Showing posts with label damage. Show all posts
Showing posts with label damage. Show all posts

One (1) Year Grace Period for Design Application in Korea


From September 22, 2017, the new Design Protection Act extended the six months grace period to one (1) year.

Under the previous Design law in Korea, a design would not be deemed to lose novelty over an identical or similar design as long as the application for the design was filed within six months from the date when the identical or similar design was first open to the public.

And the applicant must claim the novelty grace period when filing (i) the application (documentation of the previous disclosure can be submitted within 30 days from the application date), (ii) a response to an office action issued by the Korean Intellectual Property Office ("KIPO"), (iii) a response to an opposition filed by a third party, or (iv) a response to an invalidation action filed by a third party.

Under the new law, the grace period was extended from the six months to one year. And the time limit for claiming the grace period was changed from (ii) "when filing a response to an office action issued by KIPO" to (ii) "up until KIPO issues a final decision whether to grant a design registration."  Therefore, under the new law, an applicant can claim the grace period at any time while the application is still pending.

The Korean Supreme Court decided Formats of TV Reality Shows May Be Protected under Copyright Law


Reality Shows do not follow fixed formats. They are not fixed but spontaneous or changeable. The issue addressed by courts in Korea is whether a format of Reality show is a copyright work such as "a dramatic work" under the Korean copyright law.

On November 9, 2017, the Korean Supreme Court decided in SBS v. tvN case that the format of TV Reality Show may be a copyright work and may be protected under Copyright Law (case No. 2014 Da 49180). Lower courts denied copyright protection for the format itself of TV Reality Show but the supreme court reversed.

The defendant asserted that their show was a parody of the plaintiff’s program. And the lower court denied copyright protection for the TV reality show format and addressed the case was not a copyright infringement because the format of TV show is idea, not specific expressions. The court stated that Reality shows mostly consist of incidents, behaviors and conversations between the participants.

However, the Korean Supreme Court reversed the lower court ruling and addressed that the TV reality show format may be protected because the combination and arrangements of all elements are expressions but not ‘ideas’ and that can be distinguished from old formats, thus is an independent creative work. Even though each one of elements is common and not original, the combination and order of all elements has creativity. It is true even if the show contains elements of spontaneity and events that change from episode to episode.

The Korean Supreme Court Affirmed the Lower Court Decision of Copyright Protection to Pornography


On June 11, 2015, the Korean Supreme Court affirmed the lower court decision that pornography works may be protected by copyright (case No. 2011 Da 10872). The Court stated that pornography works may be protected under copyright even though legal measures have been implemented to block pornographic materials. The courts pointed out that morality is not relevant to copyright issue.

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 1st 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.

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”.
 

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.



KFTC reviews Patent License Contracts related to Patent MA Linkage



Recently the Korean Fair Trade Commission (KFTC) requested pharmaceutical companies to submit information including patent license contracts and patent litigations or disputes. It was to scrutinise fair trade practices in pharmaceutical industry.


Korea has implemented the Patent Marketing Approval Linkage system over 2 years since March 15, 2015. There was a dramatic increase in the number of patent disputes filed between original drug manufacturers and generics.


KFTC will look into any changes in pharmaceutical companies' IP practices after the patent MA linkage system. Particularly KFTC will review any settlement agreements or other business arrangements that may have been entered into as a result of such IP disputes.


KFTC may further investigate specific companies based on the information and materials that have been submitted. On the other hand, if KFTC may conduct an ex parte raid on the responding company, in case KFTC decide it is necessary to investigate a particular suspicious case.



Trade secret Infringement Lawsuit on Botulinum Toxin between Medytox and Daewoong Pharmaceuticals



Two Korean companies have disputed over trade secret theft about Botulinum Toxin for years. Medytox, in cooperation with its U.S. partner Allergan, has been conducting clinical trials in USA to get approval for its BTX product, Meditoxin.

Last year, Daewoong and its U.S. partner Alphaeon filed for FDA approval for its BTX product, Nabota in USA. Medytox will face competitions of Daewoong in the US market. 

