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IP Newsletter | Spring 2016
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PATENT
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Significant Changes to the Korean Patent Act
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Two major amendments to the Korean Patent Act were signed into law on February 4 and March 3, 2016, respectively. The amendments make a number of important changes to Korean patent procedures, such as a new patent cancellation system, greater ease in proving patent infringement and damages, and a shortened period for requesting examination. Some of the notable changes are discussed below.
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New patent cancellation system
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According to the existing Patent Act, anyone can file an invalidation action against a patent with the Intellectual Property Trial and Appeal Board ("IPTAB") at any time after the patent is registered until three months after the registered patent is published. However, due to the procedural complexity of invalidation actions, the use of this procedure by non-interested third parties has been limited since its introduction.
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The amended Patent Act no longer allows non-interested third parties to file invalidation actions for patents registered on or after March 1, 2017, and instead introduces a new patent cancellation system for such patents. Under this system, anyone can file a request to cancel a patent with the IPTAB from the patent registration date until six months after the publication of the registered patent by submitting prior art rejection grounds against the patent. The IPTAB will then review the patent and the patentee will be given an opportunity to address the rejection grounds. One key difference between invalidation actions and the new patent cancellation procedure is that a decision upholding validity in an invalidation action may be appealed to the Patent Court, whereas an IPTAB decision not to cancel a patent under the cancellation system cannot be appealed (although a decision cancelling the patent can be appealed).
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Greater ease in proving patent infringement and damages
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Traditionally, it has been difficult for patentees to prove infringement or damages in Korea where the accused product or process is not publicly available and thus the key evidence concerning infringement or damages is solely in the possession of the accused infringer. Although the Korean Civil Procedure Act allows a party to request that the court order an adverse party to produce relevant materials, in practice, the accused party is often able to avoid any production or adverse inferences by asserting that the requested materials contain trade secret information and simply refusing to produce them. This has been true despite the fact that the court has discretion to presume as true facts alleged to be in the requested materials if the materials are not produced, since courts have typically refused to allow any legal conclusions to be drawn from such presumed facts alone. Thus, patentees have often been unable to gather sufficient information about the accused infringer's product or process in order to prove the existence of infringement or establish the appropriate amount of damages.
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Under the amended Patent Act, materials may no longer be withheld from the court simply because the accused infringer claims that they contain trade secrets if the requested materials are necessary to prove infringement or damages. Instead, if the producing party is concerned about the potential disclosure of trade secrets, it may request that the court limit the scope of materials to be produced or the persons allowed to access the produced materials after demonstrating to the court that the materials contain trade secrets.
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Further, the amendment expressly permits a court to presume that "the facts that the requesting party intended to prove based on the requested materials" are true if the requested materials are not produced and the requesting party would otherwise have substantial difficulty proving these facts.
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Consequently, the amended Patent Act substantially eases patentees' difficulties in proving patent infringement and damages in cases where the adverse party is likely to refuse to produce relevant materials. The new amendments will apply to patent infringement actions filed on or after June 30, 2016.
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Shortened period to file request for substantive examination
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The Korean patent system is a deferred examination system in which substantive examination does not automatically begin on the filing of a patent application, but must be separately requested within a certain timeframe. Under the existing system, a request for substantive examination must be filed within five years of the application's filing date. Under the amended Patent Act, for applications filed on or after March 1, 2017, the timeframe to file a request for substantive examination will be reduced from five years to three years. This change is likely to accelerate the rate at which patent rights are determined and granted significantly. An applicant may still postpone substantive examination up to five years after the filing of the application by filing a petition for delayed examination.
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New ex officio re-examination system
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Under the new re-examination system, if an examiner determines that there are clear rejection grounds for a patent application after the application is allowed, but before the application is registered as a patent, the examiner may withdraw the decision to grant a patent ex officio and reopen examination of the application. The new re-examination procedure will apply to applications that are allowed on or after March 1, 2017.
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New court action for determining patent ownership
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Under the existing Patent Act, if a patent is issued to a patentee that lacks proper ownership rights in the patent, the only recourse for a party claiming true ownership of the patent is first to invalidate the patent at the IPTAB and then to file a new application to obtain a patent in its own name. This process is unnecessarily burdensome and may discourage ownership claims from being asserted where it is unclear whether the patent is valuable enough to justify the effort and expense.
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Under the amended Patent Act, a party claiming ownership rights may now bring an action before a Korean court to transfer the patent right to itself. If the court agrees with the party's ownership claim, it may simply order that the patent right be transferred from the registered patentee to the party claiming the rights. Thus, the amendment makes it much easier to rectify improper ownership of patent rights. The new court action will be available for patents registered on or after March 1, 2017.
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Broader scope of refundable official fees
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Under the existing Patent Act, patent maintenance fees and official fees for filing an appeal before the IPTAB are generally not refundable (except where payments are made in error).
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Under the amended Patent Act, these fees may now be partially or fully refundable under certain circumstances. For example, if a patentee pays maintenance fees for multiple years and then subsequently abandons the patent, the maintenance fees paid for years beyond the current year will be refundable. In addition, the official fees paid to file an IPTAB appeal of a final rejection are refundable if the rejection is ultimately reversed. This portion of the amendments will become effective as of June 30, 2016.
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The full list of refundable official fees under the amended Patent Act is as follows:
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patent maintenance fees paid for years subsequent to the year the patent is abandoned (for patents abandoned on or after June 30, 2016);
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all official fees paid to file an appeal of a final rejection before the IPTAB in connection with a patent application or patent term extension application, if the final rejection is reversed by the IPTAB (and the IPTAB decision is issued on or after June 30, 2016);
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if an IPTAB action (e.g., an appeal from a final rejection, an invalidation action or a confirmation of scope action) is filed and then withdrawn before notice that the hearing has been closed is received, 50% of the official fees paid to file the action (if the IPTAB action is withdrawn on or after June 30, 2016);
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if a petition to intervene in an IPTAB action is filed and then withdrawn before either notice that the hearing has been closed is received or the petition is denied, 50% of the official fees paid to file the petition (if the petition for intervention is withdrawn or denied on or after June 30, 2016); and
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if an IPTAB action is filed but finally and conclusively rejected for failing to meet formality requirements under the Patent Act, 50% of the official fees paid to file the action (if the rejection becomes final and conclusive on or after June 30, 2016).
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Back to Main Page
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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