(1) IP LITIGATION IN KOREA
(2) IP INFRINGEMENT LITIGATION (Judicial Proceedings as a civil case)
(3) Characteristics of the Patent Litigation Procedure
 
(1) IP LITIGATION IN KOREA
- DICHOTOMY OF INFRINGEMENT & APPEAL AGAINST IPT’S DECISION -

In Korea, IP related cases are handed in two ways. Infringement cases will be reviewed by usual court as a civil action while the Patent Courts reviews an appeal against the rulings and decision rendered by Intellectual Property Tribunal (IPT) as a special administrative lawsuit.

In patent cases, the court decides on whether the decision of the Intellectual Property Tribunal (IPT) on the rights of patent, utility model, design, or trademark is illegal and should be revoked. The IPT makes decisions on legality of refusal to accept an application for patent registration, on invalidation of patent registration, and on affirmation of the scope of a patent right. The party who is dissatisfied with the decision of the IPT may file a suit seeking to revoke the decision with the Patent Court within 30 days from the date the decision is served. When decision on legality of refusal is challenged, the defendant of a suit shall be the Commissioner of the Korean Intellectual Property Office. When decision on invalidation of patent registration or decision on affirmation of the scope of a patent right is challenged, the defendant of a suit shall be the opposite party in the decision process. On the principle of separation of powers, the Patent Court can only revoke the decision of the IPT and neither permits patent registration of any invention nor invalidate a patent right.

(2) IP INFRINGEMENT LITIGATION (Judicial Proceedings as a civil case)

Proceedings

Civil proceedings begin when a plaintiff or his/her attorney files a complaint with a District Court, a Branch Court, or a Municipal Court. When the complaint is filed, the court serves the defendant with a duplicate and requires him/her to file a written answer within 30 days. If the defendant fails to file a written answer within such limit, the court may render a judgment without hearings. If the defendant submits a written answer, the court holds the pleading process (proceeding whereby both parties, in writing, enter into offense and defense on allegations and evidence) and the hearings (proceeding whereby both parties appear before the court to clarify their respective positions on disputed issues as well as to examine witnesses), and then renders a judgment.

it is expected that fully-prepared by the pleading process and intensive hearings will eliminate the inefficiency of the repeated and dragged hearings. In most cases, just one or two hearings will be held for decision. Furthermore, hearings are administered in a sincere and efficient manner giving the parties the fullest opportunity to make their oral statements before the court.

Appeal Proceedings

The losing party who is dissatisfied with the findings of facts or conclusions of law by the trial court can appeal the judgment rendered by the trial court within two weeks from the date the judgment is served. In general, the High Courts hear appeals with the exception that the appellate panels of the District Courts hear appeals when the amount in controversy does not exceed 50 million Korean won (approximately 51,500 US$, as of Feb. 2006). The appeal proceedings are similar to the trial proceedings, and the party is granted an opportunity to make new allegations and to produce new evidence.

The party who is dissatisfied with the judgment of the court of appeals may appeal to the Supreme Court, the court of last resort, within two weeks from the date the judgment is served. As the Supreme Court hears only matters of law, appeals cannot be lodged with the Supreme Court unless the judgment of the court of appeals erred in conclusion of law or appeal proceedings were in grave contravention of law.

Provisional Attachment and Provisional Procedure

If the debtor hides or disposes his/her property before the compulsory execution procedure is commenced, the creditor is obstructed from obtaining satisfaction of the claim. To prevent such attempts and to secure the debtor ' s property, the court may order provisional attachment or provisional disposition, pursuant to the creditor ' s request. If it is necessary to preserve the execution of the monetary claim, the court may order the debtor ' s property to be put under provisional attachment. Provisional disposition may be granted for the purpose of setting the temporary state of affairs in regard to disputed legal relations or preserving the execution in regard to the claim for delivery of specific immovable or movable property.

