The 2018 patent dispute verdict between Samsung and Apple and the case between Kolon and DuPont show the importance of intellectual property disputes. However, the right to represent patent attorneys in civil court is not recognized in Korea, and there is a need to recognize this right to protect corporate interests and expedite litigation.
In June 2018, a judgment was issued regarding the patent dispute between Samsung and Apple, which has been called the patent war of the century. In the U.S., the largest market for high-tech devices, jurors found Samsung liable to Apple for $538 million in damages. The verdict rejected Samsung’s claims that Apple infringed on telecommunications-related patents, such as those related to data division, wireless data communications (3G), and power control, and found in favor of Apple’s claims that Samsung infringed on Apple’s design patents and user interface (UI) rights for its smartphones.
Although the dispute was not over patent rights, it was over the same area of intellectual property, and recently, in 2015, a verdict was handed down in favor of DuPont, awarding DuPont a total of $360 million in damages and a worldwide ban on the production and sale of aramid fibers for 20 years for illegally stealing DuPont’s core technology and trade secrets. In both of these cases, the jury verdicts have been criticized for being overly biased in favor of U.S.-based companies, and there is some debate as to whether the jury verdicts will be accepted by the U.S. courts and become final. However, these events have made it clear that the outcome of disputes over intangible assets, such as patents, will have a profound impact on companies and even countries, and that impact will only grow. As a result, countries around the world are implementing various policies to prepare for the coming era of intellectual property rights, and Korea is no exception.
However, despite this trend, there is one issue in Korea that is going against the grain. This is the issue of patent attorneys not being authorized to represent clients in civil courts. Currently, patent attorneys have a limited right of representation, but it is limited to ongoing cases in the patent court, and if a civil dispute arises based on patent rights, such as the Samsung and Apple cases in the United States, and the case is ongoing in the civil court, the right of representation is not recognized. On August 23, 2012, the Constitutional Court ruled unanimously that Article 8 of the Patent Act and Article 87 of the Civil Procedure Act are constitutional in a constitutional complaint filed by patent attorneys on the grounds that interpreting Article 8 of the Patent Act and Article 87 of the Civil Procedure Act to deny patent attorneys the right to representation in patent infringement lawsuits violates patent attorneys’ freedom of profession and equal rights. In this article, we will examine the reasons why patent attorneys should be granted the right of representation in patent disputes in civil courts from the legal perspective and the perspective of their expertise in the field, and ultimately argue that it is justified to grant them the right of representation in disputes involving intellectual property rights.
First, the issue from a legal perspective. Article 87 of the Civil Procedure Act declares the principle of attorney representation by stating, ‘No one shall be a litigant except an attorney who is authorized to act in a court of law. On the other hand, Article 8 of the Patent Attorney Act states, ‘A patent attorney can be a litigant in matters concerning patents, utility models, designs, or trademarks,’ which means that a patent attorney can be a litigant in disputes over intellectual property rights. On their face, the two laws seem to conflict with each other. Before we can interpret them, we need to understand the types of representatives in litigation law. A statutory agent is a person who acts on behalf of the principal regardless of the principal’s will, such as a parent who is the custodian of a minor. On the other hand, a voluntary agent is a person who is appointed as an agent by the principal’s will. Discretionary agents are further divided into statutory agents and agents by delegation. Statutory agents are agents recognized by various laws, and the scope of agency for such agents is entirely governed by the law. On the other hand, an agent by delegation is a person who has become an agent by the act of the principal’s authorization, other than a legal agent. In this regard, Article 87 of the Civil Procedure Act states that, in principle, lawyers are required to represent clients, except for those represented at law. On the other hand, Article 8 of the Patent Attorney Act stipulates that a patent attorney can be a litigation representative in disputes over patents, etc. despite Article 87 of the Civil Procedure Act, which means that a patent attorney has the status of a legal representative in disputes over intellectual property rights. Therefore, Article 87 of the Civil Procedure Act and Article 8 of the Patent Attorney Act do not contradict each other, but rather, as a matter of interpretation, patent attorneys have the right to represent any litigation in the field of intellectual property rights. There is no legal basis for limiting a patent attorney’s right to representation to the patent court, which is the court of competent jurisdiction, such as when filing a lawsuit against an administrative decision of the Korean Intellectual Property Office.