Accordingly, Medytox filed a lawsuit in USA alleging Daewoong of stealing its strain of the Botulinum toxin. But the plaintiff could not succeed to block the competitor’s business in USA through the lawsuit because the lawsuit case was not successful.

On Oct. 12, 2017, the Superior Court of California in Orange County dismissed the case with ruling that the case should be settled in Korea. The court stated that "the court finds that Korea is an alternative suitable forum in which an action can be brought against all defendants."

Furthermore, the US court decided that "if it turns out that the alternative forum is not suitable after all, this court has the power to lift the stay and proceed with the action in the original forum, the court sets a status conference on a stayed matter for April 13, 2018."

According to their press release, Medytox will file a lawsuit against Daewoong in Korea soon.



Statutory Damages for Trademark Infringement in Korea



Under the Korean Trademark Law, a trademark holder in a trademark infringement lawsuit may elect between actual damages and statutory damages. This election is to be made at any time before judgment is rendered.

 

Actual damages can be based on plaintiff’s lost profits, infringer’s profits or reasonable royalties. A trademark holder must prove the exact amount of actual damages by a preponderance of the evidence.

 

In practice, it is often difficult to prove the amount of damage for IP infringement. The statutory damage is designed to save rightsholders from such difficulties.

 

Under Article 111 of the Korean Trademark Act, a trademark owner may file a claim for statutory damages against a person who used a trademark identical to the trademark owner’s, either intentionally or by negligently, on goods identical to the designated goods.

The amount of statutory damages to be awarded by the court may not exceed KRW 50 million (approximately USD $45,000.).

 

Further, with statutory damages, the court also awards legal cost including attorney fees to the prevailing trademark owner.




Statutory damages for copyright infringement in Korea



In principle, a copyright holder in a copyright infringement lawsuit may elect between actual damages and statutory damages. This election is to be made at any time before judgment is rendered.


Actual damages can be based on his own lost profits, defendant’s profits or reasonable royalties. A copyright holder must prove the exact amount of actual damages by a preponderance of the evidence.


In practice, it is often difficult to prove the amount of damage for IP infringement. The statutory damage is designed to save rightsholders from such difficulties.


Under Article 125-2 of Korean Copyright Act, a copyright holder may seek statutory damages if the copyright has been registered with the Copyright Commission. If the copyright is not registered, the copyright holder may only receive compensatory damages for actual damage.


The statutory damage is up to 10 million Korean Won (about US$ 9,000) per a copyrighted work. In case the infringement is willful and for the infringer’s commercial interest, the maximum of statutory damage is increased to 50 million Korean Won (about US$ 45,000) per a copyrighted work.


Further, with statutory damages, the court also award cost including attorney fees to the prevailing party.




 

Parody Issue in Korea : Hermès International v. Play No More Co. Ltd. Cases


1. Fact


           - Defendant’s Accused Bags with their slogan "Fake For Fun"


2. No Confusion But Disputed Issues


Hermès alleged that defendant Play No More copied its Kelly and Birkin handbag designs which caused consumer confusion. However, defendants argued that no consumer’s confusion was caused by their goods.


Further, in particular Hermès claimed that defendant infringed Hermès’ economic interest with unfair competitive acts under Article 2(1)(j) of the Korean Unfair Competition Prevention and Trade Secret Protection Act (“Unfair Competition Act”).


Accordingly, the issue was whether defendant’s good is allowable as a parody or not allowable as a unfair competitive act under Article 2(1)(j) of the the UCPA catch-all provision, Article 2(1)(j).

3. Court’s Decisions


At the first instance, the Seoul Central District Court confirmed that the designs of the Kelly and Birkin bags were protected by the catch-all provision. The Court concluded that, even though there was no risk of consumer confusion, these designs of luxury handbags should be given legal protection and not given over to the public domain.


On the other hand, the Court noted that Play No More's slogan, "Fake For Fun," implied that Play No More intended to free-ride on Hermès' goodwill. The Court concluded that Play No More's unauthorized actions unfairly took advantage of Hermes' work product and were conducted in a manner contravening fair trade practices and competition order. The court ordered a permanent injunction on the manufacture and sale of the infringing products and damages.


