Under the Korean Patent Act, the types of acts that constitute practicing a patented invention as follows:

1. In the case of a product invention: manufacturing, using, assigning, leasing, or importing the product, or offering to assign or lease the product (including displaying the product for assignment or lease; hereinafter the same);
2. In the case of a method invention: using the method or offering to use the method; and
3. In the case of a method invention for manufacturing a product: manufacturing, assigning, leasing, or importing the product manufactured by the method in addition to the acts stipulated in 2), or offering to assign or lease the product.

In these types of “practicing” acts, import is included but “export” is not included.

In general, when a third party (hereinafter, “A”) infringes a patent right, the act of producing an infringing product or assigning (e.g., selling) the infringing product to another person constitutes a type of practicing the patented invention. Accordingly, the patentee may enforce his/her patent right by civil or criminal proceedings claiming an infringement injunction and/or damages or filing a criminal complaint for infringement against A.

However, when a person (hereinafter “B”) being assigned from a person who manufactured an infringing product exports the infringing product overseas, the patentee was unable to enforce his/her patent right against B since such action did not constitute “practicing” the patented invention under the Patent Act. In addition, the Korean Patent Act did not recognize B’s possession of the infringing product as “practicing” of the patented invention.

In order for the patentee to enforce his/her patent(s) against B’s infringement, it was possible under other laws, instead of the Patent Act, such as the Customs Act or the Act on Investigation of Unfair International Trade Practices and Remedy against Injury to Industry, to prevent the infringing product from being exported at customs or to impose surcharges as measures at the border. However, since there were no provisions regarding compensation for damages, it was not possible for patentees to seek remedies such as compensation for damages.

In other words, under the current Patent Act, there has been an issue in that the patentee’s rights could not be fully protected.

Furthermore, in Korea, other laws related to intellectual property rights, such as the Trademark Act and the Design Protection Act, have actively protected right holders by including export as well as import as an act of using a trademark and practicing a design since 1974 and 2011, respectively. Therefore, there has been a problem in that the scope of rights protection among IP-related laws were not consistent.

However, an amendment to the Patent Act that adds “export” as a type of “practicing” was passed by the National Assembly on December 27, 2024, and it will take effect six months after its promulgation date.

With this amendment, patentees can now enforce their rights against parties that export infringing products by both civil measures such as filing an infringement injunction and claiming damages and criminal measures such as filing a criminal complaint for infringement. Consequently, it has become possible to more actively protect patentees than ever before.