General

2. The Purpose of the Patent Law
The purpose of the Patent Law is to encourage and protect inventions and utilization thereof, thereby improving and developing technology so as to contribute to the development of industry (Art. 1).

3. Patent Term
The term of a patent right is 20 years from the filing date of the patent application (Art. 88); however, for patents granted on applications filed on or after July 1, 1987 and before September 1, 1990, the term is the longer of 20 years from the filing date or 15 years from the date of publication for opposition (if applicable) or the date of registration. Patents directed to inventions of human and animal medicines as well as agricultural chemicals that require approval under other laws, if filed after July 1, 1987, can enjoy a further increase in term for up to five years (Art. 89).

Subject Matter of Patent

1. Invention
The term "invention" is defined as the highly advanced creation of technical ideas utilizing rules of nature (Art. 2). Mere discovery of a law of nature does not constitute the creation of a technical idea. New plant varieties are patentable; any person who invents a new and distinct variety of plant which reproduces itself asexually may obtain a plant patent thereof (Art. 31).

2. Unpatentable matter
"Inventions liable to contravene public order or morality or to injure public health." (Art. 32)

Requirements for Patentability

1. Utility
Inventions must be industrially applicable (Art. 29).
Inventions involving human body in their indispensable constituent features, such as diagnosis and medical treatment, are refused on the ground that they do not fall under "inventions industrially applicable".

2. Novelty
The following inventions lack novelty:
(i) inventions publicly known in the Republic of Korea prior to the filing of the application;
(ii) inventions described in a publication distributed in the Republic of Korea or in a foreign country prior to the filing of the patent application; (Art. 29)

Exception to lack of novelty:
(a) experimentation, publication or public disclosure at a designated scientific meeting
(b) inventions publicly known, publicly worked or published without the inventor's permission; and
(c) public display of articles which embody an invention at certain types of exhibitions (Art. 30)

3. Inventive step
(1) Primary consideration
a. Determination of the scope and content of the prior art
b. Ascertainment of the difference between the prior art and the claims
c. Assessment of obviousness
The KIPO examiners compare an invention with the prior art as to its purpose, construction and effect. The following types of inventions are deemed to be unpatentable due to their lack of a sufficient inventive step.
(a) a mere aggregation of known technology
(b) a mere replacement of known technology

(2) Secondary consideration ------- Commercial success

FLOW CHART OF THE APPLICATION PROCESS IN THE KOREAN INTELLECTUAL PROPERTY      OFFICE (KIPO)

Remarks
1. The underlined is Applicant’s Action or Inaction, box shape is Patent Office Action and * is Third Party’s Action.
2. Earlier Laying-Open of Application can be requested by the applicant. Request for Examination must be made within 5 years from the filing date for Patent application.
3. Post-Grant Opposition Systems is effective as of July 1, 1997 and opposition can be filed from the registration date of a patent right to 3 months after the publication of a patent in Patent Gazette.

POST-GRANT OPPOSITION SYSTEM

ACTIONS AND TIME LIMITS IN KOREAN PATENT SYSTEM

A. Filing & Prosecution

Action Time Limit Time Limit Computed from Extensions Filing Appln Paris Convention Filing 12 months Priority date, if claimed None PCT National Phase Entrance 30 months Priority date with or without a demand for International Preliminary Examination under Chapter II of the PCT None Priority Claim Simultaneous with the filing None Certified Priority Document Paris Convention Filing 16 months Priority date None PCT National Phase Entrance 2 months Date of notification of receipt of PCT certified document by KIPO None Grace Period for National Application in case of Exception to Loss of Novelty 6 months Date of Loss of Novelty (such as publication by the applicant) None Document Showing Date of Loss of Novelty 30 days Filing date None Power of Attorney 1 month Mailing date of Notice (which will issue about 3 days after filing) 2months on request Amendment for Applications Filed before July 1, 2001 1) 15 months Earlier of filing date or Priority date None 2) Simultaneous with requesting examination None 3) Within the term for responding to Office Action (Preliminary Notice of Reasons for Rejection) or for responding to Opposition None 4) 30 days Date of lodging Appeal to KIPT None

A. Filing & Prosecution (continued)

Action Time Limit Time Limit Computed from Extensions Amendment for Applications Filed on or after July 1, 2001 1) Before receiving a certified copy of the decision to grant a patent None 2) Within the term for responding to Office Action (a first Preliminary Notice of Reason for Rejection or final Preliminary Notice thereof) or for responding to Opposition None 3) 30 days Date of lodging Appeal to KIPT None Examination Request 1) 5 years Filing date (=PCT filing date in PCT case) None 2) 30 days Filing date of divided application where 5 years have already elapsed from the filing date of parent application None Response to Office Action (Argument) 2 months Mailing date of Office Action (Preliminary Notice of Reason for Rejection) Unlimited 1 month Extensions Divisional Appln. Any time when amendment can be filed None Appeal of Rejection to Patent Tribunal 30 days Date of receipt of official copy of Decision for Rejection (Examiner’s final rejection) 2 months on request Appeal to the Patent Court 30 days Date of receipt of official copy of Trial Decision 1 month on request (only applications filed on or after January 1, 1999) Appeal to Supreme Court 14 days Date of receipt of official copy of Decision on Appeal by Patent Court None

B. Registered Patent

Action Time Limit Time Limit Computed from Extensions Opposition 3 months Date of Publication of Grant None Response to Opposition 2 months Mailing date of Notice of Opposition Unlimited 1 month extensions Payment of Issue Fee (Registration) And 3 yr. Maintenance Fee 3 months Date of receipt of official copy of Decision for Patent 6 months with 100% surcharge Annuity (from 4th year) During preceding year or prior thereto Registration date (Date of payment of 1st three annuities in lump sum) 6 months with 100% surcharge Patent Right Term 20 years from filing date (=PCT filing date in PCT case)   Application for Patent Right Term Extension 3 months Date of receipt of Regulatory Approval from competent authority None Invalidation Trial Any time after patent registration N/A Correction Trial Any time after patent registration N/A Appeal to the Patent Court 30 days Date of receipt of official copy of Trial Decision 1 month on request (only applications filed on or after January 1, 1999) Appeal to Supreme Court 14 days Date of receipt of official copy of Decision on Appeal by Patent Court

Application

To apply for a patent in Korea, one must file application documents as prescribed by the patent legislation. However, persons having neither domicile nor residence in Korea (or a business establishment in the case of a legal entity), must file an application through a patent administrator (representative in Korea, e.g. patent attorney) having a domicile or residence in Korea (Art. 5). This is to facilitate communication between the applicant and the Patent Office.

Documents to be Filed with the Patent Office

To the request, a specification including the following, a drawing or drawings if necessary, and an abstract must be attached. (Art. 42 (2) and (3)):
(i) the title of the invention;
(ii) a brief explanation of the drawing(s);
(iii) a detailed description of the invention; and
(iv) a claim or claims.

