1. Calculation of Damages in Korean Patent Litigation
27th IAKL Conference l September 20, 2019
Junghwan (Justin) Maeng
Partner l Ph.D. in Law

2. Ordinary Damages Overview of Article 128
The Patentee may claim monetary damages under a tort law (Article 750, 763, and 393 of the Korean Civil Act).
The Patentee can choose any of the following measures to calculate damages
Per-unit Profit X Quantity of Infringing Products Sold
Quantity of infringing products sold in marketplace X Patentee’s per-unit profit (Article 128(2),(3) of the Korean Patent Act)
Infringer’s Profits
Profit gained by Infringer due to Infringement (Article 128(4) of the Korean Patent Act)
Reasonable Royalty (Article 128(5),(6) of the Korean Patent Act)
Discretion of the Court
In the view of totality of circumstances (Article 128(7) of the Korean Patent Act)

3. Ordinary Damages Statistics on Damages Awarded
Seoul Central District Court Cases 2012~2017
Percentage of Cases
<0.1M
<0.3M
<1M
<2M
<10M
>10M
Damages Awarded (USD)

4. Treble Damages Introduction of Treble Damages
Bills including New Treble Damages Provisions were first introduced at the Korean National Assembly in July 2017.
Existing damage provisions under the Korean Patent Act were insufficient against willful infringers.
Infringing party deliberately launched products that they knew would infringe patents or trade secrets.
Patentee had not practical and sufficient recourse against the infringers.
Aggrieved parties, especially SMEs, were hesitant in bringing patent infringement lawsuits because the costs of such lawsuits were often substantially higher than the amount of damages that could be recovered.

5. Treble Damages Treble Damages Provision
The Korean National Assembly passed the New Treble Damages provision which took effect starting on July 9, 2019.
Now, the Korean courts can award in an amount up to three times the ordinary damages if an alleged infringer was found to intentionally infringe the patent-in- suit. (Article 128(8) of the Korean Patent Act)
This provision will apply to the matters where an intentional infringement first occurs after the effective date of July 9, (Article 3 of the Addenda of Korean Patent Act Amended on January 8, 2019)

6. Treble Damages Application of Treble Damages Provision
The Courts should consider the following, non-exclusive factors in assessing the amount of treble damages (Article 128(9) of the Korean Patent Act).
Superior bargaining power of the infringer
Intention or degree of awareness by the infringer regarding the risk of harm
Extent of damages arising from patent infringement
Economic gains derived by the infringer through an act of infringement
Duration of patent infringement, and also, the number of each act of infringement
Criminal monetary penalty, if any, imposed on the infringer in connection with an act of infringement
Financial standing of the infringer
Efforts of the infringer to mitigate the damages accruing to the patentee

7. Treble Damages Willful or Intentional Conduct
Adoption of “willful” as used in the US law was discussed, but “intentional” was chosen in the statute as the term is widely used in the Korean legal jurisprudence.
It is likely that “intentional” will be given the meaning that is typically ascribed to in the other contexts of Korean law such as in the criminal penalty under the Korean Patent Act.
Case Precedent on Intentional Infringement
The Supreme Court did NOT find that the alleged infringer’s conduct constituted intentional infringement because of following factors (Supreme Court Case No Do-639).
Filed the utility patent application while recognizing that the patent-in-suit was relevant prior art
Difficult for a lay person to discern whether the Defendant’s invention was equivalent to the Patent Owner’s invention
Received a non-infringement opinion from a patent agent

8. Ordinary Damages Overview of Article 128
There exist discussions between practitioners on various issues regarding application of the treble damages provision including:
Intentional Infringement in Article 128(8)
Consideration of Factors in Article 128(9)
Superior bargaining power of the infringer
Criminal monetary penalty
Financial standing of infringer
Scope of Application (Addenda)
Intentional Infringement first occurs after the effective date

9. Junghwan (Justin) Maeng
Confidential
Thank you
Junghwan (Justin) Maeng
Partner / Ph.D in Law l l l