Top legal experts in South Korea provide an exclusive insight into the country’s patent prosecution and litigation strategy for 2017
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 be novel and not 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 types of invention are explicitly excluded from patent eligibility?
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 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.
To what extent can inventions covering software or computer-implemented inventions be patented?
For a software invention to be granted, certain requirements must be met:
- First, 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).
- In addition, claims should not involve human activities (as opposed to software processing).
Further, software inventions can be 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.
To what extent can inventions covering business methods be patented?
Business method inventions are subject to the same requirements as software inventions.
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.
Are there other forms of protection for inventions that do not meet the criteria for patentability (eg, petty patents)? Are these examined? What kinds of remedy are available when enforcing them?
A utility model has a lower standard for registration than patents, but is available only for the shape or structure of an article.
The inventiveness standard for utility models is whether the invention could have been conceived by those skilled in the art ‘very easily’ in view of the prior art (see patentability standard of whether the invention could have been ‘easily’ conceived). Although examiners should apply the lower standard for determining the inventiveness of a utility model, the distinction is not clearly applied by examiners in practice.
Remedies available for patents, including injunctive relief and monetary damages, can be sought for utility models.
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 procedure are available in your jurisdiction?
Post-grant invalidation actions may be filed before the Intellectual Property Trial and Appeal Board (IPTAB), which is an administrative review body within the KIPO. The invalidation action is an inter partes proceeding and only an interested party or examiner can file an invalidation action any time after the patent is registered.
An ex parte patent cancellation action may also be filed against patents registered on or after March 17 2017. Unlike the invalidation action, the IPTAB will determine whether to institute the proceedings. Grounds for cancellation are limited to prior art invalidity grounds based on written publications. The patentee can appeal the IPTAB cancellation decision to the Patent Court. If the patent is upheld by the IPTAB, the petitioner for the cancellation action cannot appeal the IPTAB decision.
Are there other ways to challenge a patent administratively without resorting to litigation?
A granted patent can be nullified through an invalidation action filed before the IPTAB. A patent cancellation action is also available for patents registered on or after March 17 2017.
What is the process for appealing a decision of the patent office in your jurisdiction? Is there data on the rate of success for such reviews?
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. IPTAB decisions may be appealed to the Patent Court and then the Supreme Court. According to KIPO data, the success rate of appeals in recent years appears to be less than 30%.
What is the cost of obtaining a patent in your jurisdiction? How long does the examination and registration process usually take?
The total cost may vary significantly, depending on:
- the complexity of the case;
- how many office actions are issued; and
- whether the application is appealed.
Costs can range from several thousand to tens of thousands of dollars.
Substantive examination does not begin until a request for examination is filed (up to three years after the filing date for applications filed on or after March 17 2017 or up to five years for applications filed before March 17 2017). The examination decision is typically issued within 10 to 13 months of the request for examination.
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.
Does your jurisdiction have non-judicial administrative enforcement mechanisms for patents? What types of remedy are available?
A patentee may enforce patents through the Korea Trade Commission (KTC) or the Korean Customs Service (KCS).
The KTC may investigate unfair trade practices (eg, import or export of goods infringing Korean IP rights) independently or on petition by any interested party. Remedies available to the petitioner include:
- provisional measures (eg, suspension of the import of infringing goods);
- corrective measures (eg, suspension of the import and sale or destruction of infringing goods);
- administrative fines; and
- criminal penalties in case of non-compliance with the measures issued by the KTC.
A patentee may also request the KCS to suspend the release of goods to be imported or exported that infringe on its patent. The patentee can pre-register his or her patent with the KCS and request the KCS to suspend release of infringing goods by submitting infringement evidence.
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 selection?
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.
Are there specialised IP courts in your jurisdiction? What litigation forums are most heavily used by patent owners in your jurisdiction?
The five district courts discussed above have exclusive jurisdiction over patent infringement actions. Among these, the majority of patent infringement actions are filed in the Seoul Central District Court, which comprises special judge panels with expertise in patent infringement matters. All district court decisions can be appealed to the Patent Court; Patent Court decisions can be appealed to the Supreme Court.
What level of expertise can a patent owner expect from the courts?
The Seoul Central District Court has specialised panels of judges and the most expertise in IP matters among the district courts. It has several technical advisers with at least 15 years of experience as KIPO patent or trial examiners who provide technical assistance to the judges.
