South Korea: Patent Litigation Comparative Guide

1 Legal framework

1.1 Which laws and regulations govern patent litigation in your jurisdiction?

Patent litigation in South Korea is mainly governed by the Patent Act and the Civil Procedure Act. The Patent Act applies to the matters stipulated in the Patent Act, ranging from the patentability requirements to evidence collection, damages and injunctions. Many provisions of the Patent Act borrow from the Civil Procedure Act and explicitly state that certain provisions of the Civil Procedure Act are applicable mutatis mutandis.

In infringement suits, the Civil Act is also relevant in filling in the gaps – for example, by providing the legal grounds for restitution of unjust enrichment (Article 741 of the Civil Act). In (patent) revocation suits:

• matters not prescribed in the Patent Act are governed by the Administrative Litigation Act; and
• matters not prescribed in the Administrative Litigation Act are governed by the Civil Procedure Act.

Additionally, the Intellectual Property High Court (IPHC) has adopted the Practice Directions for Revocation Trials and the Practice Directions for Civil Appellate Trials, which provide court rules on legal briefs, oral hearing, witness examination and other procedural matters related to IPHC proceedings.

1.2 Which bilateral and multilateral agreements with relevance to patent litigation have effect in your jurisdiction?

South Korea is a signatory to a number of international treaties relevant to patent rights, such as:

• the Patent Cooperation Treaty 1970;
• the Paris Convention for the Protection of Industrial Property 1883;
• the Budapest Treaty on the International Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure 1977;
• the Strasbourg Agreement Concerning the International Patent Classification 1971; and
• the Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.

South Korea is also a signatory to the Hague Convention on the Service Abroad of Judicial and Extrajudicial Documents in Civil or Commercial Matters, but not to the Hague Convention on the Recognition and Enforcement of Foreign Judgments in Civil or Commercial Matters.

Overall, duly ratified and promulgated international treaties generally have the same legal effect as domestic statutes in South Korea; while a domestic statute will prevail over an international treaty in case of a conflict.

1.3 Which courts and/or agencies are responsible for interpreting and enforcing the patent laws? What is the framework for doing so?

South Korea has adopted a concentrated jurisdiction system for lawsuits concerning patents, utility models, designs, trademarks and plant variety rights, to enable consistent, in-depth review and interpretation of the patent laws.

Under Articles 24(2) and (3) of the Civil Procedure Act, lawsuits concerning patents and other listed IP rights fall under the exclusive jurisdiction of six district courts, which all have specialised IP divisions:

• the Seoul Central District Court;
• the Daejeon District Court;
• the Daegu District Court;
• the Busan District Court;
• the Gwangju District Court; and
• the Suwon District Court.

Most patent infringement actions are filed with the Seoul Central District Court, as it has concurrent jurisdiction with the other five district courts. The IPHC has exclusive jurisdiction over appeals from these cases and the Supreme Court is the court of last resort, to hear further appeals from the IPHC.

The concentrated jurisdiction system does not apply to:

• preliminary injunctions; or
• criminal cases concerning patents and other listed IP rights.

Appeals in these cases are heard by the high court with jurisdiction over the location of the competent district court.

2 Forum

2.1 In what forum(s) is patent litigation heard in your jurisdiction? Are patent infringement and validity decided in the same forum or separate forums?

South Korea has a bifurcated system for handling patent disputes:

• Patent infringement cases on the merits are first heard by the district courts of competent jurisdiction; and appeals therefrom are heard by the Intellectual Property High Court (IPHC); and
• Patent invalidation cases initially start as administrative proceedings before the Intellectual Property Trial and Appeal Board (IPTAB) within the Korean Intellectual Property Office (KIPO); and lawsuits seeking revocation of IPTAB decisions are filed with the IPHC.

Although the infringement district court cannot formally invalidate a patent, it can review issues relating to the validity of a patent and can deny the enforceability of an asserted patent if it finds it clear that the patent would be invalidated in an invalidation action. Thus, the defendant may raise patent invalidity issues as a defence of abuse of rights against the plaintiff-patent holder in an infringement action. The Supreme Court has held that:

2.2 Who hears and decides patent disputes (eg, a judge, a panel and/or a jury)?

All civil patent infringement cases are heard and decided by a panel of three judges.

There is no jury trial system in South Korea. While public participation is available in some criminal panel cases, the verdict and sentencing opinions provided by the public participants are not binding on the court.

2.3 Are there any opportunities for forum shopping in your jurisdiction? If so, where and how do those opportunities exist?

