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Your guide to IP protection in Korea




Hyoun Ja Park and Hyun Sil Lee of FirstLaw P.C. provide a Q&A guide to protecting, challenging and enforcing various IP rights in South Korea

What are the main laws regulating IP in Korea?

The laws regulating IP in Korea include the Patent Act, Utility Model Act, Design Act, Trade Mark Act, Copyright Act and Unfair-Competition Prevention Act.

Which international IP agreements is Korea a party to? Are there any notable omissions?

The international IP agreements or treaties that Korea is a party to include: Paris Convention, Patent Cooperation Treaty, WTO, Madrid Protocol, Budapest Treaty, Berne Convention, Hague Agreement, Strasbourg Agreement, Trade Mark Treaty and UPOV. Korea is not a member of the Patent Law Treaty, Madrid Agreement: Indications of Source or Madrid Agreement: Marks.

Have there been any recent significant changes to the law?

Effective as of March 1 2017, the Korean Patent Act (KPA) has been changed to: shorten the period of deferring the substantive examination of a patent application from five years to three years; allow the examiner to reopen the examination of a patent application even after the issuance of a notice of allowance; and allow a third party to have a patent invalidated through an ex parte proceeding.

Further, the KPA has been revised to expand, effective from June 30 2016, the scope of a court order to submit evidentiary materials necessary for the proof of patent infringement; and to allow one party's claim on the contents of a material to be deemed true if the other party does not comply with the submission order without a good cause.

Under the revised Korean Trade Mark Act (KTA) which became effective as of September 1 2016, anybody can bring a non-use cancellation action and the effect of a cancellation decision is retroactive to the date of instituting the cancellation action. Further, protection for trade marks eligible under Article 6 septies of the Paris Convention against an unauthorised filing has become strengthened.

Are there any other IP rights that are available in Korea? And what do international rights owners need to know about these?

In addition to patents and trade marks, utility models, designs, plant varieties, computer programs, copyrights, trade secrets and semiconductor integrated circuit layout designs can be protected under each relevant law in Korea. Salient features of the utility models and designs, inter alia, are as follows.

Utility model

An invention relating to a shape or structure of an article or a combination of articles may be protected as a registered utility model. The protection term is 10 years from the filing date. Under the old utility model system, a utility model was registered without any substantive examination to alleviate the burden of examination and to encourage the development and working of the so-called petty inventions. However, since the average waiting period of substantive examination of a patent application was reduced to less than one year, allowing the registration of a utility model without substantive examination became less advantageous.

In addition, the lack of substantive examination was likely to produce unstable rights as well as wasteful disputes to nullify such rights. Accordingly, the Korean Utility Model Act (KUMA) has abolished the registration with no substantive examination, and revived the substantive examination system.

Design

A design right is protected in Korea as an independent IP regime rather than as a type of patent. With respect to certain pre-designated articles such as clothing, fashion accessories, textiles or stationery goods, design protection is allowed after conducting a partial examination only. In conducting a partial examination, novelty and creativity on the basis of prior art is not reviewed. Upon filing, applicants are entitled to enjoy a six-month grace period of being exempted from loss of novelty. The term of protection is 20 years from the filing date.

A graphical user interface (GUI) can be registered as a design in Korea, provided that the GUI is depicted in an article and the title is not identified as a GUI per se. Other notable systems of design protection in Korea include protection of partial design and related design system. It is possible to claim only a certain part of an article by depicting the claimed portion in solid lines and leaving the unclaimed portion in broken lines. A design that is similar only to the same applicant's prior design (basic design) can be registered only as a "related design" of the basic design. A related design has to be filed within one year from the filing date of its basic design and the term of protection is limited to the life of the basic design. However, a related design is recognised of its own independent scope of right and, therefore, is not affected by the invalidation or abandonment of the basic design.

What is the body responsible for granting IP rights and how is it structured?

It is the Korean Intellectual Property Office (KIPO) that administers the examination, registration and maintenance of patents, utility models, trade marks and designs. The KIPO has several bureaus for conducting or supporting the examination of such IP applications, and the total number of examiners in the KIPO is around 1,000.

Appeals against final rejection of patent applications issued by the examiner may be brought only before the Board of Trials (BOT) established within the KIPO. Each case is heard by a panel of three or five trial examiners. There are 11 divisions in the BOT, and each division has seven to 12 trial examiners.

Are there inter partes or ex parte proceedings either pre- or post-grant for patents? If so, how do these work?

Since March 1 2017, the KPA provides both post-grant patent revocation (ex parte proceeding) and invalidation trial (inter partes proceeding) to challenge a patent.

Patent revocation

For a patent registered on or after March 1 2017, anyone may file a petition seeking for cancellation of a patent claim(s) within six months from the date of patent publication. The grounds for such petition are limited to (i) lack of novelty/inventiveness only, based on printed publications that have not been cited by the examiner during the prosecution of the patent; and (ii) violation of the first-to-file rule.

The ex parte procedure for patent cancellation is conducted through written arguments only. Before the BOT renders a decision to revoke the challenged claim(s), the patentee shall be notified of the reason(s) for revocation and given an opportunity to submit a response thereto (possibly together with a correction or amendment to the specification, claims and/or drawings) within a designated period.

The final decision rendered by the BOT to cancel any of the challenged claims may be appealed to the Patent Court, and then to the Supreme Court, while an appeal against the final decision to maintain the challenged claims is not allowed.

Patent invalidation trial

Effective as of March 1 2017, only an interested party may initiate a patent invalidation trial anytime during or even after the life term of a patent, while the old KPA allowed any person, even anonymously, to request a trial to invalidate a patent as long as the request is made within three months from the issuance of the patent.