However, at the second instance the Seoul High Court sided with defendants. The appellate court reversed the lower court’s ruling and dismissed all of Hermès claims. The case was appealed to the Korean Supreme Court and is pending.

 

Trade Secret Protection in South Korea

1. What is Trade Secret under Korean law?

“Trade secret” under Article 2.2 of the UCPA of Korea means technical or business information that: (i) has not been publicly disclosed, (ii) has an independent economic value, and (iii) has been maintained as secret with substantial effort. The clause of article 2.2 of the UCPA is : "trade secret" means information, including a production method, sale method, useful technical or business information for business activity, that is not known publicly, is the subject of considerable effort to maintain its secrecy and has independent economic value.
 
2. What is misappropriation or infringement of trade secret under Korean law? 

Article 2.3 of the UCPA further stipulates that any of the following acts shall constitute an act of trade secret misappropriation:
(i) acquisition of a trade secret through theft, deception, coercion or other improper means (hereinafter referred to as “act of improper acquisition”), use or disclosure, to a third party, of the acquired trade secret (including disclosure thereof to a third party while maintaining its secrecy);
(ii) acquisition of a trade secret, with the knowledge that an act of improper acquisition was involved with respect to the trade secret or failing to know thereof due to gross negligence, use or disclosure thereof to a third party;
(iii) use or disclosure, to a third party, of a trade secret, with the knowledge gained subsequent to its acquisition that an act of improper acquisition was involved with respect to the trade secret or failing to know thereof due to gross negligence;
(iv) use or disclosure, to a third party, of a trade secret by a person who has a fiduciary duty not to use or divulge the trade secret under a contractual relationship and the like;
(v) acquisition, use or disclosure, to a third party, of a trade secret with the knowledge that the trade secret was disclosed in violation of the fiduciary duty referred to in item (iv) above or failing to know thereof due to gross negligence; and
(vi) use or disclosure, to a third party, of an acquired trade secret with the knowledge gained subsequent to its acquisition that the trade secret was disclosed in violation of the fiduciary duty referred to in item (iv) above or failing to know thereof due to gross negligence.
 
We can assume that the meaning or scope of misappropriation under Korean law is almost the same as those of misappropriation under American UTSA. Namely, the key points of misappropriation under Korean law include (1) acquisition of a trade secret of another by a person who knows or has reason to know that the trade secret was acquired by improper means; or (2) disclosure or use of a trade secret of another Without express or implied consent by a person who used improper means to acquire Knowledge of the trade secret; or (3) at the time of disclosure or use, knew or had reason to know that his knowledge of the trade secret was (i) derived from a person who had utilized improper means to acquire it; (ii) acquired under circumstances giving rise to a duty to maintain its secrecy or limit its use; or (iii) derived from a person who owed a duty to the person seeking relief to maintain its secrecy or limit its use; or (4) before a material change of his position, knew or had reason to know that it was a trade secret and that knowledge of it had been acquired by accident or mistake.
 
3. Remedies for Trade Secret Misappropriatio

(1) Injunctive Relief -
(2) Damages
A. Actual loss (including lost profits where applicable),
B. Unjust enrichment, and/or
C. Reasonable royalties.
(3) Criminal Sanctions
 

[Patent Infringement Litigation in Korea - 6] Litigation Costs and Attorney Fees



Official fees for a preliminary injunction action or a permanent injunction action would be small rather than significant. Those would be about US$500. A lawsuit to the Patent Court is an administrative lawsuit that seeks to review the decision of the IPTAB of KIPO. Official fee for such action to the Patent Court would small, too. That is about US$500.

As to a lawsuit for damage compensation, official fees are correlated with the amount of claims. For the first instance lawsuit, a plaintiff must pay 0.5% of claimed amount as official fee. Accordingly, it could be considerable amount.

In terms of attorney fees, two options are usually used in Korea; Flat fee in lump sum or hourly charge based on actually spent time. Considering the unpredictable nature and complexity of patent infringement litigation, it is difficult to estimate the total cost of litigation. Just as a rough estimate, it would be approximately US$200,000 ~ 500,000 for a district court action for a straightforward litigation case. In a big case with complex and difficult technology issues, it may cost much more. In addition, translation of court documents into English will increase costs accordingly.

