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Practice Notes

Practice Notes

Toward “K-Discovery”? Discovery Reform under South Korea’s New Administration and Its Implications for Patent Litigation

Discovery reform in South Korea has attracted growing attention in recent years—especially in the context of patent and trade secret disputes, where plaintiffs often struggle to access internal evidence critical to proving their claims. The absence of a general discovery framework is widely seen as a gap in Korea’s IP enforcement regime. During his campaign, the country’s newly elected president pledged to introduce a “Korean-style discovery system” as part of his judicial reform agenda. Now, with the new administration in place and relevant bills already on the table, the groundwork appears set for change that could reshape the contours of litigation in Korea. ▒  Background South Korea does not maintain a general pretrial discovery system akin to that of the United States. Whereas U.S. litigation features broad, adversarial, and largely party-driven discovery procedures, Korean civil litigation is tightly court-controlled, with limited mechanisms for evidence collection. These differences in procedural approach have meaningful implications for IP enforcement. In patent litigation, for instance, plaintiffs—despite bearing the burden of proving both infringement and damages—have few procedural tools to compel disclosure of internal materials such as technical schematics or manufacturing data. As a result, evidentiary asymmetries between plaintiffs and defendants are common, particularly in method-claim or trade-secret disputes where critical evidence is solely in the hands of the alleged infringer. Certain provisions in the Korean Patent Act are designed to alleviate the evidentiary burden on plaintiffs. Notably, a 2019 amendment introduced a new article requiring defendants to disclose relevant records when infringement is plausibly alleged, or risk having the allegations deemed established. However, as with similar provisions, courts retain wide discretion and remain cautious in exercising it, limiting the practical impact of these measures. ▒  Growing Institutional and Political Momentum Against this backdrop, calls for a more structured and proactive discovery system have continued to gain momentum, supported by years of institutional engagement by the Korean Intellectual Property Office (KIPO), the judiciary, and the legislature. A comprehensive 2023 report by the National Assembly Research Service (NARS), for instance, emphasized the need for discovery reform—while also cautioning that any Korean-style system must remain under judicial control and align with Korea’s civil law tradition. This issue was picked up in the recent presidential campaign. President Lee Jae Myung identified discovery as a key tool to combat technology theft and strengthen IP enforcement, pledging to introduce reforms aimed at addressing evidentiary asymmetries by enabling parties to effectively compel disclosure of relevant materials. This commitment was mentioned in his “Top 10 Key Policy Pledges” submitted to the National Election Commission, under the broader objective of restoring procedural fairness and advancing judicial reform. In this context, two significant discovery-related bills have already been introduced by the ruling Democratic Party—one in August 2024 and one in April 2025. Both propose amendments to the Civil Procedure Act and are currently pending before the National Assembly. ▒  Key Features of the Proposed K-Discovery System Based on the pending bills, the president’s campaign platform, and the prevailing discussions, the emerging contours of a Korean-style discovery system are likely to include:    ●   Strengthened court-ordered document production: Expanded authority for courts to compel production of relevant materials, with enforceable              sanctions for unjustified non-compliance.    ●   Court-appointed expert inspections: Authority for courts to designate neutral experts to conduct on-site investigations, particularly where                      documentary evidence is impractical.    ●   Pre-trial witness examinations: Procedures for early-stage witness testimony and evidence preservation to clarify key facts ahead of trial.    ●   Protective orders and confidentiality safeguards: Authority for courts to conduct closed hearings or limit access to sensitive materials in cases                involving trade secrets, balancing disclosure needs with confidentiality. Given the legislative alignment and lack of political opposition on this issue, these reforms appear poised to move forward. ▒  Implications for Patent Enforcement If enacted, these reforms could materially improve plaintiffs’ access to key evidence, significantly altering the patent litigation landscape. They would enable:    ●   Access to internal sales and production data critical for calculating damages.    ●   Inspection of manufacturing facilities or servers to confirm infringement.    ●   Pre-trial witness examination to clarify issues of control, knowledge, or willfulness.    ●   Greater leverage in settlement negotiations, backed by enforceable procedural rights. Taken together with recent substantive developments—such as the introduction of enhanced punitive damages for willful patent infringement (up to five times actual damages)—a more effective discovery regime would represent a significant procedural advance and enhance Korea’s standing as a forum for patent disputes.

2025-06-24
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Practice Notes

Is Fertilizer Eligible for Patent Term Extension in Korea?

