In March 2007 KIPO announced that it had reduced first action pendency from 22.6 months in 2002 to 9.8 months in 2006. How did it manage to do this and has it affected the quality of the patents produced?

The patent pendency period was reduced between 2003 and 2006 mainly as a result of an increase in examiners, greater outsourcing of prior art searches, the introduction of performance-based management and Six Sigma management (a business management strategy devised by Motorola), and the enhancement of our automated patent administration system.

Since taking office in May 2008, I have put emphasis on ensuring that the examination quality is of a world-class standard, while maintaining a short first-action pendency period. Customers are given discretion on the speed of examinations under a new three-track patent examination system. I have also strengthened patent quality management to ensure that our patents match the quality standards of leading IP offices.

Which companies does KIPO use for the outsourcing of prior art searches? How does it monitor the quality of work that they produce?

We use four outside companies. The bulk of outsourced prior art searches is conducted by a KIPO subsidiary, the Korea Institute of Patent Information, followed by three private organisations. We outsource about half of our total prior art searches.

Monitoring of outside companies is based on the extent to which searched references are cited in examinations. We periodically apportion the volume of outsourced work on the basis of that monitoring so that the competitiveness of the companies produces high-quality prior art searches.

You mentioned that KIPO introduced the three-track patent examination system under which customers have discretion on the speed of examination. What is the three-track patent examination system and why did KIPO adopt the new system?

A customer survey revealed a significant change in the needs of customers. Customers no longer wanted a uniformly shortened examination period but a high-quality examination service that produced results at a time tailored to their preference. Accordingly, we now give customers the choice of an accelerated, regular or customer-deferred examination. The system satisfies the diverse needs of customers and gives us greater control of the quality of examinations.

Accelerated examinations are for anyone who submits a prior art search report from an authorised organisation; they are expected to be processed within three months of the application date. Customer-deferred examinations enable customers to request that an examination be deferred in accordance with their preferences; they are expected to be processed within three months of the date specified by the customer. Regular examinations are generally concluded within 16 months.

In short, the three-track patent examination system offers customers high-quality patent examinations at a time tailored to their preference and improves the examination performance as a result of the distributed workload.

What further measures has KIPO planned to improve examination performance?

In June 2008, we implemented a new policy of high-quality patent examinations. It's called the EXCEL (examination excellence) Plan. First, we optimised the examination infrastructure by improving the search environment and examination procedures. Second, we enhanced the examination quality by ensuring that applications are assigned to examiners on the basis of their academic background and work experience prior to joining KIPO; by strengthening examiner training; and by establishing new examination divisions that are solely responsible for newly emerging hybrid technologies. Third, we strengthened the management of our examination quality by ensuring that the assessment of sampled patent examinations is conducted with the same thoroughness as the original examination and by bestowing full responsibility for the quality of examinations on the director general or director of the relevant bureau or division.

Assuming the Korea-US FTA is ratified in its present form, what changes will need to be made to Korea's IP laws?

The FTA between Korea and the US will help establish an advanced IP system suitable for our status as the country with the fourth highest number of patent applications. If the Korea-US FTA is ratified, the registration and use of IP rights will be simpler and rights will be given stronger protection.

Registration and use of rights will be simplified by the following: extension of the patent duration whenever there is an unreasonable delay in the examinations or trials; extension of the grace period from six months to 12 months; identification of the grounds of revocation with the grounds of rejection; extension of the registrable formats of trade marks to non-visual indications, such as sounds or smells; introduction of certification marks; and abolition of the obligatory recordation of exclusive licences to use a trade mark.

Rights will be given stronger protection in the following ways: introduction of statutory damages for trade mark infringements; destruction of equipment used to manufacture counterfeit goods without any compensation and seizure of implements used for trade mark infringement; obligation of confidentiality regarding information created and exchanged during the process of civil proceedings.

What does KIPO do to strengthen IP enforcement and raise awareness of IP protection among the general public?

Since the new government came into office, we have begun to promote policies of stronger IP protection. An IPR enforcement network, for instance, has been set up in collaboration with 246 local governments and we run educational programmes for the local officials in charge of IPR enforcement, particularly on reporting and assessment procedures which enhance the efficiency and effectiveness of the grassroots network.