Patent Court

ABOUT THE COURT

The Patent Court of Korea was established under Article 3(2) of the Court Organization Act on March 1, 1998. The Court is now located in the city of Daejeon, within about 1.5 hours drive or 150 kilometers away from Seoul.

The Patent Court has exclusive jurisdiction over all cancellation appeals from diverse decisions rendered by the trial board(Intellectual Property Tribunal), which is headed by the Commissioner of Korea Intellectual Property Office, as to a patent ㆍ utility model ㆍ design ㆍ trademark. However, the Court's subject matter jurisdiction is limited to determining the validity and the scope of a patent and other registered rights. The category of so-called patent infringement cases, such as preliminary injunction, compensation for damages, injunctions of restitution of commercial credit, is referred to ordinary courts.

The Patent Court consists of a chief judge, 4 presiding judges, 12 judges, 17 technical examiners and secretariat now. 4 divisions, each consisting of 2 three-judge panels, hear the cases. Highly technical matters are referred to technical examiners who have long-term experiences in various scientific fields such as mechanical engineering electronic engineering chemical engineering etc.

The Patent Court is an appellate-level court. However, there is no hierarchical relation whatsoever between the cancellation proceedings of the Patent Court and the proceedings of the Intellectual Property tribunal, and the records from the proceedings of the Intellectual Property tribunal are not transferred to the Patent Court . Accordingly, the same contentions and evidences as those already submitted to the Intellectual Property tribunal must be submitted again to the Patent Court for a new determination at the Patent Court . Any appeal of the Patent Court 's decisions should be brought directly to the Supreme Court.

(3) Characteristics of the Patent Litigation Procedure

1. Technical Examiners

As described in the foregoing, the Patent Court has technical examiners to assist judges in highly technical matters. They have degrees in various fields of natural science and technology and have worked for KIPO for a long time. They provide consultation throughout the trial on patent, utility model and design cases and, if deemed necessary by the court, participate in the hearing to examine the parties and/or witnesses. Furthermore, they may give opinions on the scientific aspects of a case in the decision held by the court.

When participating in the hearing, technical examiners sit on the left side of the bench but do not wear robes. Technical examiners contribute significantly in rendering a decision that harmonizes the legal aspects of patent law with the peculiarities of science and technology.

2. Representation by Patent Attorneys

Patent attorneys represent parties in the proceedings of the Patent Court , in accordance with Article 8 of the Patent Attorneys Act.

3. Intensive Discovery through Preliminary Hearings

Unlike design or trademark disputes which are deemed to have less technical nature, patent and utility model litigations normally go through a series of preliminary hearings. They are conducted by a member of a three-judge panel who is commissioned to that effect by the panel. During the preliminary hearings, parties are required to submit claims and evidence and explain scientific aspects of the case in detail, using real objects or models if appropriate.    

This allows a more thorough and in-depth understanding of the case. At the hearing, parties summarize the results of the preliminary hearings before the bench, and then make arguments and submit documentary evidence or examine witnesses if they failed to do so during the preliminary hearings. The hearing will be closed promptly thereafter.

4. Technology Explanatory Sessions

To understand precisely the technical aspects of patent or utility model related disputes, the Patent Court may hold explanatory sessions where parties or relevant experts can make presentations using drawings, real objects, models, computer graphics or video devices. These are used to support technological and scientific aspects of their arguments.

5. Effects of the Judgement

The Patent Court reviews rulings or decisions made by the trial board of KIPO. A plaintiff's claim seeking annulment of the ruling or decision is dismissed if it is found lacking any merit. Conversely the ruling or decision would be declared void if the plaintiff successfully establishes his or her case. Should the Patent Court 's judgment annul the ruling or decision of the trial board, the case would be remanded to the trial board. As the trial board is bound by  Patent Court 's decision regarding invalidation, the trial board's new ruling or decision at issue cannot be in disagreement with the grounds cited by the Patent Court 's judgment.