Background   Patent Term Extension (PTE) systems worldwide aim to compensate patent holders for the time lost during regulatory approval processes for certain products. In Korea, the Patent Act allows for patent term extensions for inventions that require regulatory approval before commercialization. However, the scope of eligible products is specifically defined and limited by the Patent Act Enforcement Decree.   The question of whether fertilizers registered under Korea's Fertilizer Control Act qualify for PTE has gained attention as the agrochemical industry seeks clarity on patent protection strategies. This issue becomes particularly relevant when considering that internationally, the term "agrochemicals" encompasses both pesticides and fertilizers, leading to potential confusion about the scope of patent term extensions.   Understanding the answer requires examining the specific legal framework governing PTE eligibility and the policy rationale behind limiting coverage to certain categories of agricultural products.   Current Legal Framework   Under the current Korean Patent Act Enforcement Decree, PTE eligibility is explicitly defined. The Decree specifies that patent term extensions are available for inventions implementing patented technology where agricultural chemicals have been registered under the Pesticide Control Act pursuant to Articles 8(1), 16(1), or 17(1) of that Act. Importantly, this applies only to agricultural chemicals or active ingredients containing new substances as active ingredients and registered for the first time.   The Korean Pesticide Control Act defines "pesticides" as including: (i) fungicides, insecticides, and herbicides used to control pests that harm crops; (ii) agents used to promote or inhibit the physiological functions of crops; and (iii) other agents prescribed by Ordinance of the Ministry of Agriculture, Food and Rural Affairs.   Notably absent from this framework is any mention of the Fertilizer Control Act. The Enforcement Decree does not include product approvals under the Fertilizer Control Act as qualifying for PTE applications, creating a clear regulatory distinction between pesticides and fertilizers for patent term extension purposes.   Regulatory Separation: Pesticides vs. Fertilizers   Korea maintains separate regulatory frameworks for pesticides and fertilizers, reflecting different safety and efficacy concerns. The Pesticide Control Act, administered by the Rural Development Administration, governs substances designed to control pests or regulate plant physiological functions. In contrast, the Fertilizer Control Act regulates substances primarily intended to provide plant nutrition or improve soil conditions.   This regulatory separation has important implications for patent term extensions. While some substances might theoretically fall within the boundary between pesticide and fertilizer regulations—such as plant growth regulators, microbial soil conditioners, or trace element complexes with physiological effects—the PTE framework specifically requires registration under the Pesticide Control Act.   The distinction becomes clearer when considering that fertilizer registration with local authorities (city-/county-/district-level) follows a different pathway than pesticide registration, which requires national-level approval and extensive safety and efficacy testing similar to pharmaceutical products.   Policy Rationale and International Practice   The limitation of patent term extensions to pesticides rather than fertilizers reflects a consistent international approach. Similar to other major jurisdictions, including the European Union's Supplementary Protection Certificate (SPC) system, patent term extensions are typically reserved for products requiring extensive regulatory testing and approval processes comparable to pharmaceuticals.   This policy choice recognizes that pesticides, like medicines, must undergo rigorous safety and efficacy evaluations that can significantly delay market entry, thereby eroding the effective patent protection period. Fertilizers, while subject to registration requirements, generally follow different approval pathways that do not involve the same level of extensive testing.   Boundary Areas and Complexity   Some substances present classification challenges that highlight the complexity of the regulatory landscape. Plant growth regulators, for instance, may be regulated as pesticides under the Pesticide Control Act when used for specific physiological effects (such as flowering promotion or fruit drop prevention), while similar substances might be classified as fertilizers when used primarily for nutritional purposes.   Despite these boundary areas, the legal framework for PTE remains clear: registration under the Fertilizer Control Act alone does not qualify a product for patent term extension, regardless of the substance's potential dual regulatory pathways or its classification in international contexts.   Implications   The answer to whether fertilizers are eligible for PTE in Korea is definitively no. Products registered solely under the Fertilizer Control Act do not qualify for patent term extension under the current legal framework.   This limitation reflects a consistent international approach and has several important implications for the agrochemical industry. Patent holders must carefully consider their regulatory strategy when seeking both patent protection and market approval for agricultural products in Korea. The choice of regulatory pathway may affect not only the approval timeline and requirements but also the availability of patent term extension.   The scope of Korea's PTE system, while limited to pesticides, aligns with international practice in focusing on products that require extensive regulatory testing similar to pharmaceuticals. This approach provides clarity and administrative efficiency while ensuring that patent term extensions are available where the regulatory approval process most significantly impacts the effective patent protection period.   For substances that might qualify for registration under both pesticide and fertilizer regulations, the regulatory pathway chosen could determine PTE eligibility. However, such choices must be made based on the substance's actual intended use and regulatory requirements, not solely for patent term extension purposes.   Understanding these limitations is crucial for patent practitioners and agrochemical companies operating in Korea, as it affects both patent prosecution strategies and commercial planning for agricultural innovations. While the exclusion of fertilizers from PTE eligibility may initially appear restrictive, it reflects a well-established international approach that balances the need for innovation incentives with clear regulatory boundaries.