In conjunction with local governments, the prosecution and law enforcement agencies, our anti-counterfeiting team investigates suspected areas where counterfeit goods are manufactured and distributed. They also run about 30 anti-counterfeiting crackdowns a year.

In other activities, our office notifies the Korean Internet Safety Commission of any websites that reportedly trade in counterfeit goods so that the Commission can block access to those websites. Our Intellectual Property Protection Center also provides information on IP protection and conducts programmes to raise public awareness. We also run an online system for reporting counterfeit goods.

Our various educational programmes and PR campaigns that aim to raise public awareness of the illegality of counterfeit products are essential for improving the level of IPR protection. Aside from passive publicity activities, such as the distribution of brochures, we are now actively utilising various media, such as radio spots, subway advertising, and the internet. Moreover, we promote interactive training and awareness activities in which consumers can directly participate; for example, we provide lecture tours, run student advertisement contests, and foster student groups that monitor counterfeit goods.

What are the biggest challenges facing KIPO and how are you dealing with them?

I think our first challenge is to achieve a world-class examination quality while maintaining a short first-action pendency period. The advancement of work-sharing with other IP offices has elevated the importance of having a reliable examination quality.

Accordingly, as mentioned earlier, we have developed a strategy for improving the examination quality by optimising the examination infrastructure and streamlining the examination quality control. We have also been trying to expand joint patent search programmes with other patent offices.

The second challenge is to perform our proper role in the international regime. Work-sharing among IP offices, IP law harmonization, and coping with global issues through the IP system have become important items on agenda of the international IP community.

We are actively participating in discussions with major IP offices on issues of work-sharing and the harmonisation of IP law under the WIPO regime. I hope to describe these efforts in more detail later in the interview.

Effective handling of PCT international search requests from global corporations, such as Microsoft and 3M, is another major challenge. These requests numbered only 20 in 2005 but escalated to 2,853 in 2007. The number soared again from January to September this year to 7,134.

To handle these international requests in a high-quality manner within PCT time limits, we are planning to recruit about 200 PCT examiners. We have also enhanced the quality of PCT examinations by running diverse educational programmes to increase the technological expertise and language capability of our examiners. In addition, we are cooperating with the other IP offices to implement an online channel for exchanging information.

The last challenge is the necessity of strengthening the IPR capability of universities and enterprises. Universities generally lack the managerial capability of handling the intellectual property that emanates from research. Enterprises, especially small and medium-sized enterprises, have a need for IP specialists. Various policies are now being implemented to support universities and enterprises in the area of IP management.

The Intellectual Property Leadership Programme and the Campus Patent Strategy Universiade were set up to help nurture the IP staff of enterprises and strengthen their IPR capability. In addition, we have encouraged universities to hire IP specialists under the University Patent Advisors Programme for the benefit of university research centres. A number of educational programmes have been organised to enhance the IP awareness of university researchers. Furthermore, we have set up about 30 regional IP centres as part of the development programme of the national IP infrastructure.

KIPO’s patent progress

Source: KIPO presentation

What aspect of IP law do you think most needs to be harmonised internationally? How is KIPO trying to help with this process?

To increase the convenience of applicants and relieve the workload of IP offices, we need to further the international harmonisation of administrative procedures and substantive requirements for the granting of patents.

We have expressed this view in various international fora and will continue to do so as we prepare to join the Patent Law Treaty.

In September this year during the WIPO General Assembly, we were admitted to the Group B+ as a permanent member. That will enable us to actively participate in the group's discussions on the harmonisation and standardisation of substantive patent law within the context of the Substantive Patent Law Treaty.

We have already formed a B+ task force as well as a special study group on patent law harmonization. Hopefully, we can contribute to the Group B+ and other patent law harmonisation discussions by making concrete suggestions and assisting with substantive output.

What do you think is the proper role of KIPO, as the fourth largest IP office, in the global IP community? In addition, what are you planning to do to increase the role of KIPO in the international IP community?

