Lee International

South Korea currently lacks a formal evidence collecting process available in a lawsuit, posing practical difficulties for litigants in IP infringement cases seeking evidence.  For example, in 2019, a Korean company, LG Chem (now LG Energy Solutions) filed a trade secret infringement lawsuit against another Korean company, SK Innovation in the United States, rather than in Korea.  This strategic decision by LG Chem was likely rooted in the calculation that pursuing the lawsuit in the United States, where evidence collection is more accessible under the discovery process, would better serve their objective of uncovering the substantive truth.  Furthermore, there has been a growing demand for the Korean discovery process to secure the effectiveness of the punitive damages introduced in 2019 and the damages calculation method revised in 2020.

In 2020 and 2021, three members of the National Assembly proposed amendments to the Patent Act to introduce the Korean discovery process.  The Korean Intellectual Property Office (KIPO) has actively supported the implementation of a practical system for such evidence collection process in collaboration with the National Assembly.

The proposed Korean discovery process entails expert’s evidence gathering.  Specifically, a court-appointed expert would examine the infringement site, gather evidence to prove infringement and damages, and prepare expert’s report, which would be used as evidence.  Preservation orders are also part of the proposed Korean discovery process, mandating the parties to prevent the loss or destruction of evidence.  Depositions are included, to enable the involved parties to interview witnesses in the presence of court personnel.  Additionally, it was proposed to impose expert’s confidentiality that an expert who is involved in expert’s evidence gathering is obligated to maintain confidentiality.  

The KIPO recently finalized a proposed version of the Korean discovery process after multiple rounds of discussions.  In this final version, KIPO incorporated industry feedback, specifically addressing the need for enhanced requirements for initiating expert’s evidence gathering and addressing concerns regarding the person under investigation’s insufficient right to oppose it.  Specifically, the criteria for initiating expert’s evidence gathering were modified from “likelihood of infringement” to “substantial likelihood of infringement,” and this process will only be available when no other means of gathering evidence exists.  Further, the person under investigation is allowed to make an objection to the decision to initiate expert’s evidence gathering and file a petition to avoid the specific expert.  In addition, the final revision strengthens the penalties for disclosing confidential information by the expert.

The KIPO intends to gather feedback from the industry professionals and experts regarding the final version and subsequently commence the legislative process.