Effective as of January 1, 2016, the Patent Court (the "Court") now has exclusive appellate jurisdiction over all patent infringement cases, as well as actions for cancellation of decisions issued by the Korean Intellectual Property Trial and Appeal Board ("KIPTAB"). The Court recently released and started enforcing the "Manual for Appellate Procedure in IP Infringement Lawsuits" (the "Manual"). The Court stated that it released the Manual in order to (i) enable efficient and speedy appellate procedure in IP related litigations and (ii) further enhance predictability for the parties involved.

The Manual lists detailed requirements for various case management related matters, including (i) required items in written submissions (including complaints, answers, etc.), (ii) video conferences for receiving comments from the parties to separate out the issues and set a trial plan, (iii) management and planning of hearings for major legal issues, sub-issues and procedural issues, as well as due dates for submitting briefs, (iv) investigation of evidence and determining the need for expert testimony, and (v) preparation of various documents and submission of documentary evidence. Unlike in the United States, where only one hearing or trial is held, Korean cases on appeal may have several hearings or trials, each addressing specific issues.

In particular, according to the Manual, the judge may hold a video case management conference with counsel from both sides to establish the following:

  1. the number of hearings needed and the dates;
  2. an agenda for each hearing;
  3. due dates for submission of arguments and evidence;
  4. any requests for submission of evidence that may take additional time, such as court inspections, third party appraisals or expert witnesses, as well as the due dates for such requests;
  5. determine the necessity to appoint a court appointed expert;
  6.  determine the necessity for a technology tutorial for the Court;
  7. determine the necessity for a hearing on claim construction; and
  8. identify and confirm the main issues in contention.

In addition, the Manual states that, when the submission of substantive briefs is ordered for the entire case or for a particular issue, the plaintiff shall have three weeks from the date of the video conference (or order) to submit its brief, while the defendant shall have three weeks to submit its brief from the date of the plaintiff's submission.

Furthermore, the Manual states that, if the Court recognizes the need to focus on specific issues separately, the Court can set and hear those issues separately on different dates. Accordingly, the Court may hold a hearing solely on a specific issue designated for that hearing. Once an issue has been heard on the set hearing date, the Court may release its opinion regarding that issue through either an oral or written statement. For example, when parties have one or more disputes over the interpretation of one or more claim elements, the Court may set a hearing specifically for claim interpretation after discussing with the parties, because the interpretation can change the arguments for other issues or affect what evidence may be needed.

In addition, if inventive step or freely usable technology is an issue in the case, the party alleging these defenses must specifically identify the main prior art and the specific combinations with other prior art, as well as provide a detailed explanation on why such combinations would make the patent at issue lack an inventive step. If detailed explanations are not included when asserting these defenses, the Court may reject these defenses.

The Court expects that the Manual will enhance foreign parties' confidence in the Korean patent litigation process. The Court will release additional manuals on various other subjects (such as the amount of compensation for damages, hearings relating to inventive step and expert testimony) to increase transparency and enhance the convenience of the parties.

In view of the Manual, a strategic approach will be necessary in future proceedings focusing on the following: planning for the hearings on major legal issues, sub-issues and procedural issues; court inspections required to obtain relevant evidence; third party appraisals or expert witnesses; and a hearing on claim construction. In addition, a party may avoid missteps by following the guidelines and methods specified by the Court when asserting defenses relating to inventive step or freely usable technology.

Although the Manual purports to address the Court's internal litigation procedures, Yulchon recommends studying the Manual as it entails significant changes in procedure which may have a major impact on the litigation. However, at the same time, we will need to observe how the Manual is applied in practice. There is also a high probability that the Court may treat each case differently, so the actual cases need to be followed for any trends to emerge. For instance, in some patent cases, the Court did not follow the procedures in the Manual and only held one hearing before deciding the case in a manner similar to proceedings conducted prior to the release of the Manual. In other cases, the hearings on the major issues, sub-issues and procedural issues were strictly followed, issues were clearly identified and sorted, and each party to the litigation was given specific time limits to submit its arguments and present evidence in accordance with the Manual.