APAA Country Report KOREA APAA Council Meeting Penang 2014 1. IP Statistics in Year 2013 1 1.1. Number of applications filed with KIPO in 2013 Year Patents Utility Model Design Trademarks Total 66,940 147,667 2013 204,589 10,968 (70,054) (177,685) ( ): including multiple design and multiple classes trademarks 1.2. Patent applications by countries 430,164 (463,296) 1.3. Average waiting time for the first actions since 2007 Year 2007 2008 2009 2010 2011 2012 Waiting Time (Months) 9.8 12.1 15.4 18.5 16.8 14.8 1 Source: Annual report 2013, KIPO 1
1.4. Patents Allowance Rates since 2000 2. Legislative Changes and Policy Update 2.1. Patents (Effective to patent applications filed after January 1, 2015) 2.1.1. Filing in English According to the revision to be effective from January 1, 2015, an Official Filing Date can be also recognized to an application in English to KIPO. A Korean translation of the English application must be filed within 14 months from the priority date. If not, it will be deemed to be withdrawn. Currently a Korean patent application should be filed only in Korean to have an effective filing date. 2.1.2. Extending deadline for filing translation of PCT applications Under the revision, the national phase entry into Korea for a PCT application filed on or after January 1, 2015 can be made within 31 months from the priority date without Korean translation subject to the submission of a written request of late filing of the translation. With the request, 1 more month shall be given for the filing of the Korean translation. Currently applicants must file Korean translations of PCT applications within 31 months from the priority date for the Korean national phase entry. 2.1.3. Allowing amendments based on the original application 2
According to the revision to be effective to the patent applications filed on or after January 1, 2015, amendments or corrections can be made based on the specifications filed on the PCT filing date in foreign language. The specifications in foreign language will be considered the original specifications supporting the amendments and corrections. Therefore, Amendments can be made within the scope of the original. Currently, amendment is allowed only within the scope of the Korean translation. Therefore, it is very difficult to correct or amend when there are mistranslations. 2.2. Trademarks 2.2.1. Lowering the standard for secondary meaning of non-distinctive marks The revised act effective from June 11, 2014 eased the bar of the secondary meaning required for non-distinctive marks to be registered by deleting the word remarkably. Before the revision, a mark could acquire secondary meaning, only if the applicant proves that consumers remarkably recognize the trademark as a source indicator. The demand for be remarkably recognized used to be a big hurdle to enjoy the secondary meaning both in the process of KIPO and courts. 2.2.2. Preventing the dilution of famous marks Amended act newly enacts a provision to refuse the registration of a mark that is likely to have consumers confused with another person s famous mark, or to dilute the distinctiveness of another person s famous mark. 2.2.3. Preventing the registration of a mark that lacks good faith Under amended act, a mark may not be registered if the applicant is aware that another person s mark identical or confusingly similar to the applicant s mark is currently being used or to be used on the basis of an agreement, transaction or other relationship. 2.2.4. Preventing the use of a registered mark that lacks good faith The right owner or licensee(s) cannot use a registered trademark when the use falls into the unfair competition under the Unfair Competition Prevention Act (Article 2(1)(x)) which prevents unauthorized exploiting another person s achievements acquired through considerable investments and efforts to harm the other s business profits. The consent of the other is required for the use of the registered trademark.. 3
2.3. Design 2.3.1. Extending design right term Previously, the term of a design right was 15 years after the registration date. According to the new revision, the term of a design right is 20 years from the filing date of the design application, after the design is registered. This is applicable for the design application filed on or after July 2014. 2.3.2. Adopting Related Design system The "similar design" system was abolished. Instead, it is possible to request a "related design" application within 1 year from the filing date of the principal design application. The related design exists independently even though the principal design is invalidated. Expiration date of related design is the same as the principal design. 2.3.3. Improving Multiple Design System Regardless of the type of article[examination design article/ partial-examination design article], it is possible to file a multiple design application for up to 100 articles, as long as the articles are classified under the same class of the Locarno classification. Previously, a multiple design application could cover only up to 20 articles and is only possible for certain types of articles [previously non-examination design article ]. 2.3.4. Adopting Locarno classification Based on the Locarno Classification, there are 31 design classes. Among article classes, class 2 (clothing/shoes/gloves/caps), class 5 (textiles/laces/sheets), and class 19 (stationery/arts and crafts/books) are classified as "partial-examination" design articles. 2.3.5. Broadening the grounds for a request of re-examination Previously, re-examination could be requested only for the drawings or specifications indicated in the drawings. According to the new revision, it is possible to request reexamination based on an amendment of any specifications indicated in the application. In addition, it is possible to submit an argument for the re-examination. 2.3.6. Giving more chances to claim grace of loss of novelty 4