The Korean venue and jurisdiction rules for patent infringement actions are restrictive in that all patent infringement actions must be brought in one of the six district courts (Seoul Central, Daejeon, Gwangju, Busan, Daegu and Suwon) and appealed to the IPHC and finally to the Supreme Court. Among the six district courts, the Seoul Central District Court has concurrent jurisdiction, and thus a plaintiff may choose between one of the remaining five district courts and the Seoul Central District Court (Article 24(3) of the Civil Procedure Act), which may be the only opportunity for forum shopping available in Korea.

3 Parties

3.1 Who has standing to file suit for patent infringement? What requirements and restrictions apply in this regard?

A patent holder or an exclusive licensee may seek injunctions and/or damages against an infringer that wilfully/intentionally or negligently infringes its patent right or exclusive licence (Article 128(1) of the Patent Act). If the exclusive licence is not registered with the Korean Intellectual Property Office (KIPO), the exclusive licensee does not have standing to seek injunctions but may seek damages for patent infringement.

3.2 Can a patent infringement suit be brought against a defendant who is a foreign entity with only a residence or place of business outside the jurisdiction?

Even if a defendant has no residence or place of business within the territory of Korea, a patent infringement suit can be filed with a Korean court against the defendant if:

• the defendant committed the infringing act in Korea;
• the results from the infringing act arose in Korea; or
• the infringing act was committed against Korea (Article 39(1) of the Act on Private International Law).

The scope of a dispute that may be litigated in Korea under Article 39(1) is limited to the results from the infringing act that arose in Korea, unless acts that occurred in Korea are the main infringing act, in which case the scope of the dispute will encompass results that arose overseas (Article 39(3) of the Act on Private International Law).

3.3 Can a single infringement action be brought against multiple defendants? What requirements and restrictions apply in this regard?

Multiple defendants may be jointly sued in a single infringement action where the defendants share the same interest in the lawsuit. A lawsuit must be brought against co-defendants where the underlying rights, obligations or cause of action is common among them.

A third party which has a legitimate interest in a lawsuit may intervene as an intervening party during the process of a lawsuit, unless such intervention would cause significant delay to the proceeding. Merely having an interest in the court's determination on the legal issue is insufficient. Rather, intervention is allowed where the outcome of the lawsuit would directly or indirectly affect the person's legal status. For example, a licensee or a person with contractual or potential indemnity obligations towards the named party may be allowed to intervene in a lawsuit concerning the patent.

3.4 Can a third party seek a declaration of non-infringement or invalidity in your jurisdiction? If so, how?

A party may seek the court's confirmation that the products it produces or otherwise practises do not fall within the scope of another's patent, if it can substantiate the legal interest of such a confirmation action (eg, receiving a cease and desist letter from the patent holder).

A patent holder or any third party against which the patent is asserted may file a scope confirmation action before the Intellectual Property Trial and Appeal Board (IPTAB) to obtain a formal opinion from the IPTAB as to whether a certain article or process falls within (or outside) the scope of a patent. However, the scope confirmation action does not provide any remedy and the infringement court is not bound by the decision in the action. The decision can be considered as an advisory opinion only.

4 Patent infringement

4.1 What constitutes patent infringement in your jurisdiction?

Article 2 of the Patent Act provides that a patent holder has the exclusive right to 'work' the claimed invention, which is defined as:

• for a product invention, manufacturing, using, transferring, leasing, importing or offering to transfer or lease the product;
• for a process invention, using or offering to use the process; and
• for a product by process invention, manufacturing, using, transferring, leasing, importing or offering to transfer or lease the product invention manufactured by the process, other than the acts prescribed above.

Thus, infringing the rights of the patent holder enumerated in Article 2 constitutes patent infringement.

For the defendant's product or process to fall within the scope of protection of the patented invention, every element stated in the claims, and their organic combination, must be included in the defendant's product or process ('all elements rule'). If any of the claimed elements is missing, the defendant's product or process does not fall under the protected scope of the patented invention, in the absence of infringement by equivalents (see question 4.3).

The Patent Act also includes provisions on indirect infringement. A party may indirectly infringe a patent if it engages in manufacturing, assigning, leasing, importing or offering to assign or lease a product that is 'exclusively used' to manufacture a patented product or to practise a patented process.

4.2 How is infringement determined?

Patents are infringed if the claim literally reads on the accused product or process. Literal infringement requires that all constituents of a claimed invention be present in an accused product or process ('all elements rule'). The scope of protection is determined based on the language of the claims with reference to the descriptions and drawings in the specification. Prosecution history can be also considered for claim construction.

