An International Guide to
Patent Case Management for Judges

8.6 Judicial patent proceedings and case management

8.6.1 Key features in patent proceedings

Though civil patent litigation typically refers to patent infringement suits, it also encompasses the transfer, grant and extinguishment of patent rights; compensation for employee invention; and royalty payments. When a third party without a lawful title practices a person’s patented invention, the patentee may seek an injunction and compensatory damages through an infringement lawsuit. Challenges in infringement suits often come from the fundamental problem that evidence is concentrated on the defendant’s possession, which generally makes it difficult to prove the infringement and consequential damages. Taking this into account, the Patent Act shifts the burden of proof or constructively deems certain acts to be patent infringement to protect patentees – shown, for example, in Article 129 (presumption of manufacturing process), Article 130 (presumption of negligence) and Article 127 (acts deemed to be infringement). In addition, the Patent Act also has special provisions to further relieve the burden of proof, such as Article 126-2 (obligation to disclose the actual product or process in use), Article 132 (order to submit materials) and Article 128-2 (obligation to explain matters for appraisal). In response, the defendant may dispute the accused infringement on the ground that there are circumstances restricting the exercise of the patent right, such as that its effect is limited under Article 96 of the Patent Act or that the exercise of the right would be abusive because the patent was exhausted or lacked an inventive step, or they may argue that exploiting the patent is justified because there is a license or simply that the technology adopted by the alleged infringer is a free-to-practice technology.⁹⁷

In the absence of any justifying cause or upon the failure of justification, a patentee may obtain civil relief from the patent infringement. A patentee may seek the prevention or prohibition of infringement via an injunction against the party that has infringed or is likely to infringe the patent (Article 126(1) of the Patent Act) and, additionally, seek disposal of the means by which the infringement has been committed (Article 126(2) of the Patent Act) and seek measures to recover the patentee’s reputation (Article 131 of the Patent Act). A patentee may also claim for damages or restitution of unjust enrichment against the infringer with respect to the damage or loss caused by the infringement.⁹⁸ Preliminary injunctions are a useful tool when the decision of the main lawsuit is yet to be finalized: a patentee may ask the court to grant, in advance, the relief that would be awarded at the disposition of the main lawsuit based on the patentee’s right to seek an injunction against infringement.

A lawsuit seeking compensation for employee inventions is often where patent law, civil law and labor law cross paths. An employee is entitled to fair compensation when the employer succeeds from them a patent, utility model or design right arising out of the employee invention – or the rights to acquire them – or is granted an exclusive license in the respective right under the contract or employment regulations (Article 15(1) of the Invention Promotion Act). In such cases, the employee may file a claim seeking compensation for their invention when they believe that the employer did not pay them fair compensation.

This section focuses on the procedural matters that are common among civil patent lawsuits.⁹⁹

8.6.1.1 Procedure

A civil action is generally initiated by filing a complaint with the court having jurisdiction over the district where the defendant maintains its residence or place of business. As will be discussed in Section 8.6.2.1, a civil patent case over patent and other listed IP rights goes to one of the six district courts, with the Seoul Central District Court having concurrent jurisdiction. Service of process is conducted exclusively by the court. The defendant is typically served with the complaint by mail or through other means of delivery at the defendant’s domicile, place of residence or place of business. If all such locations of the defendant are unknown, the court may conduct service by public notice.

Unlike in the United States, where trials in a civil proceeding generally refer to a single event that may last days or weeks depending on the complexity of the case, a civil action in the Republic of Korea may consist of several trials, each of which takes place only for the day, three to five weeks apart, with the first trial ordinarily scheduled two or three months from the filing of the complaint. At each trial, the parties typically submit briefs and evidence in support of their cases, and trials in most civil actions tend to be short unless a witness is called. However, patent infringement trials are significantly longer than other types of civil cases because they often involve presentations on the relevant technologies, and more substantive oral arguments are exchanged by the parties.

Generally, trials continue to be held until the court and parties believe that sufficient arguments and evidence have been presented for a decision to be rendered. In a main action seeking only a permanent injunction (without damages), a district court typically renders a decision within about 8–12 months from the initiation of the lawsuit. Cases in which both an injunction and damages are claimed generally require additional corroboration and a brief submission and usually take longer than cases in which no claim for damages is made – about 12–18 months.

The IP divisions of the Seoul Central District Court, which are in charge of most civil patent cases, as well as the Patent Court, which has exclusive jurisdiction over appeals of such civil cases, provide practice directions for parties to follow in the litigation at each level.¹⁰⁰

8.6.1.2 Electronic litigation system

The Electronic Case Filing System (ECFS, http://ecfs.scourt.go.kr) is the Korean judiciary’s electronic litigation system, which enables the paperless processing of civil actions. While not mandatory, it is often used in civil proceedings. Most civil patent lawsuits are processed through the ECFS, reflecting the high rate of attorney representation in patent cases. Figure 8.4 maps the ECFS.

Note: ECFS = Electronic Case Filing System. Source: Computer Data Management Bureau, Supreme Court of Korea

Litigants and their attorneys can file and manage cases and access court information and procedures electronically through the system. All court documents, briefs, documentary evidence and digital evidence can be uploaded to the system without mailing them or physically visiting the court. After filing a case via the electronic system, the plaintiff or petitioner receives email and text message notifications when the other party submits documents to the court. If the defendant or respondent consents to e-filing, they may also receive electronic notices of the plaintiff’s or petitioner’s filings. These notifications and electronic access to case records allow all parties using the ECFS to promptly check the current status of the proceedings.

The ECFS also allows judges and court officials to manage cases much more efficiently by electronically viewing the case records and checking the case statuses in a speedy manner. The ECFS has rapidly replaced the conventional paper-based process. During trials and hearings, all case records can be retrieved from the central database and displayed on monitors and larger screens in courtrooms. The electronic files are closed to the public, and only the litigants, their attorneys and the court can access them, for privacy and security reasons. However, the public may access published court decisions online via the judiciary’s online decision search service.

