Suggestion on the Revision of the Patent Attorney Act

(I. P. News published by the Korean Patent Attorneys Association on January 20, 2024)

                                                                           Myung-Shin Kim, Advisor

                                                               The Korean Patent Attorneys Association

During the last three, in 2006, 2008, and May 2022, the Revision Bill for the Patent Attorney Act(PAA), that in case a lawyer was appointed as a legal agent for the patent infringement suit, the party concerned may appoint the patent attorney additionally as a legal agent, passed by the Standing Committee concerned of the National Assembly (NA). After that, these bills were submitted to the Legislative Judiciary Committee (LJC) to check the legal system and wording. However, the LJC members who are qualified as lawyers judged that there was a possibility to cause a disadvantage to the lawyer's business, and the LJC sent these bills to the Second Subcommittee called the Tomb of the Bills without reviewing any legal system, legal wording, or feasibility of the bills.

This unfair abuse of authority by the LJC continued not only when amendment bills to the PAA but also when amendment bills to the Tax Agent Act, Certified Labor Agent Act, Custom Agent Act, and the Certified Real Estate Agent Act were passed by the Standing Committee concerned of the NA after long deliberation. We cannot help but lament that the lawmakers, especially the LJC members, have continued to commit illegal acts.

To correct this operation of the LJC, on September 14, 2021, the NA established Article 86, Para.5 of the National Assembly Act (NAA) newly, that "the LJC shall not examine the bill beyond the legal system and wording." However, it remains a strange mandatory regulation without disciplinary regulations. Moreover, suppose any member of the LJC having a conflict of interest participates in the deliberation of the bill without applying for the avoidance of the conflict of interest according to Article 32-5 of the NAA. In that case, it will be subject to disciplinary action under Article 155 of the NAA. But, I have never heard of any case in which the LJC members have been disciplined according to Article 155 of the NAA.

As long as this situation continues, no matter how the revision bill of the PAA passes the Standing Committee concerned of the NA, it cannot pass the LJC.

On the other hand, considering the current industrial property practice in which patent attorneys are involved, it is better to specify semiconductor integrated circuits, computer programs, related tasks under the Unfair Competition Prevention and Trade Secret Protection Act, new plant varieties under the Seed Industry Act, Domain Names, industrial property registration under the Customs Act, and industrial property-related tasks under the Foreign Trade Act, as the business of patent attorney in the PAA. It is because, in reality, even though the patent attorney is involved in them, if there is no precise regulation in the PAA, the legal problem of violating the Lawyer Act emerges.

In addition, the test takers for the patent attorney chose the Copyright Act and the Design Protection Act the most among the elective subjects for the second examination, and in particular, most people chose the Copyright Act. In this environment, I proposed to adopt the Copyright Act as the second mandatory subject for the patent attorney examination. In March 2022, it was decided at the General Assembly of the Korean Patent Attorneys Association (KPAA) as proposed, and the KPAA requested the Commissioner of the Korean Intellectual Property Office (KIPO) to change the second test subject. Suppose the Copyright Act is adopted as the second mandatory subject for the patent attorney examination. In that case, it will provide a turning point for the patent attorney's business, just as the Civil Procedure Code was adopted as a mandatory subject for the patent attorney examination in 1997.

To carry out the business by a patent attorney, a patent attorney must join the KPAA, a legal organization for the public interest. However, it was later found that there were no direct criminal regulations, even if any patent attorney did not join the KPAA, only after registering the qualification of patent attorney at the KIPO. Those people did not pay the membership fees of the KPAA and have yet to join the practical training education course required for the actual practice.

The KPAA and the Korean Appraisers Association are now arguing over the appraisal of the value of industrial property rights. The valuation of general real estate and movable property belongs to an appraiser's business. Still, it is outrageous for an appraiser to evaluate the value of industrial property rights without having any knowledge of them. So, the assessment of the value of industrial property rights must be specified in the PAA, in addition to the appraisal on the infringement of industrial property.

