Procedural Concerns Regarding the Introduction of New Evidence Collection Procedures through Amendments to Individual Statutes such as the Patent Act – From the Perspective of Proceduralists -

Currently, five amendment bills to the Korean Patent Act related to the introduction of the inspection(査証, sashō) scheme are pending before the National Assembly. Each of these bills is largely similar, with no significant differences. Meanwhile, in the field of fair trade, several bills similar to the Patent Act amendments have also been introduced and are under deliberation by the relevant committees. The media has referred to these legislative proposals as the “Korean-style discovery”. However, a review of the bill first introduced in the 22nd National Assembly, sponsored by the Member Kim Jeong-ho, reveals several points that suggest an insufficient understanding of the original inspection system. First, in response to Japan’s sashō system, the bill uses the term “evidence taking by neutral experts” in its title. This, however, overlooks the distinction between evidence collection and evidence taking. While “evidence collection by experts” might be conceivable, allowing a person other than the trial judge to conduct evidence taking would directly violate the principle of immediacy in judicial proceedings. Furthermore, the bill allows the court to take such expert evidence on its own, which directly contravenes the principle of party presentation(Verhandlungsmaxime) and therefore cannot be permitted under the Korean Civil Procedure Act. Even if the difficulty of proof justifies the introduction of new evidence-collection procedures, it cannot warrant a shift from the party presentation principle to an inquisitorial model as the fundamental rule of civil procedure. Second, the requirements for issuance of the order are overly simplistic. The bill sets only necessity as a condition, which is disproportionate given the potential burden on the opposing party. Third, the bill contains no direct provision on sanctions. Instead, it merely stipulates that, unless there is a justifiable reason, the party must cooperate with the expert’s evidence investigation, and it applies mutatis mutandis Patent Act Article 132(2), (4), and (5) concerning document-production orders. For the sake of clarity, it would be preferable to include a separate sanction provision. As for the degree of sanction, the bill allows that, under certain conditions, “the fact sought to be proved may be deemed true,” which constitutes a stronger sanction than that under the Civil Procedure Act, where the court may only regard “the opposing party’s allegation concerning the contents of the document as true” when a document-production order is disobeyed. The appropriateness of such a heightened sanction should be examined in light of the burden imposed on the other party and the balance with sanctions in other evidence-collection procedures. Fourth, the bill provides that the court may issue a confidentiality order against the expert. This appears unnecessary. What is truly needed, as in Article 200-2 of the Japanese Patent Act, is a provision imposing criminal penalties for breaches of confidentiality by experts conducting evidence taking. Experts are already under a duty of confidentiality by nature of their role; the law should therefore impose strong criminal sanctions for violations in order to alleviate the opposing party’s concern over the disclosure of trade secrets. By contrast, under the Korean amendment proposal, the confidentiality order is issued only upon a party’s motion. Consequently, if no motion is made, the provision could be interpreted as implying that maintaining confidentiality is not obligatory—an undesirable outcome.