A.The Korean Supreme Court has ruled that a patent infringement under doctrine of equivalents
can be acknowledged under the following conditions:
ⅰ) even if an element in the claim is replaced with another one, the alleged product or
method has the same technical idea or identical principle to overcome a problem as the
ⅱ) the replaced element has substantially identical function, way and result to the claimed
ⅲ) such replacement can be easily made by an ordinary person skilled in the art;
ⅳ) the alleged product or method is not identical to and cannot be easily made by an
ordinary skilled person from prior arts at the time of filing the patent; and
ⅴ) the replaced element is not one argued to the contrary through the prosecution by the
applicant/patentee."(Supreme Court Case No. 97hu2200 issued on July 28, 2000)
The Court did not indicate the time when the condition ⅲ) above applies. But a precedent by Patent Court ruled that the condition ⅲ) applies at the time of manufacturing the alleged product or working the alleged method. (Patent Court Case No. 98huh2160 issued on September 17,
A.Yes. The KPA provides that the following acts shall be considered to infringe a patent right or an
ⅰ) an act of making, assigning, leasing, importing, or offering for assignment or lease
articles used exclusively for producing an invented product; or
ⅱ) an act of making, assigning, leasing, importing, or offering for assignment or lease
articles used exclusively for working an invented process.
You should note, however, that such indirect infringements are not prosecuted under the criminal law.
A.Jurisdiction over patent matters in Korea is divided between civil courts which hear claims relating to patent infringement and the KIPO which handles invalidation trials and confirmation-of-scope trials. A patentee may commence a suit in a civil court seeking a preliminary injunction or a permanent injunction and damages. The defendant frequently responds by bringing an action at KIPO for a negative confirmation-of-scope trial. Invalidation actions are also brought against the patent at KIPO. As a first step, patent owners can send a demand letter to an
infringer prior to commencing litigation.
After the warning letter is sent to the infringer, the patent owner may take the following actions:
ⅰ) criminal investigation and indictment may be brought upon the complaint of the patent
holder. A patent infringer may be subject to criminal punishment with penal servitude of
up to 7 years, or a fine of up to one hundred million (100,000,000) Korean Won.
ⅱ) raise a trial for confirmation-of-Scope before the IPT; and
ⅲ) bring an infringement suit to the court for a provisional or permanent injunction and/or
Furthermore, you can request for arbitration (but arbitration has not proven to be beneficial for patent holders, from our experience). The effective way to stop the infringement may be the
above ⅰ) and ⅲ).
A.Trial for Confirmation-of-Scope (TCCS) of a patent is a unique system in Korea throughout the world. The TCCS is to confirm the scope of each claim against an accused product or method. The TCCS is subject to the jurisdiction of the Industrial Property Tribunal (IPT), while a patent
infringement suit for an injunction and/or damage is subject to the jurisdiction of a district court.
A patent owner or an interested party can raise TCCS by submitting a brief before the IPT at anytime. The accused product or method to be compared with the patented claims must be presented in a form of written document including drawings if necessary before the IPT. The Trial Examiners of the IPT define the scope of claims by literal interpretation of the claims and under the doctrine of equivalents, compare them with the accused product, and make a decision. The IPT decides only whether the accused product or method is within the scope of protection of
a patent or not.
The TCCS looks similar to an infringement suit. In fact, they are duplicated procedures in some
aspects. However, the TCCS is different from an infringement suit as follows:
ⅰ) the trial examiners can decide only whether the accused product or method is within the
scope of protection of a patent or not. The trial examiners of the IPT are not authorized
to make a decision for injunction and damage;
ⅱ) the accused product or method shall be defined only by the submitted, written document,
instead of a real product or method used by a potential infringer. Even if the real, used
product or method is different from the product or method described on the document
submitted by the plaintiff, a final decision of the IPT shall be based only on the submitted
ⅲ) an infringement suit for a preliminary or permanent injunction and damage is subject only
to the jurisdiction of a district court. In an infringement suit, judges shall make a decision
based only on a real product or method by fact finding; and
ⅳ) the TCCS is not mandatory procedure to enforce or defend a patent. TCCS is an optional
one. A court may make a decision contrary to a decision in TCCS of the IPT for the same
or similar case. However, decisions of the IPT are usually respected by court judges.
A.Ex parte proceedings such as TROs are not available in Korea. Courts may issue injunction orders to stop the manufacture or sale of infringing goods. When a patent is infringed, the patent holder is entitled to petition the court for a permanent injunction, damages, and other measures to restore its good will. Before seeking such remedies, an infringed party may petition for a
A preliminary injunction is available in patent cases upon a prima facie showing of patent infringement and the necessity for provisional relief. The preliminary injunction is intended to be issued in a speedy manner so as to stop an infringer from continuing infringing activities before a permanent injunction is finally adjudicated. It usually takes six to twelve months are held with
the interval between the sessions being usually two or three weeks.
A.An action for permanent injunction and damages is tried in a manner similar to a preliminary injunction action. The Korean procedural rules do not provide for extensive pretrial discovery. This makes it more difficult to gather evidence to prove certain requisite elements of the
The hearings in a permanent injunction and damages cases are usually held every four to five weeks starting one month after the complaint is filed. It takes about eight to eighteen months before the first-level court decision is rendered. The amount of damages awarded by Korean court may be based on the amount of actual damage, the amount of profits earned by the infringer, or the amount of royalties that would have been paid to a patent owner in a similar situation. According to the KPA, a patent holder can claim for damages against infringers. Damages mean actual physical and psychological damages (consolation money). Exemplary
damages are not permitted.
The following provisions are set by the KPA:
ⅰ) in case that an infringer has sold infringing products, the amount of damages is
calculated as the number of transferred articles multiplied by the profit per unit of articles
that the patentee might have sold in the absence of infringement. The compensation
may not exceed the amount of the estimated profit per unit multiplied by the number of
products that the patentee could have produced subtracted by the number of articles
ⅱ) if an infringer receives any profits by the act of infringement, the profits gained by the
infringer are presumed to be the amount of damages suffered by the patentee;
ⅲ) a patent holder can claim as damages a reasonable royalty which is acceptable in the
technical field; and
ⅳ) if the real damages exceed the royalty, another claim for damages can be made for the