Filing Date

First-to-file rule
If a plurality of applications claiming the same invention are filed, only the earliest filed application has the right to be patented, regardless whether the inventors or applicants are identical or not (Art.36). The First-to-file rule also applies when comparing inventions of a patent application vs. a Utility Model (U.M.) application, except in the case of a dual patent/UM application.

(A) Application with Priority under Paris Convention
Persons wishing to claim priority under Article 4D (1) of the Paris Convention must take the following action (Art. 54), except in the case of entering the national phase under the PCT.
(i) Simultaneously with the application, a document must be filed specifying the name of the country party to the Paris Convention in which the application was first filed, and the date of filing of the application in that country.
(ii) Documents including a copy of the application certified as correct issued by the
original filing country must be presented to the KIPO within one year and 4 months from the earliest priority date.

(B) Application with Priority Based on Patent Application, etc. (Domestic Priority)
There is a system of domestic priority in Korea. This system has been effective as from September 1, 1990 (Art. 55).

Under the domestic priority system, a later filed application may claim priority for matters already disclosed in an earlier application which was filed within 12 months prior to the filing of the later application by the same applicant. The applicant of the later application must indicate the earlier application and the effect that priority is being claimed. When priority is claimed, the earlier application will be deemed withdrawn after 15 months have elapsed from its filing date.

If an improvement claimed in the later invention is obvious from the invention claimed in the earlier application, and the two inventions are substantially identical, it would be advisable for the applicant to claim domestic priority when filing the later application in order to avoid rejection.

(C) PCT Application
Where an applicant furnishes the request, etc. of an international application to the receiving office or International Bureau and designates any Contracting state (the designated State) of the Patent Cooperation Treaty for protection of inventions, the international application is accorded an international filing date by the receiving Office and has the effect of a regular national application in each designated state as of the international filing date, which date is considered to be the actual filing date in each designated state (Art. 11) of the PCT. An international application can contain priority claim(s) under the Paris Convention.

Therefore, if an international application is filed in one of the languages admitted by the receiving office, it is not necessary to file separately in the Patent Office of each Contracting State and region or to translate the description at the time of filing the international application.

(D) Divisional Application
A divisional application is allowed where a patent application covers two or more inventions. If the divisional application satisfies the requirements below, it is deemed to have been filed at the time of filing of the original application.

A divisional application may be filed during the same period when amendment is allowed. The period when divisional application can be filed is also extendible to the same extent that the opportunity to amend is extendible.

(1) Formality requirements
(i) Division of an application must be made at the prescribed time or within the prescribed period. The prescribed time or the prescribed period is the same as that allowed for amending the specification or drawings of the original application.
(ii) Division of the application must be made by the applicant of the original application.

(2) Substantive requirements
(i) The claimed inventions of a divisional application may not comprise all the inventions disclosed in the original specification or drawings of the original application at the time of division. In almost all cases, two or more inventions are disclosed in the original specification or drawings and this requirement is satisfied.
(ii) The claimed inventions of the divisional application may not contain matters which are not within the scope of the features disclosed in the specification or drawings of the original application at the time of filing.

Examination of Formalities

(B) Formality Check
A formality check is made automatically by a computerized checking system and then through a VDT checking method at the Application Division to determine whether the application meets the prescribed formality requirements, and to determine if all the required papers are attached. If any defects are found, a notification is sent to the applicant (where the applicant has appointed a patent administrator, to the patent administrator), and the applicant can make amendments. If the defects are not rectified, the application may be invalidated (Art. 16)

Laying-open to Public Inspection

(A) Assigning of Classification (IPC)
When an application is found satisfactory as to formalities, it is forwarded to the Examination Classification Department to be assigned its International Patent Classification (IPC).

(B) Laying-open to Public Inspection
All patent applications are laid open after the expiration of eighteen months from the filing date, or even before eighteen months where the applicant requests early laying-open of the application (Art. 64).
Where an application claims priority, the term of eighteen months is counted from the priority date, and for applications with more than one priority claim, it is counted from the earliest priority date.

Request for Examination

In Korea, examination is carried out only on applications for which request for examination has been filed (Art. 59(1)). This system enables the applicant to review whether examination is necessary and also to choose the timing to file such a request. Examination becomes unnecessary on those applications for which no such request is filed and, as a result, the system contributes to the acceleration of examination work.

The period in which such a request for examination may be filed is limited to 5 years from the filing date (in case of an international patent application, 5 years from the international filing date). If no such request is filed within the prescribed period, the application is deemed to be withdrawn (Art. 59(5)).

An application for which a request for examination has been filed is forwarded to a division in the Examination Department in accordance with the International Patent Classification (IPC) assigned to that application, and subsequently, to the examiner in charge. An examiner assigned to the IPC which has been given to the application becomes the examiner in charge for that application.

Notification of Reasons for Rejection

If any reason for rejection is found in the process of examination by an examiner, that examiner formulates a notification of rejection for rejection and sends it to the applicant (where the applicant has appointed a patent administrator (e.g. patent attorney), the notification is sent to the patent administrator) (Art. 62 & 63).

On receipt of a notification of reasons for rejection, the applicant may present a written argument and/or an amendment (if necessary) within the designated due date (2 months from the date on which the notification is issued, but three extensions of one month can be obtained by request) in order to resolve the reasons for refusal.

Amendment of Specification

An amendment to the specification is often the most effective way of resolving the reasons for rejection. However, there may be restrictions as mentioned below in timing and in content of amendments.

For applications filed before July 1, 2001
Amendment may be made at any time until expiration of fifteen months from the filing date (for applications claiming priority, fifteen months from the earliest priority date). Subsequently, amendments may be made only when responding to an office action, when requesting an examination, or within thirty days from the demanding date of a trial against a final rejection.

Prior to the transmittal of a certified copy of the decision to grant a patent, an amendment to the specification or drawing(s) is permitted within the scope of the features disclosed in the specification or drawing(s) originally attached to an application request.

If an amendment is submitted in violation of the above, the examiner rejects the amendment by a ruling. The applicant may appeal to the Intellectual Property Tribunal (IPT) of the KIPO against the ruling to reject an amendment. Where, after registration of the establishment of the patent right, it is found that an amendment has changed the subject matter of the application, the application is deemed to have been filed at the time when the amendment was made.

For applications filed on or after July 1, 2001
An amendment may be made at any time before the patent applicant receives a certified copy of a decision to grant the patent or a notice of rejection. If a notice of rejection is received, an amendment may be made only within time limits designated for submission of a response.

Decision of Rejection

A decision of rejection is made if the reason(s) for rejection found by the examiner in charge are not resolved by written argument or amendment presented by the applicant (or no response is made by the applicant) (Art. 62).