Korean laws allow the prevailing party to claim court costs and legal fees from the losing party. Official fees and legal costs paid to a court are usually reimbursed in full to the prevailing party. As to attorney fees, however, the Supreme Court has a regulation that limits the reimbursement of actual attorney fees. For instance, for a PI case, a prevailing party may recover about US$5000 per instance from a losing party; not more than US$10,000 in total. However, the amount for damage lawsuit is correlated with the amount of claim and ration of winning. That may be quite different. At any way, it is safe to assume that the amount as a reimbursement of legal fees could be substantially less than the actual cost.


[Patent Infringement Litigation in Korea - 5] Injunction


Permanent Injunction

An IP right owner will seek to enjoin an infringer at the beginning of a lawsuit through preliminary injunction. The nature of a patent right is the right to exclude others. Once the patent has been held valid and infringed, the patentee is entitled to the full enjoyment and protection of the patent right. The infringer shall not be allowed to continue his infringement.


Under Korean patent law, when the infringement of a patent is found, a permanent injunction shall be automatically granted. Only in extraordinary circumstances like patent misuse or substantial injury to the public interest may a court deny a permanent injunction.


Preliminary Injunction (PI)


Preliminary injunction is drastic and extraordinary remedy. Thus, a court allows preliminary injunction only in extraordinary circumstances. PI may be allowed when the circumstances are met by showing a reasonable likelihood of success on the merits, the existence of irreparable harm to the patent owner if a PI is not granted; the balance of hardship between the patent owner and the infringer. Further, a PI should not be against the public interest.


PI is often granted to a patentee in Korea. Under Korean patent law, the validity of a patent and its enforceability are presumed and further irreparable harm is presumed where there is reasonable likelihood of success. Therefore, preliminary injunction shall be granted when the accuser’s infringement is proved.


In contrast, in case a patentee has not practiced the patented invention within Korea, preliminary injunction will not be allowed because no irreparable harm is presumed. Further, in case it is probable that the subject patent will be invalid through invalidation proceeding, it will be hard for the patentee to obtain PI. Preliminary injunction may give full and final satisfactory remedy in advance before a main lawsuit, and can cause significant suffering to the other party. Accordingly, a PI case shall be carefully decided by a panel of three judges.

 

[Patent Infringement Litigation in Korea - 4] Patent Infringement Litigation Procedures

 1. Complaint and Answer


A patentee may initiate a lawsuit by filing a complaint that includes the parties’ information, prayer of remedy and grounds why the defendant is liable to the plaintiff. The plaintiff may seek a court granting an order of barring the opposing party’s infringing manufacturing, marketing and selling activities; the seizure or destruction of all finished or half-finished infringing products in the opposing party’s possession and compensation for damages.

 
The defendant may submit a written answer to deny or accept the complaint within 30 days of being served the complaint. Furthermore, the defendant may file a counterclaim. But, due to bifurcated system about independent invalidity action, the defendant may not file a counterclaim to invalidate the subject patent.

 
2. No Discovery like the US type is available.

 
3. Briefs and Evidence as Exhibits

 
After the court has served the answer to the plaintiff, the parties are required to exchange briefs and exhibits. Each party may object to those exhibits that are irrelevant or inappropriate. The plaintiff ordinarily files his briefs at first, and then the defendant files his briefs in turn. A court may allow the parties having another opportunity to exchange briefs before a preparatory oral hearing which is a kind of scheduling meeting. The court usually permits a 3~4 weeks period for each brief filing. The court usually rules on the admissibility of the objected exhibits in the oral hearing.

 
4. Oral Hearing

 
In the first oral hearing, the court will allow parties submitting their arguments and evidence and then will arrange the disputed facts and issues between parties. Through briefs, parties will provide the court with the nature of the controversy, evidence, legal contentions that the parties believe support their positions. The court will decide what issues are presented by both parties and how the case will proceed. It is likely for parties to have two or more oral hearings in patent infringement case.

