Patent Court of Korea was established in 1998. As a specialized court, PATENT COURT OF KOREA was designed to promote efficiency, uniformity and predictability of patent law system. PATENT COURT OF KOREA was the first specialized patent court in Asia at that time. However, there are several differences between PATENT COURT OF KOREA and the American patent court, CAFC.

1. “Korean Patent Court in Change:
Expanding its Jurisdiction to Include Infringement Actions”
Presented at the 3
rd
Asia Pacific Intellectual Property Forum
By Sang Jo Jong
Professor of Law, Seoul National University School of Law
1 Thank you for your introduction.
I am honored to be with you here at the 3
rd
Asia Pacific
Intellectual Property Forum. Thank you for inviting me to this
Symposium to share with you some of interesting aspects of
intellectual property laws of China, Japan, Taiwan and Korea. Last
year, the 2
nd
Asia Pacific IP Forum held in Seoul, Korea. This year,
I am glad to find that this forum looks much better organized and
much more successful.
Let me begin with a little bit of history of Patent Court of Korea
2 Patent Court of Korea established in 1998.
Patent Court of Korea was established in 1998. As a specialized
court, PATENT COURT OF KOREA was designed to promote

2. efficiency, uniformity and predictability of patent law system.
PATENT COURT OF KOREA was the first specialized patent court
in Asia at that time. However, there are several differences
between PATENT COURT OF KOREA and the American patent
court, CAFC.
3 CAFC v. PATENT COURT OF KOREA.
As you know, the USA suffered from economic recession and
industrial stagnation in the 1970’s. The creation of the Federal
Circuit was expected to help to revitalize industrial innovation by
strengthened patent protection. However, PATENT COURT OF
KOREA was created in response to the decision of the
Constitutional Court of Korea with regard to the previous
invalidity trial system.
4 The Old System
Invalidity actions were brought to the trial board at the Patent
Office and appeals were brought to the appeals board at the Patent
Office. Since Supreme court reviewed legal issues only, none of
parties (neither patent owners nor competitors) were able to bring

3. factual issues to fair trial by judicial courts under the old system..
5 Constitutionality of the old sytem
Invalidity actions before the Trial Board and the Appeal Board
were not enough for fair trials, SO the Constitutional Court of
Korea held that the old invalidity trial system violated the
Constitutional Right to fair trials by judicial courts.” That was the
starting point for the PATENT COURT OF KOREA to be established.
6 Judicial reforms in 1998
Fortunately, creation of PATENT COURT OF KOREA turned out
to be part of judicial reforms in 1998. A broad range of judicial
reforms took place in 1998, partly to commemorate the centennial
anniversary of the introduction of modern legal system in 1895
just before the collapse of the Chosun Dynasty in Korea AND
partly to respond to the demands for globalization just after
foreign currency crisis in 1997.
7 Patent Court of Korea
Since 1998, PATENT COURT OF KOREA introduced and

4. established several measures to promote efficiency, accuracy,
uniformity and predictability.
8 E-litigation
For the benefit of efficiency, electronic litigations were made
possible, and NOW extremely popular.
9 97% of invalidity actions
Electronic litigations have been increasingly used. More than 75%
of patent owners and the other parties agreed to use electronic
litigations. And, more than 25% of either patent owner or the other
party relied on electronic litigations. Altogether more than 97% of
invalidity actions are filed and processed totally or partly
electronically.
10 Technical advisers
For the benefit of accuracy, PATENT COURT OF KOREA adopted
technical advisers. Technical advisors in Korea are different from
technical examiners in Japan in the sense technical advisers sit on
the far-left side of the bench and actually participate in the

5. deliberation process. And, they are different from technical judges
of Germany in the sense that they simply provide their opinions on
technical aspects of a case. Unlike technical judges in Germany,
technical advisers do not make any decision. But by simply
providing their technical advice to judges, they contribute a lot in
clarifying what the prior art is and they help a lot in
understanding the degree of obviousness. That will make a big
difference, one of distinctive features of PATENT COURT OF
KOREA, totally different from Jury trial in the US.
Technical advisors help judges understand inventions
themselves and prior art as well. Although a specialized court like
Patent Court is expected to understand technologies, judges
without engineering or natural science background have difficulty
in understanding technologies and so uncomfortable to make a
decision on the degree of obviousness to the persons skilled in the
relevant technology. Given the fact that there are many judges
who do not have technical backgrounds, technical advisors could
be of great help in working out appropriate level of obviousness.

6. What would be the impact of Patent Court on innovations and the
patent law system? Probably the most difficult question to answer!
11 Impact of patent courts
There have been many empirical studies on the impact of patent
courts on innovations. Most of comments indicated that the CAFC
clearly showed a pro-patent tendency and contributed to
innovations in the US. However, there have been many debates on
its impact on some industries like computer, internet, and
biotechnology industries. Unlike the Federal Circuit, we have had
a totally different assessment regarding PATENT COURT OF
KOREA. Let me briefly look at the percentage of validity and
number of patent applications.
12 Validity at the CAFC
In the US, Statistics provide dramatic confirmation of the Federal
Circuit’s pro-patent leanings. The Percentage of cases in which
Federal Circuit upheld validity of patent increased from 35% to an
average of more than 60%. It is not difficult to suppose that
substantially increased rate of validity led to the increase in the

7. number of patent applications, AND probably contributed to
innovations in the US eventually.
13 Validity in Korea
As you see here in this diagram, the percentage of validity held
by PATENT COURT OF KOREA is much much lower than that of
the Federal Circuits. Although there are changes since the
creation of the Patent Court in Korea, it seems to me a little bit
awkward to compare the statistics of the US and those of Korea,
SIMPLY because there were no regional courts of appeal in Korea
AND, Also, because there were no trial courts’ decision on validity
but only decisions made by the Trial and Appeal Board of the
Patent Office before.
As you know, the Patent Act of Korea in based on the two tier
system distinguishing validity challenges from infringement
actions. And, unlike in invalidity actions, in case of infringement
actions, the Civil Courts find patents invalid only in exceptional
circumstances where lack of novelty or obviousness is clear
enough to deny remedies for patentees.

