Top legal experts in South Korea answer a series of essential questions to provide key information about patent prosecution and litigation in the country for 2016
What are the criteria for patentability in your jurisdiction?
The major criteria for patentability in Korea are:
- industrial applicability – the invention must be feasible and useful;
- novelty and inventive step – the invention must not be easily conceived by a person with ordinary skill in the art;
- first to file – when two or more patent applications relating to the same invention are filed on different dates, only the application with the earliest filing date is patentable; and
- unity of invention – an application may include only one invention or a group of inventions that share a common inventive feature.
What are the limits on patentability?
The Patent Act provides no statutory exceptions to patent-eligible subject matter. Instead, the Korean Intellectual Property Office (KIPO) Examination Guidelines provide examples of non-patentable subject matter, including:
- laws of nature;
- discoveries of laws of nature or natural phenomena;
- ideas that are contrary to the laws of nature (eg, a perpetual motion machine);
- personal skills obtainable by practice (eg, a method for playing a musical instrument);
- mere presentation of information;
- aesthetic creations; and
- computer programming language or computer programs.
Can inventions covering software be patented?
For a software invention to be granted, certain requirements must be met, including the following:
- Information processing by software should be realised concretely by using hardware (eg, claims should describe involvement of concrete hardware-type components that account for information processing and interaction between them); and
- Claims should not involve human activities (as opposed to software processing).
Further, software inventions can be protected and claimed in the form of a method, apparatus, computer-readable medium (storing a computer program) or computer program (stored on a medium). By contrast, claims directed to software, a computer program per se (not stored on a medium) or a program product are not allowed.
Can inventions covering business methods be patented?
Business method inventions are subject to the same requirements as software inventions. An invention relating to business methods is patentable if the invention is realised by software processing that is concretely implemented on a computer by using hardware and the invention can be claimed in the form of a method, apparatus, computer-readable medium (storing a computer program) or computer program (stored on a medium).
Are there restrictions on any other kinds of invention?
Patents will not be granted for:
- methods for medical treatment of humans, including surgical, therapeutic and diagnostic methods; and
- inventions that are contrary to public order, morality or public health.
Does your jurisdiction have a grace period? If so, how does it work?
Korea has a 12-month grace period for filing a patent application following novelty-barring public disclosures. The applicant must claim the grace period at the time of filing and submit proof of the public disclosure within 30 days of filing. Under the amended Patent Act, which took effect on July 29 2015, an applicant can claim the grace period within a certain period after filing but before registration, on payment of the prescribed fee.
What types of patent opposition proceedings are available in your jurisdiction?
There is no pre-grant opposition procedure that allows a third party to oppose grant of a patent, although a third party may provide KIPO with information that may prevent issuance of the patent.
To invalidate a registered patent, an invalidation action must be filed before the Intellectual Property Trial and Appeal Board (IPTAB), an administrative review body within KIPO. The invalidation action is an inter partes proceeding which may be filed by anyone within six months of patent registration, but only an interested party or examiner can file an invalidation action thereafter. Alternatively, there is a new procedure allowing an ex parte patent cancellation action to be filed against patents registered on or after March 17 2017. Unlike the invalidation action, the IPTAB will review the petition for cancellation and determine whether to institute proceedings. Grounds for cancellation are limited to lack of novelty and inventive step, anticipation by a patent application which was filed before the filing date of the patent being challenged but published thereafter, or violation of the first-to-file rule. The patentee can appeal the IPTAB cancellation decision to the Patent Court. However, if the patent is upheld (ie, not cancelled) by the IPTAB, the petitioner for the cancellation action cannot appeal the IPTAB decision. With the introduction of the new cancellation system, the invalidation action will continue to exist but in a modified form. Specifically, for patents registered on or after March 17 2017, only an interested party can file the invalidation action at any time following registration of the patent. A non-interested party will no longer be allowed to file an invalidation action even during the six-month period from the date on which the registered patent is published, which will remain permissible until the new ex parte patent cancellation procedure becomes available.
Are there any other ways to challenge a patent outside the courts?
A granted patent can be nullified through an invalidation action filed before the IPTAB. A patent cancellation action will also be available for patents registered on or after March 17 2017.
How can a patent office decision be appealed in your jurisdiction?
If a final rejection is issued, the applicant may appeal to the IPTAB within 30 days. Before filing an appeal, the applicant may amend the application, in which case the application will be returned to the examiner for re-examination. Decisions of the IPTAB may be appealed to the Patent Court and then to the Supreme Court.
How long should an applicant expect to wait before being granted a patent and what level of cost should it budget for?
