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| PATENT |
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| Legal Developments Regarding Patent Term Extensions in Korea |
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Numerous generics have filed challenges to the validity of patent term extensions (PTEs) in Korea in the last few years, raising various issues of first impression in an area of law that was little-litigated prior to the implementation of the pharmaceutical patent-product approval linkage system in Korea (a system analogous to the Hatch-Waxman regulatory framework in the US). Last November, the Korean Supreme Court rejected two of the major validity issues raised by the generics, and as a result upheld the validity of numerous PTEs. Since the Supreme Court decisions last fall, several Patent Court and Intellectual Property Trial and Appeal Board (IPTAB) decisions have been made addressing various other legal issues that were not decided by the Supreme Court. This article summarizes and discusses the implications of these subsequent Patent Court decisions.
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| Supreme Court Broadens the Doctrine of Equivalents to Emphasize Purpose over Specific Structures |
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A recent Supreme Court case clarified and substantially broadened the scope of the doctrine of equivalents as applied in patent infringement cases in Korea. The patent at issue related to a device for lifting a "gang form," which is a type of external scaffolding used in construction to allow the building of tall walls in stages.
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| Korean Supreme Court Confirms that Scope Confirmation Actions May Be Filed Regardless of Co-Pending Infringement Actions |
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A unique feature of Korean patent practice is the scope confirmation proceeding, which is an administrative proceeding filed at the Intellectual Property Trial and Appeal Board (IPTAB) of the Korean Intellectual Property Office for the purpose of confirming whether a given product or process is within or outside the scope of a particular patent. They are often filed by accused or potential infringers to get a quick decision that their product/process does not fall within the scope of a particular patent with which they are threatened, which they then hope to use as persuasive evidence in a court infringement proceeding. However, scope confirmation actions have always been somewhat controversial - while they are effectively a sort of infringement determination, they have no binding authority, so some parties have questioned their purpose in the Korean patent system.
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| KIPO Announces Steps to Enhance Quality of Examination and Lower Invalidation Rates |
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The Korean Intellectual Property Office (KIPO) has put a strong emphasis in recent years on reducing the pendency of examinations, and has been largely successful in this effort. However, there has been growing criticism in the Korean patent community that the invalidation rate of issued patents remains relatively high. In response, KIPO recently announced plans to take a number of steps to try to improve the quality of examinations and reduce invalidation rates, while maintaining the speed of examinations. These changes may lead to more office actions per examination and possibly lower overall grant rates.
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| KIPO Introduces Expedited Examination for Inventions Related to the "Fourth Industrial Revolution" |
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The Korean Intellectual Property Office (KIPO) has announced that under the revised Enforcement Decree of the Korean Patent Act (effective on April 24, 2018), expedited examination will be available for patent applications related to "fourth industrial revolution" (4IR) technologies such as artificial intelligence, internet of things, 3D printing, autonomous vehicles, cognitive robotics, Big Data and cloud computing.
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| TRADEMARK, DESIGN & UNFAIR COMPETITION |
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| Trade Dress Protection for Service Providers and New Provision Regarding the Theft of Ideas |
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An important amendment to the Unfair Competition Prevention and Trade Secret Protection Act (UCPA) will go into effect on July 18, 2018. This amendment specifies the protection to be given to trade dress belonging to service providers in Korea and introduces a new type of prohibited unfair competitive activities.
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Franchise Founders Criminally Indicted for Failure to Transfer Trademarks to Their Franchises
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An unusual feature of many Korean franchising businesses is that the trademarks on the brands for these businesses often are owned by the individual founders of the businesses, and not by the businesses themselves. The businesses pay a licensing royalty to the individual founders, and the cost of the licensing fees is passed on to the franchisees. This structure has been the subject of many complaints by franchisees in Korea, who generally feel that the fees are too high and make it overly costly to run their franchises.
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