Patent enforcement proceedings

Lawsuits and courts

What legal or administrative proceedings are available for enforcing patent rights against an infringer? Are there specialised courts in which a patent infringement lawsuit can or must be brought?

A patent infringement lawsuit for damages or an injunction may be filed in one of the following six specialised district courts according to jurisdiction: Seoul Central District Court, Daejeon District Court, Daegu District Court, Busan District Court, Gwangju District Court and Suwon District Court. Notwithstanding the foregoing, regardless of jurisdiction, the plaintiff may elect to have the case heard at the Seoul Central District Court.

However, a preliminary attachment or a preliminary injunction must be requested to one of the 58 district courts and their branches across the nation that has personal jurisdiction over the defendant.

When potentially infringing goods are being imported into Korea, a patentee may alternatively, or in addition, request that the Korea Trade Commission (KTC) institute an investigation of the potential infringement. The KTC proceedings differ from district court proceedings primarily as to the remedies that are available in the event that infringement is proven. A prevailing patentee in a court proceeding may be entitled to both monetary damages and an injunction against future infringement, whereas in a KTC proceeding the primary remedy is an order excluding future importation of the infringing goods into Korea and monetary damages are not available.

As a third option, a declaratory judgment of infringement is available at the Intellectual Property Trial and Appeal Board (IPTAB). The IPTAB is an independent administrative agency under the umbrella of the Korean Intellectual Property Office (KIPO). A declaratory judgment suit may be initiated with or without a co-pending infringement action before a district court for damages or injunction.

The Patent Court has been established since 1998 and hears all appeals from the IPTAB decisions, including the declaratory judgment of infringement, patent invalidity and the patent examiner’s final decision to reject patent applications. In addition, the Patent Court has jurisdiction over appeals of judgments in patent infringement lawsuits. However, appeals of preliminary attachment or preliminary injunction judgments are heard by appellate divisions at the district court if the preliminary attachment or preliminary injunction request was dismissed or the High Court in one of the six large cities within which the district court resides if the preliminary attachment or preliminary injunction request was granted.

Since patent infringement is also a criminal offence, criminal as well as civil proceedings are available, though criminal offences are prosecuted by the Public Prosecutors Office and are not common. In this chapter, our discussions are limited to civil actions.

Trial format and timing

What is the format of a patent infringement trial?

No jury trial is available in Korea for civil cases. Civil patent infringement cases are tried before a panel of three judges. The most senior judge of the panel presides at the trial and has the most influence on the outcome of the trial.

The primary vehicle for introducing evidence in an infringement trial is a motion for introducing evidence. Though documentary evidence is important and believed to be reliable, live testimony of witnesses is not unusual. The presiding judge usually leads the examining of the witness. Counsel for the party offering the witness is routinely allowed to question the witness to elicit direct testimony, after which counsel for the opposing party has the opportunity to cross-examine the witness on matters within the scope of the direct testimony. Typically, the offering party is thereafter permitted to re-conduct direct examination. The judge may additionally ask questions to clarify particular points of interest. Documents and other physical items, such as a sample of an allegedly infringing device, may also be received into evidence by a motion of a counsel.

Each party in a patent infringement case will usually present expert witnesses on technical matters. Experts are permitted to testify as to their opinions on matters within their recognised area of expertise.

A significant element in Korean patent trial practice is a declaratory judgment of patent infringement (or non-infringement) litigated before the IPTAB. Though the jurisdiction of the IPTAB on declaring patent infringement is not an exclusive one, IPTAB proceedings are frequently invoked especially when an action in a district court is not yet initiated.

Trials in Korea are typically held with three- or four-week intervals if not decided after a one-day trial. The number of patent infringement trials varies, depending on the nature of the issues to be decided, from one trial to several trials. Since discovery process is not available under the Korean legal process for getting evidence, motion practice is widely used to get evidence that is not under the control of the plaintiff. Thus, the first or the second hearing date is used for raising motions to get evidence, as well as fixing the issues to be decided.

Proof requirements

What are the burdens of proof for establishing infringement, invalidity and unenforceability of a patent?

A patentee bears the burden of proving the infringement of the patent, whereas a party challenging a patent bears the burden of proving invalidity or unenforceability. Although the Korean Patent Act does not specifically provide a presumption of validity, a patent claim granted after substantive examination by the examiner is presumed to be valid. As the district court has no power to declare patent invalidity, it may simply refuse to enforce the patent when a serious doubt has been raised as to a patent’s validity. A patent invalidity shall be litigated before the IPTAB, not a district court.