Appeal against a Decision of Rejection

On receipt of a certified copy of a decision of rejection, letting it stand will mean that the decision for rejection will become final and conclusive. If the applicant is dissatisfied with the decision, he/she may appeal to the IPT of the KIPO within 30 days (extendible by 2 months for residents of foreign countries) from the date of receipt of the certified copy of the decision (Art. 132-3).

Reexamination of an Application Prior to Trial Examination

When an amendment is presented by the applicant at the time an appeal is filed against a decision of rejection, the examiner who was in charge of examination of the application concerned is assigned to reconsider the application (Art. 173).

Decision to Grant a Patent

The Patent right entitles its owner to the exclusive right to work the invention for which the patent is granted.

Post-grant Opposition System

1) Any party can raise an opposition.
2) The term allowed for the opposition is three (3) months after public notice of the granting of the patent, however, the grounds for opposition and evidence therefor may be amended within 30 days after expiration of the time limit for opposition.
3) Opposition can be raised on grounds including the following:
a) lack of novelty,
b) lack of inventive step,
c) insufficient description, etc.
4) Multiple oppositions, if raised, may be consolidated.
5) A patentee who suffers from revocation of his patent as a result of an opposition may appeal to the IPT of the KIPO.
6) During the opposition procedure, correction of the patent may be made.
After the patent right is registered, a correction of the specification or drawing(s) of a patented invention may be made only to narrow the claim(s), correct clerical errors, or clarify an ambiguous description. In cases of correcting the specification or drawing(s), the claims may be neither extended nor modified substantially. In case of correcting the specification or drawing(s) to narrow the claim, the matters which are described in the claim after correction must have been patentable at the time of filing of the patent application.
7) Other matters
- The opposition may be raised claim by claim.
- The opposition examiners may examine, on their own initiative, other reasons for
revocation.

Miscellaneous

(A) Preferential Examination System
The Enforcement Decree of the Korean Patent Law, effective as from July 1, 1999, has been revised with regard to the preferential examination system. The objects of preferential examination request were expanded. Of particular interest is that preferential examination has been expanded to include occasions where the invention described in an application is being worked or prepared to be worked in Korea by the applicant himself. Additionally, the new preferential examination system does not include the vague requirement of the previous system which allowed the KIPO to refuse preferential examination if it did not consider preferential examination to be “urgent”. However, official fees as to the request of preferential examination have been newly established in order to inhibit excessive requests for preferential examination.

(B) Offer of Information
In Korea, any person can offer information to the Patent Office, free of charge, showing that the invention for which an application is filed is not patentable under the provisions prescribed in Article 62 of the Patent Law (except for violation of the description requirement of multiple claim system or unity of invention) (Art. 64(2)).

The information is treated as documents relevant to the application, and can be inspected by request. The information thus offered is utilized in examination.

(C) Interview
An interview, an auxiliary procedure in examination, is conducted when a case is such that the interview could clarify specific issues and lead to a mutual understanding between the examiner and the applicant, and the interview thereby advances the prosecution of the application.
An interview can be held for any application for which the examination has already started or will soon be started.

(D) Revision of Multiple Claim System
In accordance with the Enforcement Decree of the Korean Patent Law, effective as from July 1, 1999, it is possible to have two or more dependent claims with substantially the same meaning in the claims. Also, according to revision of the Enforcement Decree, it is now possible for a dependent claim to depend from more than one independent claim. This revised system will be applied to all pending cases, regardless of their filing date. For reference, a multiple dependent claim depending from other multiple dependent claim(s) and “omnibus” claims remain impermissible.

Term of Patent Right

(A) Patent Term Extension
An extension to the patent term by up to five years is made available through application for registration of patent term extension if the invention could not be exploited due to the necessity of obtaining of authorization or registration to work the invention under provisions of other laws or regulations, and where the invention is one prescribed by Presidential Decree (such as cases where an authorization is required under national legislation designed for ensuring product safety) (Art. 89).

Since July 1, 1987, inventions prescribed by Presidential Decree are limited to those of agricultural chemicals and human or animal drugs.

Protection of Patent Right

(A) Nature of the Patent Right
In Korea, the patentee has the exclusive right to work his invention, that is, he can produce, use, sell, offer for sale, import, or distribute it commercially or industrially whether it be a product or a process. If the patentee has a patent for a process of manufacturing a product, the exclusive rights extend to both the process and the product produced by the process.

(B) Enforcement of Patent Right
(1) Demand for Prohibition of Infringement

(a) Warning Letter
When the patent owner believes there is patent infringement by an infringer, he usually sends a warning letter seeking cessation of the infringement. If an infringer continues his infringement after he has received a warning letter, it is presumed that he has an intent of infringement. A warning letter is usually sent by special contents certified mail by which a post office may prove its content.

(b) Preliminary Injunction
A patent owner or exclusive licensee may file an application for preliminary injunction in the district court with proper jurisdiction. a Preliminary injunction may be issued if the infringement is evident and it is necessary for prevention of substantial damages and/or to avert imminent violence or coercion.

The preliminary injunction system is prescribed in Article 7l4 of the Code of Civil Procedure. The jurisdiction of the preliminary injunction is the court having jurisdiction over the principal suit. If a principal suit is not raised, proper jurisdiction is in the court of defendant's residence.

In a patent case, it takes at least three to six months from the application for preliminary injunction to the decision thereof if the infringement is obvious. The court will usually take sufficient time to give the defendant a chance for rebuttal and hearings in view of the complexity of most patent disputes.

A decision may be rendered without oral arguments. The grounds for a preliminary injunction need only be minimally shown, but need not be proved. A preliminary injunction order can be revoked in case the ground has ceased to exist and the defendant has furnished a deposit fixed by the court.

Against a ruling for preliminary injunction, a defendant may raise an objection. The court may, upon its own authority, decide the disposition necessary to attain the purpose of the application.

(c) Permanent Injunction
A patentee or exclusive licensee may request the court to prohibit or prevent the act of a person who infringes, or is likely to infringe his patent right (Article 126 (l) of the Patent Law). If the court deems such request to be reasonable, the court shall order the infringer to take measures necessary to protect the patentee or exclusive licensee.

Litigation for prohibition of infringement does not require over or negligence of the infringer.
The district court of defendant's residence has jurisdiction for litigation for prohibition of infringement. While a series of hearings are held during the examination proceedings, formal statements in the hearings are generally used to confirm the contents of briefs submitted in advance and then to answer any questions raised by the judges and opponent.

In addition to the submission of documentary evidence, if necessary, other evidence such as witness’ testimony is admissible upon request. It will generally take at least one year to obtain a decision in the court of first instance depending upon the complexity of the case.

(d) Reversal of Burden of Proof
Article 129 of the Patent Law provides that in the case of a patent for the invention of a process of manufacturing product, where such product was not publicly known in the Republic of Korea prior to the filing of the patent application concerned, an identical product is presumed to have been manufactured by the patented process.