 
5. Evidence

 
Korea does not have discovery procedures and jury trials. All lawsuits are tried by judges. Because judges are skilled in the rules of evidence, judges are usually lenient in allowing evidence to be introduced.

 
A. Document Request

 
Each party can request the court to order the other party to submit relevant documents in issues. The party having the document must submit the document to the court. The court can enforce this order by monetary sanctions and evidentiary sanctions. Evidentiary sanctions include not allowing responding party’s submission of the evidence for his benefits, and more importantly may regard the requesting party’s assertion as true. The document request is not applicable to attorney client privilege documents, attorney work products and confidential information.

 
B. Protective Order

 
In case a party insists the document is private, trade secret, or others, the court may order the party to submit the document and then examine without the other party’s participation. Hence it is not permitted for a respondent to refuse document submission for trade secret reasons. Only the party may seek court’s protective order on his information.

 
C. Expert Opinion

 
The parties can retain experts to testify on their behalf. The party applying for expert opinion should submit expert candidates and manner of expert opinion, and further should pre-pay the cost. If the party applying for expert opinion wins the case, the prevailing party will recover the cost from the losing party. Patent cases need prudent expert opinions that usually need considerable time and cost.

 
D. Court Inspection

 
Court inspection is adopted for judges to examine and analyze actual objects using the five senses of judges. The court inspection can be the most powerful means for proof if judges recognize the nature and contents of the subject evidence adequately. For example, judges may compare patent’s product with infringer’s product through watching experimentations or seeing or touching by themselves. Though ordinarily it is not easy for judges to comprehend the technical peculiarity through court inspection, the court often allows parties court inspection.

 
E. Special Hearing for Technical Issues (Markman Hearing)

 
A court usually set an oral hearing for examining technical features. Both parties may present technical issues including background technology, claimed inventions, elements of the invention and comparison of elements between the patented invention and the accused product or process. Parties are permitted to use drawings, documents, power point presentations, models, real products, demonstrations, and others. It is one of the most important proceedings for parties to be able to have an influence on judge’s decision.

 
F. Witness Examination

 
The party who calls a witness will conduct the first examination of the witness. The direct examination shall be done by using open-ended questions. For instance, any leading questions, which allow only for a “yes” or “no” answer, are not allowed. The opposing attorney has a chance to cross examine the witness and he is allowed to use leading questions: cross examination. But the cross examination shall be limited to the subject matter raised during the direct examination. When the opposing attorney has finished his cross examination, the attorney who did direct examination has an opportunity to conduct redirect examination. The attorney again cannot use leading questions.

 
Parties may submit an affidavit as documentary evidence for direct examination of a witness. In the oral hearing, only crucial points of the affidavit are examined and other details can be omitted in that direct examination. Accordingly, sufficient time is allotted for cross-examination. When a witness is hostile and is not under the influence of the requesting party, the party may file a motion that the witness must be summoned and when the motion is accepted the party must submit main contents for direct examination in advance.

[Patent Infringement Litigation in Korea - 3] Check Points & Actions Must Be Considered Before Enforcement Actions



Patented claims must be valid and infringed in theory. However such claims are not common in reality. Accordingly a patentee must check strength of his patent before enforcing his patent against accused infringers. To be a valid patent claim, it should be strong enough to sustain invalidity challenges. The scope of the claim must be narrow enough to be novel and non-obvious over the prior art. On the other hand, a claim should be infringed by the competitor’s product or process. For this purpose, the scope of a claim must be broad enough to cover competitor’s product or process. These are contradictory and it is really hard to achieve desirable balance between two opposites.

 
Before filing a patent infringement lawsuit, it is desirable for a patentee to check strength of each patented claim based on thorough prior art search. Usually, it is necessary to fix any errors in issued patents, protect claims from possible invalidity challenges through amending claims to be novel and non-obvious over the prior art; and further pursue claims directed to competitor’s products or process if possible.