8.6.2 Venue, jurisdiction and case assignment rules

8.6.2.1 Territorial jurisdiction

8.6.2.1.1 Interpretation of relevant laws

Article 24 of the Civil Procedure Act and Article 28-4 of the Court Organization Act provide territorial jurisdiction over IP rights, following the enforcement of jurisdictional concentration, as follows:

• Civil Procedure Act:

  Article 24 (Special Forum for Intellectual Property and Other Rights)

  1. (1) A lawsuit concerning an international transaction and an intellectual property right, excluding a patent, utility model, design, trademark, and plant variety rights [hereinafter referred to as “patent and other listed IP rights”] may be brought to a district court in the jurisdictional area of a high court which has jurisdiction over the location of a competent court pursuant to Arts. 2 through 23: Provided, That the district court in the jurisdictional area of Seoul High Court shall be limited to the Seoul Central District Court. <Amended by Act No. 10629, May 19, 2011; Act No. 13521, Dec. 1, 2015>
  2. (2) A lawsuit concerning patent and other listed IP rights shall be under the exclusive jurisdiction of the district court in the jurisdictional area of a high court which has jurisdiction over the location of a competent court pursuant to Arts. 2 through 23: Provided, That the district court in the jurisdictional area of Seoul High Court shall be limited to the Seoul Central District Court. <Newly Inserted by Act No. 13521, Dec. 1, 2015>
  3. (3) Notwithstanding paragraph (2), a party may bring a lawsuit concerning patent and other listed IP rights to the Seoul Central District Court. <Newly Inserted by Act No. 13521, Dec. 1, 2015>

• Court Organization Act:

  Article 28-4 (Judicial Power)

  The Patent Court shall judge the following cases: <Amended by Act No. 13522, Dec. 1, 2015; Act No. 14033, Feb. 29, 2016>

  1. 1. Cases of first instance provided in Art. 186 (1) of the Patent Act, Art. 33 of the Utility Model Act, Art. 166 (1) of the Design Protection Act, and Art. 162 of the Trademark Act;
  2. 2. Appeals of the cases under Art. 24 (2) and (3) of the Civil Procedure Act;
  3. 3. Cases falling under the jurisdiction of the Patent Court under other Acts.

  [Wholly Amended by Act No. 12886, Dec. 30, 2014].

In sum, lawsuits concerning patent and other listed IP rights fall under the exclusive jurisdiction of the district court that is located where a high court is seated (Article 24(2) of the Civil Procedure Act),¹⁰¹ with concurrent original jurisdiction to the Seoul Central District Court over all lawsuits concerning patent and other listed IP rights (Article 24(3) of the Civil Procedure Act).¹⁰² As Article 24 sets forth exclusive jurisdiction, any agreement to the contrary is void, and a court without jurisdiction will not become competent by the party arguing on the merits of the case, waiving the jurisdictional defense.¹⁰³ Meanwhile, the Patent Court has exclusive jurisdiction over appeals of lawsuits concerning patent and other listed IP rights (Article 28-4(2) of the Court Organization Act). This exclusive jurisdiction is enforceable irrespective of subject matter jurisdiction – that is, regardless of whether it is a small claims case or whether it was heard by a single judge or a panel in the first instance. Therefore, an appeal of a small claims case concerning patent or other listed IP rights falls under the exclusive jurisdiction of the Patent Court, notwithstanding that such an appeal usually goes to an appellate division of a district court in other types of cases.¹⁰⁴

Notably, the exclusive jurisdiction provision does not apply to a civil patent case, in a broad sense, so long as the case is considered a “lawsuit concerning IP rights excluding patent and other listed IP rights.”¹⁰⁵ For such cases, jurisdiction will be determined in accordance with Articles 2 to 23 of the Civil Procedure Act, with a chance of the special forum under Article 24(1) of that Act. As such, whether a case is considered a “lawsuit concerning patent and other listed IP rights” is critical in determining jurisdiction over civil patent actions. In the sections that follow, the meanings of “patent and other listed IP rights” and “concerning” are explored in further detail.

Exclusive jurisdiction is particularly reserved for lawsuits concerning patent and other listed IP rights because adjudication of these lawsuits often requires expert knowledge and technical understanding. Concentrating the cases to specific courts is an effort toward the appropriate protection of IP rights that allows judges specialized to handle such cases, equipped with appropriate experience and a tailored system, to thoroughly and promptly review these challenging cases.¹⁰⁶

By type of lawsuit (i.e., which cases are lawsuits “concerning” patent or other listed IP rights), patent infringement lawsuits are exemplary of those that require expert knowledge or technical understanding. Thus, the cases subject to exclusive jurisdiction include those seeking an injunction against infringement, disposal and destruction, recovery of reputation, and damages. Likewise, claims to transfer or extinguish patent registration due to assignment or termination thereof, claims to establish or extinguish exclusive or nonexclusive license due to license agreement or termination thereof and claims for remuneration from employee invention also fall under this exclusive jurisdiction. It is the same with royalty claims, as they often involve disputes over whether the technology implemented by the defendant is subject to the license agreement, demanding expert knowledge or technical understanding for resolution. In addition, cases seeking confirmation as to the attribution of patent or other listed IP rights are also subject to exclusive jurisdiction, since issues of attribution should be resolved before the above issues.

8.6.2.1.2 Transfer

A court lacking jurisdiction over a lawsuit concerning patent and other listed IP rights should transfer the case to a competent court. A competent court may also decide to transfer a case to another that has jurisdiction under Articles 2 to 23 of the Civil Procedure Act – either ex officio or by granting the request of a party – when the transfer is necessary to avoid significant damage or delay (Article 36(3) of the Civil Procedure Act).

