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.