Distinction Between Infringement Cases and Appeals Against IPT Decisions in Korea
In Korea, intellectual property (IP) cases are handled through two different channels. Infringement cases are reviewed by regular courts as civil actions, while the Patent Courts handle appeals against rulings and decisions made by the Intellectual Property Tribunal (IPT) through special administrative lawsuits.
In patent-related cases, the court evaluates whether the IPT's decision on patent rights, utility models, designs, or trademarks is unlawful and should be overturned. The IPT is responsible for making decisions regarding the legality of patent registration refusals, invalidation of patent registrations, and affirmation of the scope of patent rights. If a party is dissatisfied with the IPT's decision, they can file a lawsuit to challenge the decision within 30 days from the date the decision is served. In cases challenging the legality of a refusal to accept an application for patent registration, the defendant of the lawsuit will be the Commissioner of the Korean Intellectual Property Office. For cases challenging the invalidation of a patent registration or affirmation of the scope of a patent right, the defendant of the lawsuit will be the opposing party involved in the original decision. It is important to note that, in adherence to the principle of separation of powers, the Patent Court can only revoke the IPT's decision and does not have the authority to grant patent registrations or invalidate existing patent rights.
IP Infringement Litigation (Civil Proceedings)
Legal proceedings for IP infringement cases commence when the plaintiff or their attorney files a complaint with a District Court, a Branch Court, or a Municipal Court. Upon filing the complaint, the court serves the defendant with a duplicate and requests that they submit a written answer within 30 days. Failure to file a written answer within this timeframe may result in the court rendering a judgment without further hearings. If the defendant submits a written answer, the court proceeds with the pleading process, where both parties present their arguments and evidence in writing. Subsequently, hearings are conducted where both parties appear before the court to clarify their positions on disputed matters and examine witnesses. Following the hearings, the court issues a judgment.
The aim is to streamline the proceedings by ensuring thorough preparation during the pleading process and conducting focused and efficient hearings. This approach minimizes the need for repeated or protracted hearings. Typically, only one or two hearings are conducted before reaching a decision. Additionally, the court ensures that hearings are conducted with sincerity and efficiency, granting both parties ample opportunity to present their oral statements and arguments before the court.
Appeal Proceedings
If the losing party disagrees with the factual findings or legal conclusions made by the trial court, they have the right to appeal the judgment within two weeks from the date of service. Generally, appeals are heard by the High Courts, except when the disputed amount is below 50 million Korean won (approximately 51,500 US$), in which case the appellate panels of the District Courts handle the appeal. The appeal proceedings follow a similar format to the trial proceedings, allowing the party to make new allegations and present new evidence.
Should a party remain dissatisfied with the judgment of the appellate court, they have the option to appeal to the Supreme Court, which serves as the highest court of appeal. The appeal must be filed within two weeks from the date of service of the appellate court's judgment. It's important to note that the Supreme Court exclusively deals with matters of law. Appeals to the Supreme Court can only be made if the appellate court's judgment contains an error in the legal conclusion or if the appeal proceedings themselves significantly violated the law.
Provisional Attachment and Provisional Procedure
In situations where a debtor conceals or disposes of their assets prior to the commencement of compulsory execution procedures, it can hinder the creditor's ability to obtain satisfaction for their claim. To prevent such actions and safeguard the debtor's assets, the court has the authority to grant provisional attachment or provisional disposition upon the creditor's request. In cases where it is necessary to preserve the enforcement of a monetary claim, the court may order the debtor's property to be placed under provisional attachment. Provisional disposition may be granted when there is a need to establish a temporary state of affairs regarding disputed legal relationships or to protect the execution of a claim related to the delivery of specific immovable or movable property. These measures serve to maintain the status quo and ensure that the creditor's rights and interests are protected during the legal proceedings.
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 of Korea has exclusive jurisdiction over appeals related to cancellations of decisions made by the trial board, known as the Intellectual Property Tribunal. The tribunal, headed by the Commissioner of the Korea Intellectual Property Office, handles cases concerning patents, utility models, designs, and trademarks. However, the Patent Court's jurisdiction is limited to determining the validity and scope of patents and other registered rights. Patent infringement cases, including matters like preliminary injunctions, compensation for damages, and injunctions for restitution of commercial credit, are referred to the ordinary courts.
The Patent Court is composed of a chief judge, 4 presiding judges, 12 judges, 17 technical examiners, and a secretariat. The cases are heard by 4 divisions, each consisting of 2 three-judge panels. For highly technical matters, technical examiners with extensive experience in various scientific fields such as mechanical engineering, electronic engineering, and chemical engineering are consulted.
The Patent Court serves as an appellate-level court. However, there is no hierarchical relationship between the cancellation proceedings of the Patent Court and the proceedings of the Intellectual Property Tribunal. Consequently, records from the Intellectual Property Tribunal are not automatically transferred to the Patent Court. Parties involved in a case must resubmit the same arguments and evidence to the Patent Court for a fresh determination. Appeals against decisions of the Patent Court should be directly brought to the Supreme Court.
Effects of the Judgment
The judgment of the Patent Court has certain effects on the rulings or decisions made by the trial board of KIPO. If a plaintiff's claim seeking annulment of a ruling or decision lacks merit, it will be dismissed. However, if the plaintiff successfully presents a case, the judgment may declare the ruling or decision void. In such a situation, the case will be sent back to the trial board for further consideration. It is important to note that the trial board must adhere to the grounds cited in the Patent Court's judgment when issuing a new ruling or decision related to invalidation.
DAEILPAT
Dispute Resolution and Litigation
If you are unsure about what actions to take or need reliable advice, you can always reach out to DAEILPAT for guidance.
Are you aware that a competitor in Korea has or is copying or imitating a product that you hold a registered right for, such as a patent or design, potentially infringing upon your intellectual property? Alternatively, have you been accused of infringing a competitor's patent or design rights in Korea? Or perhaps you wish to determine if there is a risk of infringing a competitor's registered rights when introducing your product to the Korean market? In such cases, it is recommended to contact one of DAEILPAT's knowledgeable intellectual property attorneys who specialize in litigation. Keep in mind that an infringed right can also pertain to a patented process or use.
Please note that DAEILPAT is well-equipped to assist foreign companies entering Korea in resolving disputes related to intellectual property rights and engaging in litigation.
Learn more about IP Disputes Resolution in Korea
How Can DAEILPAT Help You?
One of the significant benefits of engaging DAEILPAT's experienced intellectual property attorneys, particularly in cases of patent infringement, is that they can assist foreign companies entering Korea by presenting evidence of the infringing act. This includes engaging in written correspondence with the court and, in some instances, inspecting the potentially infringing object before the final trial. Moreover, potential infringers may choose to challenge the validity of the patent as a defense. To address this, it is advisable to have DAEILPAT's patent attorneys review the validity of the claimed patent and determine whether it should be attacked or defended before or concurrently with contacting a lawyer. The same approach is applicable to design patents.
It is crucial to promptly assess your available options. If you are uncertain about the appropriate course of action, feel free to seek reliable guidance by reaching out to DAEILPAT.
If you have any questions or needs related to this, please feel free to contact us.
Read more:
- Utility Model System in Korea
- Copyright Protection in Korea for Works of Foreigners
- Protecting Trade Secrets in Korea
- Patent and Trademark Litigation in Korea
- Patent and Trademark Trial System in Korea