(2) Damages

(a) Claim for Damages
A patentee or exclusive licensee may claim damages from a person who infringes his right intentionally or with negligence (Art. 128 (1)). A claim for damages must be exercised within 3 years from the date that the patent owner knew of the infringement. The plaintiff must prove infringement by the infringer and damages. With regard to negligence, an infringer is presumed to have been negligent in so far as the act of infringement is concerned; therefore, the burden of proof of negligence is reversed.

It is most difficult to prove damages. In the past, the court has usually recognized an amount equivalent to a royalty for a patent license as damages, because the proof of damages is very difficult. The royalty is usually determined as 2% to 5% of total sales amount.

With regard to product patents granted on applications filed on or after July 1, 2001, the law provides that a court may estimate damages to be the number of infringing products sold multiplied by the unit profit per product. It should be noted that nothing in the law prohibits a court from applying this calculation to patents granted even before July 1, 2001.

(b) Demand for Reimbursement of Infringer's Profit
A patentee may claim reimbursement of profits from a person who infringes the patent right intentionally or with negligence under Article 128 (2) of the Patent Law. A patentee may also seek reimbursement for undue enrichment under the Civil Law. A demand for reimbursement of an infringer's undue enrichment under the Civil Law does not require intent or negligence of the infringer and may be brought within 10 years of the act of infringement.

(c) Demand for Recovery of Business Goodwill
Upon request of a patentee or exclusive licensee, the court may order person who has injured the business goodwill of the patentee or exclusive licensee intentionally or with negligence, to take measures necessary to restore the business goodwill of said patentee or exclusive licensee (Art. 131). An advertisement of apology in a newspaper is usually used as a means to restore business goodwill.

(3) Criminal Penalties
A patentee or exclusive licensee may file a criminal complaint against an infringer on the grounds of patent infringement.

The infringer faces potential liability of up to seven years in prison or a fine of up to one hundred million Won (Art. 225) .
Prosecution for offenses is initiated only upon complaint by the patentee or exclusive licensee. The complaint must be filed within six months from the date that the patent owner knew of the infringment. The complaint must be made with the police or district prosecutor's office of the infringer's residence.

Patent Term Extension

In Korea, the patent term extension system was introduced under the Patent Law of 1987 and later revised under the Patent Law of 1990 and 1999 .

The patent term extension system of 1999 is the same as that of 1990, except that the provisions of the 1990 Law which required a minimum two year unworkable period have been deleted from the law; there is no minimum unworkable period under the law of 1999.

The patent term extension system of 1990 is prescribed in Articles 89-93 of the Patent Law and Article 7 of the Enforcement Decree thereof. Said articles are summarized below:

Qualified patent: A patent concerning drugs for humans or animals, or concerning agrochemicals, where the invention has been subjected to a regulatory review period for a period of at least two years before its commercial marketing or use.

Duration of extension: A period of between two to five years, depending on the length of the regulatory review period; patent term extension will not be granted if the regulatory review period has been less than two years, and the duration of extension will not exceed five years regardless of the length of the review period.

When request must be made: An application for patent term extension must be filed within three months from the date of approval for pharmaceuticals or agrochemicals under the provision of law under which the applicable regulatory review period occurred, but may not be filed during the six-month period preceding the expiry date of the original patent term.

Qualified applicant: Patentee

Procedure: Examined by an examiner; an appeal against a rejection can be made to the Korean Intellectual Property Office (KIPO); and an invalidation trial against an approved extension can be filed with the KIPO.

Effects of extension: The extension applies only to the product, process, use or composition that had been subjected to a regulatory review period.
The patent term extension system of 1987 is prescribed in Article 53(2) of the 1987 Patent Law and Articles 9-2 and 9-3 of the Enforcement Decree thereof. The 1987 law differs from the 1990 law as follows:

Qualified patent: An additional requirement exists: i.e., a patent under consideration must be being worked within Korea or be fully ready to be worked at the time of filing an application for patent term extension. Further, if a patent approved for extension is not worked in Korea for a period of one year from the approval date of extension without a justifiable reason, the Commissioner of the KIPO may cancel the approved extension.

Duration of extension: Up to five years, and patent term extension may be obtained even if the regulatory review period has been less than two years.

When request must be made: An application for patent term extension must be filed within three-years preceding the expiry date of the original patent term.

Procedure: The Commissioner of the KIPO decides on an application for extension, and an appeal against a rejection has to be made to a court of law.

As of August 31, 1999, it is unclear whether the law of 1999 supersedes the Laws of 1987 and 1990 with regard to Patent Term Extension. Prior to implementation of the Law of 1999, it was clear that only the date of application was relevant in determining whether to apply the 1987 law or the 1990 law for purposes of patent term extension. A patent filed before July 1, 1987 could not be extended since it was before the 1987 law came into effect; a patent filed between July 1, 1987 and August 31, 1990 came within the purview of the 1987 law; and a patent filed after September 1, 1990 came within the purview of the 1990 law. The KIPO will make a determination on the applicability of the 1999 Law in the near future.

The Intellectual Property Tribunal

- The Intellectual Property Tribunal (IPT) is established under the authority of the Commissioner of the Intellectual Property Office with jurisdiction over trials and retrials concerning patents, utility models, designs and trademarks and the inspection and examination thereof.

- A trial panel is composed of 3 or 5 examiners, and its decision is rendered by the majority of the panel.

- Where a party is dissatisfied with a trial decision of the IPT, an action can be filed in the Patent Court. The Patent Court has exclusive jurisdiction over disputes against a trial decision or ruling of the IPT.

Types of Trials in the IPT

(A) Trial against Decision of Rejection
(1) Demandant
- Any applicant whose application has been finally rejected by the Examiner.

(2) Demand Period
- Such applicant may demand a trial within 30 days from the date of receipt of the certified copy of the decision of rejection.

(3) Trial Decision
- When the trial examiners admit the demand to be reasonable, they reverse the decision of rejection and return the application back to the examiner for re-examination.

- The basic reasons given in the trial decision are binding on the examiner with respect to the case.

* Re-examination Prior to Trial against Decision of Rejection (Art.173)
- In case of a demand for a trial against a decision of rejection, an amendment to the specification or drawing(s) to the application under the demand can be made within 30 days after such demand.

- The application with the amendment will be re-examined by the examiner who originally rejected the application, prior to the Trial Proceeding.

- Where on reexamination, the examiner renders a decision that a patent is to be granted, he must cancel his original decision of rejection against which the trial has been demanded.

- Where the examiner refuses to render a decision that a patent is to be granted, he must notify the Director of the IPT on the results of the re-examination.

(B) Trial for Correction
(1) Purpose
- To allow a patentee to correct and/or clarify certain parts of the specification or drawing(s) of a patented invention, so as to facilitate execution of his patent right and prevent others’ possible demand for an invalidation trial against his patent.

