| Spring 2015 |
| PATENT |
| Recent Korean Supreme Court Decisions Clarify Standard for Patentability & Claim Construction of Product-By-Process Claims |
| Traditionally, the Korean Supreme Court has held that the patentability of a product-by-process claim should generally be determined in view of the specific structure of the claimed product, without considering the recited process itself, unless there are special circumstances where the product can only be defined by the process by which it is made. However, in a recent Korean Supreme Court decision, the Court modified its previous approach to evaluating product-by-process claims by indicating that it is the structure and properties of the product alone, and not the process, that is relevant to the patentability inquiry, without exception. However, since the Court also states that all descriptions in the patent, including regarding the process recited in a product claim, are relevant to defining the structure, properties, etc., of the final product, it appears under the Court's new guidance that the process must still be considered when assessing the novelty and inventiveness of a product-by-process claim, even if the process itself is not a claimed element. Read more |
| Patent for Top-Selling Drug in Korea Upheld |
| Starting the year in pharmaceutical patents off with a bang, the Intellectual Property Tribunal (IPT) of the Korean Intellectual Property Office upheld the validity of a patent covering the active ingredient (entecavir) of the top selling drug in Korea, BMS' hepatitis B drug Baraclude®. Seeking to launch their generic versions of the drug before the expiry of Korean Patent No. 160523, an entecavir compound patent, the two generics Hanmi and Daewoong had challenged the inventiveness of the patent. Notably, the IPT's ruling comes in the wake of a 2014 U.S. Federal Circuit decision invalidating the counterpart U.S. patent for obviousness. Read more |
| KIPO Introduces New Patent Examination Programs |
| The Korean Intellectual Property Office (KIPO) has recently established a number of patent examination procedures, including preliminary examinations, proposed amendment reviews and batch examination programs, as part of its new patent examination services referred to as "Patent Examination 3.0." These new procedures, a brief introduction of which are provided below, have been implemented by KIPO to improve the agency's interaction with the public, as well as offer accurate examination services customized to meet the needs of applicants. Read more |
| KFTC Amends IPR Guidelines |
| The Korea Fair Trade Commission (KFTC) made significant amendments to its "Guidelines on the Examination of Unfair Exercise of Intellectual Property Rights" on December 17, 2014, effective as of December 24, 2014. The Amended IPR Guidelines reflect the KFTC's active interest in applying competition law against the "unfair exercise" of intellectual property rights. Read more |
| Supreme Court Denies Withholding Tax on Royalties for Foreign Patents |
| The Korean Supreme Court recently decided that royalties received by a U.S. corporation from a Korean corporation for the license of patents registered abroad but not in Korea do not constitute domestic-source income as defined in Article 6, paragraph 3 and Article 14, paragraph 4 of the Korea/U.S. Tax Treaty, regardless of whether there are manufacturing or sales activities in Korea related to such patented inventions. As such, royalty income specifically received for such patents is not subject to Korean withholding tax. Read more |
| No Refund of Previously Paid Royalties Even After Patent is Invalidated |
| Under Korean patent law, a patent that is finally invalidated is legally considered never to have been filed at all. However, in a recent case involving a dispute over a patent licensing agreement where the patent was finally invalidated after the agreement was executed, the Supreme Court ruled that the patentee had no obligation to refund royalties already paid by the licensee prior to the invalidation, nor was there any basis to retroactively revoke the agreement, as long as the license was enforceable prior to the invalidation. Read more |
| Employee's Improper Assignment of In-Service Invention May Breach Duty of Care |
| The Supreme Court recently held that an employee subject to a pre-existing assignment contract breached a duty of care to his employer by assigning his in-service invention to a co-inventor (who was not employed with the same employer) without notifying the employer. The Supreme Court found that the employee owed damages to the employer based on his share of the invention. Notably, the non-employee (co-inventor) who assisted in developing the invention was found to be jointly liable for the tort and resulting damages. Read more |
| TRADEMARK, DESIGN, COPYRIGHT & UNFAIR COMPETITION |
| Another Victory for Hermès in Korea |
| On January 29, 2015, the Seoul Central District Court issued an injunction order against Suwa United Corporation, a Korean corporation, for violating the new catch-all provision of the Unfair Competition Prevention Act. Suwa United Corporation is now prohibited from manufacturing or selling polyester bags on which images of Hermès' iconic Birkin and Kelly bags are printed. Read more |
| Changes to the Korean Trademark Examination Guidelines in 2015 |
| The newly amended Examination Guidelines of the Korean Intellectual Property Office went into effect on January 1, 2015. The following are some of the more notable of the many changes made to the Guidelines. Read more |
| Supreme Court Rejects KIPO's Review Practices for 3D Marks |
| The Supreme Court recently upheld the decision by the Patent Court rejecting the Korean Intellectual Property Office's (KIPO) amended examination guidelines pertaining to three dimensional trademarks. The Supreme Court agreed with the Patent Court that the distinctiveness of a three dimensional mark should be determined in the same manner as any other trademark, by referencing all of its elements including shapes, symbols, letters, figures, etc., and should not be limited to considering the three dimensional shape alone as dictated by KIPO's amended examination guidelines. Read more |
| Using Copyright to Protect Logos from Unauthorized Use as Trademarks |
| On December 11, 2014, the Supreme Court confirmed that whether a work functions as a source identifier or trademark is irrelevant to whether the work can be regulated under the Copyright Act. The court also confirmed that access to a copyrighted work can be presumed if there is substantial similarity between the works, and the possibility of access is established. Indeed, the court noted that striking similarity alone (i.e., where the similarity cannot reasonably be explained as a coincidence) may be enough to presume such access. Read more |
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