Membership Application to the Korean Patent Attorneys Association by Lawyer (IP News published by the Korean Patent Attorneys Association on July 10, 2023)
Myung Shin Kim, Past President, The Korean Patent Attorneys Association
A lawyer demanded an administrative lawsuit against a reprimand action by the Commissioner of the Korea Intellectual Property Office (KIPO) at the Seoul Administrative Court. The reprimand was issued because the lawyer did not join the Korean Patent Attorneys Association (KPAA), while performing patent attorney work by obtaining the patent attorney’s qualification under the former Patent Attorney Act, but the demand of the administrative lawsuit was dismissed. However, the lawyer filed a constitutional complaint claiming that such a reprimand action violates the freedom for selection of occupation and equal rights guaranteed by the Constitution, and this case is currently pending at the Constitutional Court.
While reviewing this case by chance, I found a severe problem, and I thought that I had to inform our KPAA members of it so as to revise the Patent Attorney Act (PAA) to secure a firm status for the public interest of the KPAA in the future. In 1961, the number of lawyers in Korea was about 800, whereas the number of patent attorneys was about 30. At this time, lawyers could earn the qualification of patent attorney automatically and perform patent attorney work without any practical training after obtaining membership in the KPAA and paying the entrance fee of about USD50. Before the establishment of various professional qualification systems, as we have today, there were no other choices, lawyers were automatically qualified as patent attorneys, tax accountants, customs agents, labor agents, and real estate agents. However, over the years, while various professional qualification systems were developed more professionally, the number of professional qualifiers were increased very much. As of the end of 2022, the number of each qualifier is as follows; Tax Accountant (14,692), Judicial Scrivener (7,152), Patent Attorney (4,350), Labor Agent (3,108), Real Estate Agent (118,049), Lawyer (27,732).
In 1966, about ten persons passed the bar examination. But in 2022, about 1,700 people passed the bar examination, whereas 210 persons passed the patent attorney’s test. In 1990, a revised bill for the Lawyer Act was submitted to the National Assembly stating that lawyers automatically acquire the qualifications of the judicial scrivener, patent attorney, tax accountant, labor agent, and real estate agent and may perform their businesses without having any member of these associations. But this bill was withdrawn due to severe protests from these organizations and being against public opinion.
Since patent attorneys handle patent application cases according to various professional technology fields, most patent attorneys have established joint offices or corporative law firms because customers have requested patent attorneys to treat many kinds of technical fields, even though there are still some offices managed by only patent attorney. Patent attorneys must thoroughly study the Patent Act, Utility Model Act, Industrial Design Act and Trademark Act, but also Civil Code, Civil Procedure Code, Copyright Act, Administrative Act, Invention Promotion Act, Semiconductor Integrated Circuit Layout Design Act, Unfair Trade Practices Investigation and Industrial Damage Relief Act, Act on Leakage Protection and Protection of Industrial Technology, Act on Prevention of Unfair Competition and Protection of Business Secret, Act on Protection of New Varieties of Plants, Internet Address and Resources Act, Seed Industry Act, etc. Only when patent attorneys study all of these acts can they perform their duties well.
The business of patent attorneys has a strong international aspect. So, English is included in the patent attorney’s examination, and the right of inventors can be well protected by studying and understanding the numerous international conventions, treaties, and agreements, including the Paris Convention for Protection of Industrial Property, the Patent Cooperation Treaty, the European Patent Law Convention, the European Single Patent and Unified Patent Court Convention, the International Convention on New Varieties of Plants, the Budapest Treaty on International Deposit and Recognition of Microorganisms, the Protocol of Madrid Agreement for International Registration of Marks, the Hague Agreement for International Registration of Industrial Designs, and the Trademark Law Treaty, etc.
Under the 4th industrial revolution era, advanced technologies are closely related to national security and international patent lawsuits are frequently demanded around the world. Taking a look at the patent infringement lawsuits regarding mobile phones between Apple and Samsung a few years ago, many kinds of technical and legal issues were disputed in the courts, including the confirmation of the scope of a patent claim, the comparison between public technology and the content of a patent claim, the comparison between standard technology and patent technology, invalidation of the patent ( novelty or inventive step ), comparison between accused technology and patent technology, patent infringement ( direct or indirect ), exhaustion of patent rights, abuse of patent rights, violation of the Fair Transaction Act, Estoppel principle, calculation of damage amount, license agreement under fair, reasonable, and nondiscriminatory conditions, etc. It is obvious that the contents of professional businesses of patent attorneys and lawyers are quite different.