(2) Demandant
- Patentee

(3) Correctable Parts
A patentee may demand a trial for correction of the specification or drawing(s) of a patented invention only to:(i) narrow the claim(s);
(ii) correct clerical errors; or
(iii) clarify an ambiguous description.

In correcting the claims, the claims may be neither substantially modified nor extended.

(4) Period in which Correction may be demanded
- A Trial for Correction can be demanded only after a patent is granted.
- Even after expiration of the patent right period, the trial can be demanded.
- An independent Trial for Correction cannot be demanded when an opposition against the case is pending; instead, correction must be made within the opposition proceedings.

(5) Effect
Retroactive effect:
Where a trial decision that the specification or drawings of a patented invention are to be corrected has become final and conclusive, the patent application, the laying-open of the application, the examiner’s decision or the trial decision that the patent is to be granted, and the registration of the patent right are deemed to have been made on the basis of the corrected specification or drawings (Art. 136)

(C) Invalidation Trial against Patent
* In order to invalidate a patent, an Invalidation Trial against the Patent has to be raised; a court sitting in infringement litigation has no power to invalidate a patent.

(1) Purpose
- An Invalidation Trial against a Patent is a trial for invalidating a valid patent retroactively, based on legal invalidation reasons.

(2) Parties
Demandant: interested party or an Examiner
Respondent: patentee

(3) Demand Period
- An invalidation trial may be demanded even after extinguishment of the patent right.

(4) Reasons of Invalidation (Art.133(1))
An invalidation trial against patent can be raised based on the following enumerated reasons in Art.133(1).
(i) where a patent has been granted in violation of Article 25 [Capacity of Enjoyment of Rights by Foreigners], 29 [Requirements for Patent], 31 [Patent for Plant Invention], 32 [Unpatentable Inventions], 33 [Persons Entitled to Obtain a Patent], 36(1) to (3) [First-to-File Rule], 42 (3) or (4) [Patent Application], or 44 [Joint Applications];
(ii) where a patent has been granted to a person who has no right to obtain the patent;
(iii) where a patent has been granted in violation of a treaty;
(iv) where, after the grant of the patent, the patentee loses the capacity of enjoyment of a patent right under Article 25 [Capacity of Enjoyment of Rights by Foreigners], or the patentee no longer complies with a treaty; or
(v) where a patent has been granted in violation of the proviso of Article 87 (2) [Registration of Establishment of Patent Right and Publication of Registration].

(5) Effect
- Where a trial decision that a patent is to be invalidated has become final and conclusive, the patent right is deemed never to have existed.

(D) Trial to Confirm Scope of Patent Right
(1) Purpose
- A patentee or an interested party may demand a trial to confirm the scope of a patent right in order to “confirm” the scope of the claims of a patented invention.

(2) Types
- Positive Trial to Confirm Scope of Patent Right : The patentee may demand a trial to confirm that a third party’s product or process falls within the scope of the patented claims.

- Negative Trial to Confirm Scope of Patent Right : A Demandant may demand a trial to confirm that Demandant does not work the subject patent, i.e. that the Demandant’s product or process is outside the scope of the patented invention.

(3) Parties
a. Positive Trial to Confirm Scope of Patent Right
- Demandant : Patent owner or exclusive licensee
- Respondent : a person viewed as working Demandant’s patent
b. Negative Trial to Confirm Scope of Patent Right
- Demandant : a person desiring a ruling that a specific product or process does not fall within the scope of a patented invention
- Respondent : patent owner or exclusive licensee

(4) Effect
- A Scope Trial Decision has no enforcement mechanism, but can be a useful reference in a separate patent infringement action.

Trial Procedures

(A) Demand of a Trial
A person demanding a trial must submit a written demand to the Director of the Intellectual Property Tribunal, stating:
(i) the name and the domicile of the party and his agent, if designated (in the case of a juristic person, the name and place of business thereof and the name of its representative);
(ii) the identification of the trial case; and
(iii) the purpose of the demand and the grounds therefor.

(B) Collegial System of the Decision Panel
- The trial is conducted by a collegial body of three or five trial examiners and such collegial body decides by a majority vote. (Art. 146)
- The Director of the Intellectual Property Tribunal designates one of the trial examiners as the presiding trial examiner, who presides in all matters relating to the trial. (Art. 145)

(C) Trial Examination
(1) Oral Hearing (if held)
- Oral hearing should be conducted in public, and each party is given the opportunity to present argument and evidence.

(2) Documentary Examination
- Trial proceedings are generally conducted by Documentary Examination, but the presiding trial examiner may, upon request of a party or intervenor or ex officio, conduct the trial proceedings by oral hearing.

(D) Termination of a Trial
(1) Withdrawal of Demand for Trial
- A demand for a trial may be withdrawn by the demandant at any time before the trial decision becomes final and conclusive; however, the consent of the Respondent must be obtained where a written reply has already been submitted. (Art. 161(1))

(2) Trial Decision
- The trial decision is the final decision rendered by the collegial body of trial examiners.
- A trial decision must be rendered within twenty days following the date on which notification of the closing of the trial proceedings has been sent.
- The trial decision is made by the majority vote of the collegial body.
- The trial decision must be in writing, signed and sealed by the trial examiners who have rendered it.

Litigation against Trial Decision in the Patent Court

- An Action disputing a trial decision falls within the exclusive jurisdiction of the Patent Court.

- Such litigation must be instituted within 30 days from the date of receipt of a certified copy of the trial decision or ruling [for patent applications filed on or after January 1, 1999 (and patents granted therefrom) the period is extendible by another 30 days in case of residents of foreign countries].

- Any person who has received a patent Court judgement may appeal to the Supreme Court within 2 weeks from the date of receipt of a certified copy of the Patent Court decision.

Organization of Korean Intellectual Property Tribunal

Composed of 13 Collegial Bodies which has 39 trial examiners including 13 presiding trial examiners.

Court Structure

Organization of Korean Patent Court

Litigation in the Korean Patent Court

A. Background
A Patent Court was established in Korea on 1 March 1998. The Patent Court, a Court at Law located in Seoul, has exclusive appellate jurisdiction over administrative trial decisions and rulings made by the Intellectual Property Tribunal of the Korean Intellectual Property Office (KIPO), e.g. invalidation, correction, and scope trial decisions, and decisions upholding the final rejection of a patent application, the rejection of an amendment or the revocation of a patent. The Patent Court has no jurisdiction over infringement litigation which remains under the jurisdiction of the District Courts, appealable to the High Court.

The Patent Court includes three judicial divisions, each division being made up of three judges. The divisions have been set up for administrative convenience; no single division will specialize in any specific form of case.

As the judges of the Patent Court are not technically trained, technical examiners have been seconded from the KIPO to the Patent Court to assist the judges with technical issues, when necessary. Technical examiners may participate in preliminary hearings and oral hearings at the court’s discretion, and may offer written opinions for the court’s review. Technical examiners have no power to rule on a case, and a technical examiner’s written opinion will be kept under seal.