The Republic of Korea has risen from the ashes of war half a century ago to become one of the major economies of the world through active investment in innovation and intellectual property. We are now the world's fourth largest country in terms of the number of intellectual property applications. And I believe our unique experience enables us to understand the different circumstances of both developed and developing countries.

Each year applicants from around the world file more than 1.6 million patent applications-and the number is continuing to rise. We therefore need more than ever to avoid the inefficiencies of duplicated examinations among IP offices. And for that reason KIPO is actively participating in discussions with leading IP offices on issues of work-sharing and examination quality. We are also committed to the progress of patent law harmonisation discussions in the Group B+.

Besides our active cooperation with other leading IP offices, we are deeply committed to sharing our successful experience with developing countries and least developed countries. As part of the implementation of the policy of the Korean government – particularly the low carbon, green growth strategy adopted by President Lee Myung-bak and the policy of making Korea a mature global country, which means ensuring that we are actively involved in global issues such as climate change and poverty eradication – we are endeavouring to initiate programmes that meet the needs of the marginalised and impoverished, especially those who struggle for basic necessities.

One example of such a programme is a mechanism for disseminating intermediate technology information to ensure an adequate supply of life-essentials, such as water, food and energy, through the utilisation of locally available resources. Another example focuses on helping farmers in the least developed countries to acquire intellectual property for their products and to build the marketing power of their products.

We have already started action on the last point. The Korean YMCA imports and distributes coffee products from East Timor as part of the fair trade movement to help coffee producers get a fair price. To raise the marketing power of such products, our office has encouraged the Korean YMCA to enlist the services of a public trade mark lawyer to get a trade mark for that product. The Korean YMCA will share the trade mark right with the producers in East Timor.

I believe these kinds of programmes show that the IP system can be used to alleviate global issues such as climate change, poverty and water shortage. At the recent WIPO General Assembly, I recommended that these programmes be adopted as part of the WIPO programme and be extended to other countries. KIPO is more than willing to use the Korea Funds-in-Trust that we have been operating at WIPO since 2004 to facilitate these kinds of programmes so that marginalised groups can benefit from the IP system.

What has been your main achievement since you took over as the Commissioner of KIPO?

First, I have tried to shift the paradigm of the KIPO work culture to focus on work quality. I have urged our staff to stick to the basics and tried to form a knowledge organisation in which the knowledge of individuals can be collected and shared. I have also encouraged them to set up standard operating procedures for all our services, to discover and share the best practices, and to pool the knowledge of individuals. I believe these activities will naturally lead us to produce high-quality examinations.

The second initiative, which is a response to the urgent need of our customers, involves the implementation of open innovation policies. This initiative also stems from the same philosophy of drawing up our collective knowledge – as the saying goes: "No one of us is as smart as all of us." Our customers are always in need of competent IP specialists who can develop IP rights from the results of R&D. Hence, to help universities understand the urgent needs of enterprises, and to foster the development of creative ideas and competent IP specialists, we are planning to collaborate with the National Academy of Engineering of Korea in holding an event called the Campus Patent Strategy Universiade.

In the Universiade, enterprises will join the universities in asking questions and the universities will present a patent strategy to participating enterprises. The enterprises will be encouraged to adopt some of the excellent strategies from the contest in order to develop new products and enter new markets. I hope the Universiade will be a good example of the open innovation that can spring from joint efforts of industry and academia.

Lastly, I would like to mention that I have tried to fortify international collaboration with WIPO and the IP5 offices so that our office can serve as a leading IP office and a facilitator between developed and developing countries. We just hosted the IP5 heads meeting in Jeju, Korea, on October 27 and 28. At the meeting, the heads of the five major offices agreed to move forward with various work-sharing initiatives. They also elaborated a cooperative framework in the form of 10 foundation projects, which are designed to harmonise the search and examination environment of each office and to standardise the information-sharing process.

Besides our active cooperation with the leading IP offices, we are deeply committed to sharing our successful experience with developing countries and least developed countries.

It has only been six months since I was appointed commissioner. In that time, I have been focusing on changing paradigms, building new strategies and making plans to upgrade our domestic and international services. In the months ahead, the results of the new paradigms, strategies and plans will hopefully become evident.