4.3 Does your jurisdiction apply the doctrine of equivalents?

Yes, infringement by equivalents is established when some of the elements of the defendant's product or process are not literally identical but are equivalent to the corresponding elements of the patented invention (Supreme Court Decision, 97Hu2200, 28 July 2000).

To determine whether the defendant infringed a patent under the doctrine of equivalents, the court will look at the positive and negative requirements. The positive requirements are as follows:

• The accused product or process uses the same principle to solve the same problem as the patented invention;
• The equivalent element in the accused product or process achieves substantially the same effect as the claimed element; and
• The equivalent element would have been easily conceivable to one of ordinary skill in the relevant art.

Meanwhile, the negative requirements are as follows:

• The accused product was not prior art technology and could not have been easily conceived from prior art as of the filing date of the application for the patented invention; and
• The equivalent element was not intentionally excluded from the patent claims during prosecution of the patented invention.

The patent holder has the burden of proof as regards the positive requirements; whereas the infringer bears the burden of proof as regards the negative requirements.

4.4 Is wilful infringement recognised? If so, what is the applicable standard?

Effective 9 July 2019, the Patent Act provides that a defendant which commits wilful infringement may be liable for treble damages (Article 128(8)). In determining wilfulness, the court should consider the following:

• whether the infringer is in a superior position;
• the infringer's intent/wilfulness or the degree to which the infringer was aware of the likelihood that the infringing act would cause harm;
• the scale of the harm suffered by the patent holder or exclusive licensee due to the infringement;
• the economic benefits to the infringer resulting from the infringement;
• the frequency and duration of the infringing act;
• the criminal penalty for the infringing act;
• the financial status of the infringer; and
• the level of effort that the infringer exerted to provide relief.

5 Bringing a claim

5.1 What measures can a patent holder take to enforce its rights in your jurisdiction? Are interim measures available before receiving a ruling on the merits?

The main form of patent enforcement in Korea is a civil action in a district court. There are two types of civil actions:

• a main action, in which a permanent injunction and damages may be sought; and
• a preliminary injunction action, in which only injunctive relief can be sought.

Interim measures are not available in a main action for infringement. A court decision in a main action can be enforced only when it has become final and conclusive. However, a plaintiff may request provisional enforcement of a court decision; and if accepted by the court, the court decision can be enforced even pending appeal. On the other hand, in a preliminary injunction action, when the court may issue a preliminary injunction order, it can be enforced immediately on issuance of the order and there are no measures to stay the enforcement pending an appeal.

Additionally, a patent holder can bring an action to enforce its patent rights in different tribunals/forums other than the district court, including:

• a Korea Trade Commission action (similar to a US International Trade Commission action;
• a Korea Customs Service action before the Korean Customs Office; and
• a patent scope confirmation action before the Korean Intellectual Property Office (KIPO) (administrative proceedings before the Intellectual Property Trial and Appeal Board (IPTAB), an administrative tribunal within KIPO) to obtain a formal opinion from KIPO that a certain product or process falls within the scope of the patent (again, this KIPO decision only serves as an advisory opinion and is not enforceable; although a favourable decision will be taken into account if the same patent is litigated in court).

5.2 What is the limitation period for patent infringement in your jurisdiction?

For damages, the statute of limitations for damages claim under the Civil Act is the earlier of:

• three years from the date on which a patent holder becomes aware of the damages caused by the infringement and identifies the infringing party; or
• 10 years from the date of infringement.

If the infringement continues to date, even if the three-year statute of limitations has lapsed, damages incurred for the latest three years preceding the date of filing for damages can be sought.

Separately, an action for monetary claims based on an infringer's unjust enrichment can be filed within 10 years. Thus, even if a period of three years from the date of knowledge has lapsed, unjust enrichment from the infringement can be sought within 10 years of the date on which the unjust enrichment was made. Typically, an ordinary royalty is sought under an unjust enrichment claim.

Injunctive relief can be sought at any time, as long as the infringing act is ongoing.

5.3 Must the alleged infringer be notified in advance before a claim is brought?

No, there is no such requirement that the alleged infringer be notified in advance before a claim is brought.

5.4 What are the procedural and substantive requirements for bringing a claim for patent infringement? How much detail must be presented in the complaint?

Patent infringement proceedings begin with a plaintiff filing a complaint with a district court with jurisdiction over the claim/defendant. There are no special requirements as to the form and substance of a complaint to initiate the proceedings. Generally, in a complaint, a plaintiff should:

• identify the accused product(s);
• specify the basis for the infringement;
• provide plausible evidence to show infringement; and
• identify the requested relief.