Korea has a deferred examination system under which substantive examination does not begin until a request for examination is filed (which can be up to five years after the filing date or up to three years for applications filed on or after March 17 2017). The examination decision is typically issued within 12 to 16 months of the request for examination.
The total cost may vary significantly, depending on:
- the complexity of the case (eg, subject matter, number of prior art references cited);
- how many office actions are issued before allowance; and
- whether the application is appealed.
Costs can range from several thousand to tens of thousands of dollars.
What are the most effective ways for a patent owner to enforce its rights in your jurisdiction?
The main form of patent enforcement in Korea is a civil action in a district court. Two types of civil action are available: a main action and a preliminary injunction action. In a main action, civil remedies such as permanent injunction and damages may be sought; only injunctive relief is available in a preliminary injunction action.
Pre-litigation measures (eg, sending a cease and desist letter to encourage the infringer to negotiate) may also be considered a cost-effective method for early settlement outside litigation.
What are the stages in the litigation process leading up to a full trial?
The proceedings begin with a complaint, typically followed by an initial exchange of written submissions. The court hearing procedure then begins. After a series of initial hearings, the court may ask the parties to give technical presentations and provide witness testimony. Throughout the proceedings, the parties may submit briefs on topics of their choice; typically, both sides file briefs shortly before each hearing.
When the court has determined that all issues have been raised and dealt with in the hearings and briefs, it will close the proceedings and set a date for its decision. Usually, a decision is issued within several weeks of the proceedings closing.
What scope is there for forum shopping?
The Korean venue and jurisdiction rules for patent infringement actions are restrictive, so there is not much flexibility in selecting a venue. As of January 1 2016, all patent infringement actions in Korea must be filed at one of five specific district courts (Seoul Central, Daejeon, Daegu, Busan and Gwangju). Plaintiffs may choose to bring an action at whichever of the five district courts meets the relevant venue requirements. Alternatively, any patent infringement claim may be brought at the Seoul Central District Court due to its specialised expertise in patent infringement matters.
How easy is it for defendants to delay proceedings and how can plaintiffs prevent them from doing so?
Court proceedings tend to be fairly flexible and the parties are typically free to submit briefs on any new issues while they are ongoing. Thus, a defendant may strategically time the introduction of new arguments or evidence to increase the chance of an additional hearing. Although a plaintiff may request the court to reject late introduction of arguments and evidence by the defendant on the grounds that this is a delaying tactic, the court will rarely dismiss the defendant’s new arguments or evidence unless this is too late.
In addition, if a defendant files an invalidation action with KIPO – which is separate from the infringement action – this may delay the infringement proceedings.
What level of expertise can a patent owner expect from the courts?
Many judges do not have a technical background. However, the Seoul Central District Court (where most patent infringement actions in Korea are filed) has three panels of IP-specialised judges and has been recognised as the district court with the most expertise in IP matters. It has several technical advisers with at least 15 years of experience as KIPO patent or trial examiners who provide assistance to the judges in understanding the technology at issue.
Are cases decided by one judge, a panel of judges or a jury?
Patent infringement cases where plaintiffs seek an injunction – either alone or in addition to other remedies – are decided by a panel of three judges at the district court level. There is no jury system for patent infringement actions.
What role do expert witnesses play in the proceedings?
Experts may be either retained by a party or appointed by the court. If a party retains an expert (as is often the case, since patent cases usually involve complex technical issues), the expert’s testimony will typically be submitted through a written affidavit, rather than live testimony (although the latter is possible). Court-appointed experts are typically used when there are disputes over the results of a test or analysis relevant to the infringement case.
Does your jurisdiction apply the doctrine of equivalents and if so, how?
A finding of patent infringement is possible under the doctrine of equivalents if certain requirements are met, including the following:
- The accused product uses the same principle to solve the same problems as the patented invention;
- The equivalent element in the accused product carries out substantially the same function in substantially the same manner to obtain substantially the same effect as the expressly claimed element;
- The equivalent element is easily conceivable to a person of ordinary skill in the relevant art;
- The accused product is not anticipated or obvious in view of the prior art; and
- The equivalent element was not intentionally excluded from the patent claims during the prosecution.
Are preliminary injunctions available? If so, under what circumstances?
If there is a pressing risk of irreparable harm to the patentee, the patentee may bring a preliminary injunction action. To obtain a preliminary injunction, the patentee must demonstrate:
- the likelihood of success on the merits (infringement and patent validity); and
- the need for provisional relief.
In deciding the need for provisional relief, the court will balance the irreparable harm that would be caused to the plaintiff if infringement continued against the economic harm to the defendant if the injunction were granted.
