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▲ Text messages sent by lawyers to lawmakers against joint representation in patent infringement lawsuits

A head-to-head clash between lawyers and patent attorneys...

What is the right of attorney for patent infringement litigation?


The tension between lawyers and the patent attorney industry is continuing over the 'recognition of joint representation rights of patent attorneys in industrial property infringement lawsuits', which passed the National Assembly's Small and Medium Venture Business Committee on May 12 and was referred to the Legal Judiciary Committee.



The Korean Bar Association, representing lawyers, said, "If we entrust patent infringement lawsuits to patent attorneys who do not know the law, the people's right to a fair trial will be infringed."

On the other hand, the Korean Patent Attorneys Association said, "In order to properly protect the rights of inventors guaranteed by the Constitution and contribute to industrial development in patent infringement litigation dealing with highly technical inventions, a patent attorney's litigation representative in a patent infringement litigation case is required. It is necessary. It is not a sole litigation representative for a patent attorney, but a joint litigation representative with a lawyer, so there is no problem.”



The Patent Attorneys Association said, "There is a high possibility that the amendment bill to the Patent Attorneys Act will again be stranded at the National Assembly Judiciary Committee, where most of the members are lawyers."

The motion to allow lawyers and patent attorneys to jointly represent patent infringement lawsuits, first proposed in the 17th National Assembly in 2006, was proposed one after another in the 18th, 19th, and 20th National Assembly, but it is a move considering the fact that it has not passed the Legislation and Judiciary Committee for 15 years. to be.



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▲ Articles 2 and 8 of the Patent Attorneys Act, which stipulate that patent attorneys represent litigation

'A patent attorney can be a litigation agent'...

Controversy over interpretation of Article 8 of the Patent Attorney Act


The Patent Attorneys Act was enacted in 1961 for the purpose of 'establishing a system of patent attorneys to protect the rights and interests of inventors and to contribute to the development of industrial property rights systems and industries'.



Article 2 of the Patent Attorney Act stipulates that 'a patent attorney's business is to represent matters pertaining to patents, utility models, designs, or trademarks to the Korean Intellectual Property Office or the court, and to perform appraisal and other affairs regarding such matters'.

In addition, Article 8 of the Patent Attorney Act stipulates that 'a patent attorney may act as a litigation agent for matters related to patents, utility models, designs, or trademarks.'

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The Patent Attorneys Association believes that the 'agent' stipulated in Article 8 of the Patent Attorneys Act means that it can represent both criminal, civil, and administrative litigation related to industrial property rights expressed in patents, utility models, designs, and trademarks.

On the other hand, the Bar Association asserts that the representation allowed by the Patent Attorney Act is limited to administrative litigation.

Litigation representation stipulated in the Patent Attorney Act means only litigation against the Korean Intellectual Property Office, which is in charge of the registration of industrial property rights.



Taking patents as an example, patent attorneys can only represent litigation on decisions made by the Korean Intellectual Property Office, an administrative agency, and the Patent Tribunal under the Korean Intellectual Property Office, in the process of applying for patents and obtaining permission for registration of inventors. claim that it cannot be represented.

Patent attorneys can only represent litigation to cancel trial decisions related to registration of industrial property rights and to confirm the scope of rights.



The Patent Attorneys Association said that nowhere in the Patent Attorneys Act, which grants attorneys the right to represent litigation, does not stipulate the types of litigation representative work that patent attorneys can do, and that it is an administrative lawsuit against the Korean Intellectual Property Office and not a civil lawsuit that contests the economic interests of the parties. Judgment is said to be wrong.

It is argued that patent infringement litigation is the core of the work represented by patent attorneys by arguing whether the patent is invalid, the scope of technical content and rights guaranteed by the patent, the economic value of the patent, and the economic gain or loss resulting from infringement.



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▲ Article 3 of the Lawyers Act and Article 87 of the Civil Procedure Act, which stipulates the representation of lawyers in litigation

Constitutional Court and Supreme Court...

Does the highest judicial body represent the interests of lawyers?