The plaintiff need not submit complete evidence of infringement when filing a complaint and may supplement the complaint with additional arguments/evidence until the close of the proceedings.

5.5 Are interim remedies available in patent litigation in your jurisdiction? If so, how are they obtained and what form do they take?

A permanent injunction order in principle is not enforceable until the decision that issued the order becomes final and conclusive. However, if a patent holder requests provisional enforcement of a court decision, the court at its discretion may grant a provisional enforcement order of the injunction, which allows the plaintiff to enforce the injunction order.

In a preliminary injunction action, a preliminary injunction order can be enforced immediately on issuance of the order and there are no measures to stay its enforcement pending an appeal. To obtain a preliminary injunction, the petitioner must establish:

• the likelihood of success on the merits; and
• the necessity for immediate relief (eg, imminent irreparable harm).

When determining the need for provisional relief, the court will balance the irreparable harm that would be caused to the plaintiff if infringement were to continue against the economic harm that would be caused to the defendant if the injunction were granted.

5.6 Under what circumstances must security for costs and/or damages incurred by the other party be provided?

In a main action on the merits, where the court grants a provisional enforcement order of the injunction, the defendant may file a petition to stay the provisional enforcement until the appeal decision is made. Upon the defendant's petition for a stay, the court may suspend enforcement and request the defendant to provide a security deposit. The deposit amount is determined by the court, which takes into consideration the damages that the plaintiff will suffer from delay of the immediate enforcement.

In a preliminary injunction action, the court generally requires the plaintiff to post a security bond before proceeding to enforce the injunction order for the purpose of compensating the enjoined party for possible damages resulting from enforcement of the preliminary injunction order if the order is later reversed or revoked on appeal. If a security deposit has been posted by the plaintiff upon the issue of a preliminary injunction order, it can be returned to the plaintiff either with the defendant's consent or after a final judgment in a permanent injunction action has been rendered in favour of the plaintiff.

Additionally, if a plaintiff does not have a presence in Korea, the defendant may request an order from the court requiring the plaintiff to deposit a security bond for costs related to the litigation. Such a request may be made before the response is filed and is typically granted. Once the request has been granted, the defendant may delay filing its response until the security bond has been deposited. If the plaintiff does not deposit a security bond by the deadline, the court may dismiss the plaintiff's suit. If the foreign plaintiff ultimately loses the litigation, the security deposit will cover payment of the defendant's statutorily compensable attorneys' fees and official stamp fees.

6 Disclosure and privilege

6.1 What rules on disclosure apply in your jurisdiction? Do any exceptions apply?

Upon receipt of a request from either party to legal proceedings on infringement of a patent or exclusive licence, the court may order the other party to submit materials necessary to prove the relevant infringement or calculate the amount of losses caused by the relevant infringement. However, the foregoing shall not apply where the person possessing the materials has a reasonable ground to refuse to submit them (Article 132(1) of the Patent Act).

If a party refuses to produce a document on the grounds that it contains confidential information such as trade secrets, the court may order the party to present the document to the court for an in camera review, in which none of the parties can participate. The requested party may ask the court to limit the scope of disclosure or the persons that can access the materials. Otherwise, if a requested material is withheld without justification, the law permits the court to presume that the other party's claim based on the facts sought to be proved through the material is true.

6.2 What rules on third-party disclosure apply in your jurisdiction? Do any exceptions apply?

A third party may be ordered to produce documents when:

• a document that it holds is referred to in a lawsuit;
• the applicant seeking production of the document holds a judicial right to ask the holder of the document to transfer or show the document to it; or
• the document has been prepared for the benefit of the applicant or in relation to a legal relationship between the applicant and the holder of document, barring certain exceptions under Article 344 of the Civil Procedure Act (eg, where the document contains official secrets of the former or current president, the prime minister or a National Assembly member).

The court will issue a ruling ordering the third party to produce the document upon the applicant's showing of reasonable cause. The court will examine the third party before making the ruling. If necessary, the court may order the third party to submit the document for in-camera review to determine whether it should be produced.

6.3 What rules on privilege apply in your jurisdiction? Do any exceptions apply?

Upon application by a party, the court may impose a confidentiality protective order to protect the trade secrets of a party.

7 Evidence

7.1 What procedure(s) exist for collecting and presenting evidence in patent infringement litigation?

Korea has a limited discovery system for civil litigation. The basic forms of discovery include:

• document production;
• inspection of facilities;
• witness testimony;
• confirmation of facts; and
• expert testimony/affidavits.

