Recent Developments of IP Legislations &
Practices in Korea
By Duk Yeul Baek
(Senior Partner of Patent 100 SIPPT)
Amendments to Patent Act
On January 27, 2010, Korean Patent Act was amended and enforced on the same date except amendments regarding an expropriation of a patent right and a working of a patent right by the government and etc which was enforced on July 27, 2010. The purpose of this time amendments was to clarify the scope of research and test to which a patent right does not extend and to reflect the regulations of the WTO TRIPs to Korean law. The major amendments are as follows:
1. Clarification of Limitations on a Patent Right
A research or a test for a Product License or a Product Report for medicines according to the Pharmaceutical Affairs Act and a Product Registration for agricultural chemicals according to the Agricultural Chemicals Administration Act shall be included in the research or the test to which a patent right does not extend.
2. Amendments according to the WTO TRIPs
2.1 Split of an Article 106 concerning Expropriation of Patent Right and etc.
The Article 106 was splitted into two Articles of 106 (Expropriation of Patent Right) and 106bis (Working of Patent Right by Government and etc.).
2.2 Expropriation of Patent Right
The expropriation of a patent right by the government shall be allowed where a working of the patent invention is necessary for the national defense in time of war, uprising or other emergency, and in such a case a reasonable remuneration shall be paid to the patentee, exclusive licensee or non-exclusive licensee.
2.3 Working of Patent Right by Government and etc.
The government may work a patent invention or have a person other than the government work the patent invention where the noncommercial working of the patent invention is necessary for national emergency, extreme urgency or public interest, and in such a case a reasonable remuneration shall be paid to the patentee, exclusive licensee or non-exclusive licensee.
Amendments to Trademark Act
On January 27, 2010, Korean Trademark Act was also amended and enforced on July 27, 2010. The purpose of this time amendments was to lower the burden of a trademark owner, to simplify a renewal procedure and to modify domestic articles of Trademark Act related to Article 6ter of the Paris Convention. The major amendments are as follows:
1. Amendment ex Officio
The examiner may amend ex officio clear errors in the descriptions of designated goods or classes when he or she renders a decision of publication. In this case, the examiner shall send a notice of such an amendment to the applicant together with a service of the decision of publication, and the applicant may submit an argument if it is not acceptable.
2. Divisional Payments of Registration Fee
The registration fee including a renewal fee may be paid divisionally in two times and if the second fee is not paid in due course, the trademark right shall expire after 5 years from the registration or the renewal date.
3. Renewal Application System
A trademark is renewed by filing a renewal application with a payment of renewal fee without any examination.
4. Unregistrable Trademarks
4.1 The trademarks which are identical with or similar to armorial bearings, flags, medals, decorations and badges of the countries of the Union, or names, abbreviations, armorial bearings, flags, medals, decorations and badges of international intergovernmental organizations of which one or more countries of the Union are members, which have been designated by the Commissioner of Korea Intellectual Property Office according to a notice from WIPO under the Article 6ter of the Paris Convention.
4.2 The trademarks which are identical with or similar to hallmarks and official signs indicating control and warranty adopted by the countries of the Union or the public authorities thereof, which have been designated by the Commissioner of Korea Intellectual Property Office according to a notice from WIPO under the Article 6ter of the Paris Convention, and which are used for identical with or similar to the goods of the said hallmarks or signs.
Proposed Amendments to Trademark Act and Design Protection Act
1. Amendments to Trademark Act
On June 11, 2010, proposed amendments to the Korean Trademark Act were published for a public review. The purpose of the proposed amendments was to establish the basis for rejection of applications for marks which are identical with or similar to any geographical indications protected according to the Free Trade Agreement between Korea and EU, and to ease the requirement for amending the plaintiff in a Request for Trial. The major amendments are as follows:
1.1 Non-registrable marks
1.1.1 A mark which is identical with or similar to any geographical indication registered under the Agricultural Products Quality Control Act and is used for goods which are identical with or similar to the goods of such geographical indication is not registrable.
1.1.2 A mark (including geographical indication collective mark) which is identical with or similar to any geographical indication protected by a bilateral treaty of which concerned country is Korea is unregistrable if its goods are identical with or similar to the goods for which the corresponding geographical indication is used.
1.2 Amendment to Plaintiff
The correction (including addition) of name and address of plaintiff in the Request for Trial shall be allowed.
2. Proposed amendments to Design Protection Act
On July 7, 2010, proposed amendments to the Korean Design Protection Act were submitted before the Congress. The purpose of the proposed amendments was to enlarge the object of design, to concretely provide the scope of design protection, to strengthen the requirements for design creativity, to introduce a related design and to extend the term of design right. The major amendments are as follows:
2.1 Enlargement of Objects of Design
The designs defined in the Locarno Agreement Establishing an International Classification for Industrial Designs shall be added to objects of designs.