Are there ways for defendants to delay proceedings? 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 is generally inclined to review the defendant’s new arguments or evidence unless this is too late.
In addition, if a defendant files an invalidation action with the KIPO, this may delay the infringement proceedings.
Is there a procedure for discovery? What are the methods for compelling a counterparty to turn over evidence?
The basic forms of discovery include the following:
- document production order;
- inspection of facilities;
- witness testimony; and
- facts inquiry toward third parties.
Compared to the United States, broad discovery is not available and the courts directly supervise discovery. Any discovery requests must be specifically identified before a court will consider granting them.
Although it was common for parties to refuse the production of documents on the basis that this could threaten their trade secrets, an amendment to the Patent Act which took effect on June 30 2016 makes such refusal more difficult. Specifically, if a party refuses to comply with a court’s order to produce documents by claiming that such documents constitute trade secrets, the court may review the requested documents in camera. If the court finds that the documents are necessary to prove infringement or a damages amount, they may no longer be withheld based on the trade secrets claim. In that case, the producing party may request the court to limit the persons allowed to access the documents and the scope of documents that are accessible to such persons.
Are cases decided by a single judge, a panel of judges or by 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, while cases seeking no injunction but damages of not more than W200 million (approximately $175,000) are heard by a single judge. There is no jury system for patent infringement actions.
What role can and do expert witnesses play in proceedings?
Experts may be either retained by a party or appointed by the court. If a party retains an expert, 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 a doctrine of equivalents, and if so, how?
The doctrine of equivalents is generally recognised. Even if one or more elements of a patent claim is substituted with unclaimed elements in a product or a process, a finding of patent infringement is possible under the doctrine of equivalents if certain requirements are met, including the following:
- The accused product or process uses the same principle to solve the same problems as the patented invention;
- The equivalent element in the accused product or process achieves 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 or process is not anticipated or obvious in view of the prior art; and
- The equivalent element was not intentionally excluded from the patent claims during prosecution.
Is it possible to obtain preliminary injunctions? How serious is the risk of disruption to an accused infringer’s business?
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.
Since a preliminary injunction action is decided on an expedited basis (eg, typically between five and eight months), a preliminary injunction order may be enforced immediately on issuance of the order and there are no measures to stay its enforcement pending appeal ‒ a preliminary injunction action serves as an effective measure to make a significant impact on an accused infringer’s business. A plaintiff who enforces a preliminary injunction order which is later cancelled in the appellate proceedings is required to compensate the damages suffered by the defendant from the enforcement unless the plaintiff proves that it was not negligent in enforcing the order.
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 the patent if it finds that the patent is likely to be invalidated by the IPTAB.
What are the remedies available to a successful plaintiff? Which remedies are most often awarded by the courts?
In a civil action, the typical remedies are injunctive relief (preliminary or permanent) and monetary damages.
How are damages awards calculated? Is it possible to receive punitive damages?
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; 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 always grant a permanent injunction except in exceptional instances, such as where seeking an injunction is deemed an abuse of rights.
How long does it take to get a decision at first instance and is it possible to expedite this process?
It generally takes between five and eight months to obtain a decision in a preliminary injunction action, and between 12 and 18 months in a main action. There is no statutory provision for expediting such actions, but limiting the asserted patents or the accused products, or withdrawing damages claim (which can be re-filed on appeal or by a separate action) may be considered to expedite the proceedings.
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 in a first-instance case be granted the right to appeal? How familiar are the higher courts with patent matters? How long does an appeal typically take?
The losing party may appeal the district court decision for a main action to the Patent Court. Typically, the appeal proceeding takes between eight and 12 months. Similarly, the losing party may appeal the IPTAB decision to the Patent Court, which will generally take between eight and 12 months to issue its decision. Appeals to the district court decision and the IPTAB decision will be reviewed de novo, and thus both parties may introduce new arguments or evidence.
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. Only legal issues can be reviewed in the Supreme Court appeal.
The Supreme Court and the Patent Court have access to technical advisors who have doctorates or at least 15 years’ experience serving as KIPO examiners. Senior research judges with IP expertise are also available to support the Supreme Court judges.
Kim & Chang
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21-15 Jeongdong-gil, Jung-gu
Tel +82 2 2122 3900
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Si Yul Lee
As a member of Kim & Chang’s IP practice, Si Yul Lee’s work 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 and a bachelor’s degree in law from Seoul National 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 T 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. Previous to that, 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.