Qualification of Litigation Representative of Patent Attorney for Patent Infringement Suit

( IP Daily Newspaper on May 17,2022 )

Myung Shin Kim

Adviser, the Korean Patent Attorneys Association

In 2006 and 2009, the Industry and Trade Committee of the National Assembly (NA) passed a bill to revise the Patent Attorney Act. The revision stated that if an attorney at law is a litigation representative for a patent infringement suit, a party concerned may additionally appoint a patent attorney.

On May 12, 2022, the Industry, Trade, Energy, Small and Medium Venture Business Committee of the NA passed the same bill. However, even though these bills passed the concerned Committee of the NA, the Judiciary Committee never discussed these bills at all. Thus, these bills were abandoned due to the expiration of the session. As such, the Judicial Committee has been severely criticized for protecting  only the business of attorneys at law.

Very recently, a member of the NA who is an attorney at law asserted at a public hearing that a patent attorney must be a litigation representative together with an attorney at law for a patent infringement suit.

The core of a patent infringement suit is how to prove the infringement of a patent right. For this proof, first, the patent attorney must interpret the patent claim in the specification and then confirm the scope of the patent right. Finally, the patent attorney must decide whether the alleged technology would fall under the content of the patent right.

Therefore, the practice that an attorney at law, who does not understand the technology, delivers legal documents written by a patent attorney to the court must be abolished. The patent attorney must submit legal documents on a specific technology to the court directly to find a substantive truth within a short period. Almost all people concerned with patent infringement suits sincerely want this change.

The Korean Bar Association(KBA) asserts that patent attorneys can notsmoothly proceed with the suit in court. However, since 1998, the examinees for obtaining the qualification of a patent attorney must pass the test of the Civil Procedure Code, and every year, patent attorneys have trained in the practice  of civil suit procedure as prepared by the Korean Patent Attorneys Association. Moreover, they have proceeded with various suits against Invalidation, Confirmation of Scope of Right on Patent, Registered Designs and Trademarks,or Cancellation of Registered Trademark at the Patent Court since 1998. Therefore, the KBA's assertion is not reasonable.

The KBA also asserts that if a patent attorney is appointed as a litigation representative in addition to an attorney at law, then the party concerned will burden with more expensive legal costs. However, until now, only medium and large law firms which have attorneys at law and patent attorneys have handled the patent infringement suits. Thus, the legal costs were expensive comparatively. If patent attorneys who handled patent applications could find an attorney at law who can assist them, legal fees would be cheaper. Further, the parties concerned in the patent infringement suit have had significant concerns about getting a quick and correct judgment. As such, the situation of a patent attorney delivering a memorandum on technology to an attorney at law who does not understand the specific technology during an oral hearing at the court must be dispensed with.

The attorneys at law have filed patent application cases even though they did not understand technologies at all because they automatically earned the patent attorney qualification. Nevertheless, the KBA has strongly resisted allowing the litigation representative to be a patent attorney along with an attorney at law.. This action against social justice as stated in the Attorney at Law Act, is unfair and very unreasonable.

The International Management Development Institute in Switzerland reported, in the world competitiveness yearbook on the intellectual property of 64 countries in 2021, that Korea's national competitiveness power was 23rd and the efficiency of government was 34th.

Our country has poor natural resources and adopted the strengthening of intellectual property as an essential policy for the country's survival strategy under the 4th Industrial Revolution. Therefore, patent attorneys must be able to represent clients in court together with attorneys at law for patent infringement suits, like the U.S., the EU., Japan, and China.

In order for attorneys at law to continue to be respected by people, their businesses must be based on justice, fairness and common sense. All people are watching whether they are sincerely doing their actual job.