|
|
|
|
|
Newsletter | July 2016, Issue 2
|
|
|
|
|
|
|
INTELLECTUAL PROPERTY
|
|
|
|
Patent Infringement and Damages Become Easier to Prove under the Amended Patent Act
|
|
|
|
On March 3, 2016, an amendment to the Patent Act (the “Amendment”) was approved by the National Assembly.
|
|
|
|
This Amendment, which became effective on June 30, 2016, is expected to greatly facilitate proving patent infringement and damages, which used to be difficult to establish in Korean patent cases. Overall, we believe the Amendment is likely to substantially encourage patentees to enforce their patent rights in Korea.
|
|
|
|
Key features of the Amendment include:
|
|
|
|
1. Expanded Scope of Document Production Orders
|
|
|
|
|
|
Under the current Patent Act, document production orders are generally limited to requiring submission of documents necessary for the calculation of damages, and can only require the production of actual documents.
|
|
|
Under the Amendment, the scope of document production orders has been expanded. Evidence of patent infringement (as well as damages) is subject to production under such orders, and materials other than documents in the scope of such orders are now included.
|
|
|
Thus, patentees will be able to obtain information stored in electronic form as well as paper documents from defendants. Patentees may also request production of evidence of patent infringement in addition to damages.
|
|
|
Impact: This will be especially helpful in cases involving infringement of method patents, which have sometimes been difficult to prove in Korea due to lack of access to the defendant's facilities.
|
|
|
|
|
|
2. Confidential or Trade Secret Status No Longer Sufficient Basis to Withhold Documents
|
|
|
|
|
|
Accused infringers have often refused to submit documents despite the issuance of a court’s production order. They have done so on the basis that the documents contain trade secrets, and courts have typically been reluctant to challenge such refusals.
|
|
|
Under the Amendment, an accused infringer may no longer refuse to respond to a document production order simply because the requested materials contain trade secrets, if the materials are essential to proving patent infringement or calculating damages.
|
|
|
Instead, to protect confidentiality, the court may choose to restrict the scope of access to the accused infringer's information (such as by limiting access only to certain portion(s) of the produced materials, or limiting who may have access to the materials once produced).
|
|
|
Impact: Unlike the current provisions governing protective orders in Korea, it will now be possible to limit access to produced materials specifically to the counsel of the requesting party and not the requesting party itself, similar to “attorneys’ eyes only” designations under US protective orders.
|
|
|
|
|
|
3. Heavier Sanctions for Non-compliance with Production Orders
|
|
|
|
|
|
Under the Amendment, if the producing party unjustifiably refuses to submit materials that have been ordered to be produced, the court may presume as true the requesting party’s arguments as to what the material should describe.
|
|
|
In addition, the court also has discretion to presume that “the facts that the requesting party intended to prove based on the requested materials” are true if: (1) it would be clearly difficult for the requesting party to know the detailed contents of the requested materials without access to the materials; and (2) it would be clearly difficult for the requesting party to establish through other evidence what it is seeking to prove using the requested materials.
|
|
|
Impact: In other words, accused infringers who refuse to comply with document production orders under the new law will run the risk of infringement and damages being presumed against them, if there is no other way for the patentees to obtain the relevant evidence.
|
|
|
|
|
|
Back to Main Page
|
|
|
|
|
|
If you have any questions regarding this article, please contact below:
|
|
|
|
|
|
|
|
For more information, please visit our website:
|
|
|
|
|
|
|
|