Please tell me how to respond to a patent dispute…

Hello. This is an attorney specializing in patents at Daeryun Law LLC.

If the situation has escalated to a criminal complaint on the ground of patent infringement, you should regard it as having entered a stage that, beyond simply responding to a patent dispute, requires examining both the survival of the company's service and the possibility of criminal liability.

However, the mere fact that a complaint has been filed does not immediately mean that patent infringement is recognized or that it leads to punishment.

For patent infringement to be established, the service or feature must contain the elements described in the patent claims as they are, or, even if the configuration differs in part, must fall under a ‘relationship of equivalents’ in which the problem-solving principle and the effect are substantially the same.

In other words, the mere fact that the features appear similar in form is insufficient; whether the technical implementation method, operating principle, and information processing structure are also identical is the key criterion for the determination.

In the case of a mobile service, differences in internal logic, such as the data collection method, whether there is user input, the information processing flow, and whether it is automated, are often the decisive factors that determine infringement.

In addition, for criminal liability to arise from patent infringement, the mere fact that a feature similar to the patent was implemented is insufficient; intent to practice it while being aware of the existence of that patent must be recognized.

Therefore, at the investigation stage, a response that structurally explains, through materials referred to at the time of planning the feature, internal meeting materials and development history, whether external technology was referenced, and the circumstances and purpose of the feature improvement, that there was no intentional imitation or awareness of infringement is necessary.

The indirect infringement asserted by the competitor is recognized only where an item falls under an ‘article used solely for practicing the patent’ as prescribed by the Patent Act, and where the structure is limited to providing information, user convenience features, or software implementation, as with a mobile service or app feature, it often does not meet the requirements for indirect infringement, which presuppose manufacturing and production.

Therefore, with respect to the indirect infringement claim, a strategy that first rebuts whether the legal requirements are met, focusing on whether the feature ① is a configuration premised on the realization of a particular patent and ② is a dedicated means that cannot be used for other purposes, is necessary.

Only when a legal principle-centered rebuttal regarding the requirements for infringement and indirect infringement under the Patent Act is carried out together can you correct the investigative agency's misunderstanding and block the risk of leading to service suspension or criminal liability.

A patent dispute related to a mobile service can arise even from a minor feature update, and it is a matter that can affect the very survival of the business depending on the direction of the initial response.

At our firm, relevant legal professionals, such as attorneys specializing in patents and patent agents with experience working at the Korean Intellectual Property Office, provide a one-stop response service.

If you are at the stage of having been notified of the complaint, rather than concluding that it is already too late, we recommend that you organize your response strategy with the assistance of an attorney specializing in patents who understands both the technology and the legal principles, from the early stage of the investigation.