2.2 Enlargement of Scope of Protection of Registered Designs
The scope of protection of a registered design includes designs which give an identical or similar impression to general consumers and, in this case, the article that is the object of the design and class written on the application paper do not affect the scope of protection of a design.
2.3 Introduction of Related Designs
The similar designs shall be abolished and instead the related designs which are similar only to a principal design shall be introduced. The related designs shall have an independent scope and term of right.
2.4 Introduction of Certificate of Public Domain
In order to effectively protect designs which were created during developing process but were not filed for design applications, a publicly reliable specialized organization may issue a certificate of public domain for them.
2.5 Extension of Term of Right
A design right will be extended from 15 years to 20 years from the application date according to Korea’s joining of the Hague Agreement Concerning the International Registration of Industrial Designs in 2012.
2.6 Improvement of Application for Multiple Design Registration
An application for multiple design registration regardless of examined or unexamined design registration (currently unexamined design registration only) may include 100 (currently 20) designs or less in the same class, and a partial rejection or registration will be available.
2.7 Amendment ex Officio
The examiner may amend ex officio clear errors in the descriptions of an article or class when he or she renders a decision of registration. In this case, the examiner shall send a notice of such an amendment to the applicant together with a service of the decision of registration to the applicant, and the applicant may submit an argument if it cannot accept such an amendment.
The Korean Industrial Property Office (KIPO) prepared a 'Remedy for patent proceedings influenced by recent big earthquakes and tsunami in Japan
The KIPO announced a plan that remedies the damages which applicants for patents, utility models, designs and trademarks who suffered huge losses from the recent big earthquake and tsunami could receive by not taking normal proceedings.
First, the deadline for filing arguments or amendments may be extended more than 4 times.
Second, the deadline for filing an appeal against a decision of rejection before the Intellectual Property Tribunal (IPT) may be extended without any limitation on number and period.
Third, the deadline for filing a suit against a decision of the IPT before the Patent Court may be extended by 30 days.
Fourth, the non-observation of a deadline for filing an appeal against a decision of rejection, a deadline for filing a retrial, a deadline for filing an amendment and a deadline for payment of patent fees may be cured within 14 days after the date on which the unavoidable reasons ceased to exist.
Fifth, a suspension of examination may be demanded each by 2 months without any limitation on number.
Recent Trends of Applications
Patent applications, of which numbers have continued downward for the last 2-3 years due to a world-wide recession, turned upward along with a business recovery in 2010.
Korean Intellectual Property Office (KIPO)’s provisional analysis for patent applications in 2010 showed that the total number of filing received by the KIPO was 170,600, up more than 4.3%, compared to 163,523 in 2009.
In particular, the analysis showed that patent applications filed by large companies, which have suffered three consecutive years of decline from 2007 to 2009, increased by 9.3% (42,634 cases) compared to the previous year and that patent applications filed by small and medium sized companies, which have suffered two consecutive years of decline, sharply increased by 14.0% (25,045 cases) propelled by an active development of technology.
* Rise and fall of patent applications
- Large companies: 2007: 54,749 cases (∆14.3%), 2008: 46,951 cases (∆14.2%), 2009: 39,021 cases (∆16.9%)
- Small and medium sized companies: 2007: 28,481 cases (∆17.1%), 2008: 23,292 cases (∆18.2%), 2009: 21,964 cases (∆5.7%)
When analyzing the applicants, individuals filed the largest number of 44,333 patent applications, large companies 42,634, foreign companies 37,667 and small and medium sized companies 25,045.
Meantime, there are respectively 9.0% (995 cases) and 6.7% (37,677) increases in patent applications filed by foreign individuals and companies from the previous year.
In other fields of Intellectual Property (IP) rights, trademark applications rose by 4.9 percent compared to 2009 (103,433 → 108,450 cases), while utility model applications fell by 20.1 percent (17,144 → 13,690 cases) due to the change from the non-substantial examination to the substantial examination system and design applications slightly fell by 1.2 percent (57,903 → 57,223 cases).
The domestic companies of Samsung Electronics has filed the largest number of 7,179 IP applications, LG Electronics 5,876 and Hyundai Motor 2,454 and the foreign companies of Qualcomm filed the largest number of 1,389 IP applications, Sony 569 and Tokyo Electron 459. By country, Japan topped with 20,020 cases, followed by U.S. with 17,533, Germany with 4,178 and France with 2,271.
DATE :
13-05-18
