Kye Joung Lee, A Study on How to Improve Evidence Collection Procedures in Patent Litigation — Lessons from the U.S. Discovery System, JURIS, Vol. 1, No. 59(2022), pp. 211–256.
<Abstract>
This paper examines the current Patent Act’s provision concerning the order to produce materials, the provision’s contents and limits, and lessons from the American discovery process. It goes on to discuss improvements that could be made regarding evidence collection procedure in patent litigation. This paper’s findings could be summed up as follows.
First of all, there are limits to rectifying the structural maldistribution of evidence in patent lawsuits since the party that files for an order to produce materials under the current provision would find it difficult in specifying the materials that ought to be produced.
Secondly, while the American discovery process has its flaws, it has strong points of allowing both parties to collect and examine the relevant materials on equal terms, leading to better establishment of facts as all evidence materials are examined, thus making possible early resolution of disputes which in turn reduces the burden on courts. Therefore, when it comes to improvements that could be made regarding evidence collection procedure in patent lawsuits, as there is an urgent need for a provision that allows access to materials held by the adverse party, lessons from the American discovery process are noteworthy.
Thirdly, if we are to improve evidence collection procedure in patent lawsuits, there is a need to strengthen the sanctions against failure to comply with an order to produce materials; there is a need to make improvements to provisions for confidentiality-protective order in order to more adequately protect trade secrets in evidence collection process - with the American discovery process in mind; and there is a need to introduce new regulations regarding electronically stored information and right to inspection.
Fourthly, regarding introduction of the discovery process in Korea, we need to focus our attention on the key issues such as: whether we will allow fishing expeditions; whether we will change the current practice of setting trial dates early on; how we will deal with the increase in litigation costs; and how we will protect trade secrets or privacy. If we believe in the ideal that lawsuits should lead to an approach of the substantive truth through evidence collection, then we might seriously consider introducing the discovery process in Korea.
<Keyword>
Discovery Process, Order to Produce Materials, Patent Litigation, Evidence Collection, Patent Infringement, Fishing Expedition, Trade Secret
Kye Joung Lee, A Study on How to Improve Evidence Collection Procedures in Patent Litigation — Lessons from the U.S. Discovery System, JURIS, Vol. 1, No. 59(2022), pp. 211–256.
<Abstract>
This paper examines the current Patent Act’s provision concerning the order to produce materials, the provision’s contents and limits, and lessons from the American discovery process. It goes on to discuss improvements that could be made regarding evidence collection procedure in patent litigation. This paper’s findings could be summed up as follows.
First of all, there are limits to rectifying the structural maldistribution of evidence in patent lawsuits since the party that files for an order to produce materials under the current provision would find it difficult in specifying the materials that ought to be produced.
Secondly, while the American discovery process has its flaws, it has strong points of allowing both parties to collect and examine the relevant materials on equal terms, leading to better establishment of facts as all evidence materials are examined, thus making possible early resolution of disputes which in turn reduces the burden on courts. Therefore, when it comes to improvements that could be made regarding evidence collection procedure in patent lawsuits, as there is an urgent need for a provision that allows access to materials held by the adverse party, lessons from the American discovery process are noteworthy.
Thirdly, if we are to improve evidence collection procedure in patent lawsuits, there is a need to strengthen the sanctions against failure to comply with an order to produce materials; there is a need to make improvements to provisions for confidentiality-protective order in order to more adequately protect trade secrets in evidence collection process - with the American discovery process in mind; and there is a need to introduce new regulations regarding electronically stored information and right to inspection.
Fourthly, regarding introduction of the discovery process in Korea, we need to focus our attention on the key issues such as: whether we will allow fishing expeditions; whether we will change the current practice of setting trial dates early on; how we will deal with the increase in litigation costs; and how we will protect trade secrets or privacy. If we believe in the ideal that lawsuits should lead to an approach of the substantive truth through evidence collection, then we might seriously consider introducing the discovery process in Korea.
<Keyword>
Discovery Process, Order to Produce Materials, Patent Litigation, Evidence Collection, Patent Infringement, Fishing Expedition, Trade Secret