Just as the Patent Attorneys Act stipulates that patent attorneys can perform litigation representation, Article 3 of the Attorney Act provides that “attorneys are responsible for litigation by delegation of parties and other related persons or by commission of the State, local governments and other public institutions. Its duties include acting as a proxy for acts and requests for administrative dispositions and general legal affairs.”



In addition, Article 87 of the Civil Procedure Act stipulates that 'except for an attorney who can perform judicial actions in accordance with the law, no attorney may serve as a litigation agent.'

Unless the right of representation is separately recognized by other laws, only lawyers can represent lawsuits.



Lawyers' associations claim that only lawyers can represent industrial property rights-related civil lawsuits against the court based on Article 87 of the Civil Procedure Act.

Although the Patent Attorney Act stipulates that patent attorneys can also represent litigation, that means only representing litigation related to administrative dispositions related to industrial property rights.

On the other hand, the Patent Attorneys Association argues that Articles 2 and 8 of the Patent Attorney Act mean that even a patent attorney can act as an agent in all litigation related to industrial property rights in court.



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▲ 1966 Seoul High Court Case 64 District 10 Decision Widely Recognizing Patent Attorneys


On July 14, 1966, five years after the Patent Attorney Act was enacted, the Seoul High Court made the first decision on the dispute between lawyers and patent attorneys over their litigation rights.



At the time, when the defendant raised the issue of the patent attorney's participation in the litigation representation in the lawsuit 'cancellation of the disposition of cancellation of invention patent' jointly represented by four lawyers and one patent attorney at the time, the first special division of the Seoul High Court said, "Chapter 7 of the Patent Act is about patents under Article 8 of the Patent Attorneys Act." As it will be said that it will include not only the litigation cases stipulated in (trial) but also litigation related to patents seeking revocation of the patent, it cannot be said that the act of representing patent attorney Kim Chang-seong is illegal.”

The legal representation allowed by patent attorneys is not limited to the litigation related to the patent adjudication service stipulated in Chapter 7 of the Patent Act, but is interpreted as a judgment to the effect that it is a litigation on all matters related to patents.


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▲ Patent Infringement Litigation Represented by Patent Attorneys


After the decision of the Seoul High Court, the litigation representation of patent attorneys related to industrial property rights was carried out smoothly, centering on the case of the Supreme Court, the third instance, the Intellectual Property Tribunal, the Korean Intellectual Property Office, and the Supreme Court, which were internally organized by the Korean Intellectual Property Office.

Immediately after the establishment of the Patent Court with exclusive jurisdiction over litigation for revocation of trial decision on industrial property rights on March 1, 1998, patent attorneys actively performed litigation representation in the Patent Court.



However, as large-scale patent infringement cases are increasing at home and abroad, and patent attorneys have been actively representing patent infringement lawsuits in addition to trial decision cancellation litigation since 1999, lawyers began to raise issues in earnest about patent infringement litigation by patent attorneys.

The Korean Bar Association also put a stop to the use of the words 'law' or 'law' in the names of newly permitted patent attorneys.



As the conflict between lawyers and patent attorneys escalated over the civil litigation representation rights over industrial property rights, the Ministry of Justice tried to amend the Addendum of the Civil Procedure Act in 2000 to limit the representation of patent attorneys to litigation for revocation of trial decisions, but it was canceled due to strong opposition from patent attorneys.

This is the part that points out that the patent attorneys used a tactic to secretly amend the supplementary provisions of the Civil Procedure Act rather than the original article of Article 87 of the Civil Procedure Act in order to usurp the attorneys' rights to represent them in civil litigation.



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▲ Amendments to the Civil Procedure Act proposed by the Ministry of Justice to restrict the representation of patent attorneys in litigation


Amid the conflict between lawyers and patent attorneys, the conflict over the representation of industrial property rights in civil litigation continued in the courts.

Most of the district courts did not raise any issues regarding industrial property rights civil litigation represented by patent attorneys, but the Seoul district court rejected the application for civil litigation representation by patent attorneys.