Out-of-court discovery such as interrogatories or depositions by the parties is not available. All forms of discovery are conducted by and under the direct supervision of the court. The courts are generally reluctant to grant broad, open-ended discovery requests. For example, a party may petition for a court order that the other party or a third party produce certain documents and cannot directly request the other party to produce documents or witnesses.

Expert testimony is typically given:

• through affidavits; and
• less commonly, through live testimony at a court hearing.

If expert testimony is given at a hearing, the opposing party can cross-examine the expert.

7.2 What types of evidence are permissible in your jurisdiction? Is expert evidence accepted?

There are no strict rules on the admissibility of evidence in a civil action in Korea. There are no restrictions on the form of the evidence that can be relied upon by the court. Documents and affidavits are the most commonly used forms of evidence in patent litigation.

For infringement cases, the courts often employ an independent court-appointed expert to conduct tests and experiments. Also, the parties may retain experts who submit their own opinions based on their knowledge, findings and experience. Generally, the courts tend to give more weight to court-appointed experts than to party-appointed experts, who are usually seen to be somewhat biased.

7.3 What are the applicable standards of proof?

Both infringement and validity of a patent must be established before a court by a preponderance of the evidence. In theory, the standard for the burden of proof in a preliminary injunction action is a prima facie case; while the standard for a permanent injunction is by preponderance of the evidence. However, in practice, the plaintiff should prove infringement to almost the same extent in both types of actions.

Although a patent remains valid until it is finally and conclusively invalidated, there is no presumption of validity for a granted patent in South Korea. Thus, the burden of proof in an invalidation action before the Intellectual Property Trial and Appeal Board is also essentially a preponderance of the evidence.

7.4 On whom does the burden of proof rest?

In principle, the patent holder bears the burden of showing the existence and the likelihood of infringement by the alleged infringer. However, in the case of a process patent, if an accused product is identical to a product manufactured using the patented process, it is statutorily presumed to have been manufactured by the patented process unless:

• the product was publicly known in Korea prior to the filing date of the patent application; or
• the product was disclosed in any publications distributed in Korea or outside Korea, or was made available to the public through electronic telecommunication lines, before the filing date of the patent application.

8 Claim construction

8.1 Is there a procedure for construing claims during a patent infringement action? If so, when and how is it performed?

There are no separate statutory procedures for construing claims in a patent infringement action. However, the Intellectual Property High Court (IPHC) has issued guidelines indicating that the court may have a separate claim construction hearing. Through the hearing, the IPHC may provide a preliminary opinion on the claim construction, but this preliminary opinion may be subject to change as the case progresses.

8.2 What is the legal standard used to define disputed claim terms?

Under Article 97 of the Patent Act, the scope of protection of a patent is determined based on the subject matter recited in the claim. The claim term must be construed in an objective/reasonable manner based on the plain language of the claims. If it is difficult to define the technical configuration of the term from the claim language alone, the disclosures of the specification, including the detailed description and drawings, should be considered (Supreme Court Decisions, 2012Hu917 (24 July 2014) and 2004Hu2260 (16 October 2006)). If an interpretation based on the claim language is clearly unreasonable in light of the descriptions of the specification (eg, lacking support from the specification), a reasonable interpretation should be made by referring to:

• the knowledge in the relevant technical field;
• the descriptions in the specification;
• the intent of the applicant; and
• legal stability towards third parties.

See Supreme Court Decision, 2009Hu92, 23 April 2009.

8.3 What evidence does the court consider in defining the claim terms?

The court may consider:

• the overall disclosures of the specification and lexical meaning; and
• the general knowledge known in the relevant technical field as of the filing date, because the terms recited in the claims can be interpreted in accordance with their ordinary meaning generally accepted in the relevant technical field, unless specifically defined otherwise in the specification.

8.4 Can the claims of a patent be amended in the course of the proceedings?

A patent holder may file a separate correction action before the Intellectual Property Trial and Appeal Board (IPTAB) to amend the specification, claims and/or drawings. If an invalidation action against a patent is pending before the IPTAB, the patent holder cannot initiate a separate correction action; but the patent holder may request a patent correction within the existing invalidation proceedings.

A correction – either by filing a separate IPTAB correction action or through a correction request within an IPTAB invalidation proceeding – can only be made to:

• narrow a claim;
• correct a clerical error; or
• clarify an ambiguous description.

The correction should not substantively expand or modify the scope of the patent right. Further, if a correction is intended to narrow the claims or correct clerical errors, the corrected claims must have been patentable as of the filing date of the relevant patent application (this does not apply when correcting claims against which an invalidation action has been filed).