In limited circumstances, a patentee can be relieved of the burden of establishing infringement and a burden of establishing non-infringement is placed on the alleged infringer. This occurs in cases involving a patented process for making a product that has not been known to the public on the filing date of the subject patent application. This provision reflects implementation of both sub-paragraphs (a) of TRIPS article 34.1.

In addition, the accused infringer who denies the act of infringement which is claimed by a patentee or an exclusive licensee, can be required to produce his or her actual products or process.

Standing to sue

Who may sue for patent infringement? Under what conditions can an accused infringer bring a lawsuit to obtain a judicial ruling or declaration on the accusation?

An exclusive licensee, who is not necessarily a co-plaintiff with the patentee, as well as a patentee or any successors to title in the patent may sue for patent infringement.

An action for declaratory judgment of infringement may be brought before the IPTAB by a patentee or an exclusive licensee. On the other hand, an accused infringer can bring an action before the IPTAB for declaratory judgment of non-infringement without having to wait for the patentee to bring an infringement action. The requirement for a declaratory judgment action for non-infringement is lenient. The complainant for non-infringement could simply show the complaining party is in the same business area as the patent claim defines and has a plan to make, use or sell a related product. That party does not need to have engaged in activity that could constitute infringement or have made meaningful preparations to engage in such activity. An actual controversy between the parties at the time the action is initiated is not required. The requirement for a declaratory judgment for infringement is not as liberal as in the case of a non-infringement declaration. The plaintiff must specify the alleged infringing product or process to an extent that can be compared to the claims of the subject patent and show the defendant has a plan to exploit it. Assuming the conditions for bringing an action are met, the plaintiff may seek a declaratory judgment of non-infringement, invalidity or unenforceability or a combination of the above. A patentee facing a declaratory judgment claim will typically argue for infringement. Conversely, a party sued for infringement will typically initiate a declaratory judgment of non-infringement or invalidity.

The Green List

As an implementation of the Korea-US Free Trade Agreement, a list of patents (the Green List) covering approved drug products is available. Applications by the patentees and examination and approval thereon have been made before the Ministry of Food and Drug Safety. The owner of a listed patent may sue someone who applies for regulatory approval of the equivalent generic drug and request stay of sales of the generic drug within 45 days from the generic notification date. A generic applicant may file an action for declaratory judgment of non-infringement or invalidity in order to obtain a first generic exclusivity even before filing an application for regulatory approval of a generic drug.

The Korean Patent Act also provides an exemption from infringement claims for the use of a patented invention solely for experimental use including applying for an Abbreviated New Drug Application for a generic drug.

Inducement, and contributory and multiple party infringement

To what extent can someone be liable for inducing or contributing to patent infringement? Can multiple parties be jointly liable for infringement if each practises only some of the elements of a patent claim, but together they practise all the elements?

A patent can be infringed when a person performs activities satisfying all the elements required as defined in a patent claim (the ‘all elements rule’). In addition, when a person performs activities satisfying some elements defined in a patent claim and the remaining elements of the patent claim are performed by another, and as a result the patented invention is performed by two (or more) persons, the two performers may be liable for a patent infringement as a joint tortfeasor.

The Korean Patent Act prescribes that one is liable for contributory infringement when making, offering for sale, selling or importing a product that may be used solely for manufacturing a patented device. When a patent claim defines a process or method, the same rule applies to a product that may be used solely for exploiting the patented process or method.

The above provisions of the Korean Patent Act are understood to exclude supplying staple products from contributory infringement by limiting the product as being used solely for manufacturing the patented device. It is not explicitly prescribed whether a direct infringement is a prerequisite to establishing a contributory infringement. This issue matters since the liability of patent infringement requires exploitation of a patent to be ‘commercial’ activity. When the patented product is employed for personal use, rather than for a commercial use, supplying the patented device is not liable as patent infringement. In addition, the Korean Supreme Court has held that in order to construct a contributory infringement, the production act in ‘solely for manufacturing the patented device’ is required to be performed domestically.

Joinder of multiple defendants

Can multiple parties be joined as defendants in the same lawsuit? If so, what are the requirements? Must all of the defendants be accused of infringing all of the same patents?

Requirements for joinder of multiple defendants are quite generous under the Code of Civil Procedure: the defendants are liable based on the same legal reason of right or obligation or on the common factual bases. The result of a multiple defendants lawsuit need not be the same for all parties and may vary from one party to another.

To avoid any possible risk of putting all eggs in one basket, in Korean practice, plaintiffs prefer to file separate lawsuits first and later incorporate the lawsuits into one lawsuit, if allowable.