In these situations, I propose some suggestions as follows;

First, the five qualified organizations (the KPAA, the Korean Tax Agents Association, the Korean Certified Labor Agents Association, the Korean Customs Agents Association, and the Korean Real Estate Agents Association) should file a constitutional petition with the Constitutional Court (CC) under the joint name that the illegal operation of the LJC ignores the equal rights of the people guaranteed by the Constitution and violates the Conflict of Interest Prevention Act and the NAA. This claim is different from the previous claim that the regulation of the PAA, in which a lawyer who is qualified as a patent attorney must join the KPAA, violates the Constitution. It will take much time for the CC to judge this claim. But it is something to be done one day. So, we should file it as soon as possible, considering the hearing period.

Second, the five qualified organizations jointly attempted a national consent legislative petition, according to the NAA, to revise the current NAA to examine the legal system and wording by the LJC in another department within the NA, such as in advanced countries. However, despite the number of members of the five organizations reaching over 140,000, there were only 160,000 or so, far short of the required 50,000 petitioners within one month. Finally, our petition was not recognized as an official petition.

This legislative petition will be discarded after the NA session in April. So, we must try it again after the general election in April. However, the five organizations should proceed with the campaign more actively and create YouTube so that the general public can participate in this petition campaign voluntarily, thereby achieving more than 50,000 petitions and revising the NAA.

Third, under Article 39 of the Establishment and Operation Act of the Civil Rights Commission (CRC), the five organizations should file a complaint with the CRC that all members of the five organizations have suffered irreparably due to the illegal operation of the LJC so that the CRC makes a recommendation to the NA to revise the NAA for correcting the unfair practice.

Fourth, the five organizations must submit a petition to the speaker of the NA to discipline the members of the LJC who violated Article 32-5 of the NAA and Article 4, Para.3 of the Conflict of Interest Prevention Act by Article 155 of the NAA.

Fifth, according to what I have learned, the U.K. IP Business Association asked the U.K. Ministry of Foreign Affairs, which is preparing a negotiation with the Korean Ministry of Foreign Affairs for FTA so that Korean patent attorneys can represent patent infringement suits in Korea, just as the British patent agents represent them in the U.K. If this request is valid and this negotiation is successful, it will be of great help to amend the PAA.

Sixth, we should amend the PAA to expand the business of patent attorneys realistically, and the Presidential Decree of the PAA should be amended to change the Copyright Act into a secondary mandatory subject for patent attorneys' examination.

Seventh, we must revise the PAA to punish a patent attorney criminally if any person performs a patent attorney's business without joining the KPAA even though the person registered the qualification of patent attorney with the KIPO.

Eighth, we must amend the PAA to state that the appraisal of the value of industrial property rights belongs to the patent attorney's business.

Ninth, we must carry out a large-scale PR to complain about the illegal and unfair activities of the LJC.

Tenth, if the LJC does not correct the operation method no matter how best we tried, the five organizations may consider filing a complaint under the joint name against the members of the LJC who have the qualifications of lawyers.

The lawyer and patent attorney have represented jointly the international patent infringement suits under the advanced technology era. The financial burden of the lawsuit's outcome is significantly beyond our imagination. The patent invalidation case currently represented by a patent attorney and the patent infringement lawsuit represented by a lawyer are all the same in that the issue is whether the public technology or infringement technology falls within the scope of the patent right, and these two cases are proceeded according to the Civil Procedure Code.

The large law firms where lawyers and patent attorneys work together have monopolized patent infringement lawsuits until now. So, the litigation costs were too expensive. If patent attorneys are allowed to represent the lawsuits, the lawyers of small and medium-sized law firms will have a chance to work, and the litigation costs will be reduced a lot. The litigation period has been much delayed because only lawyers who needed to understand the advanced technology represented the lawsuits.

The science, technology, and industry circles and litigants of patent infringement lawsuits have longed for a patent attorney's representation for twenty years. We need to enhance national competitiveness and review the international precedents on the representation of patent infringement lawsuits in the U.S.A., U.K., EU, Japan, China, and Taiwan.

A bill for revising the NAA is already pending at the NA, and further the speaker of the NA is advising for changing the examination rights on legal system and wording of the LJC to other organization within the NA to the political leaders.

Considering all these facts, the PAA will likely be passed by the twenty-first NA, or at the latest, the twenty-second NA, because there is a high possibility of revising the NAA due to the illegal operation of the LJC.