CONTENTS
- 1. The Client Who Came to a Corporate Attorney
- - How the Patent Dispute Arose
- 2. The Issues in the Case as Reviewed by the Corporate Attorney
- - Issues in the Case
- 3. Three Forms of Assistance by the Corporate Attorney
- - Protection of Trade Secrets and Limitation of the Appraisal Procedure
- - Strategy for Responding to an Invalidation Trial and Analysis of Prior Art
- - Technical Verification and Collaboration with Experts
- 4. Result of the Corporate Attorney's Assistance: “Favorable Judgment”
- - If a Patent Dispute Has Arisen
1. The Client Who Came to a Corporate Attorney
The client who sought out a corporate attorney requested help in order to protect trade secrets from a competitor and to respond effectively to an unforeseen patent dispute.
How the Patent Dispute Arose
The client who sought the corporate specialist attorney was the head of the research institute of a domestic company that manufactures and sells insulation materials.
Based on technology developed over many years, the company had been entering into continuous supply contracts with domestic construction companies.
A competitor, however, filed a lawsuit seeking an injunction against infringement and damages, alleging that the products of the client’s company infringed the competitor’s patent.
In particular, the competitor demanded that the court order the submission of the product manufacturing process diagrams and experimental data, asserting that it would use these in the expert appraisal procedure.
The client was concerned about the leakage of technology, given that the manufacturing process in question was the company’s core trade secret.
To respond to this, the client requested the assistance of a corporate specialist attorney with extensive experience in patent trials and infringement litigation.
2. The Issues in the Case as Reviewed by the Corporate Attorney
A patent dispute is a legal dispute over the registration, scope of rights, and validity of industrial property rights (patents, utility models, designs, and trademarks), and it can be divided into patent adjudication and patent infringement litigation.
Patent adjudication is a special administrative adjudication that contests the existence or scope of effect of a patent, such as an appeal against a decision of refusal, an invalidation trial, or a trial to confirm the scope of rights.
Because it is a procedure that requires specialized technical knowledge and examination experience, it is handled by the ‘Intellectual Property Trial and Appeal Board’ under the Korean Intellectual Property Office.
Patent infringement litigation is aimed at civil remedies for the infringement of rights, such as a claim for an injunction against infringement, a claim for damages, and a claim for the restoration of credit, and it is handled by the ordinary courts.
Issues in the Case
Article 133 of the Patent Act provides that, where a patent does not meet the statutory requirements or there is a defect in the registration process, an interested party or an examiner may request an invalidation trial.
The key to a determination of patent invalidity is the technical distinctiveness and effect as compared with prior art, and the legality of the application and registration procedures.
The main issues in this case were as follows.
Whether distinctiveness could be established through technical verification
The possibility of trade secret infringement arising from the submission of manufacturing process materials
In response, the corporate law specialist attorney established a strategy focused on proving the grounds for invalidation of the competitor's patent through technical analysis and verification, while protecting the trade secrets.
3. Three Forms of Assistance by the Corporate Attorney
From the early stage of the case, the corporate attorney formed a task force together with attorneys with high expertise who had handled numerous patent disputes, and provided the following assistance by closely linking the technical, legal, and strategic areas.
Protection of Trade Secrets and Limitation of the Appraisal Procedure
The corporate attorney specifically set out the industrial losses and the risk of breach of contract with business partners that could arise if the manufacturing process materials were leaked to a competitor.
The attorney also submitted to the court a written opinion arguing that the scope of the appraisal procedure should be limited and that it should be conducted in closed session, thereby persuading the bench.
As a result, the core technology relating to the manufacturing process was not exposed externally and could be safely protected.
Strategy for Responding to an Invalidation Trial and Analysis of Prior Art
The corporate attorney reviewed domestic and foreign patent databases and academic papers and secured numerous prior-art references similar to the competitor's patent in terms of structure and performance.
Based on the materials secured, the attorney prepared a petition for an invalidation trial and focused on highlighting the point that the patent showed no substantial improvement in performance over existing technology.
Through this, the attorney established a strategy that clearly revealed the lack of novelty and inventive step in the competitor's patent.
Technical Verification and Collaboration with Experts
The corporate law specialist attorney, in cooperation with an outside materials engineering expert, compared and analyzed the client's technology and the competitor's patent from multiple angles.
In the course of the analysis, the structural differences between the two technologies, their applicability, and their market competitiveness were assessed in detail.
As a result, an expert opinion was secured that the client's technology was clearly distinguished from the competitor's patent in terms of its scope of use and sustainability, and this was submitted to the Intellectual Property Trial and Appeal Board and used as an important ground in the invalidation trial.
4. Result of the Corporate Attorney's Assistance: “Favorable Judgment”
The Intellectual Property Trial and Appeal Board decided to invalidate the competitor's patent, and the suit to revoke the trial decision, which the competitor filed in objection to this, was also dismissed by the court.
The separately ongoing suit for injunction against infringement and damages was also withdrawn, so the client was able to free themselves completely from all disputes, and was able to stably continue existing supply contracts and new projects without any leak of trade secrets.
If a Patent Dispute Has Arisen
A patent dispute is not simply a matter of contesting the existence of a right; it is a complex matter that requires both specialized understanding of the relevant technology and legal judgment.
In particular, to contest the validity of a competitor's patent or to protect trade secrets, analysis of technical characteristics, prior art searches, and strategic responses to adjudication and litigation procedures are indispensable.
This firm has specialist attorneys with experience in patent disputes across various industries who support clients.
From the initial consultation, an attorney directly assesses the case, and provides comprehensive assistance through a task force composed of experts suited to the matter.
If a patent dispute has arisen and you need legal assistance, please feel free at any time to 🔗Corporate Attorneyto develop a strategy together.
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