 
Two ways are available to amend patented claims after granting a patent in Korea. Before a patent infringement action, a patentee may amend claims as precautionary measure through ex parte proceeding at the IPT of KIPO. Namely, the first way is an independent petition to request amendment as like re-issue request in the U.S. Actually, Korea use a different terminology of “correct” for granted patents rather than “amend” for pending application before grant. It is to differentiate from each other because two terms do not have the same meaning.



The second option to amend a patented claim is correlated with an invalidity proceeding. During invalidity proceeding, a patentee may request to amend granted claims as a defense. It is very common to file a motion to correct patents during invalidity proceeding. This is inter partes proceedings between a patentee and a challenger and consolidated in invalidity proceeding. Both parties may argue whether or not such amendment to be allowed.

 
A patentee may amend granted claims of a patent within the scope of original disclosure and within the scope of protection of the patent as granted. In reality, post grant corrections of claims are allowed within a very limited scope. The correction must be made to (1) narrow a claim, (2) correct typological errors, or (3) clarify ambiguous description. The correction must not broaden or alter the scope of the patent right.

[Patent Infringement Litigation in Korea - 2] Claim Interpretation under Korean Patent Law



1. All Elements Rule

The scope of a patent is defined by the elements of a claim. It is well settled that each element in a claim is deemed material to defining the scope of the patented invention. Therefore, only when every element defined in a claim is found in an accused product or process, the accused product or process literally infringes the patent right.

2. Doctrine of Equivalents

 
It has been long time for the Patent Court and the Supreme Court to adopt the doctrine of equivalents as a part of Korean patent law for interpreting claims.

 
The rationales of the doctrine of equivalents in Korea are similar to those of the U.S. Thus, it is true that if the accused product or process performs substantially the same function in substantially the same way to obtain the substantially same result of the patented invention, the accused infringes the patent in Korea.

 
In particular, the Supreme Court held that the accused product or process infringes a patent where an element of the patented invention is substituted with another element and, if (i) the technical concepts or principle to solve the objective of the patented invention and the accused invention are the same or common; (ii) the substituted element in the accused invention performs substantially the same function in substantially the same way to obtain the substantially same result of the patented invention; (iii) such substitution is obvious to an ordinarily skilled person in the art. However, the doctrine of equivalents shall not be applicable to the circumstances that (iv) the accused substitution was already known to skilled persons in the art at the time of filing an application and (v) the accused element was excluded from the claimed invention during prosecution.

 3. Prosecution History Estoppel


Based on the doctrine of equivalents, a patentee cannot regain his rights to any elements that were abandoned through an amendment or a response during prosecution. For example, when an element is excluded through an amendment in order to secure novelty and non-obviousness in response to the examiner’s rejection, an invention with an equivalent element is outside the scope of the patent.


The Supreme Court held that prosecution history estoppel should be applied in view of specification, opinions of an examiner from filing of the application to issuance of a patent and the intent of an applicant as indicated in the amendments and arguments during prosecution. Furthermore, in a patent containing more than one claim, the prosecution history of each claim should be independently reviewed to decide whether certain subject matter was intentionally excluded from the scope of the claim.

 

[Patent Infringement Litigation in Korea - 1] Cease and Desist Letter – Warning Letter


When a patentee finds his patent right being infringed by a third party, he may send an alleged infringer a cease and desist letter. It is to warn the infringer of legal responsibilities and demand the cessation of infringement activities. Furthermore, the accused infringer, at least from the day of receiving the warning letter, will not be able to deny his intent or negligence in the infringement activities.
 
This warning letter plays an important role in proving the claim of damage compensation as well as the criminal liability for infringement. For criminal action, it is required to prove the intent of an infringer regarding infringing acts of a patent without doubt. In particularly, infringer’s intent in the infringement shall not be presumed even if a patent marking is present on the patented product. With a warning letter, it is easy and convenient to prove the infringer’s intent beyond reasonable doubt. Therefore, a patentee has often sent warning letters to infringers to point out the ownership of the patent and their infringing activities.

The Doctrine of Equivalents (DOE) in Korea


The rationales of the doctrine of equivalents in Korea are basically similar to those of the U.S. Namely, when an accused product or process performs substantially the same function in substantially the same way to obtain the substantially same result of the patented invention, the accused product or process infringes the patent right. 