B. Proceedings before the Patent Court
Proceedings before the Patent Court are governed by the Patent Law, the Administrative Trial Law, and the Code of Civil Procedure as applied mutatis mutandis.

(1) Jurisdiction
The Patent Court has exclusive appellate jurisdiction over both factual and legal issues arising under decisions of the Intellectual Property Tribunal of the KIPO. In effect, the Patent Court acts as a second trial court. It is not bound by the factual findings of KIPO examiners or the Intellectual Property Tribunal of the KIPO; all factual and legal issues are examined anew, and the Patent Court has free discretion to assess the probative value of any evidence and to evaluate the statements of any party or witness. As such, all assertions and evidence which may have been previously submitted to the KIPO should be newly submitted and asserted orally before the Patent Court.

(2) Commencement of Proceedings
A party, an intervenor, or a person whose application for intervention in a trial or retrial was refused, may institute an action in the Patent Court requesting annulment of a trial or retrial decision or ruling within 30 days of receipt of a certified copy of the decision (Art. 186). For patent applications (and patents arising therefrom) filed prior to January 1, 1999, the 30 day time limit is non-extendible. For patent applications (and patents arising therefrom) filed on or after January 1, 1999, the 30 day limit may be extended if the patent applicant/patentee is foreigner.

In order to bring an action, the petitioner or his/her agent must file a petition with the Patent Court, requesting that the relevant administrative decision of the Intellectual Property Tribunal of the KIPO be annulled and stating the grounds therefor. If the petitioner is a legal entity a corporate nationality certificate is required, and if an agent represents the petitioner, a Power of Attorney is also required.

When the Patent Court receives a petition requesting annulment of a decision of the Intellectual Property Tribunal, it notifies the Director of the Tribunal (Patent Law Article 188), and the finality of the Tribunal’s decision is stayed, pending the outcome of hearings in the Patent Court (Art. 41 of the Code of Civil Procedure (CCP)).

(3) Oral Arguments and Preliminary Hearings
Patent Court proceedings are conducted by oral hearings before a collegiate body of three judges in one of the judicial divisions. However, prior to the commencement of the oral hearings, the Patent Court may conduct one or more preliminary hearings which are intended to expedite the examination of a case.

(a) Preliminary Hearings
(CCP Art. 245-260, 125-128, 130, 132-149 and Chapter III (Evidence))
Preliminary hearings are conducted before just one of the three judges of the judicial division which will hear the case. The one judge (the commissioned judge) may, at his discretion, ask the assistance of a technical examiner (Art. 253 and 130 of the CCP).

In general, the commissioned judge has the same authority in the preliminary hearings as that of the full collegiate body of judge which will hear the case (CCP Articles 129 and 260). The commissioned judge directs the preliminary hearings, and has the power of elucidation, i.e., the power to put questions to the parties or urge them to present evidence on matters of fact or law (CCP Articles 126). In the regard, the parties may request the commissioned judge to put necessary question to the other party (CCP Article 126).

The commissioned judge may point out matters to be elucidated by the parties, and may order them to submit brief (CCP Articles 127 & 256). The commissioned judge may also permit an assisting technical examiner to exercise limited powers of elucidation, or may undertake the following measures for elucidation of a case (CCP Articles 130):

(i) order of appearance of a party or his representative
(ii) order of production of litigation papers, or of other documents or other articles referenced in the litigation which are in the hands of the parties
(iii) retention of documents or other articles produced by a party or third party
(iv) order of inspection or expert examination pursuant to the rules of evidence
(v) entrustment of investigation pursuant to the rules of evidence

In case a party does not distinctly contest the facts asserted by the other party at the preliminary hearings, he shall be considered to have admitted such facts unless the facts are deemed to have been contested in view of the whole purport of his argument (CCP Article 139). If a party does not appear on the date of a preliminary hearing, he may be deemed as having failed to contest facts asserted by the other party (CCP Article 139).

The importance of the preliminary hearings cannot be overemphasized. A protocol of each of the preliminary hearings is prepared under authority of the commissioned judge, stating particularly the parties’ arguments, their means of attack and defense, and the evidence presented (CCP Articles 254 and 149). Matters that have not been entered into the protocol may not later be asserted at the oral hearings before the whole judicial division, unless said matters were entered in the petition or briefs submitted before the preliminary hearings, or are those that are investigated at the oral hearings on the court’s own authority, or those which will not cause undue delay to the litigation, or those which a party unintentionally or without gross negligence failed to assert at the preliminary hearings (CCP Articles 259 & 138)

With regard to the protocol, documents or any other articles that may be deemed appropriate by the commissioned judge may be cited in or made a part of the protocol (CCP Articles145 & 149), and the commissioned judge may, on his own authority or upon motion of a party, have a stenographer write down or tape the whole or a part of the oral arguments (CCP Articles 148 & 149). A stenographic record or recording of oral arguments will comprise a part of the protocol (CCP Articles 148 & 149). Any hearing protocol shall, upon motion of a concerned person, be read at court or submitted for the court’s perusal (CCP Articles 146 & 149).

(b) Oral Hearings
At the oral hearings, the protocol of the preliminary hearings will be read (CCP Article 258), and the parties will be invited to make oral arguments.

In principle, oral arguments should be prepared in writing in advance of the hearing date; facts not stated in a written brief may not be asserted in the oral arguments unless the other party is present in court. (CCP Articles 245 & 251). During the oral hearings, the Patent Court has the full power of elucidation, and may freely assess the probative value of any evidence and may question the parties or witnesses or request further evidence.

A court clerk must prepare a protocol of each oral hearing, stating particularly a party’s waiver or withdrawal, the oath and testimony of any witnesses, the result of inspection, and decisions, rulings, or orders rendered other than in writing (CCP Article 143 applied via the Administrative Trial Law). The provisions relating to the protocol discussed above with regard to the preliminary hearings also apply to the oral hearings.

(4) Termination of Proceedings
(a) Judgement
The Patent Court, after taking evidence and arguments, will close the oral hearings and render a decision either to uphold the administrative decision of the Intellectual Property Tribunal of the KIPO or to annul the decision. If a Tribunal decision is annulled, the Patent Court will also remand a case for further KIPO proceedings consistent with the Patent Court decision.

The Patent Court decision is pronounced in the form of a judgement in open court, and the judgement is thereafter served on each party. The judgement of the patent court is binding on the parties in the case, and upon any subsequent proceedings which may take place regarding the case in the KIPO.

(b) Withdrawal or Waiver
The Patent Court proceedings may also come to an end by withdrawal or waiver of the action by the Petitioner.

