SOUTH KOREA Law and Practice Contributed by: Samuel Lee, Ye In Han, Inkyoung Choi and Jaeyoung Seol, Bae, Kim & Lee LLC
Bae, Kim & Lee LLC Centropolis B 26 Ujeongguk-ro Jongno-gu Seoul 03161 Korea Tel: +82 2 3404 0000 Fax: +82 2 3404 0001 Email: bkl@bkl.co.kr Web: www.bkl.co.kr/law?lang=en
1. Life Sciences and Pharma/ Biopharma Patent Litigation 1.1 Claimants/Plaintiffs to an Action Plaintiffs to an Infringement Action
Whether the IPTAB’s Opinion is Binding The IPTAB may issue opinions on patent infringement and validity. However, Korean courts are not bound by the IPTAB’s opinion in patent infringement proceed ‑ ings and may independently evaluate and determine matters of patent infringement and validity, regardless of the IPTAB’s decision. 1.2 Defendants/Other Parties to an Action In Korea, defendants in life sciences and pharmaceu ‑ tical cases involving patent infringement are usually suppliers, importers, manufacturers or distributors of a generic drug. Patent infringement lawsuits against pharmacists, doctors, hospitals or healthcare regula ‑ tory authorities (HRAs) in Korea are highly unlikely. Infringement and nullity proceedings do not require notification to, or the involvement of, HRAs in Korea or the Korean Intellectual Property Office. 1.3 Preliminary Injunction Proceedings PIs Are Available in Korea Preliminary injunctions (PIs) are generally available in Korea as part of patent infringement proceedings. A PI against patent infringement is a proceeding between the parties, and both parties are given the opportunity to be present for the hearing. Ex parte PI proceedings and protective letters are not available in Korea. Both injunctive relief, which seeks to enjoin current patent infringement, and quia timet relief, which seeks to prevent future patent infringement, can be sought.
According to Article 126 of the Korean Patent Act, the parties that may file a patent infringement action are limited to the patent holder or a registered exclusive licensee that has completed the registration of the exclusive licence at the Korean Intellectual Property Office. A registered exclusive licensee may initiate an infringement action independently without the con ‑ sent or involvement of the patent holder. Non-exclusive licensees, as well as exclusive licen ‑ sees that have not completed the registration of the exclusive licence, are not entitled to file a patent infringement lawsuit as plaintiffs. If a patent is jointly owned by multiple parties, each co-owner of the patent has the right to independently file a patent infringement lawsuit as a plaintiff without the consent of the other co-owners. Standing Requirement to File a Nullity/Revocation Action According to Article 133 of the Korean Patent Act, an interested party may file a nullity/revocation action with the Korean Intellectual Property Trial and Appeal Board (IPTAB). An interested party refers to anyone that has a legitimate interest in the patent, including a potential defendant in a patent infringement suit.
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