Lee International

The Korean Intellectual Property Office (KIPO) recently announced that a proposed bill to introduce an evidence collection procedure has been submitted to the National Assembly’s Trade, Industry, Energy, SMEs and Startups Committee, initiating the legislative process.  Discussions around this procedure have been ongoing since 2019, aimed at addressing the challenges of collecting evidence, often protected as trade secrets, in patent infringement litigation.

Evidence collection refers to a legal process in which both parties in a patent infringement lawsuit are required to disclose relevant materials to clarify issues related to infringement and damages.  Similar procedures are already implemented in jurisdictions including the United States, the United Kingdom, Germany, and Japan.  For instance, the U.S. employs a discovery procedure that allows parties to effectively obtain evidence related to infringement and damages.  In Germany, an inspection procedure enables court-appointed experts to investigate and gather the necessary evidence to establish infringement or determine the extent of damages.

The introduction of an evidence collection procedure has been delayed largely due to opposition from the Korean semiconductor industry.  Korean semiconductor companies have expressed concerns that this type of procedure might disproportionately benefit foreign companies, especially those with extensive patent portfolios, and could result in indiscriminate evidence collection and rampant abuse of litigation against domestic companies.

In response, KIPO engaged in ongoing dialogue with the semiconductor industry and revised the proposal to address these concerns.  The finalized draft includes key provisions such as: ▲ evidence inspection by court-appointed experts, ▲ orders to evidence preservation, and ▲ off-site interrogations.  Additionally, it introduces ▲ enhanced penalties for breaches of confidentialities by experts, and ▲ a new criminal offense for violation of evidence preservation order.

If implemented, the evidence collection procedure is expected to move beyond the current practice of withholding evidence under the pretext of trade secret protection.  The new procedure would allow for more effective evidence gathering in patent infringement lawsuits and offer greater transparency in proving infringement and calculating damages.  As a result, it is anticipated to significantly enhance the enforcement of patent rights within the Korean intellectual property landscape.