The Korean National Assembly passed revision bills to the Korean Patent Act, the Korean Trademark Act, the Korean Design Protection Act and the Korean Invention Promotion Act that will go into effect on November 18, 2021. The revisions primarily pertain to measures designed to improve the IP dispute resolution in trials before the Board of Trials by way of, inter alia, introducing both a patent trial-mediation linkage system and a stricter requirement of timely presentation of evidentiary materials/arguments.

▶Linkage System between Patent Trials and Mediation

As an alternative to patent trials and litigation, which are generally time consuming and costly endeavors for dispute resolution, the Committee for Mediation of Disputes over Industrial Property Rights (“CMDIPR”) has been established under the Korean Invention Promotion Act to resolve such disputes through mediation. However, since there was no linkage system between patent trials and mediation, mediation has not been considered an adequate alternative to patent trials in practice: for even when parties wanted to opt for the mediation route, they could not but simultaneously carry out a trial before the Board of Trials.

To resolve the above anomaly, the revisions provide a linkage between mediation and patent trials, in which i) a presiding trial examiner may suspend the patent trial procedure and send the case to the CMDIPR with the consent of both parties, ii) when the case is sent to the CMDIPR, the records of the trial procedure will be forwarded thereto, and iii) in case the dispute is resolved through the mediation, the petition for trial shall be considered withdrawn, while in case mediation fails, the trial procedure shall be resumed (Article 164 bis of the Korean Patent Act).

As a follow-up to the revision bills, however, the Board of Trials further announced that the patent trial mediation linkage system will be invoked only in those cases where the trial examiners in charge cannot reach a consensus and the disputes are reasonably expected to continue through the Patent Court, and then to the Supreme Court.

Consequently, if the presiding trial examiner in charge 4 of a case brings up the alternative of taking the case to the CMDIPR to the parties, it may imply that the opinions of the trial examiners are split. Therefore, it is expected that parties would more seriously consider such a suggestion to resolve their disputes through mediation.

▶Timely Presentation of Evidence/Argument

The Korean Civil Procedure Act provides that the method of offense or defense shall be produced in a timely manner not to delay the progress of litigation. However, since there is no provision regarding a time limit for submitting any evidence/argument in the procedural provisions for an IP trial, the trial procedure has often been delayed due to belated submission of evidence/argument.

By having Articles of the Civil Procedure Act requiring the timely presentation of evidence/arguments, i.e., Articles 146, 147 and 149 of the Civil Procedure Act, apply mutatis mutandis to the revised laws, the legal basis has been established for a presiding trial examiner to set the period for submission of any averment/evidence and to reject the averment/ evidence that has been belatedly produced.

▶Support Personnel within the Board of Trials

The number of cases handled by each Korean Trial Examiner is excessive compared to other major countries; and, moreover, Examiners have found themselves spending more time and effort trying to understand the technologies due to the rapid advancement thereof, adding an even heavier burden on them. To alleviate such burden, the revised laws provide a legal basis to retain support personnel who can help conduct investigations and research on trial cases brought before the Board of Trials.