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.