Reasonable Protection of Intellectual Property

(Daegu Daily Newspaper on October 3,2022 )

                                                                                             Myung Shin Kim

                                                                                             Advisor,The Presidential Council on Intellectual Property

A bill stating that in case where a party has appointed an attorney at law as an agent for a patent infringement lawsuit, if the party wants, they may appoint a patent attorney as an additional agent, was passed through the Industry, Trade, Resource, Medium & Small Venture Enterprise Committee of the National Assembly in May 2022. The bill is now pending at the Legislation and Judiciary Committee (LJC). This amendment bill of Patent Attorney Law (PAL) is the third try in the National Assembly. According to this bill, a patent attorney must attend the court together with an attorney at law.

Now, let us think about the function and power of the LJC.

According to the National Assembly Law (NAL), the LJC can only examine whether a bill accords with the legal system or has improper wording. Nevertheless, taking this opportunity, the LJC adjourned the session without examining the bill, which is against the attorneys at law's interest.

As such, in September 2021, the National Assembly newly stipulated Article 86.Para.5 of NAL. This Article says that the LJC should not examine beyond whether a bill accords with the legal system or if there is any improper wording. Further, Article 32-4 and 32-5 of NAL says that in case a member of the National Assembly has a business conflict with a bill, such member must apply the evasion for the bill to the chairperson of a Committee.  According to this Article, the attorneys at law of the LJC must evade the examination for the revision bill of PAL on the qualification issue of a patent attorney as an agent for the patent infringement lawsuit.

Regarding this bill, the Korean Federation of Science and Technology Societies, the National Academy of Engineering of Korea, the Korean Certified Technicians Association, the Korea Venture Enterprises Association, and almost all companies involved with patent infringement lawsuits, eagerly wish it to pass through the National Assembly.

The U.K., the European Union (27 countries), Japan, and China have already empowered patent attorneys to act as an agent for patent infringement cases. In 2002, Japan, which is more conservative than Korea in its judicial system, accepted the request from the industrial world and empowered patent attorneys to act as an agent for patent infringement lawsuits, together with attorneys at law. Thus, it is reported that the litigation periods, in comparison with those represented only by attorneys at law, in general, were shortened by about ten months. Until now, large law firms in which attorneys at law and patent attorneys work together have handled most patent infringement lawsuits. Therefore, the litigation costs were very expensive. However, if the revised bill of PAL passes through the National Assembly, the litigation costs will be cheaper because medium and small law firms will have an opportunity to work.

In June 2022, the International Management Development Institute in Switzerland announced the evaluation report on I.P.Policy Execution among sixty-four countries worldwide. In this report, Korea ranked thirty-seventh in the execution of the I.P. Policy, even though Korea is second in the ratio in the investment for research to Gross National Products and fourth in number of patent applications.

As an example, in 1997 Saehan Information System Co., Ltd., in Korea, obtained a patent for an MP3 Player for the first time in the world. Unfortunately, this patent right was transferred to an American company due to a management shortage. If this patent right had been owned by a Korean company, the territory of music download stores in the world would have changed a great deal. This shows that the role of a patent attorney is very important.

When Samsung and Apple proceeded with worldwide litigation regarding cellular phone patents, betting life and death of the two companies, the attorneys at law and patent attorneys worked together on the legal and technical issues.

Additionally, it took eleven years and eight months for the patentee of the diaper patent to receive the final judgment from the Supreme Court because we have dual court systems for invalidation trials and infringement suits, and the attorneys at law and judges did not understand the technical issues well.

Finally, patent infringement cases were concentrated in several District Courts and the Patent Court as the second instance court after amending the Court Organization Law.

The I.P. itself is the national competitiveness power under the 4th industrial property revolution era. Therefore, the issue of an agent's qualification as a patent attorney for patent infringement suits is not a simple business conflict between the attorneys at law and patent attorneys. Considering that advanced technology has now become a worldwide security issue, I hope that the LJC and National Assembly will pass the bill for amending PAL at this time in order to actively manage the national interest and realize a fair society in the severe international patent war.