Patent Litigation Comparative Guide

• Published date: 12 February 2024
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Kim & Chang
• Author: Mr Si Yul Lee and Peter K. Paik

1 Legal framework

1.1 Which laws and regulations govern patent litigation in your jurisdiction?

Patent litigation in South Korea is mainly governed by the Patent Act and the Civil Procedure Act. The Patent Act applies to the matters stipulated in the Patent Act, ranging from the patentability requirements to evidence collection, damages and injunctions. Many provisions of the Patent Act borrow from the Civil Procedure Act and explicitly state that certain provisions of the Civil Procedure Act are applicable mutatis mutandis.

In infringement suits, the Civil Act is also relevant in filling in the gaps – for example, by providing the legal grounds for restitution of unjust enrichment (Article 741 of the Civil Act). In (patent) revocation suits:

• matters not prescribed in the Patent Act are governed by the Administrative Litigation Act; and
• matters not prescribed in the Administrative Litigation Act are governed by the Civil Procedure Act.

Additionally, the Intellectual Property High Court (IPHC) has adopted the Practice Directions for Revocation Trials and the Practice Directions for Civil Appellate Trials, which provide court rules on legal briefs, oral hearing, witness examination and other procedural matters related to IPHC proceedings.

1.2 Which bilateral and multilateral agreements with relevance to patent litigation have effect in your jurisdiction?

South Korea is a signatory to a number of international treaties relevant to patent rights, such as:

• the Patent Cooperation Treaty 1970;
• the Paris Convention for the Protection of Industrial Property 1883;
• the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure 1977;
• the Strasbourg Agreement Concerning the International Patent Classification 1971; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.

South Korea is also a signatory to the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, but not to the Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters.

Overall, duly ratified and promulgated international treaties generally have the same legal effect as domestic statutes in South Korea; while a domestic statute will prevail over an international treaty in case of a conflict.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the patent laws? What is the framework for doing so?

South Korea has adopted a concentrated jurisdiction system for lawsuits concerning patents, utility models, designs, trademarks and plant variety rights, to enable consistent, in-depth review and interpretation of the patent laws.

Under Articles 24(2) and (3) of the Civil Procedure Act, lawsuits concerning patents and other listed IP rights fall under the exclusive jurisdiction of six district courts, which all have specialised IP divisions:

• the Seoul Central District Court;
• the Daejeon District Court;
• the Daegu District Court;
• the Busan District Court;
• the Gwangju District Court; and
• the Suwon District Court.

Most patent infringement actions are filed with the Seoul Central District Court, as it has concurrent jurisdiction with the other five district courts. The IPHC has exclusive jurisdiction over appeals from these cases and the Supreme Court is the court of last resort, to hear further appeals from the IPHC.

The concentrated jurisdiction system does not apply to:

• preliminary injunctions; or
• criminal cases concerning patents and other listed IP rights.

Appeals in these cases are heard by the high court with jurisdiction over the location of the competent district court.

2 Forum

2.1 In what forum(s) is patent litigation heard in your jurisdiction? Are patent infringement and validity decided in the same forum or separate forums?

South Korea has a bifurcated system for handling patent disputes:

• Patent infringement cases on the merits are first heard by the district courts of competent jurisdiction; and appeals therefrom are heard by the Intellectual Property High Court (IPHC); and
• Patent invalidation cases initially start as administrative proceedings before the Intellectual Property Trial and Appeal Board (IPTAB) within the Korean Intellectual Property Office (KIPO); and lawsuits seeking revocation of IPTAB decisions are filed with the IPHC.

Although the infringement district court cannot formally invalidate a patent, it can review issues relating to the validity of a patent and can deny the enforceability of an asserted patent if it finds it clear that the patent would be invalidated in an invalidation action. Thus, the defendant may raise patent invalidity issues as a defence of abuse of rights against the plaintiff-patent holder in an infringement action. The Supreme Court has held that:

even before the administrative decision invalidating a patent is finalised, claims for damages or injunctions based on the patent may constitute an abuse of the rights and be impermissible when it is clear the patented invention lacks an inventive step and will be invalidated by the administrative invalidation proceeding. When the defence is raised that the patent holder's claim for damages or injunction constitutes an abuse of rights, the court handling the infringement suit is empowered to review and determine the inventive step issue in order to decide whether the defence is well-grounded. (Supreme Court Decision, 2010Da95390 (en banc), 19 January 2012)

2.2 Who hears and decides patent disputes (eg, a judge, a panel and/or a jury)?

All civil patent infringement cases are heard and decided by a panel of three judges.

There is no jury trial system in South Korea. While public participation is available in some criminal panel cases, the verdict and sentencing opinions provided by the public participants are not binding on the court.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

The Korean venue and jurisdiction rules for patent infringement actions are restrictive in that all patent infringement actions must be brought in one of the six district courts (Seoul Central, Daejeon, Gwangju, Busan, Daegu and Suwon) and appealed to the IPHC and finally to the Supreme Court. Among the six district courts, the Seoul Central District Court has concurrent jurisdiction, and thus a plaintiff may choose between one of the remaining five district courts and the Seoul Central District Court (Article 24(3) of the Civil Procedure Act), which may be the only opportunity for forum shopping available in Korea.

3 Parties

3.1 Who has standing to file suit for patent infringement? What requirements and restrictions apply in this regard?

A patent holder or an exclusive licensee may seek injunctions and/or damages against an infringer that wilfully/intentionally or negligently infringes its patent right or exclusive licence (Article 128(1) of the Patent Act). If the exclusive licence is not registered with the Korean Intellectual Property Office (KIPO), the exclusive licensee does not have standing to seek injunctions but may seek damages for patent infringement.

3.2 Can a patent infringement suit be brought against a defendant who is a foreign entity with only a residence or place of business outside the jurisdiction?

Even if a defendant has no residence or place of business within the territory of Korea, a patent infringement suit can be filed with a Korean court against the defendant if:

• the defendant committed the infringing act in Korea;
• the results from the infringing act arose in Korea; or
• the infringing act was committed against Korea (Article 39(1) of the Act on Private International Law).

The scope of a dispute that may be litigated in Korea under Article 39(1) is limited to the results from the infringing act that arose in Korea, unless acts that occurred in Korea are the main infringing act, in which case the scope of the dispute will encompass results that arose overseas (Article 39(3) of the Act on Private International Law).

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Multiple defendants may be jointly sued in a single infringement action where the defendants share the same interest in the lawsuit. A lawsuit must be brought against co-defendants where the underlying rights, obligations or cause of action is common among them.

A third party which has a legitimate interest in a lawsuit may intervene as an intervening party during the process of a lawsuit, unless such intervention would cause significant delay to the proceeding. Merely having an interest in the court's determination on the legal issue is insufficient. Rather, intervention is allowed where the outcome of the lawsuit would directly or indirectly affect the person's legal status. For example, a licensee or a person with contractual or potential indemnity obligations towards the named party may be allowed to intervene in a lawsuit concerning the patent.

3.4 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

A party may seek the court's confirmation that the products it produces or otherwise practises do not fall within the scope of another's patent, if it can substantiate the legal interest of such a confirmation action (eg, receiving a cease and desist letter from the patent holder).

A patent holder or any third party against which the patent is asserted may file a scope confirmation action before the Intellectual Property Trial and Appeal Board (IPTAB) to obtain a formal opinion from the IPTAB as to whether a certain article or process falls within (or outside) the scope of a patent. However, the scope confirmation action does not provide any remedy and the infringement court is not bound by the decision in the action. The decision can be considered as an advisory opinion only.

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