In this regard, it should be noted that withdrawal or waiver of the action by the Petitioner in the Patent Court would have the result of finalizing the lower administrative decision of the KIPO Intellectual Property Tribunal if the time limit within which the Patent Court action could be instituted has passed (30 days from receipt of Tribunal decision), since the petition seeking annulment of the Tribunal decision would be deemed never to have been filed (CCP Article 240). Accordingly, in case of an out of court settlement between the parties which occurs while a case is pending in the Patent Court, it is advised that the parties should agree that the original demand for trial before the Intellectual Property Tribunal of the KIPO be withdrawn, i.e., the petition filed in the Patent Court should not be withdrawn unless it is intended that the Intellectual Property Tribunal decision become final and conclusive.

(5) Appeal
A Hang-Go appeal may be filed against certain rulings or orders of the Patent Court, e.g., orders regarding evidence. A Sang-So appeal against a final judgement of the Patent Court may be made to the Korean Supreme Court within fourteen (14) days of the date of receipt of the certified copy of the Patent Court judgement. The fourteen day time limit for appeal against the final judgement is not extendible.

Infringement Litigation in Korea

The Korean Patent Law maintains a two-pronged approach relative to the enforcement of patent rights: (1) an administrative proceeding known as a Scope Trial tried before the Intellectual Property Tribunal established within the Korean intellectual Property Office (KIPO), appealable to the Patent Court and finally appealable to the Supreme Court; and (2) the regular infringement action brought before a court of law, appealable to the High Court and finally appealable to the Supreme Court.
The bifurcated system of patent enforcement including the Scope Trial on the one hand and the infringement action on the other is a remnant of the influence of the old Japanese Patent Law on Korean practice. The rationale for the practice stems from the simple notion that the Intellectual Property Tribunal in the KIPO, which is comprised of technical examiners, is best equipped to interpret the technical scope of a patent claim, while a court at law should determine the legal question of infringement.

A. Administrative Scope Trial

A Scope Trial is an administrative action which may be brought in the Intellectual Property Tribunal of the KIPO either parallel with or independent of an infringement action brought before a court at law. It generally takes about one year for the Intellectual Property Tribunal of the KIPO to reach a decision in a Scope Trial, another year for the Patent Court on appeal, and finally a year and half for the Supreme Court.

Theoretically, a Scope Trial determines whether an alleged infringing product or process falls within the scope of a given patent. There are two types of Scope Trial: the negative Scope Trial which is normally instituted by an accused infringer or any interested party who seeks a decision that his product or process falls outside the scope of a patent claim, and the positive Scope Trial, brought by the patentee who wants a decision that a third party’s product or process reads on his patent claim.

One problem with the Scope Trial system is that the Intellectual Property Tribunal’s ruling in a Scope Trial is not binding on a court at law which hears a corresponding infringement lawsuit; only after a Scope Trial has advanced to a decision of the Supreme Court will it have a binding effect on a court’s findings of infringement (though a decision of the Patent Court would be influential). Additionally, a Scope Trial does NOT include any enforcement mechanism to bar ongoing infringement acts by an accused infringer whose product or process is found to fall within the scope of a given patent. Consequently, the decision of a Scope Trial will not necessarily be honored by the either the infringer or a civil court having jurisdiction over infringement litigation unless the Scope Trial decision has advanced to a decision of the Supreme Court.

Another problem with the Scope Trial system is the temptation on the part of an accused infringer to take advantage of the Scope Trial system in an effort to camouflage his act of infringement. In a negative Scope Trial, the accused infringer may present a paper process or product design which omits relevant information concerning the whole process being used or product being produced. Consequently, a decision from the Intellectual Property Tribunal which is based on a fictitious process or product may be received, and such decision may be used to confuse a court sitting in the civil infringement litigation.

It should be borne in mind that a Scope Trial does NOT determine the validity of a patent. Additionally, Scope Trials brought by or against different accused infringers are independent from one another.

B. Civil and Criminal Court Litigation

A patent right comes into effect upon registration of its establishment. In order to prevent infringement, a civil infringement action must be brought in a civil court. The civil infringement action may be divided into a preliminary action and a main action. No legal measures can be taken to prevent infringement in the absence of a court decision or ruling.

Korea does not follow a jury system; the court is both the finder and trier of fact. In this regard, Korean judges generally are unfamiliar with patent issues and thus move slowly and with great deliberation in the face of the complex legal and technical questions presented. Nevertheless, the courts will enforce patents, and we have obtained rulings against even large Korean chaebol such as SAMSUNG.

(1) Scope of Patent Protection and Interpretation of Claims

A third party who commits any of the following without permission of the patentee (or exclusive licensee) commits infringement: (1) in the case of an invention of a product, acts of manufacturing, using, assigning, leasing, importing, or offering for assignment or lease (including displaying for the purpose of assignment or lease) the product or any article to be used exclusively for the manufacture of the product; (2) in the case of an invention of a process, acts of using the process or the act of manufacturing, assigning, leasing, importing, or offering for assignment or lease, commercially or industrially, any article to be used exclusively for the working of the process; and (3) in the case of an invention of a process of manufacturing a product, acts infringing the process or acts of using, assigning, leasing, importing, or offering for assignment or lease, the product manufactured by the process (Korean Patent Law Articles 2 & 127).

For purposes of determining infringement, Korean courts (and the KIPO sitting in a Scope Trial) must determine the scope of patent protection on the basis of the claims (Korean Patent Law Article 97):

“In principle, the scope of a patent right (or the substantial scope of protection) is determined by the matters described in the claims in the specification attached to a patent application. See Supreme Court Decision, 91 Hu 1809 (June 23, 1992). When the technical constitution of a patent cannot be understood by the description in the claims, or, even if it can be understood, the technical scope of the invention cannot be determined conclusively, it can be supplemented by the description in the specification other than the claims. Even in the above cases, however, the scope of the claims cannot be interpreted broadly on the basis of the description in the specification other than the claims. And, if the scope of the technical constitution is clear from the description of the claims, it cannot be interpreted narrowly due to the description in the specification (other than the claims). See Supreme Court Decisions, 90 Hu 1499 (November 26, 1991), and 91 Hu 1809 (June 23, 1992).” Supreme Court, 91 Hu 1908 Scope Trial (October 2, 1993)

Korean courts have traditionally been strict in their interpretation of patent claims, limiting them closely to the literal wording (indeed, attorneys commonly advise that the pleadings in an infringement lawsuit should point to the embodiment or example in the patent which is most closely related to the alleged infringement). Recently, however, Korean courts have recognized the Doctrine of Equivalents. Patent Court Decision 98 Hur 2160 (September 17, 1998) set out the following elements in applying the Doctrine of Equivalents:

1) Even if an element is different from that in a patented invention, such element performs substantially the same function in substantially the same way to obtain the same result as the corresponding element of the patented invention (interchangeability)

2) the substitute element could have been easily conceived by a person having ordinary skill in the art at the time of the alleged infringement (known interchangeability)

3) the alleged infringement is neither the same as nor could be easily conceived from art publicly known prior to the filing date of the patented invention (hypothetical claim)

4) the substitute element was not consciously excluded from the claims of the patented invention during patent prosecution (file-wrapper estoppel)

(2) Process of Civil Lawsuit

Prior to filing a lawsuit in Korea, it is usual for the patentee or exclusive licensee to send to an alleged infringer a warning letter. A warning letter is normally sent via "contents-certified mail", and contains the following: (1) identification of the sender, (2) brief explanation of the patented technology, (3) description of the infringing product or process, (4) description of the infringing activities, and (5) demand of, e.g. immediate cessation of infringing activities or payment of damages.

