assigned to IP matters), according to the Civil Procedure Act. In practice, most patent infringement cases are filed with the Seoul Central District Court, which has departments dedicated to IP rights. Although the judges at the IP Rights Departments are not technical judges with a scientific background, there are technical examiners who can assist the judges in understanding the technical aspects of the litigation. The technical examiners may participate in the litigation proceedings by asking questions to the parties during oral hearings.

Second-instance proceedings under the Patent Court are reviewed by a panel of judges who are not technical judges with a scientific background. The Patent Court offers technical examiners (qualified persons with doctoral degrees in science and technology) who can support the judges on the technical issues of the case.

Proceedings under the Supreme Court are heard by 14 justices, who are assisted by a dedicated panel of IP judges (judges who specialise in IP law).

The following alternative dispute resolution schemes may be used in proceedings handled by the court.

The parties may first try to amicably resolve the dispute before initiating litigation, and request a reconciliation before the court. If the reconciliation fails, the parties may initiate a lawsuit. The parties may also request a mediation before the court, or the court may refer an ongoing case to a mediation process. If the mediation fails, the parties may initiate a lawsuit or the case may resume for further proceedings. The court may also render a reconciliation order ex officio, and unless the parties object to such order, the court will presume that the parties have agreed to the reconciliation. If either party objects to the order, then the case will resume for further proceedings.

The IPTAB also makes procedural attempts to help the parties settle by offering settlement conferences, etc.

In the case of infringement disputes involving new plant varieties, the Ministry of Agriculture, Food and Rural Affairs (the Seed Committee) and the Ministry of Oceans and Fisheries (the Fishery Committee) offer mediations to parties to resolve their disputes.

If a parallel revocation proceeding is taking place, a party may request the infringement proceeding to be stayed in an infringement proceeding until a decision on invalidity is made in the parallel revocation proceeding. However, a party’s request to stay the infringement proceeding may or may not be accepted, at the court’s discretion. There are no other court proceedings that affect a currently ongoing proceeding.

Monetary damages and preliminary or permanent injunctions are available for patent infringement under Korean law. The patentee may also seek to have any remaining infringing goods, half-finished goods or manufacturing equipment of the infringing goods destroyed.

As of 9 July 2019, enhanced damages are also available for patent infringement. The court may award up to three times the amount of compensatory damages if the infringement was found to be willful. The following factors may be considered when assessing the amount of damages, including but not limited to:

  • the infringer’s superior bargaining power;
  • the intention or degree of awareness regarding the risk of damages;
  • the extent of damages;
  • economic gain;
  • the period of infringement and frequency of the infringing act;
  • any criminal monetary penalty imposed in connection with the infringement;
  • the financial condition of the infringer; and
  • the infringer’s effort in remedying the patentee’s damages.

The prevailing defendant may claim litigation costs from the losing party, including attorney fees. However, the prevailing party may not claim the full amount of attorney fees incurred but only that which is within the scope of attorney fees allowed by the Supreme Court rules.

The types of remedies do not differ for different technical intellectual property rights. Monetary damages and preliminary or permanent injunctions are available for IP right infringements under Korean law. As of 9 July 2019, however, enhanced damages are available for patent infringement. The court may award up to three times the amount of compensatory damages if the patent infringement was found to be willful.

If a patent is found to be valid and infringed at the court of first instance, the court must declare ex officio that the plaintiff may carry out provisional execution of the judgment, unless there are considerable reasons for that not to be allowed, in which case the court may order the plaintiff to provide a security. The effectiveness of a provisional execution judgment will not be automatically suspended even if the defendant appeals the first instance judgment. The judgment for provisional execution only loses its effectiveness when a judgement on the merits (ie, the validity and the infringement of the patent) of the first instance is repealed upon appeal. Therefore, if the provisional execution has already been carried out and then a judgment on the merits of the first instance is repealed at the appellate trial, the plaintiff must return the goods or the money it received through the execution of the provisional execution judgment, and compensate for damages incurred from the execution.

Meanwhile, the defendant may request a suspension of the execution, giving prima facie evidence of possible irreparable damages if the provisional execution is to be carried out. The provisional execution could be suspended, in which case such a request is accepted by the court.

Generally, there are no special provisions that apply in the appellate procedure for IP rights litigation. Appellate cases for patent, utility model and new plant variety infringement are heard by the Patent Court and reviewed by a panel of three judges, assisted by technical advisers (mostly provided by the court and sometimes dispatched from the KIPO or IPTAB).

On appeal, the Patent Court’s review is conducted de novo and is not restricted in its scope: both legal issues and factual issues can be contested and re-adjudicated at the Patent Court. Typically, one or two oral hearings will take place, at least one of which will be a technical presentation hearing. The Patent Court’s appellate proceedings generally take between six and twelve months.