In particular, the Korean Supreme Court held that the accused product or process infringes a patent where an element of the patented invention is substituted with another element and, if (i) the technical concepts or principle to solve the objective of the patented invention and the accused invention are the same or common; (ii) the substituted element in the accused invention performs substantially the same function in substantially the same way to obtain the substantially same result of the patented invention; (iii) such substitution is obvious to an ordinarily skilled person in the art. However, the doctrine of equivalents shall not be applicable to the circumstances that (iv) the accused substitution was already known to skilled persons in the art at the time of filing an application and (v) the accused element was excluded from the claimed invention during prosecution. 

On July 24, 2014, the Supreme Court further clarified the scope and meaning of the above (1) requirement of DOE; the technical concepts or principle to solve the objective of the patented invention and the accused invention must be the same or common. 

The patent claimed a cutter for dry seaweed. The seaweed cutter has cutting blades laid out in a grid pattern. Seaweed is placed on top of the cutting blades and pressed from top to down and then sliding down into a container through a grid-patterned box attached to the bottom of the cutting blades. The patented invention can achieve a cutting and storing of seaweed in a single process.

The accused cutter is different from the patented cutter in which the accused cutter has moving blades that move from top to down and cut seaweed. Instead, the patented invention does not have moving blades. Except the position of blades, other technical features of the two devices are the same. Two cutters perform the same function in the substantially same way and achieve the same result. 

However, the Seoul High Court denied patent infringement under DOE because the accused cutter did not meet the (1) requirement of DOE. The accused cutter cut seaweed in a different way from the patent technology; there is no the same technical principle of resolving the technical problem. 

The Supreme Court vacated the lower court decision. The Court held that the "essence or core of the technical idea" must be determined between two cutters in order to apply DOE and then found that two cutters used the same technical idea because it should be the incline of the grid patterned box that allowed seaweed to be automatically stored after being cut and it is found in two cutters although two cutters employed different embodiments. The Court found that the change to position of the cutting blades was obvious. The Supreme Court decision clarified (1) requirements of DOE under the Korean patent law. In practice, patentees may have higher chance to apply DOE under the recent decision.

Practical Points Under Korean Patent law on Joint Ownership of Patent in Korea


Under the Korean patent law, when there are joint inventors of a single invention, each inventor is entitled to be a joint owner in the right to obtain a patent of the invention. Or anyone may obtain the joint ownership through buying a portion of a patent ownership.

The joint owners of an invention before a registered patent must file an application for a patent together. Otherwise, the application shall be rejected or the granted patent shall be invalid.

In the absence of an agreement to the contrary, each joint owner has an equal partial interest in the invention as a whole. When a company is an employer of an employee inventor and the employee is a co-inventor, the company shall be a joint owner of the invention through assignment.

The Korean patent law provides that joint owners of a patent may freely make, use and practice the patented invention without consent to the other joint owners. In this regard, each co-owner does not have the duty to account profits to the others.

However, each co-owner may not assign his right of the patent in part to a 3rd party without consent of the other co-owners. Namely a joint owner may sell his own interest in the paten only when the other joint owners consent such an assignment.

Furthermore, under Korean patent law, a joint owner may not license the patented technology to a third party based on his co-ownership of the patented invention unless he has obtained consent of the other joint owners about the license.

The Korean Patent Act has specific provisions for such restrictions of joint ownership. This principle of the Korean patent law is to protect each co-owner from an unreasonable change of co-ownership.

For example, in case a joint owner may freely assign or license the jointly owned patent, other co-owners may be at the mercy of the co-owner. For example, in case a co-owner assigned his co-ownership to a large company and the other co-owner is a very small company and then a new co-owner large company may use and practice the patented technology as a whole independently without any duty of account profits to the other co-owners, the new joint may have the whole value of the patent and the small company does not have any profit.
 
However, joint owners may determine and vary their rights by contract. The statutory default rule under the Korean patent law controls unless there is an agreement to the contrary.