SUNYOUNG INT’L Patent & Law Firm Newsletter(February, 2015)

SUNYOUNG INT’L Patent & Law Firm Newsletter(February, 2015)

Overview on Revision of Patent Act and Utility Model Act

Overview on Revision of Patent Act and Utility Model Act (announced on June. 11. 2014)
1. Ease of requirement for acceptable filing date
Ease of requirement for the specification to take the earliest filing date (Article 42ter newly added, etc.)
※ Article 8bis, etc. of the Utility Model Act 
(Ease of requirement for language in the specification) When filing patent application, it will be possible to state the specification not only in Korean but also in a foreign language (current English only). Provided, that it is necessary to submit a Korean translation within the time limit (14 months from the earliest priority date). 
▶ Application from January. 1. 2015 will be applied. 
Transition of criteria to amend or correct an application in a foreign language (Article 47, 208, etc.)
※ Article 47, etc. of the Patent Act applies mutatis mutandis to Article 11 of the Utility Model Act
Currently only a Korean translation of the specification can be amended even though it is mistranslated. By changing the criteria of amendment, the amendment of original document in a foreign language will be allowed.

CategoryOriginal documentTranslationScope of amendment
Current 
(Translation)
Cakalium
(meaning of potassium )
kalium × calcium 
(Impossible)
Revised 
(Original document)
Cakaliumkalium → calcium 
(Possible)

▶ International patent application in a foreign language (from January. 1. 2015) and patent application in a foreign language (from January. 1. 2015) will be applied.2. Reflection of demand on revised act to measure environmental change of patent at home and abroad
Unity of Patent Terminology (Article 42, etc.)
The current terminology will be amended along with the global trend. For example, the terms such as Title of invention, detailed description of the invention, etc. will be combined as description.

CategoryDescriptionClaimDrawing
Current Patent ActArticle 42SpecificationDrawing(s)
The title of an invention 
Brief description of the drawing(s), 
Detailed description of the invention
The scope of claim(s)
Article 201SpecificationThe scope claim(s)Drawing(s)
Revised Patent Act 
(Article 42, 201)
SpecificationDrawing(s)
DescriptionClaim(s)

Ease of provision to restore patent right related to unpaid patent fee (Article 81ter)
※ Article 81ter of the Patent Act applies mutatis mutandis to Article 20 of the Utility Model Act
(Details) Among the requirements to restore patent right extinguished due to the unpaid patent fee, the requirement, ‘working invention’, will be deleted and additional fee will be reduced from three times the amount to twice the amount of the patent fee.

Current ActRevised Act
Target‘working’patented invention onlyAll patented inventions
Restoration FeeThree times the amount of the patent feeTwice the amount of the patent fee
Time limitwithin three months from extinguishment datewithin three months from extinguishment date

▶ The request to restore patent right after announcement date (June. 11. 2014) will be applied.Introduction of extension system of the time limit to submit a translation for international application (Article 201) 
※ Article 35 of the Utility Model Act
(Extension System) According to the request of applicant, the time limit to submit a Korean translation of international application in a foreign language can be extended to one month.

Current ActRevised Act
RequestSubmission of document to request for national phaseSubmission of document to request for national phase
Submission of translationSubmission of a translation with the documentPrincipally, a translation is submitted with the document. Provided, that it is possible to extend the period of submission of translation up to one month according to the request.
Time limit of submission31 months from the priority date31 months from the priority date

▶ International patent application filed internationally from January. 1, will be applied.Others
Regardless of a language, an extended opportunity for priority application will be granted to the specification filed initially. (For international patent application, the specification filed in international phase) (Article 29 (5)-(7))
* International patent application in a foreign language, which is not in national phase, will be excluded from the grant of an extended opportunity for priority application. (Same with current Act)
Amendment of provision related to the right to request for the payment of compensation for application about national defense (Article 41)
Amendment of matters prescribed in written statement for exemption from submission of certificate for a priority right (Article 54)
Preparation for provision to designate and manage National Depository Authority (Article 58)
Specified right for a presiding administrative patent judge to maintain public order and morality during an oral hearing (Article 154)
3. Making acts easy to understand
Making acts easy to understand (All provisions)
※ All provisions of the Utility Model Act
To make acts easy for the public to understand, Chinese letters will be changed into Korean and complicated texts will be divided into sub-category. 
Ambiguous expressions will be made clear. 
* This notice is not legally binding.