The grounds for nullification are broader than those for patent revocation, including most of the reasons for rejecting a patent application except for violation of the unity of invention requirement. In response to an invalidation petition, the patentee may file a request for correction of the specification/claims within the designated time period for submitting an answer to the petition.

Are there inter partes or ex parte proceedings either pre- or post-grant for trade marks? If so, how do they work?

Trade mark opposition (pre-grant inter partes proceeding)

When a trade mark application is published, anyone can file an opposition seeking rejection of the application within two months from the date of publication. The grounds for such opposition are same as those for rejecting a trade mark application in examination. The opposer cannot appeal against the decision to dismiss the opposition but may later file an invalidation action with the BOT after the opposed trade mark has finally matured to registration.

Trade mark invalidation trial (post-grant inter partes proceeding)

Only an interested party may lodge a trade mark invalidation trial with the BOT. The grounds for invalidation are broader than those for rejecting a trade mark application. When invalidation is sought on the basis of similarity to a prior filed or registered mark, the invalidation trial should be filed within five years from the registration date of the mark against which invalidation is sought.

Trade mark cancellation trial (post-grant inter partes proceeding)

Anybody can file a non-use cancellation trial against a registered trade mark which has not been used for three consecutive years. The effect of a decision to cancel is retroactive to the date when the cancellation action was instituted.

Which courts have jurisdiction in IP cases in Korea, at first instance and appeal? How are they structured?

Among the 18 district courts in Korea, first instance infringement cases involving IP rights (patents, utility models, trade marks, designs and plant variety rights) can be brought only to one of the five designated district courts that has personal jurisdiction over the defendant. Regardless of the personal jurisdiction, the plaintiff may also choose to bring their cases before Seoul Central District Court which has been the most frequently used court for litigating IP matters in Korea. All the district courts should follow the same substantive and procedural laws.

The number of judges of a court varies – in the case of the Seoul Central District Court, the Court's Civil Division includes 105 divisions each comprising a single judge, 36 panels each comprising three judges and nine appellate boards each comprising three judges. The court also has a Criminal Division and a Bankruptcy Division.

For the district court decisions on IP rendered after January 1 2016, all appeals are exclusively heard by the Patent Court. An appeal before the Patent Court will be reviewed by a panel of three appellate court judges. The Patent Court has 17 appellate court judges and 22 technical advisers to assist the Patent Court judges.

What have been the most significant patent cases in recent years, and why?

Denial of prior art presumption of background technology

In an en banc decision rendered on January 19 2017, the Supreme Court held that an element described in the preamble of a claim may be presumed to have been publicly known prior to the filing date only under the circumstances where the entire disclosures of the specification and the prosecution history show that the applicant described the element in the preamble as part of prior art, rather than a background or conventional technology (Supreme Court Case No 2013 Hu 37).

The Supreme Court also noted that such prior art presumption can be overcome by a showing of exceptional circumstances, for example where the applicant mistakenly described a certain element as prior art although the element was in fact disclosed in an earlier filed application which has not been laid open or was kept as a proprietary technology of the applicant as of the filing date.

The case is significant in that the Supreme Court departed from its previous position that a background technology described in a patent specification should be recognised as prior art, absent special circumstances.

No indirect infringement if direct infringement occurs outside Korea

Until 2015, the Korean Supreme Court had never reviewed on the following question: if the act of direct infringement (for example, the act of producing the patented product by using the component which has no other use than producing the patented product) takes place outside Korea, should the Korean court still find an indirect infringement for the act of making or selling such component in Korea?

Through Case No 2014 Da 42110, the Court held, for the first time, that an act (or a likely act) of direct infringement must take place in Korea in order for indirect infringement to be found.

Hyoun Ja Park
  Hyoun Ja Park is a partner and patent attorney at FirstLaw P.C., which she joined in 1997. She received her bachelor’s and master’s degrees in control and instrumentation engineering (majoring in robotics and intelligent systems) from Seoul National University in 1995 and 1997, respectively. Park also got her JD degree (cum laude) at the Ohio State University, Moritz College of Law in 2012.

Being admitted to the Korean Patent Bar and the Ohio State Bar, Hyoun Ja Park has been actively involved not only in many important prosecution cases but also high-profile trial/litigation cases on behalf of domestic and multi-national corporations. Her practice also encompasses IP due diligence, evaluation, licensing, portfolio development/management, and other areas pertinent to intellectual property.

Her area of technical expertise covers various aspects of electrical engineering including wireless communication, artificial intelligence, electronic transaction, computer software and semiconductors.

Hyun Sil Lee
  Hyun Sil Lee is a Korean patent attorney and partner at FirstLaw P.C. She graduated from Seoul National University, college of pharmacy in 1994 and received a JD degree (cum laude) from Seattle University School of Law in 2010.

Since joining FirstLaw in 1997, she has gained extensive experience handling patent prosecution and litigation cases in the field of pharmaceuticals, chemicals and biotechnology on behalf of both multinational and domestic companies. In particular, she is specialised in patent litigation including patent infringement actions, invalidation trials and scope confirmation trials and opinion work in the pharmaceutical and biotechnology areas.

Hyun Sil Lee often gives lectures at conferences sponsored by the Korea Drug Research Association, the Korea Biotechnology Industry Organization, etc. She served the Korea Patent Attorneys Association as a director, and is now serving as a member of the Central Pharmaceutical Affairs Council of the Ministry of the Food and Drug Safety.


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Well done to all involved! #AIPPI2017 #CII https://t.co/q5PbWThHjf

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RT @andreabrewster3: This event is for all IP professionals, of all genders @TheCIPA @CITMAuk @ipfederation @ip_out @ManagingIP See you the…

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