Koh Young-hoe, former president of the Korean Patent Attorneys Association, said, "Since 1999, patent attorneys have been thinking that they should sue in earnest in civil cases. In Uijeongbu, Bucheon, etc., patent attorneys’ litigation representation was recognized, but the central district court was not well recognized. "The reason for refusal to represent a lawsuit was not stipulated in writing, but was simply crushed. In some courts, when a patent attorney was registered as a litigation agent and filed, the representative changed the name of lawyer 00 to reply."



It was on November 4, 2010 that the court again made a formal ruling on the attorney's right of representation in civil litigation, which has been chaos for over 30 years, in the same court as the court that formally recognized the patent attorney's right of representation in 1966.

In a lawsuit against the Gyeonggi Cultural Foundation for prohibition of trademark infringement and compensation for damages filed by Mr. Han over the trademark 'Nam June Paik Museum of Art', the Seoul High Court did not recognize the application for appointment of an attorney submitted by Patent Attorney Koh Young-hoe.



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▲ Seoul High Court’s 2010 Na33219 decision not permitting a patent attorney to represent a civil litigation


In its judgment, the Seoul High Court said, "It is not clear in the text whether the provisions of the Patent Attorney Act allow a patent attorney to represent a lawsuit not only in litigation on trial decisions, but also in civil cases as well as criminal litigation." All of the litigation representation in the court conducted by the Patent Attorney was limited to 'litigation against trial decisions, etc.' stipulated in the Patent Act" (historical aspect), "In the Patent Attorney Act, various obligations and sanctions related to the permission of litigation are in Chapter (章). It is stipulated over several articles, rather than the law, so it is stipulated much more simply than the Attorney Act” (systematic aspect), “In regards to patent infringement litigation in the UK, Germany and Japan, joint litigation with a patent attorney’s lawyer Although the authority of representation is allowed, there are very few foreign legislative examples that allow a patent attorney to represent a lawsuit alone. "It is a matter of the legislator's decision whether or not to allow patent attorneys the right to represent themselves in a civil case lawsuit," he said.



“There is no reason why the provisions of the Patent Attorney Act are not clear in interpretation. Administrative litigation and preservation disposition cases are all civil litigation. The Seoul High Court's judgment that it is difficult to see is not understandable from common sense."



Former Chairman Koh said, "On November 4, 2010, at 10 a.m., the Seoul High Court West Building No. 30 Court was scheduled to give trial results for five cases, but at that time, the court ruled only the second case, the 'Nam June Paik Museum of Art' case. There was a happening that, while forgetting the scheduled case, he rushed out of the courtroom. I tried to find out why the court did not recognize the patent attorney's litigation representation, but I couldn't. This is why the judge, who had claimed to be a fair judge at the time, closed his eyes and explained the reason for the heat of the day. I think he left the courtroom in a hurry after issuing a judgment,” he said.



A plaintiff in the case of trademark infringement of the Nam June Paik Museum of Art, Mr. Han, appealed to the Supreme Court, dissatisfied with the decision of the Seoul High Court of Appeal.

Mr. Han appointed 16 patent attorneys, including Koh Young-hoe, as his legal representatives.



In response, the Supreme Court on October 25, 2012 said, 'This appeal was filed by a person who is not a lawyer and cannot represent the judicial act according to the law as a proxy.

If so, the appeal in this case is inappropriate because it violates Article 87 of the Civil Procedure Act.

I reject the appeal.



"

The representation is not a matter that can affect the merits as a procedural requirement.

Even if it is confirmed that an appeal has been made by an unqualified person, he should have issued an order to amend the agent and made a judgment.

"It doesn't make sense for the Supreme Court to dismiss the case without hearing the merits on the basis of the agent's qualifications," he said.



On August 23, 2012, two months before the Supreme Court's decision, the Constitutional Court, in response to a claim for unconstitutionality adjudication filed by seven patent attorneys including Mr. to be.

In order to protect the rights and interests of the parties to the litigation by securing professionalism, fairness, and reliability in the representation of patent infringement litigation, the reasonableness of allowing only lawyers to represent litigation in patent infringement litigation is recognized and it can be said that it is within the scope of legislative discretion.



It is a reasonable interpretation in light of the system of related provisions and the legislative history to consider that patent

attorneys' litigation rights are limited to litigation for cancellation of trial decisions."