However, the literal interpretation of Article 36(3) of the Civil Procedure Act suggests that it is not applicable to appeals. There has, therefore, been a demand for the insertion of a provision similar to Article 24(3) of the Civil Procedure Act to allow the discretionary transfer to a court of general appellate jurisdiction when significant damage or delay is expected.¹⁰⁷

8.6.2.1.3 Preliminary injunction cases

Article 303 of the Civil Execution Act stipulates that “[t]he court having jurisdiction over the merits, or the district court having jurisdiction over the location of disputed subject matter, shall exercise jurisdiction over preliminary injunction trials.” Accordingly, preliminary injunction cases may be brought to any district court having jurisdiction over the location of the disputed subject matter, in addition to the six district courts prescribed in Article 24(2)–(3) of the Civil Procedure Act that award exclusive jurisdiction. However, Article 28-4(ii) of the Court Organization Act only sets forth that the Patent Court will hear “appeals among cases under Article 24(2) and (3) of the Civil Procedure Act,” meaning that the Patent Court is not competent to hear appeals of preliminary injunction cases. Thus, it should be noted that preliminary injunction cases were left out of the jurisdictional concentration. Such appeals go to the high court that is competent to hear the appeal from the district court that handled the first-instance case.

8.6.2.2 Subject matter jurisdiction

8.6.2.2.1 Definition

The Court Organization Act requires that the judicial power of a district court be exercised by a single judge in principle but, exceptionally, allows cases defined in Article 32(1) to be heard by a three-judge panel (Articles 7(4)–(5) and 32(1) of the Court Organization Act). The term “subject matter jurisdiction” under Korean law refers to the allocation of cases of first instance between single judges and three-judge panels in district courts.

8.6.2.2.2 Claims for monetary awards (e.g., compensatory damages)

A claim for monetary awards (e.g., compensatory damages) with the value of the subject of the lawsuit exceeding KRW 500 million is brought to a three-judge panel in the district court, while a claim with the value of the subject being KRW 500 million or less is brought to a single-judge bench.¹⁰⁸ The value of the subject of a lawsuit is calculated on the basis of the benefits as claimed by the lawsuit (Article 26(1) of the Civil Procedure Act). If multiple claims are joined in one lawsuit, the value of the subject of the lawsuit is determined by summing the values of all claims (Article 27(1) of the Civil Procedure Act). A case that originally belongs to a single-judge bench may be handled by a panel court upon its decision to take the case (Article 32(1)(i) of the Court Organization Act). On such occasions, the Seoul Central District Court assigns the cases to panel courts via panel decisions, regardless of the value of the subject of the lawsuit.¹⁰⁹

8.6.2.2.3 Cases on injunction, registration of transfer and extinguishment of registration

Cases seeking an injunction against patent infringement or the transfer or extinguishment of patent registration are lawsuits over property rights for which the value of the lawsuit cannot be calculated. Such lawsuits fall under the jurisdiction of district court panels.¹¹⁰ Thus, a case seeking an injunction along with damages not exceeding KRW 500 million also goes to a district court panel.

8.6.2.3 Jurisdiction by court level

In civil patent cases, for lawsuits concerning patent and other listed IP rights, the Patent Court has exclusive appellate jurisdiction, irrespective of the subject matter jurisdiction in the first instance (Article 28-4(ii) of the Court Organization Act).

For an appeal of a lawsuit concerning IP rights other than patent and other listed IP rights, judicial power is vested in either a panel of a district court, if the lower court’s decision was rendered by a single judge of the district court (Article 32(2) of the Court Organization Act), or the high court, if the lower court’s decision was rendered by a panel of a district court (Article 28(i) of the Court Organization Act).

The Supreme Court is the court of last resort for all types of civil patent cases.

8.6.3 Statements of case

Parties must submit written briefs in advance in order for the trial to proceed in a focused manner.¹¹¹ Briefs should be filed in due time to give the other party a chance to prepare their response.¹¹² A brief containing a new offensive or defensive method should be filed at an appropriate time for it to be served to the other party at least seven days before the trial or preparatory hearing.¹¹³ The following lists a few points of caution per issue in preparing briefs:¹¹⁴

• Contention on the inventive step – the brief should contain an element-by-element chart identifying the elements in the prior art and comparing them with the corresponding elements of the patented invention. To argue that the patented invention lacks an inventive step based on a combination of multiple prior arts, the brief should specify the primary prior art and provide a detailed explanation of how the prior arts are combined and the reasons why such a combination can be easily obtained by a person having ordinary skill in the art.
• Contention on infringement – the brief should specify, in detail and both individually and graphically, the product or process practiced by the defendant by listing the product name and product type number and attaching drawings or pictures so that the enforcing authority can identify them without further deliberation. The defendant’s product or process should be described in detail so that it can be compared with the patented invention by element and graphically described to maintain identity with the actual product or process practiced by the defendant. The brief should contain an element-by-element chart comparing the patented invention and the defendant’s product or process.
• Contention on damages – a claimant seeking compensatory damages should specify the legal provisions serving as the basis for calculating the amount of damages and identify the exhibit number associated with each legal element set forth in the provisions. To dispute the facts alleged by the claimant, the other party should provide a detailed answer rather than a simple denial.

8.6.4 Early case management

Unless the case is to be decided without a trial, the presiding judge must set the trial date without delay and usually fixes a date as soon as the defendant files an answer disputing the complaint.¹¹⁵ The judge will evaluate how hotly the case is disputed, how complex it is, whether it is well suited for mediation or whether there is a particularly urgent need for adjudication and sets the earliest practical date for a trial as the first trial date. Where early mediation is likely to settle the case, the case may be referred to the mediation court or mediation center before the first trial date is set.

