To Ms. Emma Carraclough
Legal Media Group Asia editor
Dear Emma,
I am an attorney-at-law licensed in the United States and am currently preparing for the U.S. Patent Bar examination while working in Korea as a foreign legal consultant. I would like to share some of my insights regarding the current issue with respect to the clash between IP professionals in Korea which appeared in your Feb. 27 issue. But first, let me give you a brief introduction about how people become IP professionals in Korea.
Anyone who successfully passes the Patent Bar Examination (patent & trademark attorney examination) and articles for a year under the supervision of licensed patent & trademark attorneys becomes a patent/trademark attorney. Those who have technical backgrounds generally work in the patent field, and those who do not typically work in the trademark field.
Secondly, anyone who has worked for more than five years in the Korean Intellectual Property Office as an examiner is required to sit only a portion of the examination in order to become a patent & trademark attorney, and they are registered as such upon passing it.
Lastly, anyone who successfully passes the Bar Examination and completes a two-year course from the Judicial Research and Training Institute becomes an attorney-at-law in Korea. Once this is achieved, the usual requirement to sit the patent & trademark attorney examination in order to be recognized as a patent & trademark attorney is waived. That is to say, as long as a nominal fee is paid for registration, all attorneys-at-law are automatically granted a patent & trademark attorney license. Considering that intellectual property law is not covered in the Bar Examination and only a small fraction of attorneys-at-law have technical backgrounds, one can say that their knowledge of both IP matters and of scientific and technical subjects varies quite drastically.
Patent & trademark attorneys can represent clients before the Korean Intellectual Property Office and the Appeal Board, and if a case is appealed to the Patent Court or Supreme Court, patent & trademark attorneys can also represent clients there. However, patent & trademark attorneys cannot represent clients in infringement suits seeking monetary or injunctive relief in a court of law. Only attorneys-at-law can represent such cases.
In that regard, attorneys-at-law who are automatically granted patent & trademark attorney licenses enjoy much a broader representation capability. However, since few of them actually have technical backgrounds or have ever written a patent specification, one cannot confidently say that attorneys-at-law are fully capable of representing a client in a complex patent litigation case by themselves. In fact, it is recommended and often practiced that attorneys-at-law and patent & trademark attorneys work together in representing clients.
One of the reasons why some of the attorneys-at-law desire to establish a new professional body comprised of only attorney-at-law IP practitioners is because they feel, as you have said, the existing Korean Patent Attorneys Association (KPAA), a majority of members of which are patent & trademark attorneys, cannot fully represent their interests. However, attorneys-at-law should not equate the dominance of membership to inequality in membership privilege. The KPAA has been suffering from low membership rates for many years, despite its efforts to keep its door open to all qualified practitioners. One of the main reasons for such a low turnout is because less than one tenth of all attorneys-at-law also licensed as trademark and patent attorney have signed up for the KPAA membership. So the movement to set up a new professional body instead of supporting the existing one would probably contribute to the further disorganization of IP professionals. Aside from the fact that many patent & trademark attorneys already feel that their rights of representation are being trampled by the automatic grant of patent & trademark attorney licenses, the refusal of attorneys-at-law to be in the same professional body would only bring about further incoherence in the Korean IP system to the detriment of general public and industries. It is no wonder that when the patent & trademark attorneys heard that a number of attorneys-at-law were getting together to create their own IP professional body, they became very vocal about the illegitimacy of this new body.
One can hope that through such clashes a compromise can be reached between attorneys-at-law and patent & trademark attorneys, prompting greater cooperation. But as of now, tensions continue to build.
As attorneys-at-law have many battles waiting to be fought, in particular against accountants and real estate agents also with respect to scope of representation, it will be interesting to see how they fare against patent & trademark attorneys.
Yours truly,
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Patent professionals clash in Korea
Emma Barraclough, Hong Kong - 27 February 2005
Patent lawyers in Korea are setting up a new professional body, saying the existing Korean Patent Attorney’s cannot fully represent their interests.
Seung Nam Shin of Seoul-based firm Jeesahn told MIP Week that he and 10 other lawyers wanted to launch the group – provisionally called the Korea Legal Profession’s Patent Association – to represent qualified patent lawyers.
"Traditionally patent work is in the domain of lawyers,” said Shin. "And in the future we expect technical issues to be even more mingled with legal issues.”
The Korean Patent Attorneys Association (KPAA) is a voluntary membership association open to both agents and patent lawyers, but patent agents – science specialists who have passed the Korean Patent Bar exams – dominate its membership.
Territorial tensions between the two patent profession branches have increased in recent years after patent agents were given the right to appear before the Korean Patent Court, which hears appeals against decisions by the Korean Intellectual Property Office. But in other courts only lawyers can represent litigants in patent cases.
"[Legally qualified] patent attorneys are not the same as patent agents and we don’t believe that the KPAA can properly represent our interests,” said Shin.
The Patent Attorney Act says that any new professional association must get the backing of more than one fifth of patent attorneys registered with the Korean Intellectual Property Office. Shin said that his group had gained the support of 300 lawyers – around half of the number they need – since they decided to launch the new organization in January.
A spokesman for KPAA, Yung Woeh Ko, said that a new representative body would not benefit the patent profession in Korea or the development of IP policies and systems in the country. He said that unlike the Korean Bar, the KPAA no longer operated on a closed shop basis.
In late 2004 the IP Office announced its plans to delegate the registering of patent attorneys to the KPAA, a move that is thought to have prompted the setting up a new patent lawyers association.
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