SUNYOUNG INT’L Patent & Law Firm Newsletter(August, 2014)

SUNYOUNG INT’L Patent & Law Firm Newsletter(August, 2014)

KIPO Increases the Number of Its PCT International Searches by 6.4%

The number of PCT* international searches conducted by the Korean Intellectual Property Office (KIPO) in the first half of 2014 totaled 14,743—a 6.4% increase over the same period last year. Foreign companies led the way with 9,093 applications, 10.8% more than was received during the first half of 2013. 

* Patent Cooperation Treaty: Under this treaty, a one-time filing of an international patent application is automatically filed to all countries that ratified of the treaty. 

** International search is an essential PCT application procedure to check for prior art. Applicants can choose from nineteen different International Searching Authorities located all over the world. 

According to KIPO’s own internal analysis, this increase in international searches requested by foreign companies is mostly due to the outstanding quality of KIPO’s international search reports, as well as the strengthening of its PCT support services for foreign applicants. 

In 2013, the number of PCT international search reports issued by KIPO exceeded 30,000 for the first time in the organization’s history. Since 2009, KIPO has maintained a third-place ranking in the world regarding the sheer volume of international search reports it issues. 

Revealingly, the number of international search reports requested by foreign companies totaled 18,103—nearly 60% of all international search reports issued by KIPO. This demonstrates that KIPO is internationally considered to be one of the most highly competitive International Searching Authorities. 

According to WIPO’s PCT Yearly Review, which was publicly released in July, the European Patent Office (EPO) took first place by publishing 77,395 international search reports. The Japan Patent Office was second with 42,433, and KIPO came in third with 30,461. Apart from EPO, JPO, and KIPO, only SIPO (23,737) and the USPTO (16,635) published more than 10,000 international search reports in 2013. 

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SUNYOUNG INT’L Patent & Law Firm Newsletter(April, 2014)

SUNYOUNG INT’L Patent & Law Firm Newsletter(April, 2014)

The Korean Intellectual Property Office (KIPO) and the World Intellectual Property Organization (WIPO) held a ceremony to celebrate the accession to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague Agreement, hereinafter) at WIPO’s headquarters in Geneva on March 31, 2014. The Hague Agreement will subsequently enter into force in the Republic of Korea on July 1, 2014, three months after the submission of the instrument of accession. 

The Hague System for the International Registration of Industrial Designs offers the owner or the applicant of an industrial design a means to obtain protection in several countries through a single application in one language with one set of fees in one currency, which can be submitted to WIPO or one of the contracting parties. The Republic of Korea’s accession is expected to revitalize the Hague System, and WIPO is eagerly anticipating its arrival as a contracting party. 

The new Hague System (of the Hague Agreement) allows a country with substantive examination systems to become a party to the Hague Agreement and utilize it more conveniently, whereas the previous system was designed for countries, particularly those in Europe, without substantive examination systems for registrable requirements, such as industrial applicability, novelty, and creativity. The Republic of Korea’s accession is expected to boost the prospect of accession for other major players in the design field such as the U.S. and Japan, which also conduct substantive examination like Korea but have yet to accede to the new system. 

The U.S., Japan, and China have been preparing for accession to the Hague Agreement, and applicants may soon be able to enjoy the benefit of international applications through the Hague System to protect their industrial designs in the major global economies. For reference, in 2012, applications through the intellectual property offices of China, the Republic of Korea, the U.S., and Japan accounted for 85 percent of all (920,000) applications worldwide. 
Park Seong-Joon, director general of the Trademark and Design Examination Bureau at KIPO said, “The accession of the Republic of Korea is expected to contribute to the development of the Hague System, which will help spread the international registration system for industrial designs across the world.” He further stated that, “Korea’s accession could serve as a catalyst for consolidating KIPO’s partnership with Francis Gurry, the recently re-elected director general of WIPO.”

