As the new commissioner of KIPO, how has the job been so far? What are your goals for the organisation?
While working at the Ministry of Knowledge Economy and the Prime
Minister's Office, I was especially fond of and interested in
intellectual property. In particular, as I was supervising the
establishment of the Framework Act on IP and the National Basic Plan on
IP as the leader of the IP strategic planning group at the Prime
Minister's Office, I often pondered how Korea could become an IP leader.
Intellectual property, as a core element for global competitiveness,
has become increasingly important. Therefore, I feel both honoured and
highly responsible as the head of a core government organisation
responsible for IP.
As the KIPO commissioner, I plan to pursue practical policies to
promote innovation through the IP system so that Korea can become as a
world-class economy. First, I would like to expedite the examination
process so that innovations can be quickly protected. I will devise
multifarious measures to shorten the pendency period while maintaining
its high quality. In addition, I will endeavour to enhance the capacity
of Korean companies to create and use IP rights and increase their
competitiveness in the global market through IP rights. Last but not
least, I will work hard to enhance international cooperation in
intellectual property and increase the role of KIPO in the international
IP community. I hope such efforts will lead to the strengthening of the
foundation for protecting IP rights in Korea and globally so that
creative efforts will be better respected.
What IP trends do you see in South Korea?
Korea has the world's fourth largest number of applications for IP
rights, with around 370,000 in 2011. Although the total number of
applications diminished a bit in 2008 and 2009 due to the global
economic downturn, it has steadily increased since then, with 5.4%
growth year-on-year in 2011. Patent applications in 2011 grew by 4.1%,
reaching 177,000, while applications for trade mark registrations
increased by 13.6% during the same period to 123,031.
In addition, Korea's international applications for patents and trade
marks are steadily increasing. In applications under the PCT rose by 8%
to 10,447, the fifth highest in the world after the United States,
Japan, Germany and China. Korea's international trade mark applications
under the Madrid Protocol grew by 38.1% to 489 in 2011.
Have there been changes to the processing time for patents and trade marks? What steps is KIPO taking to increase its capacity?
Despite a rising number of applications, we shortened the examination
time in 2011. The average time it took to process a patent examination
(first-action pendency) was 16.8 months, two months shorter than the
preceding year. The first action pendency for a trade mark and an
industrial design was 10 and 8.8 months respectively, in 2011, both 0.6
months shorter than the preceding year.
To provide speedy and precise examination services, KIPO added 70
patent examiners, 19 trade mark examiners and four industrial design
examiners in 2011, steadily increasing our manpower.
We are also enhancing our support for examination by increasing the
volume of outsourced prior art searches and investigation reports on
trade marks and industrial designs. We also continue to enhance our
e-systems related to the work of examinations to raise their
productivity. Since 2010 we have invested about W20 billion ($17
million) to build a third generation KIPOnet.
Furthermore, we are devising measures to share examination results
with major countries in order to improve examination quality and solve
the backlogs caused by duplicate applications.
You mentioned KIPO is expanding global cooperation for patent
examination. Can you give us an update on how the work of the IP5 and
the Asian Trilateral is progressing? How is KIPO pursuing international
cooperation in the areas of trade marks and industrial designs?
The IP5 offices have been implementing procedures to eliminate
unnecessary duplicate examinations and raise the efficiency and quality
of examinations. The major issue being discussed by the IP5 is patent
harmonisation. Since 2011, the IP5 has been conducting a preliminary
study and expects to further examine this issue.
Asian Trilateral cooperation has also become increasingly important,
with increasing applications in Japan, China, and Korea. During
the last annual meeting in December 2011, we adopted a joint statement
to enhance cooperative ties among the three countries' IP offices, and
revised the Roadmap of Trilateral Cooperation to properly respond to the
rapidly changing IP environment.
In the area of trade marks, we have been participating since 2011 in
the TM4, a group of four advanced trade mark offices (OHIM plus the IP
offices of the United States (USPTO), Japan (JPO) and Korea (KIPO)). In
May, China became a regular member of the TM4, forming the TM5. Its
purpose is to provide harmonious and trustworthy trade mark examination
services to applicants by exchanging information and coordinating trade
In the case of industrial designs, the Design Law Treaty is being
discussed at the Standing Committee on the Law of Trademarks, Industrial
Designs and Geographical Indications at WIPO. KIPO plans to actively
participate in the treaty to lead the harmonisation of the world's
design systems. Next year, KIPO plans to become a member of the Hague
System for industrial designs. We will endeavour to encourage more
countries to join the system.