8.6.5 Preparatory hearings

A preparatory hearing is an opportunity to sort out the arguments and evidence of the parties to enable an effective and focused trial.¹¹⁶ In most cases, issues are trimmed via the exchange of briefs, and the process advances straight to trial. Preparatory hearings are held only in exceptional cases, where arguments and evidence need to be sorted out in advance. In civil patent lawsuits, a preparatory hearing will be scheduled only in complex cases to coordinate case management and primarily in the form of a video conference. The following matters are often discussed at a preparatory hearing:

• trial date and time, as well as the issues to be addressed in the trial;
• deadlines to state contentions and submit evidence (including deadlines for the submission of comprehensive briefs and expert witness affidavits, the maximum number of submissions and the length of briefs);
• whether to use an evidence production method that requires a substantial amount of time, such as inspection, appraisal and expert witnesses, and the deadlines for such methods;
• whether to designate a technical advisor;
• whether to hold a technology review session by the parties;
• whether to hold separate hearings by legal issue, such as infringement, invalidity, assessment of damages and so on;
• how to proceed litigation procedures if a related case is pending before the IPTAB; and
• whether to refer the case to a mediation procedure.

8.6.6 Provisional measures

Two types of civil actions are available to enforce IP rights: a main suit, where both a permanent injunction and damages may be sought, and a petition for provisional disposition, where only a preliminary injunction may be sought, and damages are not recoverable. A preliminary injunction proceeding is a relatively quick method for enforcing IP rights.

A plaintiff may petition a district court to issue a preliminary injunction to prevent further infringement by an accused infringer before the infringement issue is decided in the main suit. Unlike permanent injunctions in the main suit, a preliminary injunction will not be granted merely because the patent is shown to be valid and infringed; the plaintiff must demonstrate the likelihood of infringement and the necessity for provisional relief. In determining the latter, courts will balance the irreparable harm to the plaintiff arising from the ongoing infringement with the economic harm to the defendant if the injunction is granted.

Courts will also consider the adequacy of the form of relief to redress the injury to the plaintiff by the infringement and the likelihood that the patent will be invalidated. Absent exceptional circumstances, preliminary injunction actions are generally inter partes proceedings conducted through a series of mandatory hearings. The initial hearing is typically scheduled within two to three weeks from the date the petition is filed.

During the court’s review, the plaintiff must submit evidence of infringement, such as brochures and samples of infringing products. Witness testimony is usually limited to affidavits because witnesses are generally not permitted to take the stand during hearings. Typically, very little discovery is allowed in a preliminary injunction action, so the claimant should make all efforts to gather sufficient evidence of infringement before initiating the action. Courts are often reluctant to grant preliminary injunctions if expert testimony or tests are required to establish infringement. Therefore, the primary form of evidence used in preliminary injunction actions is documentary evidence.

Once the plaintiff has established the likelihood of infringement and the necessity for provisional relief, the defendant is given an opportunity to introduce arguments and evidence in rebuttal. A defendant can raise a defense of abuse of right to avoid enforcement of the patent, which would be based on the likely invalidity of the asserted patent, although the patent cannot be formally invalidated in a preliminary injunction proceeding. The court has discretion to grant additional hearings for further arguments and evidence upon the parties’ request.

When the court determines that it is ready to resolve the case, it will close the hearings and render a decision. Granting a preliminary injunction, the court may prohibit the defendant from continuing the manufacture or sale of the infringing goods, order that the infringing articles or other articles used to infringe be transferred to the custody of a court bailiff, or instruct the court bailiff to post an appropriate public notice of the order on the premises of the defendant.

Due to the provisional nature of such proceedings, the court generally requires the plaintiff to post a security deposit or bond for the purpose of compensating the enjoined party for damages resulting from the injunction in the event the injunction is later overturned or revoked. A deposit posted by the plaintiff upon the issuance of a preliminary injunctive order will be returned when the injunction becomes final upon any appeals.

However, if a preliminary injunctive order is later found to have been improperly issued, the right holder that petitioned for the injunction may be liable for tort under Korean law. The right holder will be held liable for ordinary damages suffered by the defendant due to the preliminary injunction, as well as any extraordinary damages that were reasonably foreseeable to the right holder at the time of execution. If a preliminary injunction executed by an IP right holder has been improperly issued, the right holder is rebuttably presumed to have been negligent in enforcing the injunction.

The district court’s decision on a preliminary injunction may be appealed to the high court.¹¹⁷ Alternatively, the plaintiff may file an action for a permanent injunction or other relief at the district court. A defendant subject to a preliminary injunction may challenge the order by filing a request for reconsideration with the same court that issued the injunction. A preliminary injunction may be enforced while an appeal or challenge is pending. As an alternative, and in addition to the above proceedings, the defendant may request that the court compel the plaintiff to institute the main suit for a permanent injunction or damages in connection with the enjoined activities. If such a request is made, the court will instruct the plaintiff to file a main complaint within a certain timeframe. If the complaint is not filed by the specified deadline, the court will revoke the preliminary injunction.

8.6.7 Evidence

In general, the Civil Procedure Act does not provide pre-trial discovery processes like depositions and interrogatories in the United States. Instead, evidence is produced during trials. In exceptional cases where certain evidence may not be available during the trial unless it is timely preserved, a party may request a court order to examine evidence prior to filing the lawsuit. All requests for evidence production are made by petition to the court, and the court will exercise its discretion in granting or dismissing the petition, balancing the need for the evidence and any delay or harm that may be caused by the production of the evidence. Any party that submits documentary evidence or files requests for witnesses, inquiry of facts, entrustment to send a certified and authenticated copy, order to submit documents, inspection, appraisal and so on must specify, in detail, the matters to be substantiated by the evidence.

8.6.7.1 Documentary evidence

Documentary evidence submitted in civil patent cases includes patent specifications, general books (technical literature), published materials, patent gazettes or laid-open gazettes, and patent registers. Any product, model, photograph, video or other material capturing or using the patent can also be submitted as evidence to help in the understanding of technical aspects of the patent. In principle, documentary evidence must be submitted in its original copy. However, in practice, it is acceptable to submit a scanned version of the original copy unless the other party disputes the existence or authenticity of the original copy, in which case the nonconverted original copy must be made available for examination on the trial date. Any document written in a foreign language must be submitted along with a translated version,¹¹⁸ the exception being for documents written in the permitted language in an international case.¹¹⁹

8.6.7.2 Inspection

Either party may ask the court to inspect samples of the other party’s products (e.g., the accused’s infringing articles) or conduct an on-site inspection of the other party’s property (e.g., the defendant’s manufacturing facility). The petitioner may also request that the court order the other party or a third party to submit the product to be inspected, if the petitioner does not already have a sample of the product in its possession. Upon submission, the court may choose to inspect it directly or may appoint an expert to inspect the product and submit an opinion based on relevant findings.