In addition, a party may, as a right, appeal an adverse Patent Court decision to the Supreme Court, the court of last resort. The appeal is reviewed by a judicial panel of four justices, with assistance from research judges and technical advisers dispatched from the KIPO or IPTAB. The proceedings at the Supreme Court are limited to a legal review.

For IP right infringement suits, a potential plaintiff may investigate and gather evidence of infringement before filing a complaint. The potential plaintiff may also carry out a prior art search in advance to check the validity of its IP right at issue. If needed, a potential plaintiff may send warning letters to the infringing party. These could incur costs prior to filing a suit.

Stamp fees and service of process fees will incur during the process of filing a lawsuit. The amount of stamp fees is calculated based on a calculation method established by the Civil Procedure Act, which is based on the value of the subject matter of the suit. Hence, the bigger the amount of damages sought for an IP right infringement, the higher the stamp fees will be.

The losing party bears the “cost of the lawsuit”, including limited attorney fees as recognised by the law and court fees. In practice, only a nominal amount of attorney fees are recognised and allowed as the “cost of the lawsuit” under the Supreme Court Regulations.

It is possible to resolve an IP dispute through an alternative dispute resolution such as mediation. However, issues that involve determining invalidity, cancellation or scope confirmation of an IP right are excluded from the subject matter of mediation.

A party may apply for mediation at the Industrial Property Dispute Mediation Committee regarding a dispute involving industrial property rights such as patent and utility model rights. The Committee helps to bring about a mutual agreement between the parties. Mediation through the Committee is free and private, and is usually processed within three months. However, it seems that mediation has mainly been used for trade mark and design disputes rather than patent and utility model disputes.

A person who intends to seek mediation of a dispute on the infringement of a plant variety right may apply for mediation at the Seed Commission, which is established by the Ministry of Agriculture, Food and Rural Affairs or the Ministry of Oceans and Fisheries. The Commission should mediate the case within one year, unless a case test cultivation is necessary.

An IP right holder may transfer his IP right freely (see Patent Act Article 99(1), Utility Model Act Article 28, Act on the Protection of New Varieties of Plants Article 60(1)). However, in order for the transfer of rights to take effect, the patent rights and utility model rights must be registered at the KIPO, and plant variety rights must be registered in the plant variety register (Ministry of Agriculture, Food and Rural Affairs or the Ministry of Oceans and Fisheries) (see Patent Act Article 101, Utility Model Act Article 28, Act On the Protection of New Varieties of Plants Article 62). If the IP right is jointly owned with others, it can only be assigned with the consent of all other joint owners.

With the exception of general succession, such as inheritance, the assignor and assignee must submit a patent right or utility model right transfer registration application to the patent office (in the case of plant variety right, to the Ministry of Agriculture, Food and Rural Affairs or the Ministry of Oceans and Fisheries) in order for the transfer to take effect. However, if the assignor’s written consent is attached or if the transfer agreement expressly includes the assignor’s consent, the assignee may apply for the IP right transfer registration by him/herself. If the registration is carried out by an agent, a power of attorney must also be submitted to prove that he/she has been granted the right to act as a proxy.

Generally, there are no particular requirements or restrictions when licensing an IPR. However, an exclusive licence must be registered at the patent office in order to become effective (in the case of plant variety right, to the Ministry of Agriculture, Food and Rural Affairs or the Ministry of Oceans and Fisheries), which may be done by submitting an application. As for non-exclusive licences, the execution of a licence agreement is sufficient for the licence to take effect; registration is not required. However, in order to make claims against a third party with respect to the non-exclusive licence, the registration of the non-exclusive licence is required. Besides this, a statutory non-exclusive licence and a compulsory licence also exist as types of non-exclusive licence, which do not require any registration.

A licensor may grant an exclusive licence to an IP right in the same way as an IP right is assigned, as described in 10.2 Procedure for Assigning an Intellectual Property Right. A non-exclusive licence takes effect only upon the execution of a licence agreement, while its registration would be required to claim against a third party. A statutory non-exclusive licence holder may claim against a third party without registration. A compulsory licence to patent or utility model right is registered by authority of the patent office (in the case of plant variety right, of the Ministry of Agriculture, Food and Rural Affairs or the Ministry of Oceans and Fisheries), without any party’s request.

Lee & Ko

Hanjin Building 63 Namdaemun-ro
Jung-gu Seoul 04532
Korea

+82 2 772 4000

+82 2 772 4001/2

mail@leeko.com www.leeko.com
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Law and Practice

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Lee & Ko fields an IP Practice Group of around 100 highly experienced IP trial lawyers and patent attorneys with unrivalled industry and technical expertise in the electrical, mechanical, chemical and pharmaceutical fields, among others.  The firm provides legal services relating not only to local practice but also to other jurisdictions.  The trial attorneys have advised and represented numerous clients in IP disputes in other jurisdictions, including the US federal courts, the ITC, and European courts.  In particular, the group has set Korean Supreme Court precedents and litigated landmark cases, including Kimberly-Clark v P&G and LG Life Sciences, and Samsung v Apple.

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