Foreign Parties May Submit Briefs in English and Argue in English for Patent Cases before the Patent Court and the IP Special Court in Korea

From May 2018, new International Panels for patent lawsuits will be established and foreign parties may submit documents in English and argue their case in English before the courts. That means that briefs in English may be submitted and oral hearings may be conducted in English. The specialised panels will be in the Patent Court and the lower court for the 1^st instance lawsuit.

The Korean Patent Court had a trial on June 28 2017 for an oral hearing in English. The case was an appeal to the IPTAB decision on a patent application of 3M Innovative Properties Company.

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Patent Exhaustion of Method Claims in Korea

On November 10, 2017, the Korean Patent Court affirmed the lower court decision that the patent right of method claims might be exhausted. (Case No. 2017Na1001 decision)

 

The courts pointed out that a patentee may not seek double compensation through product claims and method claims. Patentees may be allowed to avoid patent exhaustion through simply drafting patent claims to describe a method together with a product or an apparatus.

 

The courts held that the sale of an item that substantially embodies the method exhausts the method patent. The product “substantially embodies” a patent where (1) it has “no reasonable non-infringing use” other than to practice a patent and (2) it embodies “essential features of the patented invention”.

 

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Licensee May Challenge Patent Validity in Korea

On October 27, 2017, the Korean Patent Court affirmed the IPTAB’ decision that a Licensee may challenge patent validity in Korea. The licensee filed a petition for patent Invalidity and the case was tried before the Patent Court. (Case No. 2017Heo27272 decision)

Typically, a licensee has been estoppel by the clause of licensee agreement that “the licensee under a patent license agreement could not challenge the validity of the licensed patent in a suit for royalties due under the contract.”

However, the Korean Fair Trade Commission (KFTC) made it clear that “Prohibiting licensees from challenging the validity of any patents and using transacting terms that permit termination of the licensing agreement if licensees challenge the validity of a patent” violated the Korean Faire Trade Law and ordered a patentee to correct such illegal licensee term.

Like Medimmune decision, it is possible for a licensee to challenge the validity of a licensed patent while still fulfilling its contractual duty under a license agreement by paying contractually required royalty fees.

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