A party seeking an on-site inspection must persuade the court that the inspection is necessary. For example, an on-site inspection of the defendant’s premise may be necessary to prove infringement in a case involving a manufacturing process. If a petition for an on-site inspection is granted in such a manufacturing process case, the court will usually appoint an expert witness to accompany the judges to help perform the inspection and identify the relevant manufacturing process.

8.6.7.3 Court-appointed expert evaluation

The court can also appoint independent experts to provide testimony on complex technical issues that require input from experts (Article 335 of the Civil Procedure Act). The court may appoint an expert at the request of one of the parties or at its own discretion. Further, the court may ask public institutions, schools, organizations that have appropriate facilities, or foreign public institutions to provide their expert opinion (Article 341 of the Civil Procedure Act).

The court may appoint one or more experts to conduct testing or to submit an opinion on disputed issues that require special knowledge or experimentation, usually upon petition by one of the parties. In rare cases, the court may appoint one or more experts at its discretion. A party may petition the court to seek the opinion of a specific expert, in which case the other party may object to the recommended expert by presenting evidence of bias or other disqualifying grounds. The court has broad discretion regarding the selection of its own expert or in denying a petition for an expert.

Each party may petition to disqualify a potential expert by indicating that the person is incapable of providing a fair and true opinion (e.g., the expert was granted research funds by a party or its affiliates) or that they are not properly qualified. The Civil Procedure Act does not limit court-appointed experts based on their nationality or residence; the sole requirement is that the person has the necessary knowledge and experience to provide the expert opinion.

Court-appointed experts, like witnesses, are required to take an oath before the court that they will provide their opinion based upon what they believe to be true and correct and be subject to criminal punishment for perjury. Further, if necessary, a court-appointed expert may enter a party’s premise with the court’s approval. This is an exercise of the court’s power by the court-appointed expert.

8.6.7.4 Orders promoting evidence production

In civil cases, a party seeking to file documentary evidence possessed by the opposing party or a third party may request that the court order the holder of the document to submit the document (a “document submission order”).¹²⁰ If the respondent does not comply with an order under the Civil Procedure Act, the court may find what is alleged by the petitioner as to the contents of the document to be true.

Taking into account the distinct nature of patent cases, where evidence is often concentrated in the other party’s possession, the Patent Act expands the scope from documents specifically to materials more broadly and has enhanced the disadvantage to the noncompliant party (a “material submission order”). Failure to comply with a material submission order may result in the court admitting not only the petitioner’s contention about what is in the material but also the contention about the fact sought to be established by the materials as valid under certain conditions. The following sections discuss the document submission order under the Civil Procedure Act and the material submission order under the Patent Act.

8.6.7.4.1 Document submission order

Under Article 343 of the Civil Procedure Act, a party may petition the court to order the other party or a third party to submit a document known to be relevant to the merits of the case. Under Article 345 of the Act, a petition requesting the court to order document submission must clearly indicate the document title, its purpose, the person holding the document, the facts the document proves and the basis for the obligation to produce the document. The holder of the document has the obligation to produce the document under Article 344 if (i) they are a party and have referred to the document in the lawsuit, (ii) the petitioner is legally entitled to demand delivery or perusal of the document from the holder, or (iii) the document has been made for the benefit of the petitioner or concerns the legal relationship between the petitioner and the document holder, with some exceptions as prescribed in the provision.

Beginning July 9, 2019, accused patent or utility model infringers must also respond to credible infringement claims with evidence rather than with simple denials (which have been common where the evidence of infringement is entirely within the defendant’s premises and therefore difficult for the plaintiff to obtain through court orders). If a prima facie showing of likely infringement is made, an accused infringer denying infringement must present evidence of the actual process or product it is practicing or else risk the court presuming that the accused infringing activity has actually taken place.

8.6.7.4.2 Material submission order

The Patent Act has been amended (partial amendment by Law No. 14112, effective June 30, 2016) to expand the scope of submission orders from “documents” to “materials,” which may also include electronic files, video clips or any other nondocumentary form of data. The Act was amended to also prevent parties from refusing to comply on the basis that the materials contain trade secrets. Under the amended law, the petitioning party should first establish, via an in camera proceeding if necessary, that the materials actually contain trade secrets. Even if successful, the material holder cannot simply refuse to comply with the order if such evidence is deemed necessary to prove infringement. Instead, the holder may request that the court limit the scope of disclosure or the persons who can access the materials.

If a requested material is withheld without justification, the amended law permits the court to presume that the other party’s claim based on the facts sought to be proved through the material is true. These changes were designed to make it easier for patent litigants in the Republic of Korea to obtain the necessary evidence regarding infringement and damages. The amendment applies to all infringement actions filed on or after June 30, 2016. The court preserves broad discretion in granting requests for submission orders.

8.6.7.5 Evidence preservation (before or during an infringement action)

Evidence preservation is a tool used to obtain evidence that is otherwise difficult to secure. Petitions to preserve evidence have been granted in some patent infringement cases. To be successful, the petitioner should establish that there is a likelihood or reasonable probability of patent infringement and establish the necessity for evidence preservation. If successful, the court will issue a ruling that states to the effect of “(1) evidence examination shall be conducted with regards to this case and (2) the respondent is hereby ordered to submit materials.” In the annex to the ruling, the subject,¹²¹ the place¹²² and date of examination will be specified for evidence examination, as well as the facts to be proven and the subject materials¹²³ for material submission.¹²⁴

A petition for evidence preservation can be filed either before or during an infringement action. Before filing an infringement action, the petition for evidence preservation should be submitted to the district court having jurisdiction over the place of residence of the party possessing the alleged evidence or the location of the evidence intended for inspection, and the case will be heard by a single judge. After filing a lawsuit, the petition can be submitted to the court where the lawsuit has been filed, and the case will usually be heard by the same panel reviewing the lawsuit.

