Associate Mr. Jehyeong Yu
Attorney at law, Patent Attorney, Pharmacist
Education
2014 SungKyunKwan
University Law School (J.D.)
2008 SungKyunKwan
University School of Pharmacy (B.S. in Pharmacy)
Qualifications
2014 Admitted to bar,
Korea
2008 Pharmacist, Korea
Experience
2017~present KASAN Law
Firm
2016~2017 Ministry of Food
and Drug Safety
2014~2015 Korea Institute
of Drug Safety and Risk Management
Specialty
Health, Administrative
& Public Law, Intellectual Property
Cases
- Labelling, Advertisement
and following administrative actions
-
Clinical Trials and following
administrative actions
-
GMP issues and following
administrative actions
-
Re-evaluation, Re-examination and
following administrative actions
-
Breakthrough Designation
Legislative Advisory
-
Hospital Exemption Legislative
Advisory
-
Relief of Harm from Side Effects
of Drugs Legislative Advisory
Under the New Design Protection Act, a Design applicant may claim 12-months Grace Period in Korean instead of the former 6 months from September 22, 2017.
l Grace
Period for Design Applications Will Be Extended to One Year
Under the current Design
Protection Act (DPA), a design shall not be deemed to lose novelty over an
identical or similar design as long as the application for the design is filed
within six (6) months from the date when the identical or similar design was
first published. From September 22, 2017,
under the new DPA, the current six
months grace period extends to one year.
Based on 12 months grace
period under the new law, an inventor, a designer or his assignee may obtain a design
protection certificate like patent through filing an application for any
already disclosed design within 12 months from the date of novelty destroying
event. The disclosure as novelty destroying event might be done by a designer,
his assignee or a 3rd party.
In order obtain such
benefit of grace period under the Korean law, a foreign applicant must meet
substantive and procedural requirements as follows:
The applicant must claim
the novelty grace period (i) at the time of filing the application
(documentation of the previous disclosure can be submitted within 30 days from
the application date), (ii) "up until KIPO issues a final decision whether
to grant a design registration" (so an applicant can now claim the grace
period at any time while the application is still pending), (iii) when filing a
response to an opposition filed by a third party, or (iv) when filing a
response to an invalidation action filed by a third party.
l Evidence
of Priority
Under the old DPA, in
order to claim priority, an application must include drawings substantially
identical to the drawings in the foreign priority application, and a copy of
the priority application certified by the foreign government must also be
submitted.
Under the new law, KIPO furthermore
will accept other documents to confirm the details of the foreign priority
application. The applicant may use the WIPO Digital Access Service to submit
priority documents (the Service allows priority documents to be securely
exchanged between IP offices directly).
l Procedural
Points
1. Priority claim under the Paris
Convention or PCT may not apply beyond 12 months from the first disclosure.
A foreign applicant must
file a Korean patent application at KIPO with 12 months from the first
disclosure event regardless of claiming priority under the Paris Convention or
PCT. Otherwise, a foreign applicant will lose a chance to obtain a design or patent
in Korea under 12 months grace period.
2. An applicant must disclose all and
each event of invention disclosures when files an application at KIPO
When a designer or an inventor
had disclosed his design or invention several times before he has filed a
patent application before KIPO, the applicant must disclose all of them and
request benefits of 12 months grace period for all and each events of
disclosures. Otherwise, the unreported event may be a basis to deny the novelty
of the filed design or invention.
For example, (1) an
inventor disclosed an abstract about his invention in a brochure of a
conference on October 1, 2013 and (2) gave a detailed presentation about his
invention before audience in the conference on October 10, 2013 and then (3)
published his article about the invention on November 1, 2013 and further (4)
the organizer of the conference uploaded the inventor's presentation at an
official website of the conference on November 10, 2013.
In order to be safe based
on benefits of grace period under the Korean law, a designer or an inventor
must disclose all of the above 4 events and claims benefits of 12 months grace
period for all of them when he files an application at KIPO within October 1,
2014. For example, if an applicant did not report No. 4 event of posting his
presentation at the conference website, it may be a basis for denying novelty of
the invention.
However, it may be possible
to argue that the designer or the inventor could not know the event and did not
have any intent to deceive KIPO. Accordingly an applicant may probably overcome
such a hurdle but it is better to check all possible events of disclosures and
report all and each of them to KIPO. On the other hand, in case an applicant
did not disclose No. 2 event or No. 3 event, he cannot save his application
from loss of novelty by his disclosures before the filing date.
Patent Infringement Litigation Procedure in Korea
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.
Expert Witnesses
The Guideline of the Patent
Court may be summarized as follows:
If a party files a request
for an expert witness, the party shall attach a declaration that can confirm
the expertise and objectivity of the witness.
The Court may issue a
preparatory order for examination of an expert witness (e.g. deadlines for
submission of a statement of the expert witness and a questionnaire for the
direct examination, limitation of the time for examination, and deadlines for
submission of arguments and evidence for impeaching the credibility of the
expert witness testimony).
The direct examination by
the party who requests for the witness shall be made within the scope of the
statement of the expert witness. All materials presented or cited in the direct
examination shall be submitted as evidence before the date designated for
examining the witness.
If an expert witness is a
foreigner, the parties may be respectively accompanied by an interpreter for
the direct and cross examinations. If a party cannot be accompanied by an
interpreter, the party shall notify the Court of the same 4 weeks before the
witness examination date and file a request for designation of an interpreter.
Technical Advisors called by the Court
If deemed necessary, the
Court may hear opinions of the parties and designate one or more technical
advisors.
A preparatory hearing may be held if it is deemed
necessary for the technical advisors to understand the case. In the preparatory
hearing, the technical advisors may directly question the parties with approval
of the presiding judge. If it is necessary for a party to supplement its answer
to a question from the technical advisors, the party shall submit its
supplemental answer in writing to the Court by a deadline designated by the
presiding judge.