Referring to foreign examples, twenty-seven countries in Europe, The United States, the United Kingdom, Japan, and China do not allow lawyers to earn the qualification of patent attorney automatically and perform patent attorney work without any practical training and joining the Patent Attorneys Associations in their countries. The Japanese lawyers having a qualification of patent attorney joined the Japanese Patent Attorneys Association to obtain information on industrial property and prepare for a patent infringement lawsuit in the future. In general, they did not file any patent applications unlike in Korea. When a court or public prosecutor’s office requests an official appraisal of an infringement of industrial property rights to the KPAA, the KPAA selects three members in consideration of their major field who have no business interests with the requested cases by the Appraisal Case Management Regulations. In addition, the majority and minority opinions in the written appraisal were excellent references for the judge concerned. In total, this service by the KPAA has build public confidence significantly. Further, the patent attorneys appointed by the government have helped people who had a hard life and need the support for their patent trials. Additionally, since 1997, the KPAA has operated a free consultation service at the KIPO, the branch office of the KIPO in Seoul, and the Small and Medium Enterprises Promotion Complex. As a result of reviewing the PAA, including Article 7 ( prohibition of bilateral representation), Article 7-2 (ban on partnership with a non-patent attorney ), Article 7-3 ( prohibition of introduction and placement of patent attorney’s business ), Article 8-2 ( obligation of dignity maintenance and sincere fairness ), Article 8-3 ( prohibition of the lending name ), Article 8-4 ( responsibility of guidance and supervision to office staffs ), Article 8-5 ( restriction of advertisement ), Article 12 ( ethic regulation ), Article 14 ( opening of members’ information ), Article 15 ( practical training ), Article 15-2 ( activity for public interest ), Article 16 ( disciplinary committee to a patent attorney ) and Article 17 ( sanction to a patent attorney ), the KPAA is not only an organization for promoting personal friendship, but a legal one approved for public interest and development of the industry.
By the way, organizations such as the Korea Bar Association, the Korea Judicial Scriveners Association, the Labor Agents Association, the Korea Tax Accountants Association, and Korea Customs Agents Association have been allowed to join these organizations with registrations of their qualifications. The reason is that even if these associations have different purposes, they were recognized as legal entities for the public interest.
On the other hand, even if a lawyer was qualified as a patent attorney, according to the former PAA, if this lawyer performs patent attorney’s business without joining the KPAA, there was a specific punishment However, there was a time when the former PAA arbitrarily forced a qualified person to join the KPAA for several years, which is different from all other professional associations. This was done unreasonably in the name of reforming various social regulations. This significant change in joining the KPAA caused a public opinion change that lawyers should not automatically acquire the qualifications of patent attorneys without any collective education and practical training. Thus, the PAA was revised on January 27, 2016. Following Article 3 of the Revised PAA and Article 2 of the revised Presidential Decree, lawyers must complete 250 hours of collective education and six months of on-site practical training to obtain patent attorney’s qualifications. Further, Article 11 of the PAA forced a person who intends to begin a patent attorney’s business to join the KPAA. Unfortunately, the punishment regulations for those who did not join the KPAA and performed patent attorney work has been omitted due to a lack of legislation.
This is as if Article 86, Para. 5 of the National Assembly Act does not have punishment regulations, such as disciplinary action when violating the mandatory rules that the Legislation and the Judiciary Committee should only examine a bill within the scope of the legal system and wording. That does not mean they do not have to comply with this mandatory regulation. Moreover, in the reality that the Korean Patent Bar Association is composed of lawyers is established, if a lawyer who demanded a constitutional complaint wins the complaint at the Constitutional Court, this may lead lawyers to file patent applications or even write appraisals without joining the KPAA or having any practical training based on the fact that the lawyer has already obtained a patent attorney’s qualification.
Therefore, we should all join the KPAA, like other professional associations, considering the development of the industrial property system and the firm status of the KPAA in the future. To accomplish this goal, we need a resolution for revising the PAA through the standing board of directors, the general meeting of representatives, and the annual assembly of the KPAA. |
