|
|
 |
| |
 |
|
Subject |
Patent's Protection(3)-Invesgation,Warning Notice,Criminal Remedy |
|
| No |
4 |
Name |
IP_Park |
Date |
2003/10/31 15:57:31 |
Homepage |
http://www.ippark.com |
|
| |
B. Protection after Registration
Anyone can raise an opposition against a patent registration within three(3) months of the date of publication. And if the opposition is decided as well-founded by KIPO, the patent registration is cancelled.
In the event that an infringement action is commenced before a court when an opposition is pending at KIPO or that an opposition is raised when an infringement action is pending, the court can suspend the prosecution concerning the infringement action until the opposition is finalized, if necessary.
Unless any opposition is raised or if oppositions are decided as being groundless by KIPO, a patent holder shall be entitled to exclusively work the invention as a business. Accordingly, a patent holder may take actions against an infringer as follows:
1. Investigation of Infringement
When we are informed about infringement of a patent right from our client, we can conduct an investigation of the invention being worked as a business by a third party to determine whether or not the working breaches the patent right concerned in cooperation with a specialist, licensee, subsidiary or branch who/which well understands the contents of the patent invention. If necessary, we may request the Korea Patent Attorneys Association to prepare one or two expert opinions stating that the working of the patent invention by a third party falls under the scope of the patent right concerned. Generally, that has been good reference material for a judgement in a civil lawsuit or a criminal accusation.
2. Warning Notice
In most cases, an offender who has infringed the patent right or exclusive license of another person attempts to deny any knowledge of the existence of the counterpart's patent right. A negligent act consists of an unlawful act under the Civil Law, thus it is possible for an infringed patent owner to bring a compensation suit against an infringer who does not know the existence of the relevant patent right, regardless of his bad faith, for the damages caused by the infringement. However, under the Criminal Law, since an offence based on negligence of patent infringement is not punishable, if a patent infringer argues his lack of knowledge about the existence of the relevant patent right, it is very difficult to prove the bad faith of the infringer. Thus, sending a warning notice prior to filing a criminal suit is important since the warning notice prevents the offender from denying the knowledge of the patent right, that is, bad faith exists as far as the infringement is concerned after the warning notice is sent.
In the warning notice, generally an infringed patent owner warns about infringement of the patent right and requests the infringer to cease and desist the infringement and reply to the warning notice by a designated date. Depending upon the content of the infringer's reply to the warning notice and/or the results of any negotiations, the patent owner can determine whether or not to bring an appropriate legal action, which may be either a civil or criminal action. About 80% of the patent infringement cases are settled in the course of the warning notice procedure, and the typical settlement should include the following elements:
* To cease infringing activities;
* To destroy existing inventory of infringing products and equipment used to manufacture the infringing products;
* Compensation of damage; and
* Undertaking not to infringe in the future and payment of liquidated damages if such undertaking is breached.
3. Criminal Remedy
The criminal authorities do not initiate the investigation of a patent infringement without an accusation by the party whose patent is infringed since an offence of infringement of a patent right is subject to prosecution on personal complaint. Accordingly, in order to take criminal action against an infringer, an infringed patent owner should file a criminal accusation with a District Prosecutors/Police Office. A person who infringes a patent right is subject to criminal punishment with penal servitude of up to seven years, or by a fine of up to one hundred million Won (about US$ 84,000). If a criminal accusation is filed, it generally takes about 5 to 6 months from the filing date to its decision. |
|
 |
| |
|
|
| |
|
| |
|
|
