SOUTH KOREA Law and Practice Contributed by: Samuel Lee, Ye In Han, Inkyoung Choi and Jaeyoung Seol, Bae, Kim & Lee LLC
which will be served under the applicable treaty (eg, the Hague Convention), and the notice period is approximately three months to one year, depend ‑ ing on the country in which the defendant is located and any applicable treaties. If the defendant does not receive the complaint for infringement, the case will not proceed. Once the defendant is served with a complaint for infringement by registered mail, the case is usually managed through the court’s e-filing system. A petition for invalidity proceedings before the IPTAB should also be served on the patentee under similar procedures. However, under the Korean Patent Act, a foreign patentee is required to appoint a Korean counsel, and the petition for invalidity proceedings against the foreign patentee is served on the paten ‑ tee’s Korean counsel. Procedure and Timeline of Infringement/Validity Proceedings The defendant in an infringement case must file a response within 30 days of service of the complaint. Typically, the defendant will submit a short formal response denying the claim, followed by a detailed response within two to four weeks, as directed by the court. The court will then schedule a first hearing. Depending on the complexity of the case, multiple hearings may be held. The duration of infringement proceedings varies significantly based on the circum ‑ stances of the case. Generally, it takes between six months and two years for the court to render a deci ‑ sion. The duration for a patent invalidity review proceed ‑ ing filed with the IPTAB also varies depending on the case, but on average, it takes approximately 12 to 18 months for the IPTAB to render a decision. A patent invalidity review request filed by a defendant in a pat ‑ ent infringement action may be subject to expedited review, in which case the review process is acceler ‑ ated, and a decision may be issued in approximately six to eight months. 1.6 Requirements to Bring Infringement Action A patent must be granted and registered before an infringement action can be initiated. There are no additional requirements such as validation or transla ‑
tion. The type of patent is irrelevant to the require ‑ ments for filing an infringement action. 1.7 Pre-Action Discovery/Disclosure Korea does not have a pre-action discovery/disclo ‑ sure process. Instead, the Korean Civil Procedure Act provides a general procedure for preserving evidence, but it is rarely used in patent infringement cases due to its strict requirement that the requesting party must demonstrate that the evidence would likely become unavailable or unusable if not preserved in advance. 1.8 Search and Seizure Orders Search and seizure orders are not available in patent cases in Korea. Under Korean patent law, a plaintiff may ask the court to order the defendant to produce specific evidence to prove patent infringement and damages. However, unlike the US discovery system, Korea does not allow the plaintiff to undertake broad access to the defendant’s documents. The defendant is only required to produce the documents ordered by the court. Korean courts generally accept evidence lawfully obtained in other jurisdictions without restrictions. Discovery under 28 USC Section 1782 is often used to gather evidence in Korean infringement cases. 1.9 Declaratory Relief Courts in Korea do not grant declaratory relief for pat ‑ ent infringement cases. Instead, they provide remedies such as injunctive relief, preventative relief and dam ‑ ages if infringement is established. In other words, it is not possible for a plaintiff in a patent infringe ‑ ment case to seek declaratory relief from the court. However, it is possible to obtain confirmation from the IPTAB as to whether the infringing product falls within the scope of the patent (positive patent scope trials if filed by the patent owner, negative patent scope trials if filed by the potential infringer), but these scope trial decisions are only binding on the parties and not on the infringement courts. 1.10 Doctrine of Equivalents In Korea, an accused product that contains a modified element compared to a patented invention may still be infringing under the doctrine of equivalents (DoE) if it satisfies the following criteria:
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