http://www.kipo.go.kr/kpo/user.tdf;jsessionid=9863ca6b30d6d050eceb8aac41c3ab57b8e3abe7c878.e34RahyTbxmRb40LaxyPahaRa38Me0?a=user.english.board.BoardApp&board_id=kiponews&c=1001&catmenu=ek06_01_01#_

SUNYOUNG INT’L Patent & Law Firm Newsletter(January, 2014)

SUNYOUNG INT’L Patent & Law Firm Newsletter(January, 2014)

A new forum for cooperation on intellectual property rights (IPRs) between Korea and China has opened after the Korean Intellectual Property Office (KIPO) signed a memorandum of understanding (MOU) with the State Intellectual Property Office (SIPO) of China during the 19th heads meeting held in Beijing on December 9. The two countries have held the meeting almost every year since 1992, but this is the first time they have signed an MOU on comprehensive bilateral cooperation. 

The MOU was signed as a follow-up measure to President Park Geun-hye’s visit to China for a summit meeting in June. President Park issued a joint declaration with President Xi Jinping of China agreeing to expand bilateral exchanges and cooperation in IPRs. 

The signing of the MOU will provide a new opportunity for Korea and China to cooperate in the IPR field. The MOU includes new areas beyond the existing cooperation, including the commercial use of IPRs—such as IPR transactions and finance—for which both countries have shown an active interest. 

In addition, the MOU includes provisions to improve bilateral communication on international issues and to enhance overall cooperation on global IPR issues. 

The two countries also signed MOUs to extend work-sharing through the Patent Prosecution Highway and for e-exchanges of priority documents. 

Meanwhile, KIPO Commissioner Kim Young-min gave a special lecture on the theme of the “Creative Economy and Korea’s IPRs” at Renmin University in China on December 9. Kim used the opportunity to expound on the idea of a creative economy to Chinese students, building upon his efforts to spread the importance of an IP-based creative economy to the Korean business community, academia and the wider public. 

Kim explained the idea of a creative economy through easy-to-understand case studies and emphasized that creative ideas and dreams are important for Chinese students, which received a favorable response.

http://www.kipo.go.kr/kpo/user.tdf;jsessionid=9863ca6b30d6d050eceb8aac41c3ab57b8e3abe7c878.e34RahyTbxmRb40LaxyPahaRa38Me0?a=user.english.board.BoardApp&board_id=kiponews&c=1001&catmenu=ek06_01_01#_

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SUNYOUNG INT’L Patent & Law Firm Newsletter(May, 2010)

SUNYOUNG INT’L Patent & Law Firm Newsletter(May, 2010)

Introducing Change of Korean Design Practice

The Korean Intellectual Property Office (KIPO) entered Locarno Agreement establishing an international classification for industrial designs and therefore, new regulations of Korean Design Practice will be established reflecting the Locarno Classification to remedy inadequate current Practice. It would enhance convenience for an applicant in easing the requirements for exceptions to lack of novelty, creating an application regulation for supplementation, improving multi-class application system, introducing an amendment by ex officio and expanding acceptance of grounds for reexamination. Further, it would extend term of design’s right for 20 years and strength a creator’s protection right and stability of right.

http://www.kipo.go.kr/kpo/user.tdf?a=user.ip_info.adv_law.BoardApp&board_id=adv_law&cp=1&pg=1&npp=10&catmenu=m02_03_03&sdate=&edate=&searchKey=&searchVal=&c=1003&seq=9279

Korean Government with invention capital company, confronting against Patent Troll

Korean government established fifty billions scale of second Patent management company together with a private company. Its fund scale is more than twenty times larger than the first company (IP Cube Partners) so as to accommodate a significant number and size of patent and therefore, it could confront aggressively against foreign Patent Troll.

