DEFENSES TO A THIRD PARTY'S INFRINGEMENT CLAIM

(1) An action to confirm the scope of rights 

A party defending against a patent infringement claim can initiate an action to confirm the scope of rights before the Intellectual Property Trial and Appeal Board. The purpose here is to receive confirmation that the technology he is practicing is not within the patent holder's scope of the rights.

(2) An action for invalidation 

A more aggressive response is to bring an invalidation action at the Intellectual Property Trial and Appeal Board. This is to invalidate the patent by reason of lack of novelty, non-obviousness or other reasons set out under the Patent Act. In Korea, up to 60-70% of patents are held invalid through this invalidation trial or infringement suit. Therefore, when faced with a patent infringement claim, the defending party usually opts for an invalidation claim against the claimant. It is important to conduct an extensive prior art search and examination to collect as much information as possible to invalidate the other party's patent.

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(3) A defense of public domain technology

A “technology in public domain” refers to a technology which is identical or can be created through pre-existing technology publicly known prior to application filing of the patent at issue. If the alleged infringing machine or process falls under the technology in public domain then, even without comparing against the patented invention at issue, it is held to be not infringing. It is not uncommon for a party defending against a patent infringement claim to assert that his allegedly infringing product or method constitutes a technology in public domain, while at the same time seeking an invalidation claim against the patent holder. 

(4) Inventing around

When the chances seem fairly high that a patent infringement may have taken place, it is advisable that the defending party consider a design around method, such as removing certain components which would fall under the claimant’s patent rights from the technology in use, in addition to the responses mentioned above.