80% of Firms say, “A Strong Evidence Acquisition System is Required for Patent Suits”
Firms, struggling to secure evidence in patent infringement lawsuits, are demanding a stronger evidence acquisition system.
The Korean Intellectual Property Office (KIPO) surveyed companies, lawyers and patent attorneys in January about their experiences using the evidence acquisition process for patent infringement lawsuits over the last 5 years and gathered opinions on how to improve the system*.
* (Survey Period) January 6 – 31, 2020; (Target) 160 companies, 38 lawyers, 24 patent attorneys (50 companies, 20 lawyers and 17 patent attorneys having experience with patent litigation); (Survey Title) Survey on the Actual Condition of Evidence Acquisition in Patent Infringement Lawsuits
As a result, 88% of companies said they have had difficulty in collecting evidence for filing a patent infringement suit*. The main reason given is that infringements cannot be identified since infringements are being conducted in places in which they are difficult for a patent right holder to identify, such as inside an infringer’s factory. Other reasons include difficulties in analyzing the specific infringing goods, obtaining evidence of damages and collecting evidence due to trade secrets.
* 88% of companies (44 out of 50), 100% of lawyers (20 out of 20), and 94% of patent attorneys (16 out of 17) responded
In addition, after filing a lawsuit, it was difficult to secure evidence during the suit process, and 80% of companies* said they needed evidence acquisition procedures that are enhanced over the current system, and more than 90% of the lawyers agreed to the necessity of strengthening the system.
* 80% of companies (40 out of 50), and 90% of lawyers (18 out of 20) responded
For a concrete improvement plan, they answered that it is most important to improve the current system so that it becomes more effective (100% of companies and lawyers). As for the introduction of a new system, companies said that the introduction of an evidence search system conducted by a third-party expert (43%) is most needed, but lawyers preferred the introduction of an exchange system for data and their lists during suits (67%).
On the question* of who in a patent suit should be allowed to access evidence that is considered to be a trade secret, many companies are of the opinion that, "Only courts and experts appointed by the courts should be allowed access," while lawyers said, “The agent of an opponent should also be included in the scope of access.”
* Under Article 132 of the Patent Act, the current Patent Act allows the court to designate the extent to which trade secrets can be viewed or who can see them.
On the other hand, the majority of companies answered that they are not familiar with the evidence acquisition system of the Civil Procedure Act and the Patent Act*, and that the extent of utilization of the evidence acquisition system to prove patent infringement and compensation for damages is low.
* Order for submitting document list, order for submitting data, obligation to present specific actions, confidentiality order, etc.
The Director of Industrial Property Protection Policy of KIPO said, "The introduction of a triple compensation system for intentional patent infringement will increase the importance of proof of infringement and damages." And added that, “We will gather the opinions of people from all fields in order to prepare a low-cost and highly efficient means of evidence acquisition.”