IP Cube Partners purchases ideas or inventions to be patentable from universities and research centers and focuses its business in obtaining and commercializing patent. Meanwhile, the invention capital company not only confront against foreign Patent Troll purchasing Korean patents aggressively and but also obtain foreign superior patents. The official from Ministry of Knowledge Economy said “Patent affects survival of company to that the term “Patent Troll” is created. The invention capital company will make an opportunity using dormant patent from universities or research centers.” He also evaluates that this would contribute to aware importance of intellectual property to domestic companies.

http://www.etnews.co.kr/news/detail.html?id=201003190172

Increase of Filing Patent Applications for 3D-TV

The Korean Intellectual Property Office (KIPO) reports that filing of patent application related to 3D TV has been increased double as for 265 applications in 2009 than in 2004. Upon reviewing filing trend over past 10 years for each technical field, a total of 1,366 applications of technology breaks down to 920 (67%) related to 3D video creation and display, 202 (15%) to 3D video acquirement and editing technology, 154 (11%) to 3D video encoder and transmitting technology, and 90 (7%) to recording and camera technology.

http://www.upkorea.net/news/articleView.html?idxno=18711

Insurance for Patent infringement

In concern of increasing intellectual property disputes, LIG Insurance Co. Ltd. has signed to join supporting business for intellectual property disputes insurance with Korean Intellectual Property Protection Association and started to sell intellectual property disputes insurance for the first in Korea. This insurance will compensate law expenses that might be incurred when small and medium enterprises are faced with intellectual property disputes.  

http://www.mt.co.kr/view/mtview.php?type=1&no=2010031714091733931&outlink=1

Movie “Iron Man” in reality

The movie “Iron Man 2” is released. The iron man who is an ordinary person wears a robot suit and becomes a super hero for that is differentiated from previous super heroes. Accordingly, this movie attracts people to the robot suit the main character wears of it.

Although it does not have powerful new forces such in the movie, a research is active in developing wearable robot technology for strengthen muscles of human. It would be assistance for old and handicapped people, handle heavy products in industry and further, demand of it keep increasing in military, social security and other fields. Furthermore, since technical possibility becomes actualized, filing of the related patent applications also keeps increasing.

http://www.kipo.go.kr/kpo/user.tdf?a=user.news.press1.BoardApp&board_id=press&cp=1&pg=1&npp=10&catmenu=m03_01_02&sdate=&edate=&searchKey=&searchVal=&c=1003&seq=9371

Louis Vuitton sued Hyundai Motor Company

Louis Vuitton, a subsidiary company of France Corporation LVMH has filed a lawsuit against Hyundai Motor Company alleging Hyundai’s Super Ball advertisement infringed their image. In the lawsuit, filed in U.S. District Court for Manhattan New York, the company said that US Corporation of Hyundai (HMA) has illegally used their image in the NFL Super Ball advertisement and asked for compensatory damages.

http://www.hankyung.com/news/app/newsview.php?aid=201003023390g

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SUNYOUNG INT’L Patent & Law Firm Newsletter(March, 2010)

SUNYOUNG INT’L Patent & Law Firm Newsletter(March, 2010)

Greater use of oral hearings and self-judgments in 2010

The Intellectual Property Tribunal of the Korean Intellectual Property Office (KIPO) has decided to expand use of oral hearings and to promote self-judgments (judge will be able to grant immediate registration of the patent if there are no reasons for rejection or refusal without having to refer the matter back to the examiner) to expedite judgments and proceed with a trial more efficiently. Therefore, the tribunal will confirm its status as the primary resolution agency for patent disputes in a more timely and a cost-effective manner.

http://kipo.korea.kr/gonews/branch.do?act=detailView&dataId=155432105§ionId=tmp_sec_4&type=news&currPage=1&flComment=1&flReply=0

Samsung, Sharp to End Patent Litigations over LCDs

Samsung Electronics Co. and Sharp Corp. agreed to end all patent-infringement litigation against each other and sign a cross-license deal related to liquid- crystal displays. 

http://smarthouse.com.au/Content_And_Downloads/Industry/U9E4J9J2

Number of domestic and international applications in 2009

According to the Korean Intellectual Property Office (KIPO)’s report, the number of domestic applications for intellectual properties decreased last year. In contrast, the number of international applications for patents and trademarks filed in Korea increased. The decrease in the number of the domestic applications is affected by policy changes of large corporations after the global economic recession. Departing from their defensive strategy of increasing application volumes, large companies are now apparently focusing more on managing the quality of their intellectual property rights and securing patent rights with a strong competitiveness. Increased number of the international application would raise a competition between Korean companies in overseas regions i.e., US, Japan, Europe and China and local companies to preoccupy new technologies and brands.

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