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.