In order to claim grace of loss of novelty at the filing time of design application, the relevant documents proving qualification must be submitted at the filing time of design application or within 30 days from the filing date. Since July 1, 2014, it is possible to claim the grace with relevant document (i) in filing a response to an office action, (ii) in filing a response to an opposition, or (iii) filing a response to a request for an invalidation trial (it is allowed in invalidation trial). 2.3.7. Hague Agreement coming into effect The Hague Agreement came into effect in Korea on July 1, 2014. Thus, an applicant who is a national of Korea or domiciled in Korea, or has a real and effective industrial or commercial establishment in Korea or habitual residence (domestic stays for more than 30 days) in Korea is able to file an application for Int l design registration through KIPO (the Korean Intellectual Property Office) or directly through WIPO. An applicant can also designate Korea as a designated Contracting Party as of July 1, 2014. In order to be protected in Korea, an International design application designating Korea is examined by KIPO under the Korean Design Act. If a notification of reasons for refusal is not issued within the period of refusal [6 months from the Int l publication date for partial-substantive examination, 12 months for substantive examination], automatic protection is granted from the end of the period of refusal. 3. Notable Cases 3.1. Patent : Korean Supreme Court en banc Decision 2012Hu4162, Mar. 20, 2014 3.1.1. Main Issue and Holding The issue was whether non-obviousness of an invention (or utility model) can be reviewed in the confirmation trial of the scope of patent right. The Supreme Court enbanc ruled that the confirmation trail cannot review the non-obviousness issue on the validity. 3.1.2. Summary of Decision The Supreme Court noted that validity of a patent is to be reviewed by a different type of trial proceedings (the Invalidity Trial) and other proceedings cannot go on the premise of the invalidity of a patent unless it is ruled invalid by the Invalidity Trial. The Supreme Court clearly drew a line in the jurisdiction and role between the Invalidity Trial for validity issues and the Confirmation Trial for the scope of the right. 5
It is further notable that the Supreme Court stated the limit of Supreme Court s previous landmark decision to deny the scope of right without regard to the invalidity decision of a patent when the whole or part of the patent right includes elements publicly known or used as of the filing date. The Supreme Court, however, declared the limit of the doctrine in this decision that the doctrine should not be extended to the issue only arguing obviousness to the ordinary person in the art. 3.2. Trademark : Seoul High Court 2013Na26816, Oct. 17, 2013 Issue: Enforceability of a 3D trademark registration The Seoul High Court acknowledged the constitution of an act of unfair competition and the trademark infringement in favor of an owner of a three-dimensional trademark registration (Case No. 2013-Na-26816, October 17, 2013). As soon as the patent right for VIAGRA product expired in Korea, the Defendant began to produce and sell pharmaceutical products for the treatment of sexual dysfunction in the shape of a tablet device with a blue color ( ). Then, the Plaintiff Pfizer, Inc. filed an infringement suit against the Defendant s sales of such products. The Seoul High Court held that the diamond shape with a blue color had become a famous trademark and there is likelihood of confusion as to the source of the goods by misleading the general public into believing that the Defendant s products are associated with the Pfizer s ones even though the Defendant used it with other word trademark on its packages. The Defendant appealed the decision to the Supreme Court. However, the decision of the high court is remarkable and could be guidance for the enforceability of threedimensional trademark registrations. 3.3. Design: Supreme Court 2012Hu3343 Issue: Unity of Design as a single design in a partial design application 6
<perspective view> <front view> <rear view> Even though the elements of a partial design application, and of the subject design are separated physically by the body of mobile phone, these parts can be perceived respectively as rabbit s ears and rabbit s tail and thus the integrity of these parts can be perceived as a rabbit to produce a visual aesthetic sense as a whole. The application, therefore, satisfies the statutory requirement of a single design. 4. Special Event organized by Recognized Group In June 2014, APAA Korea Group hosted the "2014 APAA Young Patent Attorney Talk-Concert" for the non-member patent attorneys. We invited past presidents and the important figures of APAA Korea to talk about business know-how for Global IP Business, valuing-up strategy of patents and benefits to become an APAA member. Lots of positive feed-back was received from the participants. 5. International Events Attended on behalf of Recognized Group In March 2014, APAA Myanmar Recognized Group hosted the "Myanmar IP Seminar" in Yangon. Korea Group sent Mr. Myung-Shin KIM, Mr. Patrick Yang-Oh KIM and Ms. Young-Joo Roh to give presentations about Korea IP Protection System, Training System of Patent Attorneys and "Samsung vs. Apple" case. These issues have been storied by the Myanmar Freedom Newspaper and had a great influence. 6. Future Events Planned by Recognized Group 1) Hosting an international IP Seminar on the issues of Amendments of IP Law and notable cases in Korea, the U.S., the E.U., Japan, etc. 2) Rendering service for research to heighten the need and values of IP 7