미국 특허쟁송실무에 관한 연구 - 연방순회항소법원(CAFC), 연방지방법원, 국제무역위원회(ITC), 특허청(USPTO)을 중심으로 - = Research on United States Patent Trial Practices: United States Court of Appeals for the Federal Circuit, United States District Court, United States International Trade Commission, and United States Patent and Trademark Office

다국어 초록 (Multilingual Abstract)

In the twenty-first century, ever more Korean corporations are tapping into foreign markets, exploiting intangible assets with the advent of a knowledge based information society. In doing so, international disputes over patents between domestic and foreign corporations are on the increase. Especially, the patent battle between Apple and Samsung Electronics adds to the increasingly tough environment for Korean companies in the United States. Under such circumstances, it is significant to have a solid grasp of the patent trial proceedings of the United States so as to establish effective confrontation strategies when engaging in patent trials in the United States.
The types of patent trials in the United States appear to divide into two categories according to their strategic objectives: infringement and invalidity. A patent trial generally begins with the filing of a complaint alleging patent infringement by a patent owner, and an accused infringer then asserts the defense of invalidity of the patent at stake to avoid liability.
The patent owner who believes that his patent is being infringed has two venues for relief. The patent owner may seek relief in a federal district court, the International Trade Commission, or both. Yet, an allegedly infringing article has to be imported into the United States to bring an action before the International Trade Commission. Furthermore, parties seeking monetary relief must resort to the district court since remedies available at the International Trade Commission are limited to prohibition from committing specific unfair trade practices.
On the other hand, the accused infringer has several ways to escape liability. Where the proceeding is initiated before the district court or the International Trade Commission, the accused infringer may assert counterclaims of invalidity, or raise an affirmative defense of invalidity. Alternatively, he may challenge the patent’s validity through post grant proceedings at the United States Patent and Trade Office, i.e., post grant review, covered business method review, inter partes review, and ex parte reexamination, to defend against patent infringement trials.
If the party remains dissatisfied with the outcome of the trial, he may further file an appeal to the United States Court of Appeals for the Federal Circuit since it is the sole appellate court having nationwide jurisdiction over patent appeals. The United States Court of Appeals for the Federal Circuit has long established case law doctrines and unified rules for patent trials.
This research articulates the procedural aspects of the aforementioned institutions resolving patent disputes, with special emphasis on the individual practices of judges. By doing so, hopefully this research can contribute to the advancement of sound practices for the Korean judiciary in the field of patent litigations.