It is a case with expertise in which it is impossible to accurately judge a case without understanding the substance of the technology. It is desirable to review the plan." He revealed the minority opinion of Judge Lee Dong-hup that the relevant law needs to be revised.



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▲ Trends in the size of domestic patent applications

Patent Attorney's Conflict with Patent Infringement Litigation Representation...

"National development and public interest must be prioritized"


On the 11th of last month, the Court Administration Office under the Supreme Court sent an opinion to the National Assembly against the amendment to the Patent Attorney Act, which stipulates that lawyers and patent attorneys can represent jointly in patent infringement lawsuits.

It was a day before the amendment to the Patent Attorney Act was submitted to the National Assembly's Industry, Trade, and Resources Venture Business Committee.



In its opinion on the amendment to the Patent Attorney Act, the Court Administration said in its opinion on the amendment to the Patent Attorney Act, "Patent infringement litigation is a unique area of ​​litigation that requires expert knowledge on complex civil law issues. "There is a risk of being abused as a means to evade or evade essential obligations, and the risk of litigation against fairness and ethics cannot be excluded."



In response, the Korean Intellectual Property Office said, “9 out of 10 domestic companies that have suffered intellectual property disputes are small and medium-sized venture companies, and 80% of small and medium-sized venture companies face the biggest difficulty in case of a patent dispute. They respond that the cost increases and the litigation period becomes longer. Both the trial decision cancellation litigation and the infringement litigation are based on the judgment of the scope of rights and whether or not there is infringement, which the patent attorneys represent.” opinions were suggested.



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▲ Patent Attorneys Allowed for Patent Infringement Litigation in Advanced Countries


In the era of the 4th industrial revolution in the 21st century, when software and hardware, technology and culture converge to create advanced commercialization services, countries around the world are fighting for supremacy using intellectual property rights such as patents, trademarks, designs, and copyrights as weapons.

In addition, in order to preempt intellectual property rights, there is an intellectual property control organization and the advancement of related systems is hastened.



In the United States, patent attorneys who majored in natural science and engineering are in charge of patent litigation, and in the United Kingdom, the European Union and China, patent attorneys are allowed to represent all patent litigation alone.

In order to expedite and improve intellectual property-related litigation, Japan has amended the relevant laws since April 2002 so that patent attorneys and lawyers jointly represent patent infringement litigation.

The European Union is planning to launch the European Unified Patent Court next year, which will feature the sole representation of patent attorneys in patent infringement lawsuits and the introduction of technical judges.



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▲ Complex patent relationship diagram of mRNA-based COVID-19 vaccine


Professor Park Seong-pil of the Graduate School of Intellectual Property at KAIST said, "I think it is correct for a patent attorney to have all the rights of representation in industrial property litigation from a literal interpretation of the law. In the case of patent infringement litigation, the difficulty is high from various points of view, and the Bar Association seems to insist on the principle of representing lawyers based on their legal expertise, and the Patent Attorneys Association emphasizes technical expertise and insists on representing litigation by patent attorneys. From the point of view of ensuring basic economic rights as much as possible and fairly resolving highly difficult industrial property rights disputes, the ultimate solution would be to have someone with both qualifications represent them.”



Last year, Korea ranked fourth in the world in terms of the number of international patent applications after China, the United States, and Japan.

However, the success rate of patent holders in patent infringement litigation is 16%, which is far below that of Japan (45%) and Germany (60%).

It is pointed out that there are many cases in which patent infringement lawsuits are abandoned altogether because the rights are not properly recognized.

There is an increasing number of cases where the place of patent litigation is moved abroad rather than in Korea, where the amount of compensation and winning ratio are low.



In a global era where the borders of goods and services have disappeared, the advancement of related systems is an urgent priority in order to become a global hub for intellectual property that has emerged as a key national asset.

If the door is closed and the outdated legal services are not improved, the law will hinder industrial development and the Korean legal market will have no choice but to die.

There is a need for an open attitude in the legal community to expand the market by improving the level of legal services and enhancing the national development and public benefits by cooperating with each other rather than arguing for the rights of lawyers and patent attorneys over the representation of patent infringement litigation.

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