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| PATENT |
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| Statutory Subject Matter for Computer Program Inventions in Korea |
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| Generally speaking, software inventions and business method inventions (often collectively referred to as "computer-implemented inventions") are treated similarly to other inventions under the Korean Patent Act ("KPA"). That is, the KPA does not have any provisions that specifically govern computer-related inventions, and applications for computer-implemented inventions are subject to the same statutory requirements of patentability that apply to patent applications in general (e.g., novelty, inventiveness and description requirements).
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| The "Manual" Is Here: Streamlined Procedural Rules at the Patent Court |
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| We reported earlier that as of January this year, the Patent Court of Korea now has exclusive jurisdiction over appeals of most intellectual property infringement cases in Korea. Following the jurisdictional consolidation, in March the court issued the Manual for Appellate Examination of Infringement Actions (the "Manual"), to be applied to all appellate infringement proceedings at the court, and which are similar to the patent local rules promulgated at various U.S. federal district courts. While many Korean courts already have been applying their own internal rules and procedures, this Manual is the first of its kind to be publicly issued by a Korean court, with the intention of being consistently and formally applied.
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| Changes to the Korean Rules of Civil Procedure – New Formatting Rules for Briefs |
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| The Korean Supreme Court recently announced certain changes to the rules of civil procedure, which are significant in that they establish for the first time clear formatting rules applicable to all civil case briefs filed in Korea on or after August 1, 2016 in civil cases (including in pending cases).
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| Patent Term Adjustment in Korea |
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| In 2012, as part of the Korea-US Free Trade Agreement, Korea first introduced a patent term adjustment ("PTA") system to allow the extension of patent terms for patents whose issuance is unduly delayed by the Korean Intellectual Property Office. Since the new PTA system applies only to patent applications filed on or after March 15, 2012, and since a patent is only entitled to PTA if issuance is delayed more than 4 years after the filing date of the application or more than 3 years after the request for examination, we may soon begin to see the issuance in Korea of patents eligible for PTA.
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| Korean Patent-Approval Linkage System – One Year Later |
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| Pursuant to the Korea-U.S. Free Trade Agreement, a pharmaceutical patent-regulatory approval linkage system (similar to the Hatch-Waxman system in the U.S.) was fully implemented in Korea in March 2015. Since our previous report last year concerning the initial impact of the new system, there have been a number of developments in the pharmaceutical drug market, as well as in the patent and judicial systems in Korea. The following summarizes some of the major developments of the last year.
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| Pfizer Gets First Generics Ban Under Korea Patent Linkage Law |
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| In accordance with the Korea-U.S. Free Trade Agreement, Korea adopted a patent- regulatory approval linkage system, similar to the U.S. Orange Book-type patent linkage system, which has been fully implemented since March 2015. Recently, Pfizer Korea successfully obtained a sales stay of a generic product under the system, blocking the generic's market entry. Pfizer also defended its Tygacil patent while obtaining a district court decision finding the generic's infringement.
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| IPTAB Rules that Extended Patent Term Covers All Drugs With the Same Approved Active Ingredient and Use |
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| In Korea, the term for a patent covering an approved drug product can be extended to compensate for delays attributable to the drug approval process. However, under Article 95 of the Korean Patent Act, during the extended term, the patent can only be enforced against drugs that are used in the same way as the approved products. However, it has been unclear whether an extended patent term granted for an approved product containing a single active ingredient also covers a combination product comprising the active ingredient of the approved product and one or more other active ingredients. Recently, an Intellectual Property Trial and Appeal Board decision in April 2016 resolving several scope-confirmation action cases filed by Korean generic manufacturers against the same Korean pharmaceutical patent has now answered that question in the affirmative.
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| Industrial Technology Act Amended to Provide Higher Penalties |
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| After several years of deliberation by the National Assembly, an amendment to the law governing industrial technology leakage was recently passed which now provides for significantly higher criminal and monetary penalties. The Act on Prevention of Divulgence and Protection of Industrial Technology which was amended on March 29, 2016 and took effect from June 30, 2016, reflects the government's growing concern over the potential impact of domestic and foreign leakage of industrial technology.
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| Korean Court Denies Bulk of Samsung Ex-Employee's Multi-Billion Won Inventor Compensation Claim |
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| On June 23, 2016, the Seoul Central District Court rendered a decision in favor of a former Samsung Electronics researcher ("Plaintiff") in a lawsuit filed against Samsung Display, which sought KRW 2 billion in compensation for an in-service invention developed by the Plaintiff. The Plaintiff alleged he was actually owed KRW 66 billion (approx. USD 56 million), but made an initial partial claim for KRW 2 billion (approx. USD 1.7 million). However, the Court awarded a total of only KRW 48 million (approx. USD 41,000) for the Plaintiff's entire claim.
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| TRADEMARK, DESIGN & UNFAIR COMPETITION |
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| Comprehensive Amendments to the Korean Trademark Act |
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| The most recent amendments to the Korean Trademark Act went into effect on September 1, 2016. One significant proposed change that was not made was the adoption of a consent system, which was unfortunately not included in the final round of amendments. Some of the major changes that were effected are summarized below.
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No More Playing – A New Victory for Hermès in Korea
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| Fresh off of its recent victories in the "Ginger bags" case, Hermès recently won another civil lawsuit in Korea based on the catch-all provision of the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA") against a different Korean entity called "Play No More." The UCPA catch-all provision protects a party's right to profit from work and intellectual property that it has produced at considerable effort or investment (whether or not registered in Korea), by prohibiting the unauthorized commercial use of such work and IP by others in a manner that contravenes fair trade practice or competition order.
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"Improper Use" Is Improper No Matter When It Starts
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| In Korea, one ground for cancellation of a registered trademark is for "improper use" of the trademark by the registrant or its licensee in a manner causing consumer confusion. One form of improper use can occur when one registers a mark, but then subsequently uses a different but similar mark to sell goods that also happens to be similar to another party's registered mark, thereby causing confusion with the other party's mark. Depending on the relative similarity of the utilized mark to each of the registered marks, it can be tricky to prove that the registrant intended to cause confusion and therefore cause the cancellation of the registered mark. In a recent Korean case involving Discovery Communication's DISCOVERY and DISCOVERY EXPEDITION marks, the infringer went a step further by using multiple marks similar to the DISCOVERY marks to sell goods, while selectively registering only the least similar mark, in the hope that this would effectively insulate his use of all of the marks.
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