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| PATENT |
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| Korean Patent Court Requires Showing of "Reasonable Expectation of Success" to Invalidate Medicinal Use Patents |
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| In a recent case, the Korean Patent Court upheld the validity of a second medicinal use patent while clarifying a "reasonable expectation of success" test for evaluating prior art when assessing the inventiveness of patents.
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| IPTAB Upholds Inventiveness of Quantitatively Superior Selection Invention for the First Time |
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| In March 2015, the new pharmaceutical patent-regulatory approval linkage system (similar to the Hatch-Waxman system in the US) was fully implemented in Korea. Subsequently, massive numbers of Intellectual Property Trial and Appeal Board (IPTAB) actions (i.e., patent invalidation and scope confirmation actions) were initiated by generic companies to take advantage of the 9-month exclusivity period provided to generic companies who successfully challenge listed pharmaceutical patents. Most of the actions filed by generic companies have been directed towards secondary patents or patents directed to species-type inventions (often referred to in Korea as selection inventions).
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| Doctrine of Equivalents: Alive and Well in Korea |
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| The doctrine of equivalents protects the patentee from competitors who appropriate the essence of the invention while strictly avoiding the literal language of the claims. Under the doctrine of equivalents, the scope of infringement is expanded beyond the literal confines of the claimed elements to capture "equivalents." Thus, even if a party's activity is outside the literal scope of a written claim, that party may still be liable for infringement if its activity is deemed equivalent to the claimed invention. While the contours of the doctrine equivalents in Korea is still quite new and has undergone several changes in recent years, the most recent case law confirms that the doctrine continues to remain viable, and may even be treated more broadly by some courts than before.
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| Recent Statistics on Patent Court Decisions Reflect More Favorable Stance Towards Patentees |
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Notably, recent statistics show that the Korean Patent Court is making efforts to strengthen patent rights. The Patent Court is an intermediate appeal court which reviews decisions rendered by the Intellectual Property Trial and Appeal Board ("IPTAB"). The IPTAB is the first level tribunal with respect to all intellectual property matters except for infringement of IP rights. The IPTAB reviews actions, among others, seeking to invalidate patents and appeals from final rejections of patent applications. The Patent Court has exclusive jurisdiction over appeals of IPTAB decisions. Furthermore, starting January 1, 2016, the Patent Court has exclusive jurisdiction over appeals of patent infringement actions (main actions) filed with district courts.
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| Proposed Amendment to the Korean Invention Promotion Act to Delete Employer's 4-month Notification of Succession Requirement |
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| The Ministry of Trade, Industry and Energy (MOTIE) announced a proposed amendment to the Korean Invention Promotion Act ("KIPA") on August 18, 2016 for public consultation. One of the major changes includes revisions to employee invention rules (Articles 2, 10 and 13). We prepared summaries regarding the current KIPA rules relating to employee inventions (also referred to as "in-service inventions") and the proposed amendments thereof.
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| Korean Government Proposes Greater Protections for Trade Secret Holders |
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| The Presidential Council on Intellectual Property and other government entities have been exploring various approaches to address concerns in Korea that the current law has been ineffective in preventing technology theft from small and medium size companies. One measure the Korean government is now proposing is to amend the Unfair Competition Prevention and Trade Secret Protection Act (UCPA). Specifically, the amendment would broaden protections for trade secret holders by making it easier to show that certain information is a "trade secret," and by increasing sanctions for misappropriation of trade secrets.
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| KFTC Establishes New Division Responsible for IP Abuse in the ICT, Pharmaceutical and Biotechnology Sectors |
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| The Korea Fair Trade Commission ("KFTC") has long been regarded as one of the most active competition authorities in the world on issues involving the interface between competition law and intellectual property rights, and in its enforcement activities in high-tech industries. On December 7, 2016, the KFTC took a significant step in further advancing its enforcement agenda in these areas by announcing the creation of a new "Knowledge Industry Anti-Monopoly Division" (the "Division"), to be composed of five or more officials. The KFTC announced that the establishment of the Division would allow the KFTC to more effectively enforce the fair trade and competition laws and promote competition in knowledge-based industries, such as the Information & Communication Technology (ICT), pharmaceutical, and biotechnology sectors.
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| TRADEMARK, DESIGN & UNFAIR COMPETITION |
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| Korean Supreme Court Affirms that Shop Decorations and Trade Dress are Protected Under Unfair Competition Law |
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| On September 21, 2016, the Korean Supreme Court (Case No. 2016Da229058) affirmed without opinion an earlier High Court decision (Case No. 2015Na2044777) that had held that a bakery shop's general appearance (including the logo, outdoor signage and indoor layout) and other trade dress elements are protected under the Unfair Competition Prevention and Trade Secrets Act ("UCPA"). As Korea lacks express trade dress intellectual property rights, this case is noteworthy as the first time the Supreme Court has specifically recognized the protection of such rights in shop interior and outdoor decorations under Korean law, and as a test case for interpretation of the new "catch-all" provision of the UCPA.
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Criminal Penalties to be Introduced for Selling "Dead Copy" Products
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| An important amendment to the Unfair Competition Prevention and Trade Secret Protection Act ("UCPA") which will go into effect on July 18, 2017 was recently published. Under the new amendment, infringers who violate the "dead copy" provision of the UCPA may be subject to imprisonment for up to three years or a fine of up to 30 million Korean Won (approximately USD 24,000). Additionally, the amendment permits KIPO and/or local government offices to investigate potential "dead copy" violations cases on their own initiative, even in the absence of a complaint from a competitor.
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Minimalist Designs Can Be Protected Through Design Registration
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| The Korean Intellectual Property Office recently amended the Design Examination Guidelines, effective as of January 1, 2017. The most notable of the amendments is that the creativity threshold for design registrations has been substantially lowered.
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Supreme Court Rules that Statutory Damages Requirements are Strictly Construed
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| A recent Supreme Court case involving the mark "CROWNGENE," which was registered for gene testing services, gene analysis, and related services, has provided the Court its first opportunity to rule on the requirements for claiming statutory damages under the Korean Trademark Act.
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