Patent Infringement in South Korea

The Korean patent system is based on the first-to-file rule, in which the first applicant is entitled to a patent right regardless of the priority of the invention. After a patent has been registered, the patent specification is published again. When a patentee finds his patent right being infringed by a third party, he may send an alleged infringer a cease and desist letter to demand the cessation of infringement activities and warn the infringer of legal responsibilities. This warning letter plays an important role in proving the claim of damage compensation and the criminal liability for infringement in which requires intent of an infringer. In case an infringer does not pay any heed to the warning, a patentee may initiate a lawsuit describing the grounds why the defendant is liable to the plaintiff. The plaintiff may seek a court granting an order of barring the opposing party’s infringing manufacturing, marketing and selling activities; the seizure or destruction of all finished or half-finished infringing products in the opposing party’s possession and claim compensation for damages. However, due to independent nature of invalidity actions in Korea, the defendant may not file a counterclaim to invalidate the subject patent. A court may allow both plaintiff & defendants to file their briefs or exchange briefs before a preparatory oral hearing within 3-4 weeks. As per Korean law, the court usually rules on the admissibility of the objected exhibits in the oral hearing.

Korea does not have discovery procedures and jury trials. All lawsuits are tried by judges as they are skilled in the rule of evidence. In case a party insists the document is private, trade secret, or others, it is not permitted a respondent to refuse document submission for trade secret reasons. Only the party may seek court’s protective order on his information.

Under the Korean law, an IP right owner can seek to enjoin an infringer at the beginning of a lawsuit through preliminary injunction. Once the patent has been held valid and infringed, the patentee is entitled to the full enjoyment and protection of the patent right. The infringer is not allowed to continue his infringement However, a court allows a preliminary injunction only in extraordinary circumstances since a PI is drastic and extraordinary remedy. Accordingly, a Pl case is carefully decided by a panel of three judges. When the infringement of a patent is found, a permanent injunction is automatically granted under Korean patent law. Only in extraordinary circumstances, like patent misuse or substantial injury to the public interest, may a court deny a permanent injunction.

In Korea, infringement of IP is a crime of trespass of personal property which the infringer may be punished upto 7 years of imprison. According to the Criminal Procedure Act, to prosecure an infringer, the proprietor must accuse an infringer within six months of the date of knowing the infringement and the criminal. The Patent Act stipulates that the court can punish not only a person who committed an infringement but also a legal entity by imposing fines for which the separate accusation against a legal entity is not necessary. The Korean Supreme Court held that even if the patentee’s request applies only to a person, not to the legal entity, the legal entity may be punished without the expressed accusation of the patentee, because the legal entity is liable for the infringement done by its employee.

In terms of official fees for injunction actions or the Patent Court actions, Korean laws allow the prevailing party to claim court costs and legal fees from the losing party in full. In case of attorney fees, the Supreme Court has a regulation that limits the reimbursement of actual attorney fees from a losing party.

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