Revising the Patent Attorney Act to Lower the Barriers

for Patent Infringement Lawsuit

(Contributed Article, December 17, 2024, Maeil Business Newspaper)

Myung Shin Kim, Honorary President

Asian Patent Attorneys Association

Japan, a signatory to the Kyoto Protocol under the UN Framework Convention on Climate Change since 1997, must reduce carbon dioxide emissions to protect the natural environment. However, Japan consumes approximately 20 billion wooden chopsticks every year.

Japan has imported 97% of the timber for chopsticks from foreign countries because its domestic forests could not meet the demand. The rationale for avoiding wooden chopsticks is overshadowed by the customs and sentiments favoring their use, which directly contravenes the Kyoto Protocol.

This represents a clash between the obligation to honor commitments and the human desire to pursue convenience. Such a situation is not exclusive to Japan, and other countries in similar circumstances may face the same dilemma.

In the realm of patent infringement lawsuits dealing with advanced technologies, outdated practices, and sentiments still persist. A representative example is the revision bill to the Patent Attorney Act, which allows a patent attorney to be appointed as an agent at the litigant's request in cases where a lawyer already represents a party in a patent infringement lawsuit.

Since 2004, the revision bills to the Patent Attorney Act have been submitted to the National Assembly five times, passing the Standing Committee on Industry and Resources three times. However, the Legislative and Judiciary Committee of the National Assembly has consistently blocked the bills, citing issues related to legal structure and terminology, without conducting meaningful deliberations. These bills have repeatedly been discarded at the end of legislative sessions.

In June of this year, the sixth bill to revise the Patent Attorney Act was submitted to the National Assembly. The legal community criticizes patent attorneys for lacking knowledge of civil litigation. However, since 1997, the Civil Procedure Code has been mandatory for the patent attorney qualification examination.

Furthermore, patent attorneys must undergo mandatory annual training in civil litigation practice after passing their qualification examinations. Since March 1998, patent attorneys have effectively represented their clients before the Patent Court for the appeal suits against the decision of the Intellectual Property Trial and Appeal Board.

However, these bills have repeatedly been automatically discarded. There is also criticism that patent attorneys who have science and engineering backgrounds lack legal knowledge. However, as mentioned above, the patent attorney qualification examination includes Civil Law and Civil Procedure Code. In technical fields, systematic and extensive study over many years is required to become an expert in technology and patent law.

Large law firms where lawyers and patent attorneys work together virtually monopolize the domestic patent infringement litigation market. Since patent attorneys cannot independently represent litigation cases, large law firms hire patent attorneys and dominate the patent infringement litigation market. Consequently, nine out of ten small and medium-sized enterprises reportedly give up on patent infringement lawsuits because they cannot afford the costs. Granting additional litigation representation rights to patent attorneys would provide small law firms with opportunities to collaborate with patent attorneys and significantly reduce litigation costs.

In cases of patent infringement lawsuits, lawyers are initially appointed, and patent attorneys are only appointed as additional agents by the litigant. This is not a mandatory requirement.

The Unified Patent Court of the European Union, which opened in June last year, allows patent attorneys to act as litigation representatives and even grants them the qualifications to serve as technical judges. Furthermore, major countries such as the United States, Japan, and China also grant patent attorneys litigation representation rights.

In Japan, where the joint representative system involving lawyers and patent attorneys was introduced more than 20 years ago, the average litigation period has been reduced by ten months.

On the Armed Forces Day, the unveiling of the domestically produced missile Hyunmoo-5 reminded us of the importance of science and technology. Such technological advancements must be protected through patents, and proper litigation support is essential to ensure their continued development. In consideration of the long-standing wishes of the scientific and industrial communities and global trends, the Patent Attorney Act must be revised to serve the national interest.