SOUTH KOREA Law and Practice Contributed by: Dongju Kwon, Changkwon Kim, Sejung Lee and Yoon Sun Kim, Yoon & Yang LLC
1.12 Overlapping IP Rights Industrial property rights, including patent rights, are triggered after an application submission to the Korean Intellectual Property Office, disclo - sure of information and a deliberation process. As such, trade secret protection rights, requiring information to be “unknown to the public” , can - not, in principle, be asserted in combination with industrial property rights for the misappropria - tion/infringement of the same information. However, for patent rights, there are many cases where additional information managed as trade secrets (aside from the information disclosed in the patent specifications) is necessary for the specific and actual practice of the relevant invention. Therefore, a plaintiff could assert trade secret rights in combination with patent rights for the misappropriation/infringement. 1.13 Other Legal Theories Where a corporate employee divulges a trade secret or major business asset during their employment to the employer’s competitor, or removes this without authorisation for the pur - pose of exploiting it for personal interest, such act constitutes unauthorised divulgence or removal in violation of their occupational duties as a person administering another’s business. Thus, the crime of occupational breach of trust is consummated at the time of such unauthor - ised divulgence or removal (see Supreme Court Decision No 2017Do3808). A third party who is privy to and actively con - spires in or assists with the corporate employee’s occupational breach of trust may be recognised as having committed a breach of trust. Further, the third party may be subject to tortious liability under Article 750 of the Korean Civil Code for their inducement of the employee’s violation.
1.14 Criminal Liability A trade secret owner can pursue both civil and criminal claims. The UCPA provides criminal penalties for trade secret misappropriation. Under the UCPA, any person who commits any of the following may be punished by imprison - ment of no more than ten years and/or a crimi - nal fine not exceeding KRW500 million, provided that, if the amount corresponding to ten times the pecuniary gain arising from the violation exceeds KRW500 million, the offender may be punished by a fine of at least twice and up to ten times the amount of such pecuniary gain, as follows. • For the purpose of obtaining improper ben - efits or damaging the trade secret owner: (a) acquiring or using trade secrets, or leak - ing them to any third party; (b) leaking trade secrets out of a designated place without authorisation; or (c) continuing to possess another’s trade secret even after the trade secret owner’s request to delete or return it. • Acquiring trade secrets through theft, decep - tion, threat or other improper means. • Acquiring or using trade secrets while know - ing that an act set forth in the preceding points is involved (Article 18(2)). Any person who commits the above acts with knowledge of the fact that the trade secret will be used overseas may be punished by imprison - ment of no more than 15 years and/or a criminal fine not exceeding KRW1.5 billion, provided that, if the amount corresponding to ten times the pecuniary gain arising from the violation exceeds KRW1.5 billion, the offender may be punished by a fine of at least twice and up to ten times the amount of such pecuniary gain (Article 18(1)).
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