CONTENTS
- 1. Background of the Case Giving Rise to the Domestic Patent Dispute
- - The Client Who Requested a Defense in the Patent Dispute
- 2. The Laws Related to Domestic Patent Disputes and the Criteria for Determining Patent Infringement
- - Precedents Related to Patent Right Infringement
- - Patent Infringement: The Punishment Level
- 3. Three Defense Strategies for a Domestic Patent Dispute
- - Patent Dispute Defense Strategy 1 | Proving the Differences in the Method of Implementing the Technology
- - Patent Dispute Defense Strategy 2 | Proving the Absence of Intent to Infringe
- - Patent Dispute Defense Strategy 3 | Failure to Meet the Requirements for Indirect Infringement
- 4. Result of the Domestic Patent Dispute: “Non-Prosecution”
- - If You Are Involved in a Domestic Patent Dispute?
1. Background of the Case Giving Rise to the Domestic Patent Dispute
The client embroiled in the domestic patent dispute was an IT company operating a mobile service, and it was in a situation where it had been the subject of a criminal complaint from a competitor on the ground that it had infringed patent technology.
The client, who had even faced the risk of a service shutdown, received the assistance of a corporate law attorney and ultimately received a non-prosecution disposition, resolving the domestic patent dispute amicably.
The Client Who Requested a Defense in the Patent Dispute
The client operated a service that, through a mobile platform, provided various information tailored to the user's location.
For the convenience of users, the client updated the structure of a key feature.
However, immediately after the feature improvement, a competitor filed a criminal complaint alleging that the client had infringed the competitor's own technology patent.
Because that feature played a central role across the service, the situation could affect the operation of the business as a whole.
Accordingly, the client came to Daeryun's attorney, who has handled numerous domestic patent disputes, and requested assistance.
2. The Laws Related to Domestic Patent Disputes and the Criteria for Determining Patent Infringement
For the patent infringement at issue in this case to be established, all of the following requirements must be met.
▶ Criteria for determining patent infringement
The infringing act must fall within the scope of the patent claims
The infringing act must have been carried out as a business
The infringer must have practiced the technology without legitimate authority
In addition, Article 127 of the Patent Act regards the following acts as acts of patent right infringement.
▶ Patent Act Article 127 (Acts deemed to be infringement)
Producing, assigning, leasing, or importing an article used exclusively for producing that product, or offering to assign or lease such an article
2. Where the patent is an invention of a process
Producing, assigning, leasing, or importing an article used exclusively for working that process, or offering to assign or lease such an article
Precedents Related to Patent Right Infringement
When determining whether a patent has been infringed, the Supreme Court holds that, even if the infringing product does not include the elements of the patent claims as they are, it may be regarded as infringing the patent right if the principle of solving the problem and the operational effect are substantially identical and the modification is to a degree that an ordinary engineer could easily conceive of.
▶ Relevant precedent
In order to find that a product manufactured or a method used by the opposing party in a patent infringement lawsuit (hereinafter referred to as the "infringing product, etc.") infringes the patent right, each element described in the claims of the patented invention and the organic combination relationship among those elements must be included in the infringing product, etc., as they are. Even where there is a modified portion among the elements described in the claims of the patented invention in the infringing product, etc., if the principle of solving the problem is identical to that of the patented invention, it exhibits substantially the same operational effect as in the patented invention, and such modification is to a degree that anyone with ordinary knowledge in the technical field to which the invention belongs could easily conceive of, then, absent special circumstances, the infringing product, etc., is equivalent to the elements described in the claims of the patented invention and should still be regarded as infringing the patent right.
In addition, the Supreme Court holds that, in determining whether the principle of solving the problem is identical between the infringing product and the patented invention, one must not look only at the claims in a formal manner, but must comprehensively consider the specification and the publicly known technology at the time of filing in order to substantially identify what the core of the technical idea is.
Patent Infringement: The Punishment Level
If a patent right is infringed, the offender is subject to criminal punishment under Article 225 of the Patent Act.
The detailed level of punishment is as follows.
▶ What is the level of punishment for patent infringement?
Patent Act Article 225 (Crime of Infringement) | Imprisonment of up to 7 years or a fine of up to 100 million won |
3. Three Defense Strategies for a Domestic Patent Dispute
In line with the issues of this case, the corporate attorney analyzed the substantial differences between the app's functions and the patented technology, focused on proving that the requirements of intent and indirect infringement were not met, and provided the following assistance.
▶ Issues of the case
▷ Whether the function update was carried out intentionally with recognition of the patent in question
▷ Whether the technology in question falls under an 'article used only for production,' the subject of indirect infringement under the Patent Act
Patent Dispute Defense Strategy 1 | Proving the Differences in the Method of Implementing the Technology
The corporate attorney emphasized that, although the feature the client had updated might appear similar on the surface, clear differences existed in terms of the method of technical implementation, the operating principle, and the information-processing logic.
In particular, the attorney analyzed and presented that, while the competitor's patent focused on 'real-time location information reception' and an 'automatic recommendation system,' the client's feature operated in a manner in which information was filtered based on the user's manual input or condition settings.
Based on this, the attorney proved the technical discrepancies in detail through a claim analysis table, technical explanatory materials, and the like, and concentrated on correcting the investigative agency's technical misunderstanding.
Patent Dispute Defense Strategy 2 | Proving the Absence of Intent to Infringe
From the time of planning the function in question, the client did not intend to imitate any particular patent or to implement something similar, and developed the function independently based on internal improvement opinions without any external reference to the related technology.
To prove this, the corporate attorney organized planning materials, summaries of internal meeting minutes, and materials on the background of the function improvement, and explained the flow of the function's idea and the decision-making process for the technical implementation.
Through such materials, the attorney structurally explained that there was no awareness of or intent to infringe at all, and refuted the other party's arguments.
Patent Dispute Defense Strategy 3 | Failure to Meet the Requirements for Indirect Infringement
The corporate attorney argued that the requirements for indirect infringement asserted by the other party could not themselves be applied to this case.
The function in question was simply an information-providing and user-convenience function, not a technology accompanying a physical result such as manufacturing or production, and there was no configuration that realized another patent by using that function.
Accordingly, the attorney emphasized that, because it did not fall under the 'article used only for production' referred to in Article 127 of the Patent Act, it could not be the subject of punishment.
4. Result of the Domestic Patent Dispute: “Non-Prosecution”
Based on the corporate attorney's multifaceted response and the specific analysis of the technical structure, the investigative agency determined that the client's conduct was difficult to regard as patent infringement and that the requirements of intent and indirect infringement were not satisfied.
Accordingly, the client received a non-prosecution disposition, was able to escape the patent dispute, and was able to operate the existing service stably without interruption.
If You Are Involved in a Domestic Patent Dispute?
Domestic patent disputes can arise even from a minor functional change or update, and they can escalate into criminal punishment.
In particular, where infringement is suspected based only on the similarity of technical implementation, a response strategy that combines legal and technical analysis is crucial.
Daeryun Law Firm includes specialized attorneys with experience at the Patent Court and experience in the intellectual property investigation division of the prosecution, so multiple specialists collaborate to protect the client's interests on all fronts.
Even after a case concludes, the firm contributes to the continued growth of the enterprise through follow-up management services aimed at preventing similar disputes and stabilizing service operations.
If you are involved in a domestic patent dispute and need a response, please request assistance at any time through a 🔗legal consultation appointment.
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