How are issues around infringement and validity treated in your jurisdiction?
Korea has a bifurcated system, under which infringement is adjudicated by the district court while validity is adjudicated by the KIPO IPTAB at first instance. Although an infringement court has no power to invalidate a patent formally, it may refuse to enforce a patent if it finds that the patent will likely be invalidated by the IPTAB.
A district court decision (for a main action) and an IPTAB decision can be appealed to the Patent Court and then to the Supreme Court.
What are the typical remedies granted to a successful plaintiff?
In a civil action, the typical remedies are injunctive relief (preliminary or permanent) and monetary damages.
How are damages awards calculated? Are punitive damages available?
Damages can be calculated based on one of three methodologies:
- multiplication of the number of infringing articles by the amount of profit per unit that the plaintiff could have earned but for the infringement;
- presumption of the profits earned by the infringer (ie, disgorgement of infringer’s profits); and
- reasonable royalties (as would usually be charged for a licence for the same kind of technology).
If the facts make it difficult to compute the damages based on any of these methods, the court may determine the damages at its own discretion, taking into consideration the parties’ arguments and evidence. Korea does not recognise punitive damages for patent cases.
How common is it for courts to grant permanent injunctions to successful plaintiffs and under what circumstances will they do this?
If the court finds that the patent in suit is valid and infringed, it will grant a permanent injunction except in exceptional cases, such as where seeking an injunction is deemed an abuse of right.
How long does it take to obtain a decision at first instance and can this process be expedited?
It generally takes between three and eight months to obtain a decision in a preliminary injunction action, and between 12 and 18 months in a main action. The plaintiff may consider dropping some of the asserted patents or the accused products from the case or withdrawing damages claims (which can be re-filed in the intermediate appeal procedure or by a separate action) to expedite the proceedings. However, it is generally difficult to expedite preliminary injunction or main action proceedings and there is no statutory provision for expediting such actions.
For an invalidation action, it can typically take between six and 14 months for the IPTAB to render a decision. Invalidation actions before the IPTAB can be expedited under certain circumstances – for example, where a related court action is pending.
Under what circumstances will the losing party at first instance be granted the right to appeal? How long does an appeal typically take?
The losing party may appeal the district court decision for a main action by filing a notice of appeal within two weeks of receipt. As of January 1 2016 appeals of infringement decisions (main actions) are handled exclusively by the Patent Court. Typically, the appeal proceeding takes between eight and 12 months.
Similarly, the losing party may appeal the IPTAB decision by filing an appeal within 30 days of receipt. The appeal will be handled by the Patent Court, which will generally take seven to 11 months to issue its decision.
Decisions of the Patent Court can be appealed to the Supreme Court. A Supreme Court decision can take four to five months if the case is summarily dismissed or one to two years if the case is reviewed on the merits.
Kim & Chang
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Si Yul Lee
As a member of the Kim & Chang IP group, Si Yul Lee’s practice ranges from litigation to transactional work. Many of his patent infringement representations have involved multiple actions in different jurisdictions worldwide; as a result, he has extensive experience in coordinating global litigation and communicating with clients and attorneys from other jurisdictions. His transactional work includes drafting and negotiating licence agreements regarding technology and trademarks.
Mr Lee obtained his master’s and bachelor’s degrees in physics from Seoul National University and a bachelor’s degree in law from the same university. He received an LLM from Stanford Law School. Mr Lee served as a judge in the Seoul Central District Court before joining Kim & Chang.
Stephen T Bang
US patent attorney
Stephen Bang is a foreign legal consultant at Kim & Chang. He is a member of the California Bar and registered to practise before the US Patent and Trademark Office. Before joining Kim & Chang, Mr Bang practised in the United States, handling IP matters including patent, trademark and copyright litigation, as well as patent and trademark prosecution. Before practising law, Mr Bang was co-founder of a start-up which provided IT consulting, including database software solutions and information systems security.
Ho Yeon Lee
Ho Yeon Lee is a patent attorney at Kim & Chang. His practice covers various IP matters, ranging from litigation, prosecution and transactions to licensing negotiations and portfolio management. In particular, Mr Lee has extensive experience in patent litigation and pre-litigation patent analysis, including multi-jurisdictional patent disputes. He has a high level of expertise in computer technologies, telecommunication systems and wireless communications.
Mr Lee received his BE and ME in computer engineering from Seoul National University and his LLM from Duke University School of Law. Before joining Kim & Chang in 2004, Mr Lee worked at Samsung Electronics for six years as a senior engineer in the wireless communication division, where he designed software for mobile phones.