What is KIPO's attitude towards PPHs? How much do Korean companies use the system?
A patent prosecution highway (PPH) not only provides speedy
examination services to applicants, but also has the advantage of
alleviating the examination burden on patent offices through active use
of examination results in other countries. Therefore, KIPO has made much
effort to expand the use of PPHs.
We are operating PPHs with 10 countries including the United States,
China, Japan, Germany, the UK, Russia, Denmark, Canada, Spain and
Finland as well as PCT-PPH, a merger of PCT and PPH, with the United
States and China. In particular, the implementation of PPHs with the
United States, China and Japan, where many Korean companies are doing
their businesses, is supporting companies to expeditiously and securely
consolidate patents. We expect the highways to greatly help Korean
companies draw up patent strategies within these countries.
Since the launch of the PPH in 2007, the number requested at foreign
patent offices by Korean companies has steadily increased each year (312
in 2011, with a total of 1,022 at the end of 2011) and most of them are
concentrated in IT. This may be due to the fact that Korea is an IT
stronghold, but also because IT has a short lifecycle and Korean
companies are making efforts to rapidly consolidate patents.
The number of PPH requests made to KIPO by foreign companies has also
steadily increased (586 in 2011, a total 1,565 at the end of 2011). Of
these, Japanese companies (382 in 2011) and US companies (173 in 2011)
had the highest number of requests.
KIPO will continue to make efforts to execute PPHs with more
countries and actively respond to recent international discussions on
standardising the requirements and procedures for PPH requests.
What is KIPO doing to encourage Korean companies to create and exploit IP more effectively?
Advanced global companies are pursuing active IP strategies and using
IP as a weapon to dominate markets and attack competing companies to
create revenue. In the future, only companies armed with strong IP
rights will survive in global competition.
In order to help Korean companies improve their global
competitiveness through IP, KIPO is pursuing various projects to enhance
their capacity to create and effectively use outstanding IP.
First, to foster human resources specialising in IP, we are managing
IP degree courses jointly with major universities. We are also
conducting training for small and mid-sized enterprises (SMEs). We are
also managing 31 regional IP centres nationwide where experts in
patents, brands and industrial designs are providing consultations on
patent management and development of brands and industrial designs for
SMEs in the region.
Moreover, we building an infrastructure to commercialise and trade
IP. We are managing IP-Mart, an online patented technology transaction
market, to support information exchange between those who need and
supply technology. We are also managing a patent information centre to
support consulting on offline patented technology transactions and
mediate between companies.
In addition, we are pursuing the development and provision of patent
valuation methods. In particular, we are developing an automatic patent
valuation system to improve the technology transaction market.
|IP application trends
In 2009, the US Trade Representative removed Korea from its list of
countries with ineffective IP protection. What is KIPO doing to enhance
KIPO launched the Special Judicial Police Squad for Trademarks in
September 2010 to crack down on counterfeit goods in Korea. Since then,
the squad has criminally booked a total of 294 people and confiscated
about 90,000 counterfeit goods. This represents six times the number of
people arraigned and 10 times the number of confiscated goods than
before its introduction. In 2011, we also established an online police
squad to respond to the increasing number of counterfeit goods in
e-commerce markets and Internet shopping malls.
In addition, KIPO provides rewards for the reporting of counterfeit goods to enhance the efficiency of the crackdown.
KIPO is also increasing social awareness on the protection of IP,
without which the distribution of counterfeit goods will not stop. KIPO
encourages the Korean public to buy genuine goods and root out
counterfeit goods through SNS communications, advertisements on TV and
in newspapers, and youth education programmes.
Do Korean companies have trouble protecting their IP rights in other
countries such as China? What kind of problems do they face and what is
KIPO doing to help?
As Korean companies advance technologically and become increasingly
recognised globally, the IP rights of those companies become subject to
increasing infringement abroad.
On top of that, the lack of awareness of local people and
organisations of laws and systems related to IP rights, the lack of
experience of Korean companies in obtaining administrative and judicial
help, and difficulty in grasping the state of IP rights infringement are
all making it difficult to quickly and accurately respond to IP
To help Korean companies, KIPO provides its own guidebook to protect
IP rights abroad, which comprehensively describes the IP rights laws and
systems of local countries and ways to seek help. Furthermore, we
provide round-the-clock information related to global IP cases,
precedents by major countries, and disputed issues so that Korean
companies can prepare against IP infringements when entering foreign
In addition, we have established eight IP desks in local countries
including China and Vietnam since 2006. IP desks provide consultation
services related to the registration and protection of IP rights to
Korean companies interested in or already in foreign markets. We also
hold briefings and seminars to introduce the IP systems of the relevant
countries to Korean companies abroad and share information on how to
protect their IP rights.
