X3. Patent Disputes

1. Actual Process of Patent Dispute

  When a patent dispute arises, the patentee must first determine whether his/her patent is likely to be invalidated. Determination of infringement goes through a similar process. By determining the invention that caused the dispute and extracting the same points between the patented invention and the disputed patent, the difference between the two inventions is determined and the next action (civil or criminal trial or settlement) is decided.

  The general process of domestic patent disputes is as follows.

  In the case of civil, that is, money, a trial is made in the injunction court or a district court through an objection, and if an appeal is filed, the high court and the Supreme Court follow. You can file a claim for prohibition/prevention of infringement, request for destruction/removal of infringing object, damage, compensation and credit recovery.

  In criminal cases, personal matters, the prosecution follows the order of the district court, the high court, and the Supreme Court through filing a complaint with the prosecution. For patent infringement, imprisonment for not more than 7 years or a fine of not more than 100 million won, and for a false presentation, imprisonment for not more than 3 years or a fine of not more than 20 million won may be imposed. For reference, the criminal procedure punishes both the employee and the company in accordance with the penalty provisions.

  In the administrative procedure, the Intellectual Property Tribunal, the Patent Court, and then the Supreme Court inquire whether the patent is invalid (win of a disputed patent) or whether the scope of rights is recognized (defeat of the disputed patent). In the case of the Patent Court, in addition to the three judges, one technical examiner is dispatched from the Korean Intellectual Property Office to participate in the trial. This is because, due to the nature of patent disputes, only judges are insufficient to digest the technical nature of the disputes. In the case of the Supreme Court and the High Court, for similar reasons, although they do not participate in the trial, relevant technical experts are dispatched from the Korean Intellectual Property Office and reside there. Also, for the same reason, a system was created in which the first trial was held in the district court and the second trial was brought to the Patent Court (Seoul and the metropolitan area have too many lawsuits, so the Seoul High Court serves the same work too). When such a patent dispute arises, the patentee or infringer must carefully consider the costs of litigation and the benefits that can be obtained through the dispute. In particular, unlike developed countries such as the United States, Korea has a particularly low level of compensation for a patent infringement.

2. Measures to prevent patent disputes

  The following variables can be considered as measures to prevent patent disputes. Making his/her patent stronger is the top priority. In the case of such a patent, the possibility of invalidation is generally low and the patent network is well established. A well-established patent network means that a patent is not a single product, but patents for derivative products are also registered.

  And, when using a certain product/technology, a patent map should be built through a thorough technical literature database, and a dispute response manual should be prepared through continuous monitoring of competitor's patents. If these preventive procedures are sufficiently followed, developing an evasive design or registering a new technology patent will be possible.

3. How the patentee responds

The patent holder has the responsibility of proving the infringement by finding sufficient data to prove the fact of infringement.

  1) Infringement injunction request: The patentee is requesting prohibition or prevention against a person who infringes or intends to infringe his/her patent right.

  2) Injunction against infringement: Generally, patent disputes are not short or quick. Therefore, while the patent dispute continues for a long time, the patentee can apply for injunctive relief when there is a possibility of serious economic loss, that is, in case of urgent need.

  3) Right to claim compensation: The right to claim monetary compensation in civil cases for damages caused by torts, that is, infringement of patent rights. It is common for the patentee to send a warning letter to prove his intention or negligence.

  4) Right to claim return of unfair profits: This is the right to claim the return of any profits obtained through the patent even if there is no intention or negligence.

  5) Right to claim credit restoration: In the event that the “business credit” of the patentee is compromised due to patent infringement, the patentee may be ordered to take measures to restore the creditworthiness of the patentee along with compensation for damages.

4. How the infringing party responds

1) Method through the Patent Trial and Appeal Board: Through the patent trial, you can request a right confirmation trial to prove that your product is not included in the rights claimed by the patentee.

  2) Invalidation Trial: This is a procedure for retroactively extinguishing a patent that was legally valid.

  3) Method through court: The party infringing the patent can respond to civil and criminal lawsuits of the patentee in litigation. This can be done through non-infringement defense or counterclaim.