As to the filing of a lawsuit, as stated above, an infringement action may be divided into a preliminary action and a main action. In a preliminary action, the plaintiff seeks a court order for preliminary injunction and/or sequestration of any infringing article(s); in the main action, monetary damages, a permanent injunction, the prevention of infringement by all necessary means (e.g. the destruction of infringing property) and/or appropriate measures for the restoration of lost business goodwill may be sought. Additionally, in the case of willful and recidivistic violations, criminal sanctions including the imprisonment of corporate representatives may be pursued by filing a criminal complaint with the district prosecutor’s office.

The primary advantages in bringing a preliminary action prior to instituting the main action are: (1) the relative swiftness of the court action; and (2) that the effect of a preliminary injunction or attachment order can be more than temporary. A court decree to attach infringing articles must be executed within 14 days from the receipt thereof; however, once executed, the attachment or sequestration will remain in effect unless and until an appellate court decision reversing the order becomes final, which may take a number of years. Further, no appeal can be made against a preliminary injunction (unless the order is given in the form of a decision instead of a decree; this is rare.)

Procedurally, within about ten days after the institution of a preliminary action, the first hearing date will be set. Subsequent hearings will take place normally at 3 week intervals. A decision for preliminary injunction may possibly be received within about six months of filing if the infringement is obvious.
In contrast to a preliminary action, the first hearing date in a main lawsuit will be set within about two or three weeks of the institution of the lawsuit. Hearings are generally held at 4-6 week intervals. It generally takes at least one to two years to obtain a court decision on a main infringement action.

With regard to argumentation in infringement litigation, the importance of preparing a memorandum of law prior to a hearing date cannot be overemphasized. "[T]he oral argument at a hearing must be prepared in writing (Code of Civil Procedure, Section 245). The memorandum, submitted to the court which sends a copy to the other party basically contains the party's claims, contentions, and/or defenses, and may be accompanied by exhibits. The memorandum is particularly important under Korean court practice since the judges rely heavily on the memoranda submitted by the parties prior to the hearings; sometimes, a party may be prevented from arguing on a point which was not included in his memorandum for that hearing.

(3) Discovery and Evidence

The philosophy which runs through the Korean discovery process is that discovery is not a tool to be used by a party to fish for useful evidence. There is no pretrial discovery; later, the entire discovery process is conducted by and in the presence of the court or a judge appointed by the court after the commencement of litigation. Production of documents or evidence should be requested in writing. If necessary, a court may order the holder of requested evidence or documents to produce. In the following limited instances, the holder bears a duty to produce a document in question:

(1) when he has referred to the document in the course of the action;

(2) when the requesting party has an independent legal right to demand the possessor to transfer or allow the inspection of the document; and

(3) when the document has been prepared for the benefit of the requesting party or prepared out of or in connection with a legal relationship between the requesting party and the possessor.

In the event that a party who possesses a document refuses to comply with a court order to produce the document or the party who has the obligation to produce the document destroys the document for the purpose of frustrating the other party's use thereof, the court has the discretion to find the contents of the document to be as the other party contends.

Inspection of evidence or a production facility can also be requested in writing; if necessary, the court may be moved to order the inspection. A wrongful refusal to permit inspection may entail the same effect as in the case of a failure to produce documents.

In addition to the above, a plaintiff in an infringement action who has also filed a criminal complaint with the prosecutor’s office may request the court to take into evidence a copy of the prosecutor’s file and any evidence the prosecutor has obtained.

Witness testimony and examination is normally taken during the hearings in court, although the court or court-appointed judge may depose witnesses outside a hearing (in which case the discovery judge must prepare a written transcript executed by the witness).

Prior to the witness testimony at a hearing, it is useful to have the witness prepare an affidavit narrative of the testimony; at the hearing, almost entirely leading questions may be asked to the witness who may give only simple answers of "yes" or "no". After the direct examination, an opponent may cross-examine a witness; the court may also direct questions to the witness at any time for the sake of clarification and enhancing the court's understanding.

(4) Patent Validity

In response to allegations of infringement, an accused infringer commonly will file an Invalidation Trial and/or a Scope Trial with Korean Industrial Property Office (KIPO). In this regard, patent invalidity CANNOT be directly raised as a defense to any infringement action. The validity of a patent can be attacked only by bringing a separate Invalidation Trial before the Intellectual Property Tribunal of the KIPO. The Invalidation Trial is an administrative action which proceeds in the same manner as the Scope Trial described above.

A court which hears an infringement case must proceed on the assumption that the patent is valid unless an Invalidation Trial decision invalidating the patent has become final and conclusive. However, there are exceptions to this general rule: The Korean Supreme Court has held that if every single inventive element constituting a patented invention was in the public domain prior to the filing date, then such patent is inherently defective. Upon a showing of such complete lack of novelty, the court can refuse to enforce a patent and dismiss an infringement action without having to hold that the patent is invalid. Additionally, in practice, a court may refuse to issue a preliminary injunction against infringement on the ground that a patent is likely to be invalidated in an Invalidation Trial.

(5) Remedies

The Korean Patent Law allows basically three types of civil remedies for patent infringement: (1) monetary damages; (2) injunctive relief; (3) non-monetary measures, e.g. destruction of infringing property, publication of public apologies in a daily newspaper. In order to claim monetary damages, the plaintiff must be able to support its claim with specific evidence, e.g. expert opinions, sales figures, etc.

Monetary claims based on tort theories, e.g. plaintiff’s lost profit or a reasonable royalty are subject to a three year statute of limitations; however, back damages in the form of a reasonable royalty can be obtained from an infringer who knew or was warned of the laid-open patent application (Back damages may be obtained dating back to the later of the Korean laid-open date or the date of warning/knowledge; in order to claim back damages, infringement litigation must be instituted within three years from registration of the patent right). Meanwhile, monetary claims based on the unjust benefits gained by the infringer (unjust enrichment) are subject to a ten year statute of limitations. There is no provision allowing treble damages.

A patent infringer may also be criminally prosecuted and penalized by up to five years in jail and a fine of up to about US$40,000 irrespective of any civil action. A criminal prosecution will be initiated by the prosecutor’s office only on the filing of a complaint by the patentee or exclusive licensee. Depending on the severity of the infringing activities, the infringer can be arrested and incarcerated once indicted, even before any trial or sentencing. The criminal action can be withdrawn at any time at the option of the patentee.