Patent Litigation Procedure

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Select your current step and the content for that step will appear below.

1. 1Warning letter and negotiation
2. 2Filing a lawsuit / requesting a trial
3. 3Service of the complaint and written answer
4. 4Technology explanation session and organizing the issues
5. 5Hearings and examination of evidence
6. 6Delivery of judgment
7. 7Appeal to the Patent Court
8. 8Final appeal to the Supreme Court

• Basic step
• Additional action / option
• Rejection / objection
• End of procedure

Time required

For both infringement lawsuits and lawsuits to cancel a trial decision, it varies greatly with the number of issues and whether there is an appraisal; check the progress with the court division in charge

Cost

Stamp fee (based on the claimed amount) and service fee, appraisal fees and technical analysis costs

Procedure guide

Read from start to finish in order. Red text marks deadlines set by law.

1. 1

   If you suspect infringement, first compare the other side's product with the elements of your patent's claims (the items setting out the patent's scope of protection) one by one to see whether it infringes. Then send a warning letter and try to negotiate. The party receiving the warning letter can fight back by requesting an invalidation trial at the IPTAB (Patent Act §133(1)), so before sending it, check whether your patent could be invalidated. This is because once an invalidation decision becomes final, the patent right is deemed never to have existed (Patent Act §133(3)).

2. 2

   If negotiations break down, you go to a lawsuit or a trial. Lawsuits for an injunction against infringement or for damages are filed with the competent court among the Seoul Central, Daejeon, Daegu, Busan, Gwangju and Suwon District Courts, while patent invalidation, confirmation of the scope of rights and the like are requested as trials before the IPTAB. An infringement lawsuit proceeds in order from the district court (1st instance) to the Patent Court (2nd instance) and then the Supreme Court. The lawsuit and the trial can proceed separately, and the court may suspend the lawsuit if necessary until the trial decision becomes final (Patent Act §164(2)), so the two procedures must be managed together.

3. 3

   The defendant (the party being sued) submits a written answer within 30 days after receiving the complaint. If you received the complaint, prepare your counterarguments (defenses) within this period: that the patent is invalid, that there is no infringement (the elements are different), or that it is freely practicable technology (technology anyone may use). Technical review takes time, so it is best to start preparing as soon as you receive the complaint.

4. 4

   A technology explanation session is held in which both sides present the technical details, and the court, if necessary, organizes the issues with the help of technical examiners. All technical documents and materials on prior art (technology disclosed before your patent) must be secured by this stage. This is because the rest of the trial proceeds around the issues organized here.

   Current step
5. 5

   At the hearings, claim interpretation, comparison of elements and appraisal of the infringing product are carried out. To calculate damages, apply to the court for an order requiring the other side to submit sales and cost records. If the other side refuses to submit materials without a good reason, your claims may be accepted as true. The length of the 1st-instance trial varies greatly depending on whether there is an appraisal and the number of issues.

6. 6

   If infringement is found, the court orders an injunction against infringement, destruction, and damages. For willful infringement, the damages can be increased up to 5 times the loss (Patent Act §128(8)). Conversely, if it is clear that the patent will be invalidated, the claim may be dismissed as an abuse of rights. That is why it is important to defend the validity of your patent throughout the lawsuit.

7. 7

   Appeal to the Patent Court within 2 weeks from the day you receive the written judgment. A lawsuit to cancel a trial decision, filed when you find an IPTAB trial decision hard to accept, must be filed with the Patent Court within 30 days from the day you receive the certified copy of the trial decision. These 30 days are a peremptory period and in principle are not extended (Patent Act §186(4)), so if you miss it, the trial decision becomes final as it is.

8. 8

   If you find the Patent Court's judgment hard to accept, file a final appeal to the Supreme Court within 2 weeks. Once the judgment becomes final, the ban on producing and selling the infringing product and the damages can be enforced through compulsory execution. Even if the other side does not comply voluntarily, it can be carried out through court procedures.

Frequently asked questions

Practical questions that come up right away in this procedure.

QI received a warning letter. Do I have to reply right away?

There is no legal deadline for replying, but you must not ignore it. If you keep selling after receiving a warning letter, it may be found to be "willful infringement." In that case, damages of up to 5 times the loss can be awarded.First, review two things with a patent attorney or lawyer: whether your product falls within the claims (the sentences setting out the scope of the right) of the other side's patent, and whether that patent has any grounds for invalidity.Then decide whether to send a reply or request an invalidation trial. Be careful, because wording in your reply that admits infringement can be used against you later.

QWhich court do I file with?

Lawsuits for an injunction against infringement or for damages are filed with one of the Seoul Central, Daejeon, Daegu, Busan, Gwangju or Suwon District Courts. The starting point is the court determined by the general jurisdiction rules (the other party's address, where the infringement took place, etc.).You file with the district court located where the high court with jurisdiction over that court's location sits. In any case, you can also file with the Seoul Central District Court.Patent invalidation and confirmation of the scope of rights (checking whether something falls within the patent's scope) are requested as trials before the IPTAB (Daejeon), not a court. Lawsuits can be filed online on the e-litigation website, and trials on the electronic filing website "Patent-ro."

QHow much does it cost?

The costs paid to the court are a stamp fee based on the claimed amount and a service fee. For example, if you claim damages of KRW 100 million, the stamp fee is KRW 455,000.If you claim only an injunction against infringement, the value of the claim is deemed to be KRW 100 million, so the stamp fee is also KRW 455,000. In addition, appraisal fees apply if there is an appraisal, and lawyers' and patent attorneys' fees are set by the engagement contract.The fee for requesting an invalidation trial at the IPTAB is KRW 150,000 per case when filed electronically. KRW 15,000 is added for each claim in dispute.

QCan a patent attorney represent me in the lawsuit?

A patent attorney can represent you alone in IPTAB trials and in lawsuits to cancel a trial decision at the Patent Court. However, in infringement lawsuits at a district court, only a lawyer can act as the litigation representative. So if you have a representative in an infringement lawsuit, you must appoint a lawyer.

QThe other side has filed an invalidation trial. Does the infringement lawsuit stop?

It does not stop automatically. The court may suspend the trial to wait for the result of the invalidation trial, but it does not have to.On the other hand, it may be clear that the patent will be invalidated. In that case, under Supreme Court precedent, the court can make that judgment itself and dismiss (refuse to accept) the infringement claim.In an invalidation trial, the patent holder can respond with a request for correction (an application to narrow the claims).

QHow do I obtain the other side's product to prove infringement?

For products available on the market, buy them yourself, keep them with the receipt, and prepare a teardown and analysis report. The receipt is proof of when and where the product was bought.For things that cannot be seen from outside, such as manufacturing processes, apply to the court during the lawsuit for an order to submit materials or for preservation of evidence. If the other party refuses to submit materials without a good reason, your claims may be accepted as true.