Infringement by foreign activities

To what extent can activities that take place outside the jurisdiction support a charge of patent infringement?

Infringement of a Korean patent generally requires making, using, offering to sell or selling a patented invention in Korea or importing a patented invention into Korea. In the case of a method patent, however, the patent laws can extend their reach to extraterritorial activity. Under the Korean Patent Act, a patented claim defining a method of making a product is deemed to extend to a product made by the patented process.

Thus, it is an act of infringement to import into Korea or sell or use within Korea a product made by the process patented in Korea even though the process might have been performed outside Korea.

Moreover, the Korean Supreme Court held that even if some components of the patented invention are assembled outside of Korea, the patented invention may still be infringed if it is determined that the product of the patented invention is substantially produced in Korea.  To be substantially produced in Korea, all or substantially all components for the product of the patented invention should be manufactured in Korea or most of the major processing should be done on the unfinished products; all or substantially all components or the unfinished products should be exported to a single entity for final assembly or processing; and the product can achieve the effect of the patented invention through trivial final processing on the unfinished product or simple assembly, combining the elements of the patented invention.

Infringement by equivalents

To what extent can ‘equivalents’ of the claimed subject matter be shown to infringe?

Korean courts recognise a rule that a product or process that does not literally include exactly the same elements as defined in a patented invention may still be found to infringe if the difference between the elements of the patented invention and the accused product or process is not substantial under the Doctrine of Equivalents (DOE). Infringement under the doctrine of equivalents requires that each element of a claimed invention be found in the accused product or process, either literally or by a substantial equivalent.

The traditional approach adopted in Korea to understand and evaluate a patented invention is based on three aspects: structure, function and effect of the claimed invention.

Since the doctrine of equivalents is invoked when the two elements, one as defined in the patented claim and the other as found in the accused product or process, are not identical (in structure), the comparison of the two elements tends to focus on the function and effect aspects, rather than structure aspect.

Finding infringement by equivalents is limited by certain rules. First, DOE is not applicable to a product that was known in the prior art or that is easily conceivable thereof by a person skilled in the art. Second, DOE is not allowed to reintroduce a device that has been intentionally excluded from the scope of patent claims during the patent prosecution process.

Discovery of evidence

What mechanisms are available for obtaining evidence from an opponent, from third parties or from outside the country for proving infringement, damages or invalidity?

According to the Korean Code of Civil Procedure, when deemed that unless an investigation of evidence is conducted in advance, there will be a situation that may make it difficult to use the relevant evidence later, the court may, upon request of a party, investigate the evidence. If such a request is granted, the court will investigate the evidence even prior to the filing of a complaint of infringement lawsuit. The grant of the request is limited to cases where it would not be possible to investigate evidence later.

To prove patent infringement, the patentee usually relies on publicly available evidence at the time of filing complaints, since evidence controlled by the opponent is difficult to obtain before a lawsuit. Once a party shows a reasonable ground for the court to believe the opponent or a third party controls relevant information, the court may issue, upon the party’s request or ex officio, an order to the person who controls the evidence to submit it.

The Code of Civil Procedure provides a variety of mechanisms for obtaining evidence from adverse parties in a lawsuit. Mechanisms to collect evidence, via filing a motion with the court during the litigation procedures, include the live examination of witnesses, requests for production of documents and requests for inspections of premises. To facilitate a party’s investigation with the opponent’s written evidence, the party may file a motion asking the opponent to submit a list of related documents under his or her control or that are planned to be introduced as evidence by the opponent.

The most common mechanism for obtaining third-party discovery is material requests ordered by a court upon the motion of a party. But the motion must specify the material to be produced and the person or entity from whom such a discovery is sought.

According to the Korean Patent Act, if certain evidence is deemed necessary to verify an infringement or damages, the alleged infringer is not justified in refusing to submit such evidence by asserting that the evidence requested is a trade secret. The court will, however, attempt to prevent a trade secret from being disclosed as much as possible by limiting the scope of the evidence disclosed and persons accessible to the evidence. In addition, if the alleged infringer does not respond to the court’s order to submit evidence without a justifiable reason, the opposing party’s arguments regarding facts that can be proven based on the requested evidence may be deemed to have been proven. Under the pre-revised Patent Act, it was difficult to enforce the court’s order to submit evidence if the alleged infringer asserted that the evidence was a trade secret even though the evidence was crucial information for verifying an infringement or damages. However, the revision of the Patent Act in this regard is expected to ease the process of verifying patent infringements and assessing damages in patent infringement actions.

Litigation timetable

What is the typical timetable for a patent infringement lawsuit in the trial and appellate courts?

