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Litigation / Foreign Patent Litigation / Korea (South)

Patent Litigation in Korea

Scope of Protection

Article 97 (formerly Article 57) of the law provides that the scope of protection shall be determined by the scope of the claim. Prior to this provision's being included in the law, the Supreme Court had held that in determining the scope of protection a court could also look to the body of the specification. Korean commentators have opined that there is a doctrine of equivalents in Korea. However, the reported Supreme Court decisions seem to cast doubt on this conclusion. [1] A disturbing recent decision of the Korean Supreme Court has held that a claim to a chemical process was not infringed by someone who utilized the claimed process but employed a catalyst for it, no catalyst having been described in the patent whose claims it had been alleged were infringed. The Court held that addition of a catalyst introduced a new technical concept that was not encompassed by the claims of the patent in suit.

Contributory infringement is recognized under the statute in respect of articles "to be used exclusively " in an act of patent infringement. [2] A Supreme Court decision has, however, held that indirect infringement is only an infringement of the patentee's civil law rights and, unlike direct infringement, does not give rise to criminal sanctions. [3]

The law specifically provides that experimental use is not an infringement of the patent right [4] and that one who before the priority date of the patent had in good faith been commercially working the invention or was in the process of installing industrial plant or equipment to do so in Korea shall have an automatic non-exclusive license under the patent. [5]

Litigation Procedure

In Korea all District Courts have jurisdiction over patent infringement cases. Appeal lies to a High Court which is entitled to hear additional evidence. Validity of a patent is in principle a matter exclusively for the jurisdiction of the Patent Office. Patent infringement gives rise to both civil and criminal liability. The maximum penalty is a fine of 20,000,000 won or five years corrective labor. Patent infringement proceedings in Korea are similar to those in Japan in that they are normally commenced by a warning letter and the "trial" is in fact a series of hearings before the judge with the judge himself being involved in elucidating the facts of the case. Most evidence and argument is by way of written submission but oral statements of witnesses may be heard. Some provision for discovery exists although there is no deposition practice. In Korea it is possible for the either party to a potential infringement suit to request a ruling from the Patent Office on the scope of the claim and this determination is given significant weight but a court trying an infringement action. Appeals from decisions as to the scope of the claim may be made to the Patent Court. However, this court has no direct role in dealing with infringement issues.

Remedies for patent infringement include an injunction and, if the defendant's infringing acts were intentional or negligent, damages. (Negligence is, however, normally presumed.) The court may also order an infringer to take appropriate steps to restore the business reputation of one whose reputation has been harmed by the patent infringement.

Validity of a patent is a matter for a separate trial before the Patent Office rather than the court hearing the infringement action. However, the court may consider the strength of any attack being made on the validity of a patent in order to determine whether to delay the infringement action pending a final decision on validity by the Patent Office.

An additional form of post-grant proceeding is also possible, as in Japan, in that the Patentee can amend the patent in separate amendment or correction trial proceedings before the Patent Office. [6]

Decisions of the Patent Office on questions of validity and amendment lie to the Patent Court.

Preliminary injunctions are in theory available but are very rare in patent actions. To obtain a preliminary injunction a deposit of money into court will be required to provide some protection to the defendant against the possibility he may succeed at trial.

Patent infringement actions can take as little as three to four months to secure a first instance judgement on infringement, but delays of up to three years or more are known. The loser may be ordered to contribute to the winner's costs.

Footnotes:

[1] See, for example, the decisions in 90HU1499, 91HU1809 and 91HU1908 all of which indicate that the scope of protection should not go beyond the ambit of the claims.

[2] Patent Law Article 64.

[3] 92DO3350 (23 Feb 1993).

[4] Article 46(1).

[5] Patent Law Article 47.

[6] Patent Law Article 136.

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