8.6.7.6 Experts

8.6.7.6.1 Witnesses (including expert witnesses)

Although documentary evidence is the most frequently used form of corroboration in civil patent litigation, the use of witness examination to prove factual background has been gradually increasing. It is particularly common in civil patent cases to conduct expert witness examinations of people who are acknowledged to have expertise in the particular technology. Expert witness examination is different from other witness examination in that the latter focuses on the facts that the witness has actually experienced in person, whereas an expert witness in a patent case is mostly called upon to testify on matters such as (i) the technical level of a person having ordinary skill in the art at the time of filing of the patent, (ii) the disclosure of the prior art, (iii) analysis and comparison of the infringing goods, (iv) the amount of loss caused by the infringement and (v) the reasonable amount of royalty, among others. To call an expert witness to the stand, the petitioner must submit a “Basic Statement for Expert Witness” to the court. This form is available in the practice directions of the Patent Court and the IP divisions of the Seoul Central District Court.¹²⁵

The Civil Procedure Act prescribes several ways that experts may provide their opinions to the court. Expert testimony may be submitted either through a declaration or through direct testimony before the court. Declarations are the more commonly used method. Either party to the litigation may introduce independent expert declarations as evidence in support of its case, and such declarations may be based on the expert’s own testing and knowledge or on other evidence reviewed by the expert.

Expert witnesses may also be called to testify at the trial, usually upon a request by a party. The questions to be asked must be submitted to the court in writing prior to the trial. Direct examination usually requires only a very brief answer. Whether to allow expert testimony is at the court’s discretion, and, if it is allowed, the other party will have the opportunity to cross-examine the witness. Questions for cross-examination and redirect examination need not be presented to the court in advance. The court may also appoint experts to evaluate the disputed technologies or damages-related facts.¹²⁶

8.6.7.6.2 Technical expert support

8.6.7.6.2.1 Judicial technical examiners

The Patent Court has judicial technical examiners providing full-time expeditious and effective support in dispute resolution through the specialized examination of issues surrounding technical matters in patent or utility model cases.¹²⁷ The judicial technical examiners in the Patent Court have expert knowledge and experience in scientific and technical fields, such as machinery, communications, electrics and electronics, chemistry, drugs, agriculture, and construction. They come from a variety of backgrounds: for example, KIPO examiners, patent attorneys and researchers in the relevant fields, often with Master of Science or PhD degrees. The KIPO also dispatches its division heads to the Patent Court as judicial technical examiners.

Upon the request of the judicial panel, judicial technical examiners provide opinions on technical matters in suits involving patents and utility models and, if deemed necessary by the panel, participate in preparatory hearings and trials and ask questions to the parties with the permission of the presiding judge.¹²⁸ In principle, each patent case of the Patent Court has a judicial technical examiner having expertise in the field assigned to the case, and the judicial panel holds a technical explanatory session before the trial, during which the judicial technical examiner helps the judges to understand the technical issues of the case.¹²⁹ The IP divisions of the Seoul Central District Court, in charge of most of the first-instance patent cases, and the Supreme Court, in charge of the final trials of all patent cases, have judicial technical examiners as well.

8.6.7.6.2.2 Technical advisors

In addition to judicial technical examiners, the court may choose to appoint a technical advisor to provide expert opinion on a particular issue of the case. Technical advisors are selected from a pool of registered experts in a wide variety of technical fields, including machinery, communications, electrics and electronics, chemistry, drugs, agriculture, and construction. Most of them are researchers of national research institutes or professors teaching in graduate schools.

Technical advisors participate in the litigation by either submitting written opinions or attending on the trial date to provide explanations or opinions on technical matters and, with the permission of the presiding judge, to ask questions to the parties or witnesses. These experts are bound by confidentiality obligations in connection with the cases in which they participate and are deemed government employees for the purpose of the bribery provision under the Criminal Act.¹³⁰

Technical advisors are distinguished from judicial technical examiners in that they are outside professionals appointed on a case-by-case basis, whereas judicial technical examiners work full-time at the court.

8.6.8 Technology tutorials and technical briefing sessions

8.6.8.1 Pre-trial internal technical explanatory session

Judicial panels of the Patent Court hold technical explanatory sessions in the preparation of trials concerning patents or utility models to better understand the relevant technologies. At these sessions, technical experts, such as judicial technical examiners, explain the relevant technologies in the context of the party’s argument by using drawings, products, miniatures, computer graphics and video equipment.

8.6.8.2 Technology review session on the date of trial

On the trial date, the court hears the arguments stated by the parties, examines the relevant evidence and identifies the issues with the parties. The parties present their oral arguments and produce further evidence. In cases involving complex technical issues, technology review sessions are often held on the trial date. Each party or its legal counsel prepares presentation materials and explains the relevant technology by, for example, showing video clips, photographs or drawings in the session. The parties are advised to submit their materials for technology review prior to the trial date. The materials are often filed in PDF or slideshow format and become a part of the court record once filed. Since most civil patent cases are processed via the electronic system, the parties electronically submit video files and other materials before the trial date. In cases where the parties’ consent and the court’s approval are obtained, trials may be conducted in a foreign language.¹³¹ Another important process that takes place on the date of trial is evidence examination.

8.6.9 Protecting trade secrets in litigation

8.6.9.1 Limited access to trade secrets

Access to trade secrets may be restricted by court orders. Upon a party’s request, the court can order that only the parties to the lawsuit may access or copy the portions containing trade secrets in the court record or request delivery of the authentic copy, certified copy or abstract of the portions containing trade secrets in the court decision or trial record.¹³² However, this restriction cannot regulate a party’s divulgence to others of trade secrets learned in the course of litigation, which may instead be prevented by a confidentiality protective order.