Second, there is an issue from the perspective of expertise in intellectual property disputes. As mentioned above, according to the interpretation of the current law, when a patent infringement lawsuit is filed, the legal representative is a lawyer, and therefore, only a lawyer can argue in court. On the other hand, patent attorneys are not allowed to represent the litigant, but they collect materials to be presented in court and hand them over to lawyers after legal review. This may seem like a strange distinction, since lawyers are the experts on how to proceed in court, but it’s not. In preparation for the patent bar exam, patent attorneys study civil law, which is the general law of patent law, in the first exam, and civil procedure law, which is the basis of court proceedings, in the second exam. This is because they study the Civil Procedure Act on the premise that they will be able to become a litigator in patent disputes during the examination process. It may be argued that this is limited to the theoretical part and lacks practical skills, but this is also incorrect. The current law provides a procedure called an appeals to dispute administrative actions by the Korean Intellectual Property Office, and patent attorneys are also represented in these appeals. Although these proceedings are not court proceedings, they require strict procedures that are similar to court proceedings, and the Patent Act, which stipulates various proceedings, also applies the provisions of the Civil Procedure Act (準用, i.e., applying the provisions of the Civil Procedure Act to matters that are similar but essentially different). For example, Article 157 of the Patent Act applies the provisions of the Civil Procedure Act to the procedures and contents of evidence examination and evidence preservation, and Article 154(8) of the Patent Act applies the prohibition against duplicative proceedings stipulated in Article 259 of the Civil Procedure Act, which states that the same lawsuit cannot be filed again if the lawsuit is pending, to the trial proceedings. The rights and interests of litigants such as companies can be properly protected if patent attorneys who are represented in such proceedings are also represented in the case of ongoing patent infringement lawsuits in civil courts.
In this article, we have examined two aspects of why it makes sense to grant patent attorneys the right to represent IPR disputes in civil courts. Japan, which has a nearly identical legal system to Korea’s, granted patent attorneys the right to represent litigants in civil courts in 2002. In Korea, the Progressive New Party of Korea’s 2012 general election campaign promised to expand the right to represent patent attorneys, and Representative Park Young-sun of the Democratic Party of Korea also advocated for the expansion of the right to represent patent attorneys. It is noteworthy that in the constitutional case mentioned at the beginning of this article, although all the judges ruled in favor of the lawyers, Justice Lee Dong-seok, who participated in the case, suggested in his supplementary opinion that “it is desirable to consider legislative measures to allow lawyers and patent attorneys to jointly represent each other in patent infringement lawsuits to expedite and professionalize litigation while fully protecting the rights and interests of litigants.”
Globally, the overall value of society is currently in a transition from tangible to intangible, and intellectual property rights, including patents, are at the center of this trend. Disputes over intellectual property rights are characterized by the ambiguity of value judgments arising from the fact that the object of value is intangible, and it is self-evident that they require a high degree of specialized knowledge in the field compared to traditional disputes. From this perspective, the expansion of the scope of the right of representation for patent attorneys is necessary to reflect the global trend.
Furthermore, the expansion of the right to represent patent attorneys in litigation will greatly contribute to strengthening the competitiveness of Korean companies. In particular, SMEs and startups will be able to utilize the expertise of patent attorneys to respond more efficiently and effectively to patent disputes. This, in turn, will promote the development and innovation of Korea’s industries.
Therefore, legal and institutional reforms are needed to recognize the right of patent attorneys to represent clients in civil courts, which will be an important turning point in the protection of IPRs and the resolution of related disputes. As the expertise of patent attorneys can be utilized in patent disputes, it is urgent to actively consider and introduce such a system.
