An International Guide to
Patent Case Management for Judges

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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 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, 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 Electronic litigation system

The Electronic Case Filing System (ECFS, 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.

Figure 8.4 Map of the Electronic Case Filing System

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.