8.6.9.2 Confidentiality protective order

A party may refuse to produce a document on the grounds that it contains confidential information (e.g., a trade secret). In that case, the court may order the party to present the document to the court for an in camera review. Neither the parties nor their counsels can participate in such review.

Where it is necessary for a party to disclose a trade secret in litigation alleging violation of the Unfair Competition Prevention and Trade Secret Protection Act, then, under Article 14-4 of the Act, the party may petition the court to issue a confidentiality protective order to prevent any unauthorized disclosure of the trade secret thereafter. Under the Act, a “trade secret” is defined as information of a technical or business nature that can be used in business activities and is generally unknown to the public and possesses independent economic value, the secrecy of which is maintained through substantial efforts.

The Act protects trade secrets disclosed in litigation using confidentiality protective orders, a violation of which may be subject to criminal punishment. Upon a party’s request, the court may issue an order prohibiting the opposing party, its counsel or any other person who becomes aware of the trade secret through the litigation from using the trade secret for purposes other than conducting the litigation and from disclosing the trade secret to anyone other than the persons to whom the confidentiality protective order was issued.

A party petitioning for a confidentiality protective order must establish that a brief or evidence already submitted or to be submitted contains trade secrets and that any use or disclosure of the trade secret for purposes other than conducting the litigation would likely impede the business operation of the relevant party. The petition must specify the facts to support that these criteria are met, the person(s) who should be subject to the order and the facts sufficient to identify the trade secrets to be protected by the order.

Once the order is issued, the persons subject to the order are prohibited from using or disclosing the trade secret for purposes other than the particular lawsuit. Such prohibition includes the cross-use of the relevant materials or information in other lawsuits domestic or foreign. Any party violating the confidentiality protective order in the Republic of Korea or overseas without justification may be imprisoned for up to five years or fined up to KRW 50,000,000. Such violations may be penalized only after a complaint is filed by the party that requested the confidentiality protective order.

8.6.9.3 Protecting trade secrets by orders to submit documents and materials

When the court orders the submission of a document to decide whether it is subject to the obligation to produce documents, the court must take measures to protect the document from disclosure to others.¹³³ The document should be reviewed in camera so that it remains sealed from the other party or third parties. Likewise, when a party refuses to submit materials upon a court order, the court may order the submission of the materials to decide whether the party has a good reason to refuse submission, but only with proper measures to prevent others from accessing the materials.¹³⁴

8.6.10 Trial

A civil lawsuit typically involves a series of trial dates for oral arguments that are three to five weeks apart from each other. The court will render its decision in three to four weeks after the trial is closed (see Section 8.6.1.1). On the first trial date, the court will identify the disputed issues of the case and hold technology review session (see Section 8.6.8.2). The court will then visit any remaining issues and hold evidence examination or witness examination in subsequent trial dates. At the end of each date, the court will schedule the next trial date and notify the parties what issues should be addressed on that date. Before the next trial, parties will submit briefs and evidence on the issues for the court’s review in advance. Upon going through the issues on the next trial date, the court will decide whether it has heard enough from the parties to render a decision.

8.6.11 Alternative dispute resolution

8.6.11.1 Meaning and scope

Alternative dispute resolution (ADR) refers to any legal means of resolving disputes without litigation and trial. ADR is classified into judicial, administrative and private ADR according to the characteristics of the responsible institution. In terms of the method of settling disputes, ADR can also be classified into settlement, mediation and arbitration. The salient features of litigation and ADR are compared in Table 8.1.

In the following sections, we discuss the systems both of settlement in litigation and of mediation falling under the category of judicial ADR. The judicial ADR systems discussed below are only applicable to civil patent lawsuits and not to administrative or criminal patent lawsuits.

8.6.11.2 Settlement in litigation

The term “settlement in litigation” refers to an agreement that parties to an ongoing lawsuit can reach before the judge through mutual concessions on their claims for the rights or legal relationships at issue. Any settlement reached between the parties out of court is only considered a settlement agreement in private law and does not have the same effect as a settlement in litigation.¹³⁶

8.6.11.2.1 Process

Settlement in litigation may be reached at any time while the lawsuit is pending. Thus, a case may be settled in litigation at the appellate court or the Supreme Court, even after the argument is closed and the judgment is rendered, so long as the judgment is not confirmed as final and conclusive.

In principle, any settlement in litigation can only be reached by the parties’ verbal statement in court on the date of hearing. If the parties make a statement regarding the settlement agreement, this will be written down in the court record for trial to have the same effect as a final and conclusive judgment. This may be done on a date of hearing, preparatory hearing or examination of evidence, or a separate hearing date for settlement may be scheduled. In addition, a settlement is considered as reached if either party has expressed the intent of settlement in their brief, authenticated by a notarial office, and the other party has appeared in court on the hearing date and accepted such intent to settle.¹³⁷

8.6.11.2.2 Effect

When a settlement in litigation is stated in the court record for trial, such protocol has the same effect as a final and conclusive judgment.¹³⁸ Therefore, the settlement closes the lawsuit, and the settlement record serves as the source of executory force for compulsory execution.¹³⁹ Given the fact that a record of settlement in litigation has the same effect as a final and conclusive judgment and thus has the effect of res judicata, neither party may assert the nullity of the settlement between themselves even if its content is in violation of mandatory provisions unless the record is revoked by a quasi-retrial.¹⁴⁰

8.6.11.2.3 Recommendation of a settlement

A court, commissioned judge or entrusted judge may, on the case during the pendency of action, render ex officio a ruling of settlement recommendation to fairly settle the case by taking account of the parties’ interests and all other circumstances, within the boundary of the gist of the claim.¹⁴¹ A ruling of settlement recommendation has the same effect as a judicial settlement when neither party raises an objection within two weeks of the date of receiving the ruling from the court or when such an objection is withdrawn or waived.¹⁴²

As explained in Section 8.6.11.2, a settlement agreement in private law, which is reached between the parties out of court, does not have the same effect as a settlement in litigation. In private settlements, the parties may resort to the settlement recommendation system. In some cases, the court may render a ruling of settlement recommendation after the closing of argument but before pronouncing a judgment, based on its review of the case records in their entirety.

