Need for
Corporation between Attorney at Law and Patent Attorney in the High-Tech
Era
( Law times on March
16,2023 )
Myung-Shin Kim
Advisor,
The Korean Patent Attorneys Association
In 2006 and 2008,
the Industry, Trade and Resources Committee (ITRC) of the National Assembly (NA)
passed the revision bills for the Patent Attorney Act providing that in the
case a party appointed an Attorney at Law as an agent for a patent infringement
suit (PIS), the party may appoint a Patent Attorney as an additional agent.
Even though these bills were submitted to the Legislation and Judiciary
Committee (LJC) of the NA for legal examination according to the National
Assembly Act (NAA), the LJC has never examined them at all. Finally, the bills
were abandoned due to the expiration of the session.
In May 2022, the
ITRC of the NA passed the revision bill for the Patent Attorney Act once again.
At this time, the ITRC added the condition that when a Patent Attorney attends
court, he or she must attend together with an Attorney at Law. This bill was
also submitted to the LJC and the LJC decided to discuss it further in the Bill
Small Committee. However, I do not understand why they need to discuss it
further because the same bills were submitted three times now in the past
17 years.
Now, I will review
whether a Patent attorney is ready to represent the PIS in a court as an agent.
In 1996, the Korean Patent Attorneys Association (KPAA) provided a training
education program for civil procedure practice to its members. This three
month program was led by the professors of the Judicial Research and Training
Institute according to the
agreement of the Chief Justice of the Supreme Court (SC), and thereafter, the
KPAA has provided the same education programs to its members once a year since
1997. From 1997, the examinees for the qualification of Patent attorney
needed to pass the subject of the Civil Procedure Code (CPC), and since 1998,
Patent Attorneys have represented clients in the Patent Court (PC) for
revocation suits against decisions by the Intellectual Property Trial and
Appeal Board (IPTAB), for example, in cases of Invalidation of Patent, Approval
for Correction of Patent, Confirmation of Scope of Patent Claim.
The common issue
between a PIS represented by an Attorney at Law in a general court and a
revocation suit by a Patent Attorney against the decision of the IPTAB is the
same whether the technology in question or publicly known technology falls
within the patent claims. These two types of suits proceeded according to the
CPC.
Regarding a PIS on
diapers between Y and S company in Korea in 1996, it took 11 years and 8 months
for both parties to receive the final judgment of the SC. This happening
resulted in blowing away the will for developing new technology, and both
parties were unable to carry on their businesses properly due to the suit
concerned. Notably, considering the term of a patent right of 20 years from the
filing date, we have come to know that a PIS must be finished quickly. The
reason why it was delayed so much originated because of the dualized legal
system. Further, although both parties could fight regarding the issue of
invalidation during PIS, the Attorneys at Law and Judges concerned did not
raise this issue because they did not know the core of technology well, and
thus they had waited for the final judgment of the invalidation trial in
another legal procedure.
After
experiencing this diaper case, we revised the Court Organization Act (COA)
to concentrate the court for the PIS. However, even if the COA was revised, we
could not settle all the basic problems. The more important issue was whether
the Attorney at Law knows the contents of the technology in the question
exactly, and if they do, the chance of the case being successful will be
increased and they can protect the life of technology more thoroughly
through the course of the suit.
As you know, the
litigation cost for a PIS on high technology in the U.S.A. is beyond our
imagination. In European countries it is also tremendously
expensive. Almost all Attorneys at law who handled these cases in Korea
have indeed proceeded with oral hearings based on a memorandum written by the
Patent Attorneys.
When Samsung and
Apple proceeded with the worldwide PISs on cellphones, risking the future of
both companies by spending astronomical amounts of money, Attorneys at Law
and Patent Attorneys represented the companies together. However, when
this suit proceeded in Korea, only Attorneys at Law represented each of the
parties. The legal issues at the PIS between Samsung and Apple in Korea were
the scope of the patent claim, comparison between the publicly known
technology and the patent claim, comparison between the standard technology and
the patented one, invalidation of the patent ( novelty and inventive step ),
comparison between the technology of the infringer and the patented technology,
direct or indirect infringement, exhaustion of the patent right, abuse of the
patent right, Monopoly Regulation and Fair Trade Act, Estoppel principle,
calculation of damage amount, license agreement with a fair, reasonable and
nondiscriminatory condition, etc. Therefore, in this kind of suit there must be
representation together by Attorneys at Law and Patent attorneys in order to
meet the interests of the parties concerned, as well as the appropriateness and
speed of a civil suit.
Almost all PISs in Korea have been
handled by big law firms' Attorneys at Law and Patent attorneys working
together, and thus the small or medium companies have abandoned these suits
because the attorney charges were too expensive. However, if Patent
Attorneys could represent the parties concerned, the attorney charges will be
less expensive because Attorneys at Law of small or medium size law firms
can represent the parties concerned. Therefore, there is no reasonable reason
that if Patent Attorneys would join as an agent additionally, attorney's
charges will be more expensive.
Even in Japan where
the judicature is more conservative than in Korea, the Judicial Reform
Committee in 2002 accepted the request of industrial circles and allowed Patent
Attorneys to act as suit agents rather than having cases being
handled only by Attorneys at Law. This resulted in shortening the
litigation period to 10 months generally.
Almost all companies
that have experienced PISs wanted Patent Attorneys as agents for the suits
because they know the contents of technology very well from the filing date of
the patent application.
Further, the
following science and technology associations and industrial circles have been
supported Patent Attorneys as agents for a long time, i.e. Federation of
Intellectual Property Societies which is composed of industrial property and
copyright societies, The Venture Enterprises Association, the Korean Federation
of Science & Technology Societies, Korean Chamber of Commerce and Industry,
Korean Federation of Small and Medium Business, National Academy Engineering of
Korea and Korean Authorized Technician Association, etc. Nowadays, even several
professors of law schools support Patent Attorney's addition as an agent in
order to win international PISs in Korea.
Another development
was that the Constitutional Court ruled that a Patent Attorney can represent
the PIS if the Patent Attorney Act is partly revised.
Some foreign countries, for
example the U.S., U.K., Japan, China, and 27 European
countries, which has the European Unified Patent Court opening this coming
June, have allowed the representation of PISs by Patent Attorneys.
Considering the
international trend, on the point of strengthening the security of high
technology and the acute technology war, the one sided opinion must be changed
in order to protect the technologies of our venture companies and to strengthen
the national competitiveness. Therefore, this revision of the Patent Attorney
Act is not simply a business
conflict between Attorneys at Law and Patent Attorneys.
Additionally,
Article 5 of the Intellectual Property Framework Act (IPFA) says that when
enacting or revising any Act related to intellectual property, those Acts must
follow the gist and content of the IPFA, and Article 21 of the IPFA says that
government should strengthen the professionalism for settlement of intellectual
property disputes.
Article 32-5 of the
revised NAA says that a member of the NA must evade discussing and voting on a
bill if there is any business conflict regarding the bill, and if they do not,
they will be subject to disciplinary action, and Article 86 Para.5 of the
revised NAA says that the LJC can examine only the issues of the legal
system and legal terms. As such, people are watching the procedure of the
examination for the bill very closely.
Finally, I hope that
the pending bill will be passed through the NA in order for suits to receive a
speedy and exact judgment during the limited term of a patent right, to enhance
national competitiveness and national interest while creating an environment
respecting science and technology.
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