News & Infomation

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• 87

  February 2024   -   Q & A on Letter of Consent System in Korea

  The Letter of Consent system, which will take effect on May 1, 2024, is expected to cover a wide range of prior marks. The outline of the Letter of Consent system was confirmed at the briefing session held by the Korean Intellectual Property Office (KIPO) on January 25, 2024.   1) What is the scope of trademarks covered by the Letter of Consent? ⇒ Similar trademarks are subject to the Letter of Consent. Trademarks that are not strictly the same are considered as similar trademarks to which the Letter of Consent is applicable. In other words, trademarks combined with a figure or a descriptive mark, even if the characters are identical, can be registered through the Letter of Consent.   2) When shall we submit the Letter of Consent? ⇒ You may submit the Letter of Consent by the deadline for responding to an office action. If you have already received a final refusal, you can file an appeal against the final refusal, negotiate with the owner of a prior mark, and submit the Letter of Consent to the KIPO before the examination of appeal is concluded. Your trademark can be registered through the Letter of Consent unless a final refusal on your mark has been finalized as of May 1, 2024.   3) What if you get consent of coexistence only for some of the goods? ⇒ You can obtain registration only for the goods specified in the Letter of Consent. For the goods that failed to obtain the coexistence agreement, a decision of partial refusal will be rendered. For your information, the partial refusal system applies to applications filed on or after February 4, 2023, and the trademarks filed before this date will be refused as a whole for all goods unless all refusal grounds are resolved.   4) What should be included in the Letter of Consent? ⇒ Only the essentials of the coexistence agreement are required to be included. In other words, the Letter of Consent will be accepted if the application/registration numbers of the junior and senior marks, the name and address of each right holder, and the scope of the goods (all or part) of the coexistence agreement are specified. Meanwhile, the duration of the coexistence agreement cannot be arbitrarily limited.   5) How can we check if a trademark has been granted through the Letter of Consent? ⇒ The Trademark Gazette of the junior mark and the Register of the senior mark will indicate the fact of coexistence agreement between the junior and senior marks.      

• 86

  November 2023   -   “Letter of Consent” can be used for the current Korean trademark application.

  In Korea, the letter of consent system for similar trademarks will take effect on May 1, 2024. The amendment to the Korean Trademark Act, which adopts the system of letter of consent, was promulgated on October 31, 2023, and will take effect six months thereafter. In particular, the system will apply even to the trademark applications that have been filed under the previous law yet are still pending on May 1, 2024. In case your client receives a decision of rejection from the KIPO before May 1, 2024 based on a ground of similarity to the cited mark, you may advise your client to file an appeal against the decision of rejection with the Korean Intellectual Property Tribunal (KIPT). If a letter of consent can be obtained from the owner of the cited mark that is similar to the client’s mark, the ground of rejection due to similarity to the cited mark can be overcome by filing the letter of consent with the KIPT.   Meanwhile, a junior mark that is the same as the senior mark in terms of mark and goods cannot be registered regardless of a letter of consent. In other words, it is interpreted that the letter of consent system is applicable to a junior mark that is the same as the senior mark provided the goods are not identical but similar, and also, to a junior mark that is not identical but similar to the senior mark even if the goods are identical. In this regard, it is anticipated that a mark combined with a distinctive shape will not be considered identical to another mark consisting solely of the same letters. Consequently, the letter of consent is expected to be accepted, although further details need to be checked in a new Examination Guideline which is expected to be released around March 2024.   On the other hand, a provision has been added to the Korean Trademark Act stipulating that, if a mark registered based on a letter of consent is later used for an unlawful purpose and causes confusion to consumers, the mark may be cancelled through a cancellation trial. Accordingly, it is necessary to include information on preventing confusion among consumers in the letter of consent.   HANYANG International Patent and Law Firm will continue to provide you with details of the new Examination Guideline when it is released by the KIPO. Should you have any questions regarding the letter of consent system in Korea, please do not hesitate to contact us.      

• 85

  October 2023   -   Adoption of “Letter of Consent” System in Korea

  Korea revised the Trademark Act to adopt the letter of consent system. Under the current Trademark Act, a trademark (junior mark) similar to a third party’s prior mark (senior mark) cannot be registered for goods similar to the goods of a senior mark. However, according to the revised Trademark Act, which was passed by the National Assembly on October 6, 2023, a junior mark can be registered in spite of a senior mark similar to the junior mark when accompanied by a letter of consent provided by the owner of the senior mark. Meanwhile, a junior mark that is the same as the senior mark in terms of mark and goods cannot be registered regardless of a letter of consent.   In particular, it is worth noting that the effect of the letter of consent system will be felt much sooner since the system will apply even to the trademark applications that have been filed under the current law yet are still pending. As is customary, the revised law passed in October 2023 is expected to be promulgated approximately one month later in November 2023 and to be effective six months later in May 2024.     If a Korean trademark application of your client has been rejected due to a similar senior mark, you may advise your client to try to delay the examination in order to overcome the senior mark by using the letter of consent system as follows:   - Applying for a one-month extension of deadline 4 times after the 2 month response period; and - Filing a letter of consent provided by the owner of the senior mark   In case of International Registration via Madrid Protocol, extension of deadline is allowed only twice. In this regard, your client may file a separate response in order to try to delay the examination and then submit a letter of consent through the procedure of information provision.   On the other hand, the letter of consent system will not apply to the same mark for the same goods/services. In this regard, it will be set forth in the Examination Guideline in the future what the scope of the same trademark is and what the scope of the same goods/services is. We anticipate that the new Examination Guideline based on the revised law will be prepared in March or April 2024, one or two months before the effective date of the revised law.   HANYANG International Patent and Law Firm will continue to provide you with the exact date the Letter of Consent System becomes effective and details of the examination guidelines through further newsletters. Should you have any questions regarding the letter of consent system in Korea, please do not hesitate to contact us.      

