REMEDIES FOR THIRD PARTY’S PATENT INFRINGEMENT

(1) Injunctive relief/preliminary injunction for infringement

A patentee may request an injunction or prevention against a person who infringes or is likely to infringe his rights. Generally, a cease and desist letter is used to demand the allegedly infringing party to stop the infringement, and if he still refuses to cease the infringing activity, a civil claim can be filed to enjoin the infringement.

• Things to consider when petitioning for a preliminary injunction

If a case is litigated on the merits, it is common for the case to last from one (1) year to several years depending on the complexity of the dispute. On the other hand, in the case of request for preliminary injunction, in general, the results can be obtained in three to six (3-6) months, therefore sometimes a preliminary injunction is petitioned prior to a litigation on the merits.

However, unless an obvious patent infringement is recognized, a preliminary injunction proceeding can become just as intense and take as long as a case on merits itself and judges are more or less conservative in finding for the plaintiff. Therefore, caution must be taken when proceeding with a preliminary injunction and extensive consult with patent lawyers should be accompanied in determining whether to proceed with the petition.

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(2) Claim for damages

A patent holder can claim compensatory damages for a loss inflicted by a person who has intentionally or negligently infringed the patent.

• Introduction of punitive damages (The Amended Patent Act, enforced on July 9, 2019)

Punitive damages provides for a system that allows a patent holder to recover a maximum of treble damages for the patent infringement in case where the infringement was intentional. When determining the amount of damages, several factors such as the superior status of the infringer, the degree of intent, the duration and frequency of the infringement, the extent of damages suffered by the patentee and the degree of economic benefits obtained by the infringer are considered as a whole. With the introduction of punitive damages, much stronger protection for the patent holder is anticipated.

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(3) Criminal liability for patent infringement

Patent infringement constitutes a crime punishable by imprisonment of up to seven (7) years or by a fine of up to KRW 100 million. Filing a criminal complaint, separate from civil infringement suit, is a widely used tactic in Korean practice since the alleged infringer could be put under a lot of pressure in coping with the criminal investigation and, if patent infringement is anticipated, chances are the infringer would attempt to settle the case in order to avoid any possible criminal prosecution.