8.6.11.3 Mediation

The civil mediation system is a dispute resolution method wherein a neutral third party (or a mediator) intervenes in the negotiation process, with the consent of the parties, to help them easily settle the dispute. It is similar to a settlement in litigation in that an agreement should be reached between the parties but different in that the mediator more actively recommends and facilitates an agreement between the parties.

8.6.11.3.1 Institutions

Mediation cases may be dealt with by either a mediation judge, standing commissioner, mediation council or a court handling the lawsuit serving as a mediation institution.¹⁴³ These are, respectively, called mediation by a mediation judge, mediation by a standing commissioner, mediation by a mediation council and mediation by a court of the lawsuit.

Courts also operate a mediation system with external institutions, entrusting them with the handling of mediation cases through memorandums of understanding. Some courts operate all of the mediation institutions, and others have only some of them, as each court sees fit.

8.6.11.3.2 Proceedings

Mediation proceedings may be initiated by either party’s filing of a request for mediation with a court or by a court of the lawsuit’s referral to mediation.¹⁴⁴ Thus, a case could first start with mediation but return to litigation after the mediation fails;¹⁴⁵ or it could start with litigation, be referred to mediation, and then return to litigation after mediation fails.

Mediation proceedings usually take place in a court’s mediation chamber on a scheduled date but may also be conducted in any other appropriate venue other than the courthouse.¹⁴⁶ Mediation proceedings may be sealed from the public; however, a mediation judge may allow nonparties to attend the sealed proceedings where appropriate.¹⁴⁷

8.6.11.3.3 Completion and effect of mediation

Mediation is duly reached by putting the matters agreed upon between the parties into the record.¹⁴⁸ Accordingly, once mediation is reached at the mediation hearing, authentic copies of the mediation record are sent to the parties, and the mediation has the same effect as a judicial settlement in litigation.¹⁴⁹

With respect to cases where agreement has not been reached or where the terms of the agreement are deemed inappropriate, a mediation judge or judge at the court of the lawsuit in charge of mediation may render a ruling to ensure a fair resolution of the case, taking into account ex officio the interests of the parties and all other relevant circumstances to the extent not contrary to the purpose of the request for mediation.¹⁵⁰ This is called a “ruling in lieu of mediation” or “mandatory mediation ruling.” As with a ruling of settlement recommendation, a mandatory mediation ruling has the same effect as a judicial settlement if neither party files an objection against the decision within two weeks from the date on which they received an authentic copy of the decision.¹⁵¹

Mediation proceedings are closed when mediation is not constituted or when an objection is filed against a mandatory mediation ruling. In such cases, the case is shifted to litigation if a lawsuit was filed before the mediation proceedings; if mediation was sought without filing any lawsuit, a lawsuit is regarded to have been filed at the time the request for mediation was made.

8.6.11.3.4 Current mediation systems of the Patent Court

Since January 1, 2016, the Patent Court has had exclusive jurisdiction over appellate cases involving patent infringement. On March 10, 2016, the Patent Court established the Internal Regulations on Patent Court Mediation Commissioners. The Patent Court has taken these regulations as the basis for operating a mediation council consisting of legal professionals (e.g., former judges with profound experience in patent litigation) and technical experts (e.g., those from research institutions and university professors). Furthermore, a mediation judge system has been in place since February 27, 2017, to manage mediation cases in a systematic manner and to facilitate early mediation.¹⁵² The Patent Court also operates a mediation system whereby it may entrust external institutions, such as the Korean Commercial Arbitration Board, with the handling of mediation cases through memorandums of understanding.

8.6.11.4 Arbitration

Arbitration refers to a procedure to settle a dispute that the parties can resolve through reconciliation – not by a judgment of a court but by an award of an arbitrator.¹⁵³ Given that arbitration is determined by an award of an arbitrator, it is fundamentally different from settlement and mediation reached by an agreement between the parties. In this respect, arbitration has a lot in common with the general litigation system but is still different in that arbitration is not disclosed to the public in principle, allows more flexibility in terms of procedural formalities and usually relies on a single-instance resolution.

For mediation cases pursuant to the Judicial Conciliation of Civil Disputes Act, a case may be freely referred to mediation during the course of litigation or may be returned to the litigation procedure. For arbitration cases, however, a court should dismiss the action that has been brought in a matter that is the subject of an arbitration agreement when the defendant raises, as a defense, the existence of an arbitration agreement, provided that the court does not find the arbitration agreement null and void, inoperative or incapable of being performed.¹⁵⁴

An arbitration agreement takes effect when the parties agree in writing to settle by arbitration – not by a judgment of a court – all or part of the dispute that has already arisen or might arise in the future in respect of legal relationships under private law. The effectiveness of an arbitration clause as an arbitration agreement is determined based on an overall consideration of the meaning of arbitration as defined in the Arbitration Act, the nature and form of the arbitration agreement, and specific circumstances, including the content of the relevant arbitration clauses and the background to the parties’ decision to have the arbitration clause. Optional arbitration clauses only take effect when either party opts for an arbitration procedure, not a judgment of a court, and pursues dispute resolution via arbitration, and the other party participates in the arbitration procedure without objection.¹⁵⁵

Given that arbitral proceedings are conducted for an award, it is difficult to link them with litigation proceedings, unlike mediation, which relies on an agreement between the parties. Therefore, even though it is technically possible, there have been very few cases wherein arbitration proceedings were initiated after withdrawing the lawsuit in the course of litigation proceedings due to reasons such as having an ex post arbitration agreement.