2025-06-20
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Practice Notes

Borderless Principle of Territoriality – Patent Law

Introduction   Patent law has long developed around the principle of territoriality. That is, a patent granted in one country has effect only within the borders of that country and cannot be enforced against acts occurring in another jurisdiction. Patent registration and enforcement are independently handled under each national legal system.   However, with the rise of the global digital economy and the proliferation of online platforms, it has become increasingly common for acts occurring in one country to directly target markets in another. In such cases, the limitations of traditional territoriality become apparent, and there is a growing need to reinterpret its boundaries. The principle of territoriality becomes blurred. A noteworthy case that reflects this issue is the decision rendered by the Korean IP High Court in Case No. 2023Na10693 (May 22, 2025). Case Overview   This case involves an Italian company (“A”) holding a patent for sock knitting machines, which filed a lawsuit against a Chinese company (“B”), claiming that B’s actions in China infringed its Korean patent rights. Plaintiff A alleged that Defendant B manufactured infringing products in China and either sold or advertised them for sale in Korea.   The court acknowledged that B did manufacture the products in China but found the evidence insufficient to prove actual sales in Korea. However, it was confirmed that B had advertised the products in Korean on Chinese e-commerce platforms and its own website (hosted on servers located in China), and had established a system enabling Korean consumers to make purchases. The decision focused on two key issues:   Issue 1: Jurisdiction of Korean Courts in International Cases   As this case involved a foreign plaintiff (Italian) suing another foreign defendant (Chinese) for alleged infringement of a Korean patent, a key issue was whether the Korean court had international jurisdiction.   The court relied on Article 2(1) of the Act on Private International Law which allows Korean courts to have international jurisdiction if the parties or the subject matter of the dispute has a substantial relationship with Korea.   The court evaluated the substantial relationship by focusing on (a) whether the result of the infringement occurred in Korea; and (b) whether the defendant’s advertising activities targeted Korean consumers.   It concluded that since the advertisement was clearly aimed at Korean consumers and the infringement effect took place within Korea, Korean courts had proper jurisdiction.   Furthermore, Article 39(1) of the same Act specifically provides that in IP infringement cases, a lawsuit may be brought in Korea if the result of the infringement occurred in Korea or the infringing act was directed toward Korea.   Issue 2: Whether Overseas Advertising Constitutes Patent Infringement in Korea   Under Korean patent law, an “offer for sale” is a form of patent infringement. The main question here was whether B’s advertising activities—carried out on Chinese platforms and websites—could be deemed an “offer for sale” in Korea.   The defendant had provided product information in Korean, allowed payment in Korean Won, enabled ordering and delivery within Korea, and provided customer support for Korean consumers. Accordingly, the court determined that these actions constituted a practical attempt to induce sales to Korean consumers and thus qualified as an “offer for sale” in Korea. Conclusion   The court ultimately recognized the jurisdiction of Korean courts and ruled that the defendant’s advertising activities constituted an infringement of Korean patent rights. A permanent injunction was issued.   This case demonstrates how the principle of territoriality is being expanded and reinterpreted in the digital age. The traditional border-based limitations of patent rights are increasingly being neutralized in the online environment, and courts in various jurisdictions are now focusing more on actual impact and targeted markets rather than formal geographical boundaries.   Japan’s Intellectual Property High Court has taken a similar approach. For example: In a 2022 ruling (July 20), it held that transmitting software from a foreign server to a device in Japan constituted “providing” the program invention. In a 2023 ruling (May 26), it found that transmitting system patent components from a foreign server to a device in Japan amounted to “manufacturing” and upheld infringement. In stark contrast to trade wars fought over rigid national borders, the expanding reach of patent rights across virtual borders is, to me, a personally fascinating development.

2025-06-13
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