On November 12th, 2015, the National Assembly of the Republic of Korea approved amendments to the Civil Procedure Act and the Court Organization Act in order to centralize jurisdiction in specialized courts over all IP infringement lawsuits.
The two main amendments are as follows:
First, for the purpose of determining jurisdiction, Intellectual Property Rights will be categorized into the following two categories: (i) Patent Rights, which includes rights in patents, utility models, copyrights, trademarks, and plant variety protections; and (ii) all remaining Intellectual Property Rights, including trade secrets.
Effective as of January 1, 2016, any first instance infringement lawsuit concerning Patent Rights may be initiated in one of the five following IP centralized district courts: Seoul, Daejeon, Daegu, Busan, and Gwangju. These IP centralized district courts reside within the jurisdictional area of the high courts, the traditional appellate courts of second instance. In Seoul, infringement lawsuits regarding Patent Rights will be restricted to the Seoul Central District Court.
Regardless of the territorial jurisdiction, patent lawsuits can be instituted at the Seoul Central District Court. Therefore, a plaintiff patent owner residing in Daejeon has the choice of filing a patent infringement lawsuit in either the Daejeon District Court or the Seoul Central District Court. In addition, a court may transfer a lawsuit in whole or in part to any one of the courts of competent jurisdiction identified in Articles 2 through 23 of the Civil Procedure Act, i.e., one of the four other centralized district courts for IP or any of the other district courts throughout the country. The new amendment to the Civil Procedure Act will be applied to new complaints filed on and after January 1, 2016.
Second, the Patent Court in Daejeon shall have exclusive appellate jurisdiction from the above mentioned five district courts. The amendment pursuant to the Court Organization Act will also be effective on January 1, 2016, and will be applied to the first trial decision that has been issued on and after January 1, 2016.
There has been an ongoing debate over the bifurcated legal system for patent disputes in Korea. In the past, patent trials were first held at one of the fifty-eight (58) district courts throughout Korea. Appellate trials (i.e., the court of second instance) were conducted at one of the twenty-three (23) High Courts or Panels of Courts throughout the country. However, the Patent Court had jurisdiction over first instance decisions from the Korean Intellectual Property Trial and Appeal Board (hereinafter “KIPTAB”) for invalidation trials and patent scope confirmation trials.
Because of this jurisdictional structure, the IP dispute process has been criticized as inefficient, inconsistent, and slow. Furthermore, there has been criticism that courts lack expertise in IP disputes. These critiques raised concerns that the bifurcated system may not be optimal for the protection of IP rights of Korean companies and citizens.
The new amendments are consistent with global trends concentrating IP jurisdiction to specialized courts. They enable the courts to provide more efficient and IP specialized judgments that will be consistent for a particular Patent Right whether that Patent Right is asserted in a civil infringement lawsuit or defended in a patent invalidation trial or a patent scope trial.
The Supreme Court will also improve its expertise in IP disputes by extending the term of service for judges in the above centralized courts.
In view of the newly revamped court system that is comparable to court systems in IP advanced countries, such as the US and Japan, IP litigants now need to be more strategic in IP protection and defense in Korea. IP litigants should also take into account in their strategies the Supreme Court’s proactive establishment of the Patent Court as an IP-Hub Court and the new examination procedures.