9 Defences and counterclaims

9.1 What defences are typically available in patent litigation?

As a matter of common practice in Korea, when a patent infringement action is filed before a court by the patent holder, the defendant typically seeks to invalidate the asserted patent(s) by filing an invalidation action before the Intellectual Property Trial and Appeal Board (IPTAB). The formal authority to declare a patent invalid rests solely with the Korean Intellectual Property Office (KIPO) (and not with the district court). The defendant may raise invalidity arguments in the infringement court proceedings. However, although the infringement court also can review the validity issues if raised by a party, the court cannot officially invalidate a patent. If the court finds it clear that the asserted patent would be held invalid in a separate invalidation action, it will dismiss the infringement claim.

Other defences against infringement claims include:

• compulsory licence;
• prior use rights;
• prosecution history estoppel; and
• patent exhaustion.

9.2 Can the defendant counterclaim for revocation or invalidation of the patent? If so, on what grounds and what is the process for doing so?

A granted patent can be nullified through:

• an invalidation action filed before the IPTAB; or
• a patent cancellation action before the KIPO.

An invalidation action is an inter partes proceeding and can be filed any time after the patent is registered. Common grounds for invalidating a patent include:

• non-statutory subject matter (eg, laws of nature, discoveries of natural phenomena, ideas that are contrary to the laws of nature);
• lack of novelty or inventiveness;
• violations of the description requirements;
• double patenting; and
• amendments introducing new matter.

Unlike the invalidation action, a cancellation action:

• is an ex parte proceeding (ie, after the petitioner submits its petition for cancellation against a patent, the proceeding will be basically between the patent holder and the IPTAB); and
• can be filed only from the patent registration date until six months after publication of the registered patent.

The grounds for cancellation are limited to prior art invalidity grounds only (eg, lack of novelty or inventiveness, double patenting) based on written publications.

9.3 Are there any grounds on which an otherwise valid patent may be deemed unenforceable against a defendant?

When the court finds that the asserted patent is valid and infringed, it always grants a permanent injunction order. However, in a preliminary injunction action, the court considers:

• on the one hand, the irreparable harm that would be caused to the defendant if a preliminary injunction were not granted; and
• on the other hand, the economic harm that would be caused to the defendant if a preliminary injunction were granted.

It may not grant an injunction if it finds that the latter harm would be much greater than the former harm.

10 Settlement

10.1 Are mediation and/or other forms of settlement discussions required by the court in your jurisdiction or merely optional to the parties?

There is a formal mechanism for settling cases before the district and intermediary appellate courts, as a form of mediation. The court may issue a ruling of settlement/mediation recommendation ex officio when deemed appropriate. The ruling is not binding and either party may object to the order. If there is no objection from the parties within a designated timeframe (typically two weeks from the date of service of such ruling), the decision will have the same effect as a final and conclusive judgment. On the other hand, if any party files an objection to the ruling, the court will resume the normal hearing procedures and proceed to issue a decision on the merits.

10.2 Can the proceedings be stayed or discontinued in view of settlement discussions?

During the settlement discussions, the court may or may not stay the litigation upon the request of both parties.

10.3 Is it necessary to report the results of settlement discussions to the court? If so, how; and what are the implications?

There is no requirement for the parties to report the results of settlement discussions; but practically, the court will eventually become aware of the result when the plaintiff either:

• withdraws the case upon successful settlement; or
• proceeds with a lawsuit upon failure to reach a settlement.

11 Court proceedings for infringement and validity

11.1 Are court proceedings in your jurisdiction public or private? If public, are any options available to the parties to keep the proceedings or related information confidential?

All civil case hearings are open to the public, except where the court determines that a public hearing would be detrimental to national security or privacy. Most Supreme Court decisions and some lower-court decisions are available to the public on the courts' websites, with the party names and other sensitive information redacted.

Court documents such as pleadings and witness statements are generally not available to the public. However, a third party which has shown that it has an interest in the case may access or make a copy of the court records with the court's permission to do so, unless the court records contain trade secrets or otherwise are classified so as to restrict access thereto.

11.2 Procedurally, what are the main steps in patent infringement proceedings in your jurisdiction? Is patent validity handled in the same proceedings as infringement or is it handled separately? If separate validity proceedings are available, what are the main steps in those proceedings?

Court proceedings begin with a complaint and an answer, which is typically followed by an initial exchange of written submissions. The court hearing procedure then begins. The court holds a series of hearings to review the infringement issue and also validity issues. After a series of initial hearings, the court may ask the parties to give technical presentations and provide witness testimony. Throughout the proceedings, the parties can submit briefs on topics of their choice. When the court has determined that all issues have been raised and dealt with in the hearings and briefs, it will close the proceedings and set a date for its decision.