The average duration of a patent infringement suit from the filing of a complaint to entry of judgment varies, and depends upon the complexity of the case and the court at which the case is filed. The Seoul Central District Court has heard the largest number of patent cases and has developed institutional expertise in patent cases, and an infringement suit before that court can be resolved within 12 to 18 months. In addition, it takes about eight to 12 months for the Patent Court to determine a patent appeal case.

Litigation costs

What is the typical range of costs of a patent infringement lawsuit before trial, during trial and for an appeal? Are contingency fees permitted?

The costs associated with patent infringement litigation vary widely depending upon many different factors, including the complexity of the technology, the parties, litigation strategy and the court to which the case is brought. For an infringement case of normal complexity, the estimated cost before trial ranges from US$10,000 to US$100,000, and the total estimated cost inclusive of trial is between US$50,000 and US$1 million. These amounts are only a rough estimation and many of the lawsuits naturally involve greater cost. This is especially true for cases involving multiple patents or cases involving very complex technology.

The Supreme Court held in Case No. 2015 Da 200111 (23 June 2015) that a contingency fee agreement in a criminal case is void against public policy or morality. Therefore, a contingency fee agreement is permitted only in civil cases.

Court appeals

What avenues of appeal are available following an adverse decision in a patent infringement lawsuit? Is new evidence allowed at the appellate stage?

The Patent Court has jurisdiction over appeals of judgments in patent infringement lawsuits. However, appeals of preliminary attachment or preliminary injunction judgments are heard by appellate divisions of the district court if the preliminary attachment or preliminary injunction request was dismissed, or the High Court in one of the six large cities within which the district court resides if the preliminary attachment or preliminary injunction request was granted. For patent invalidity decisions as well as declaratory judgments made by the IPTAB, all appeals are heard before the Patent Court. All final decisions rendered by the Korea International Trade Commission are subject to appeal at the Seoul Administration Law Court.

Appeals from decisions of the High Court or the Patent Court may be heard by the Supreme Court. The Supreme Court may decide to refuse to deliberate within four months from the date of lodging a notice of appeal to the Supreme Court.

The party can submit new evidence at the appellate stage. In this case, if the court determines that the party has submitted new evidence in bad faith or as a result of gross negligence to delay the appellate proceedings, the new evidence will not be considered. However, it is not possible to submit new evidence to the Supreme Court.

Competition considerations

To what extent can enforcement of a patent expose the patent owner to liability for a competition violation, unfair competition, or a business-related tort?

The Monopoly Regulation and Fair Trade Act provides a general exemption of patent enforcement from competition law. A patent gives its owner the right to exclude others from exploiting the patented invention without authorisation. However, in certain cases actions taken pursuant to enforcement of a patent can expose the patentee to competition law-based claims.

A patentee may face antitrust liability if an infringement suit is objectively baseless, such as where the patentee knows the asserted patent is invalid or unenforceable and is motivated to impose anticompetitive injury on the defendant. In relation to competition considerations of patent enforcement, the Fair Trade Commission has promulgated the Guidelines for Intellectual Property Enforcement and Competition Law.

Claims of unfair competition may be raised where a patentee sends a cease-and-desist letter or any other threatening notice of patent rights to customers of a competitor. Facts tending to support the bad faith include threatening infringement suits without any intention of filing a suit, sending indiscriminate infringement notices to all members of a trade and publishing a patent without a good-faith belief in its validity or enforceability.

Alternative dispute resolution

To what extent are alternative dispute resolution techniques available to resolve patent disputes?

The common forms of alternative dispute resolution for resolving patent disputes in Korea are mediation and arbitration. The KIPO has established and operates the Industrial Property Dispute Mediation Committee for patent, trademark and design rights. For arbitration, the Korean Commercial Arbitration Board has been established for various commercial disputes for internal and international trade disputes including patent infringement disputes. This institution does not specialise in patent disputes, but has been established for a long time.

Moreover, the revised Act on Persons Performing the Duties of Judicial Police Officers and the Scope of their Duties (Judicial Police Duties Act) came into effect on 19 March 2019.  The Judicial Police Duties Act has greatly expanded the scope of duty of the Special Judicial Police (SJP) within the KIPO to conduct investigations in connection with violations involving trademark, patent and design infringement, and trade secret misappropriation. The SJP system authorises administrative officials to take the same role as general police officers in directly investigating a crime in a certain professional field or a crime occurring in a specific space.  With this revision, it is expected that the KIPO will be able to more effectively enforce intellectual property rights.

Law stated date

Correct on

Give the date on which the information above is accurate.

24 March 2020.