Clients Represented by KASAN

Samsung Electronics

• Semiconductor Division
• Digital Appliance Division
• Mobile Display Division

                          

Other Companies within Samsung Group

• Samsung Advanced Institute of Technology
• Samsung Heavy Industries
• Techwin
• Samsung Electro-Mechanics
• SDI
• Cheil Industries
• Semes

Research Institutes and Universities

• Electronics and Telecommunications Research Institute (ETRI)
• Center of Nanostructured Materials Technology (CNMT)
• Korea Institute of Materials Science, Changwon
• Gwangju Institute of Science and Technology
• Yonsei University
• Chungang University
• Soongsil University
• Hanyang University
• Seoul National University
• Kyungpook National University
• Jeju National University
• Gangneung-Wonju National University

• POSCO
• Mando Machinery
• KT
• SL
• Wonik IPS
• Hana Micron
• Shinwha Intertek
• Partron
• Hirose Korea
• Oy AJAT
• Daewoong Pharmaceutical
• Hanlim Pharmaceutical
• Korea Prime Pharmaceutical
• Wooshin Medics
• Lie Sang Bong
• Egoist
• InnoMTek
• Ace Technology
• Sports TOTO

Litigation Agent Lacks the Standing to Sue for Infringement Lawsuit in Korea

Like SPH decision in USA, the same or similar rule is applicable in Korea too. Under Korean law, a licensee lacks the standing to bring an infringement lawsuit in case the licensee is just a litigation agent rather than a real licensee. Because the SPH decision of an American court is interesting to license practitioners, the points are summarized as follows:

1.      Facts

The patentee is a national research institute, Electronics and Telecommunications Research Institute (“ETRI”) and granted an exclusive patent license to SPH, a Korean-based entity. SPH then transferred to SPH America, LLC (“SPH America”) rights under the license to use the licensed patents, grant sublicenses to third parties, and to bring infringement actions.

SPH America sued Huawei in USA but the American court dismissed the case, finding that SPH America does not have standing to sue for infringement of the patents.

Under the agreements, the title to the patents remained with ETRI, and SPH America was required to receive the consent of ETRI before transferring any of its rights or obligations. The license agreement also required SPH America to use its best efforts to make licensing and litigation decisions that were in the best interest of ETRI, though SPH was responsible for all litigation costs. Large guaranteed minimum payments were required yearly if the proceeds from royalties and litigation proceeds did not meet the minimums. And all the license rights were to revert to ETRI if SPH America breached the contract.

2.      Court Decision in USA

The American court found that the license agreement create was a relationship where SPH America was an agent of ETRI for licensing and litigation in USA. The agreement did not transfer substantial ownership of the patents to SPH America.

Furth ETRI’s management of the negotiation without any direction or input from SPH America with Samsung also showed that SPH America did not actually have substantial rights in the patents.

The court found that despite the labels used in the agreement, SPH America was not an exclusive licensee, but merely ETRI’s agent to enter into licenses and litigate on its behalf. This “hunting license,” did not grant SPH America a proprietary interest or exclusive license in the patents.

3.      Comments on Practical Point

The same or similar rule explained in the SPH decision of an American court shall be applicable in Korea, too. Despite of a license agreement, in case the licensee is regarded as a litigation agent rather than a real licensee, the licensee lacks the standing to bring an infringement lawsuit in Korea.

 

 

Patent Court’s Oral Hearing in English in Korea

Posting in English Link: Patent Court’s Oral Hearing in English

The Patent Court of Korea held a test trial of an International Chamber case hearing adjudicated in English. According to the Patent Court, the demand for English-language trials has been repeatedly raised by international parties. More than 40 percent of the 611 cases in 2016 are international parties involved.

The test trial is “3M Innovative Properties Company v. KIPO.” According to the Patent Court, it was not too different from an ordinary hearing, oral arguments for the case were given in English by attorneys representing the plaintiffs and KIPO.

 

Enforcement of a Foreign Court’ Judgment in Korea

In principle, it is possible to enforce a foreign court’s judgment against a Korean individual or a Korean company within Korea. In order to enforce a foreign court’s judgment in Korea, a party must obtain a new judgment for recognition of a foreign judgment and enforcement judgment from a Korean court.

Under Article 217, Korean Civil Procedure Act, it is required to meet the following conditions for obtaining the recognition of a foreign judgment and its enforcement judgment:

1.       The foreign court’s judgment is final and conclusive.

2.      The foreign court has jurisdiction under the principles of international jurisdiction under Korean law or treaties.

3.      The defendant was properly served with the complaint or summons in advance, to allow sufficient time for preparation of his or her defense, or the defendant responded to the suit without having been served.

4.      The foreign judgment is not contrary to Korean public policy.

5.      The countries shall allow a guarantee of reciprocity.

 

 

Basics of the Statute of Limitation in Korea

In General, for civil claims such as breach of contract, the statute of limitation is ten years. The statute of limitation starts from the event date. However, claims based on ownership are not subject to any statute of limitation.

Tort claims must either be brought, whichever is earlier, within ten (10) years from the date the tort was committed, and within three (3) years from the date the claimant became aware of the damage and the identity of the tortfeasor.

Claims based on special statutes are subject to the specific time bars specified in the statutes. These statutes of limitations are often set for shorter periods.