On July 23, 2021, in order to resolve patent and IP disputes more efficiently, the National Assembly passed an amendment to the Patent Act, the Design Act and the Trademark Act that introduces the principle of "timely presentation" to proceedings of the Intellectual Property Trial and Appeal Board (IPTAB), which handles first-instance IP challenge proceedings in Korea, with the intent of encouraging parties to submit arguments or evidence earlier in such proceedings. The amendment also allows IPTAB administrative judges to refer the parties to mediation even if not specifically requested by the parties. The amendments will go into effect on November 18, 2021, 3 months from the promulgation date.
Principle of "timely presentation"
Under current IPTAB practice, there are generally no specific time limits on when parties may submit new arguments and evidence, as long as the proceedings have not been closed. Even if IPTAB administrative judges set a "deadline" for such submissions, they will usually review late-submitted evidence as long as the proceedings remain open. This has often led to delays if, for example, new evidence or arguments are submitted after the oral hearing, which may require review of new substantive issues, or that a new hearing be scheduled to discuss such evidence.
Through introducing the principle of "timely presentation," the amendment expressly establishes grounds for IPTAB administrative judges to set binding deadlines for submission of new arguments and evidence, and to dismiss arguments or evidence that are not timely submitted. In line with this, the IPTAB recently issued a policy limiting the number of extensions to response deadlines that can be granted in non-expedited IP proceedings. Until now, the IPTAB would almost always grant at least three extensions to such deadlines if requested. Under the new policy, the IPTAB has stated that they will now only grant up to two one-month extensions in most cases, and may allow a third only if justified by special circumstances. This policy will go into effect immediately.
As another example, the IPTAB has presented a plan for improving its trial system based on the amendment that includes replacing the current "Notice of scheduled timing of hearing closure," which is issued toward the end of a case and indicates the date when the proceedings will be closed, with a "Notice on the status of hearing" that will reflect the principle of "timely presentation" by specifically indicating that any documents submitted after a specified submission date will not be reviewed for the final decision.
Currently, during IPTAB proceedings, the parties can request that the dispute be referred for mediation to the Industrial Property Rights Dispute Mediation Committee for purposes of negotiating a potential settlement. The new amendment allows the presiding administrative judge hearing an IP dispute to refer the matter for mediation on his/her own initiative, without a request from the parties, if the administrative judge believes the case is appropriate for mediation. If the administrative judge orders such mediation, the parties are given three months to reach an agreement to resolve the case. If the parties are unable to reach such an agreement after three months, then the litigation will resume.