If a patent infringement action is pending while a related administrative action (eg, invalidation action or scope confirmation action) is pending at the Intellectual Property Trial and Appeal Board (IPTAB), the infringement court may, upon the request of a party, stay the infringement action until the related administrative action has concluded. That is, when there is a pending invalidation action, the district court has discretion as to whether to stay the district court proceeding.

Likewise, the IPTAB may also stay the related administrative action until the court action is resolved.

11.3 What is the typical timeframe for patent infringement proceedings? If separate patent validity proceedings are available, with is the typical timeframe for those proceedings?

On average, infringement actions on the merits take between:

• 12 and 24 months at the district court;
• eight and 12 months at the Intellectual Property High Court (IPHC); and
• either four and five months for summary dismissal or one to two years for cases substantively considered in the Supreme Court.

Invalidation actions take between:

• eight and 12 months at the IPTAB;
• eight and 12 months at the IPHC; and
• either four and five months for summary dismissal or one to two years for cases substantively considered in the Supreme Court.

The time spent on each lawsuit varies depending on:

• the complexity of the specific case; and
• the judicial panel adjudicating the matter.

11.4 To what extent do the decisions of national or foreign courts or bodies influence the court's decision?

Although court decisions are not strictly binding outside of the specific dispute being decided, Supreme Court decisions are respected and followed by lower courts. Foreign court decisions are often referred to by the Korean courts, particularly when there is no specific case law on the issue in South Korea.

12 Remedies

12.1 What remedies for infringement are available to a patent holder in your jurisdiction?

A patent holder is mainly entitled to two forms of relief for patent infringement: injunctions and damages. They may be sought together or separately.

There are four grounds used to assess damages under the Patent Act:

• the loss suffered by the patent holder;
• the profits earned by the infringer (presumed to be the amount of damages suffered by the plaintiff);
• reasonable royalty (at minimum); and
• damages determined at the court's discretion, which may be awarded if the nature of the case makes it difficult to produce evidence proving the actual damages incurred.

12.2 Are punitive or enhanced damages available in your jurisdiction? If so, how are they determined?

Under the amended Patent Act (effective as of 9 July 2019), damages of up to three times the actual damages are available as a punitive measure for intentional or wilful patent infringement (Articles 128(6) and (7) of the Patent Act). See question 4.4 for more details.

12.3 What factors will the courts consider when deciding on the quantum of damages?

This will depend on the method used to assess the quantum of damages:

• lost profits;
• infringer's profits; or
• reasonable royalties.

If damages are assessed based on the plaintiff's lost profits, the amount of damages can be presumed to be the number of infringing goods multiplied by the estimated amount of profit that the patent holder could have obtained by selling the products if there had been no infringing activity (Article 128(1) of the Patent Act). If the 'sales amount of an infringer' exceeds the patent holder's own production capacity, the patent holder is entitled to receive reasonably expected royalties for such excess sales (Article 128(2)) under the amended Patent Act, effective since 10 December 2020.

If the plaintiff's actual damages are difficult to prove, the net profits earned by the infringer can be used as the measure of damages. The presumption that the infringer's profits are a reasonable measure of damages, however, is rebuttable (Article 128(3) of the Patent Act).

For reasonable royalties, the courts consider various factors, such as:

• the technical value of the patented invention;
• any licence agreements in relation to the patented invention with third parties;
• past licence agreements for other inventions between the plaintiff and the defendant;
• the royalties for comparable inventions in the relevant field;
• the remaining patent term;
• use of the patented invention by the patent holder;
• the existence of substitute technology; and
• the infringer's profits from the infringing acts (Supreme Court Decision, 2003Da15006, 27 April 2006).

13 Appeals

13.1 Can the decision of a first instance court or body be appealed? If so, on what grounds and what is the process for doing so? Please also describe the availability and process for additional levels of appeal.

Unless dismissed on procedural grounds, appellate proceedings are conducted on a substantially de novo basis. If a party requests to introduce new evidence in the appellate proceeding, it must provide a detailed explanation of its failure to submit the evidence in the lower court.

A party in a civil infringement action involving patent or other listed IP rights may appeal the decision of the district court to the Intellectual Property High Court (IPHC). Other IP infringement cases (eg, preliminary injunctions and criminal cases) generally must be appealed to one of the high courts (or to an appellate panel of the district court in some cases).