8. 14 Patent Applications and Issuance in the US.
Due to the higher rate of patent validity held by the Federal
Circuit, Patent applications grew much faster than before in the
US. Although an annual rate of growth before 1982 was only 1.5
percent, it increased to average 5.7 percent since the Federal
Circuit was created.
15 Patent applications in Korea
Unlike the Federal Circuit, the PATENT COURT OF KOREA did
not affect the rate of growth in patent applications in Korea. As
you see in the graph, patent applications grew very fast from the
middle of 1980’s when the Patents Act of Korea was strengthened.
SO, I can tell you that The impact of PATENT COURT OF KOREA
on the number of patent applications and innovations was
relatively limited. Its role was limited because it has only a limited
jurisdiction, an exclusive jurisdiction limited to appeals from the
trial board with regard to validity, issuance and so on. However,
PATENT COURT OF KOREA made hundreds of decisions every
year and so there is no doubt that PATENT COURT OF KOREA

9. contributed to uniformity and predictability of the patent law
system in Korea.
16 Two Tier System or Double Track System
Korea has adopted the two tier system, Distinguishing invalidity
actions from infringement actions. PATENT COURT OF KOREA has
an exclusive jurisdiction on invalidity actions, but not on
infringement actions. There have been many debates about what
would happen when defendants or alleged infringers argue
invalidity during the course of infringement actions. Now, the Civil
Court may deny the remedies if it finds there is clearly lack of
novelty or obviousness. That means the Civil Court regards
patentee’s lawsuit as an abuse of patent right if it is highly possible
for the patent to be invalidated in the invalidity action.
The next issue would be what would happen if the defendant
brings a separate invalidity action in response to infringement
action by the patentee. Usually, the Civil Court will hold the case
until the invalidity action is finalized and wait for the result of
invalidity action to reflect it into infringement action. However,

10. there are theoretical possibilities and actual incidents of
conflicting decisions due to the two tier system. And, also, due to
separation of jurisdictions on invalidity and infringement, it takes
a lot more time to solve patent disputes.
17 Patent Court Reforms
An Amendment Bill has been submitted to the effect that five
district courts have regional exclusive jurisdiction on patent
infringements AND the exclusive jurisdiction of PATENT COURT
OF KOREA expands to include patent infringement cases as well.
The Bill is expected to pass the National Assembly soon. The
industry leaders and patent attorneys have demanded Expansion
of the exclusive jurisdiction of PATENT COURT OF KOREA for the
past several years. When the amendment bill passes, PATENT
COURT OF KOREA will be expected to contribute to innovations in
Korea in the future. As was the case with the Federal Circuit,
PATENT COURT OF KOREA, with its monopoly on patent cases, will
also have to face not only compliments and credit but also worries
and criticism as well. We will have to wait and see how it goes.

11. 18 Wrapping up remarks
There are so many issues Korea faces now: First of all, almost
each and every scholar in Asia agree to more flexible
implementation of injunctions, as was already indicated by
Supreme Court of the US in its eBay decision. Given the fact that
the Patents Act of Korea is different from the US statute and also
unfamiliar with the concept of equity laws, Patent Court of Korea
will have to work out an alternative theory to accommodate more
flexible implementation of injunctions or to respond appropriately
to any abuse of patent right. Secondly, although we are expanding
the exclusive jurisdiction of PATENT COURT OF KOREA, we are
short of judges who have technical backgrounds. So contrary to
the expectation that a specialized court like Patent Court
understands better, judges without technical backgrounds have
difficulty in understanding technologies and so uncomfortable to
make a decision on the degree of obviousness to the persons
skilled in the relevant technology. In addition to the criteria of
invalidity, we are struggling to figure out what the appropriate

12. level of damages would be and what evidences are to be submitted
to find facts relating to damages. To me, more than one billion
dollar damages awarded in the US are too much and too
threatening to innovative companies including small and medium
size venture companies. On the other hand, just several hundred
thousand dollar damages awarded in Korea are too small to give
enough incentive. For one and half day conference, I learned a lot
from so many wonderful presentations by distinguished scholars
from all around the world. What is obvious from the presentations
is there are an increasing number of IP issues and judicial
decisions on IP in China, Japan, Taiwan and Korea. Given the fact
that more than majority of patent applications are filed and
prosecuted in Asia, it is clear that patent disputes will grow much
faster in Asia. And, statistics indicate that the center of global
economy moves to Asia. Naturally, it is increasingly important to
share and to discuss IP issues here at the Asia Pacific Forum. I am
sure our discussion here at this forum will contribute to searching
for more reasonable and more efficient rules. From IP law & policy

13. perspective, we could share more about more predictable criteria
for invalidity and the appropriate level of damages and so on.
Although we generally adopted the German legal system and
recently learned many lessons from the US, we can work out
better IP system not only with substantive rules but also with
procedural rules. I wish we could have what is called an Asian IP
system or Asian IP eco-system sometime in the future. I look
forward to more discussion and more updates in Seattle next year.