I believe it is very important to form relations and build
cooperative channels with local IP rights organisations. For this
reason, KIPO is dispatching patent attaches to Beijing and Shanghai in
China to diplomatically support the protection of Korean companies' IP
rights. In the case of China, the regional governments are responsible
for the actual protection of IP rights. Given this, KIPO and Jiangsu
Province signed a Memorandum of Understanding to protect IP rights in
April 2012. Since 2009, we have dispatched private-public joint
delegations to the central and regional Intellectual Property Offices,
Administrations for Industry and Commerce, Customs offices, public
security bureaus and courts of China.
What are your thoughts on the Apple/Samsung global patent battle and
what implications will it have on Korean companies developing IP
policies in the future?
The patent battle between Samsung Electronics and Apple started when
Apple filed a patent infringement lawsuit against Samsung in the United
States in April 2011. This case clearly shows that IP rights should be
used as core strategies in corporate management and that companies will
fall behind in the market if they do not exert all their efforts in
managing their IP rights.
Patent battles in the past were mostly begun in order to receive a
certain level of royalties, but recently, as shown in the patent war
between Samsung and Apple, they are attempts to prevent competing
companies from entering the market itself.
Korean companies watching this fierce war are realising the
importance of IP strategies. Korean conglomerates are already actively
pursuing IP management, but many SMEs do not recognise the importance of
IP and lack the expert manpower to support their IP management.
What is KIPO doing to promote IP rights and commercialisation in universities and public research institutions?
While the capacity of Korean universities and public research
institutes to create patents and commercialise them is improving, it
still falls behind other developed countries. Of all patents held by
Korean universities, only 29.4% (2011) are commercialised. This means
that more than 70% of their patents are not used. At the same time, the
cost of maintaining their patents is increasing. In addition, compared
to the investment made in R&D, the income from technology transfer
is lacking, making R&D unproductive. Korea's productivity of R&D
(income from technology / R&D cost) is 1.48% (2011), much lower
than the United States (4.32%, 2009).
To encourage Korean universities and public research institutes to
use their IP to create revenue, we enacted the Act on Technology
Transfer and its Commercialization (former Technology Transfer Promotion
Act) in 2000. We also amended the Patent Act in 2001 so that the
ownership of inventions made by professors of national and state
universities who are civil servants and hitherto held by the state would
be transferred to the relevant universities and public research
institutes. We thus created a systemic framework for the
commercialisation of IP owned by universities and public research
institutes. In addition, we enacted the Framework Act on IP and launched
the Presidential Council on IP in 2011, to create and use IPRs at the
How are the Korea-US FTA and the Korea-EU FTA affecting IP rights?
The Korea-EU FTA, which came into effect on July 1 2011, has changed
Korea's IP systems. In trade marks, the protection for geographical
indications has been further enhanced so that a trade mark application
that is identical with or similar to a geographical indication already
protected by the treaty and Korean laws is refused. In industrial
designs, export has been included in the embodiment of registered
designs, further enhancing the protection of registered design rights.
The Korea-US FTA, which came into effect on March 15 2012, also
introduced new changes to the IP rights system. In patents, including
utility models, a system to extend the duration of patent rights from a
delay in registration has been introduced so that if a patent
registration is delayed by prolonged examination, the duration of patent
rights is extended for the period delayed. In addition, the FTA has
extended the grace period from six months to 12 months.
In trade marks, non-visual trade marks such as sound and smell have
become eligible. A certification mark used to guarantee the quality and
characteristics of goods or services has also been introduced. Finally, a
rule of non-disclosure during lawsuits has been applied to all IP
rights to prevent the leakage of corporate management secrets to third
Are any other changes to Korea's IP laws expected?
We are pursuing an amendment to the Patent Act and Utility Model Act
to reflect the main contents of the Patent Law Treaty. The purpose of
the Treaty is to unify the procedural requirements for acquiring patents
of the member countries. The major change is to simplify requirements
for applications. Researchers can readily apply for a patent with their
papers or documentation in a foreign language and may later amend them
according to the regular application format. In addition, the amendment
would enable applicants to recover rights possibly terminated from
non-abidance of the deadline from simple error, thus expanding the
opportunity to acquire patents.
In the case of the Industrial Design Protection Act, we have
submitted to the National Assembly an amendment to expand the protection
of designs and to introduce an international industrial design
application system. We will continue to pursue it until passed.