A decision of the appellate court may be appealed to the Supreme Court (the highest court in Korea). Decisions rendered by the IPHC or the high court are appealed to the Supreme Court, which has discretion as to whether to accept the appeal. The Supreme Court generally only hears cases dealing with legal issues of material importance, such as legal issues of first impression.

13.2 What is the average time for each level of appeal in your jurisdiction?

The time spent on each lawsuit varies depending on:

• the complexity of the specific case; and
• the judicial panel adjudicating the matter.

Overall, both administrative and judicial proceedings involving patent issues tend to move relatively fast (with the current, typical durations of eight to 15 months for Korean Intellectual Property Office (KIPO) decisions and 10 to 18 months for district court decisions in main actions).

Appeals of preliminary injunction cases in a high court generally take three to eight months; while appeals on the merits in the IPHC take eight to 15 months.

At the Supreme Court level, the appeal will often be summarily dismissed without a review of the merits of the case if the matter does not involve legal issues of material importance. Such decisions typically come out within four months of the date of transfer of litigation records to the Supreme Court. If the appeal is not dismissed, substantive Supreme Court review proceedings may take one to two years.

14 Costs, fees and funding

14.1 What costs and fees are incurred when litigating in your jurisdiction? Can the winning party recover its costs?

The cost of a district court patent infringement case can vary significantly, depending on various factors, including:

• the number of asserted patents;
• the technical complexity of the patented inventions;
• whether damages are sought;
• the aggressiveness of the parties (typically manifested by extensive, multiple rounds of brief exchanges); and
• the degree of expert testimony required to review the relevant infringement issues.

Typically, the cost will range from $200,000 to $500,000 to obtain a first-instance decision. The cost of an appeal to either the high court or the Intellectual Property High Court will typically be slightly lower than the related first-instance case, because cases on appeal are essentially reviewed de novo, meaning that:

• new evidence and arguments can be introduced at the appeal stage; and
• no deference is required to the factual findings of the first-instance court.

The prevailing defendant in an infringement action is entitled to recover certain, limited costs relating to the litigation, including:

• certain administrative costs incurred during the court proceedings (eg, filing fees, court-appointed expert costs); and
• a portion of the successful party's attorney fees.

However, the amount of recoverable attorneys' fees is statutorily limited to a fraction of the actual attorney fees that are generally incurred.

14.2 Are contingency fee and/or other alternative fee arrangements permitted in your jurisdiction?

There is no statutory requirement for the fee arrangement for civil cases. Contingency fee and any other alternative fee arrangements are permissible subject to the principle of contractual freedom between the parties.

14.3 Is third-party litigation funding permitted in your jurisdiction?

Third-party litigation funding is permitted in Korea.

15 Trends and predictions

15.1 How would you describe the current patent litigation landscape and prevailing trends in your jurisdiction? Are any new developments anticipated in the next 12 months, including any proposed legislative reforms?

If both an infringement action before the court and an invalidation action before the Intellectual Property Trial and Appeal Board (IPTAB) are proceeding on parallel tracks, a request can be made by either party to stay the infringement action pending the outcome of the invalidation action. However, whether to stay the proceedings is at the court's discretion. In recent cases, the court generally tends to wait for the outcome of the invalidation action before issuing its decision, which sometimes leads to the usual timeline of the court decision being pushed back significantly.

Criminal proceedings against patent infringement are available if the claimant files a criminal complaint with the relevant authorities. In practice, criminal enforcement has not been common, because the police are often reluctant to review complex technical patent issues. However, in recent years, the Korean Intellectual Property Office (KIPO) has expanded the role of its Special Judicial Police (SJP) to cover investigations of patent infringement, in addition to its existing role of investigating trademark infringement and counterfeiting, including criminal investigations. The SJP may collect evidence from potential infringers through formal law enforcement procedures such as seizures; and any evidence collected by the SJP may subsequently be used in separate civil proceedings against the accused infringers. These changes are expected to facilitate and enhance criminal investigations of patent infringement in the future.

16 Tips and traps

16.1 What would be your recommendations to parties facing patent litigation in your jurisdiction and what potential pitfalls would you highlight?

In Korea, validity is often the most important factor in the strength of the patent. In view of the above, on the patent holder's side, it will be helpful to have multiple patents to assert in order to increase the chance of success. On the other hand, a defendant is generally recommended to spending substantial resources on looking for the best possible prior art. At the same time, a defendant may consider filing a 'mirror' counteraction to counterbalance the action brought by the plaintiff and have the actions adjudicated by the same court. By making two actions of the two parties pending at the same time, procedural symmetry may be secured.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.