1. Introduction

Discovery in Korea is relatively limited and is conducted entirely by and under the supervision of the court. The Civil Procedure Act provides that a party may petition the court to order production of certain documents from the other party or a third party, inspection of the other party’s or a third party’s sites, and examination of witnesses and parties by summons. In addition to the discovery measures provided in the Civil Procedure Act, Article 132 of the Patent Act also specifies that a court may, upon request by a party, order the other party to submit “material necessary for providing the relevant infringement or calculating the amount of losses caused by the relevant infringement.”  If the party controlling such materials refuses to submit the materials based on a “reasonable ground” to do so, the court can inspect the materials in camera to determine whether the cited ground is indeed reasonable. If a party refuses to comply with the court’s order, the court may deem the other party’s claim regarding the material is true, essentially allowing adverse inference against the non-compliant party. In addition to the court-supervised discovery, there has been active discussion as to introduction of a discovery process that is similar to the ones adopted in other countries, such as the U.S.

Indeed, the proposed amendment to the Patent Act submitted in 2020 introduced new developments including (1) expert inspection, (2) witness deposition, and (3) litigation hold, as well as updated procedures and sanctions standards.

 

2. Korean discovery in revised bill of Patent Act

a. Expert inspection

Expert inspection is a process that corresponds to an inspection system adopted by German courts, which allows, either by the discretion of the court or upon request by the plaintiff, experts designated by courts to visit the defendant’s facility to examine any evidence related to the patent infringement or damages. The judge shall determine to commence investigation after considering ① whether there is a high likelihood of patent infringement, ② whether evidence can be collected by other methods. If the defendant refuses or interferes with such inspection, the court will assume the plaintiff’s allegations as true, giving the plaintiff the full benefit of the doubt.

b. Witness deposition

Witness deposition is a system similar to the depositions used by the U.S. courts, which allows parties to a case to examine witnesses for verification of material or damages submitted to the court under the direction of a court staff without a judge. As taken in the U.S. courts, the depositions are video-recorded and have the same effect as testimony given in a trial, subject to the penalty of perjury.

c. Order to preserve materials

Order to preserve materials is an order that can be issued by a court to prevent loss or otherwise to use evidence and to preserve such evidence when damages thereto will result in irreparable harm.  If the party who is subject to the order nonetheless incurs damages to documents, a court may assume that the allegations raised by the party who requested the order as true.

d. Improvement on order to submit materials

There have been issues raised under the current Patent Act that it is difficult to identify which documents or evidence a respondent possesses at the time of the petition and that there is no measure to confirm whether the respondent has destroyed, damaged or intentionally omitted any evidence. To resolve these issues, the proposed amendment to the Act stipulates a party to include a list of documents to be submitted to the court, establishing a verification procedure for possession of documents and having sanctions available for causing damages to such documents.

e. Improvement on order to maintain confidentiality

While the new developments facilitate the collection of evidence, the proposed amendment to the Act also stipulates measures to protect trade secrets through a protective order, which was available only for trade secrets disclosed during a trial under the current Act, for any trade secret regardless of the method of acquisition.

 

3. Expected effect

If the Patent Act is accordingly amended, issues that have been raised, such as difficulty associated with showing infringement or proving damages due to the limited evidence or under-calculated damages amount based on incomplete proof, could be significantly resolved.