• 84

  July 2023   -   Reduction of Patent Registration Fee by 10%, Increase of Request for Examination Fee by 16%, etc.

  The Korea IP Office revised “Rules for Collection of Official Patent Fees, Etc.” on July 28, 2023. Key changes are as follows:   1. Patent registration fee will be reduced by around 10%. The change in fee for establishment of rights (registration fee for the initial 3 years) will apply to patents whose date of notice of allowance is on or after August 1, 2023, and the change in maintenance / annuity fees (registration fees for the fourth year and thereafter) will apply to patents with the fees due on or after August 1, 2023.   2. The official fee for Request for Examination will be increased by around 16%. The change will apply to patent applications filed on or after August 1, 2023.   3. A tiered fee structure for the official filing fee based on the number of divisional patent applications will be introduced. The official filing fee for a divisional application is 46,000 KRW (around $40 USD) currently, which is the same as the official filing fee for a new patent application, but the revised rule will require the official filing fee for the second divisional application to be twice as much as that of a new patent application, for the third divisional, three times as much, for the fourth divisional, four times, and the fifth divisional and thereafter, five times as much as the filing fee of a new patent application. This change will go into effect from August 1, 2023.   4. The official fees for application for trademark registration, request for re-examination, registration for establishment of rights, registration of additional designated goods, and registration for renewal of duration will be reduced by 10,000 KRW (around $8.7 USD), respectively, The basic number of designated goods per class over which an additional fee is imposed will be changed from 20, which is currently in effect, to 10. The additional fee to be imposed per designated goods to be added, which is 2,000 KRW (around $1.7 USD) will remain the same. This change will apply to trademark applications filed on or after August 1, 2023.    

• 83

  July 2022   -   1. Revised Unfair Competition Prevention Act with Provisions for Protection of Right of Publicity Went into Effect on June 8

  As the Revised Unfair Competition Prevention Act went into effect on June 8, 2022, name and image of famous entertainers and athletes, etc. will now receive protection. Right of Publicity is a bundle of rights to commercially utilize economic values associated with name, image, etc. For example, an act of using name, image, etc. of famous people, such as BTS members, Heung-Min Son, etc., without authorization falls under an act of unfair competition. A symbol having an economic value that is widely known domestically and can identify a particular person, such as name, image, voice, signature, etc. is designed to be protected by the provisions. In case such a human symbol is used without authorization in a manner in contravention to customs of fair commercial trade or order in competition to infringe upon another’s economic interests, it is recognized as an act of unfair competition. In case economic damages occur due to use without authorization, the victim may demand compensatory damages and injunction against the act of unfair competition, etc. and may also obtain recommendation and publication of corrective action by the Korea Intellectual Property Office (the “KIPO”) by petitioning the KIPO to conduct an administrative investigation. The new provisions in the Revised Unfair Competition Prevention Act were prepared with the understanding that the fruits of investment and efforts of those in the entertainment industry, such as image of famous people, should also be protected when our cultural contents, such as BTS, Squid Game, Parasite, etc., are making great advances throughout the international market. With the new provisions of the Revised Act in effect, realization of effective restraint against acts of unauthorized use of names and images of famous people and sale of unauthorized goods in the fan goods market is expected.    

• 82

  December 2021   -   Amendment to the Unfair Competition Prevention and Protection of Trade Secret Act

  Amendment to the Unfair Competition Prevention and Protection of Trade Secret Act has been published that prescribes an act of unjustly obtaining or using data and an act of unauthorized use of image or name of a famous person as acts of unfair competition. The provision prohibiting unjustly obtaining and using data goes into effect on April 20, 2022, and the provision prohibiting an unauthorized use of image or name of a famous person goes into effect on June 8, 2022.   An Act of Unauthorized Use of Image or Name of a Famous Person Established as an Act of Unfair Competition A new provision for protection of right of publicity, such as name and image, etc., of a famous person has been established. With recent rapid expansion of the influence of the Korean Wave, such as Squid Game, BTS, etc., products and services utilizing such contents are becoming diversified. Beverage products with image and signature of an idol singer engraved and advertisements utilizing images suggestive of famous actors are coming out daily. At the same time, the reality is that illegal products and services making unauthorized use of images and names of Korean Wave stars are popping up everywhere. Such an act of unauthorized use is an act free-riding on the long-term investment of efforts and money by members of the Korean entertainment industry. However, to date, provisions that can regulate such unjust acts appropriately have been lacking in Korea. While some unauthorized use of images or names of famous people can be restricted based on the Constitution and the Civil Code, this is merely protecting names and images as moral rights, so the protection is limited to protection against emotional distress. As a result, even in case names or images of famous athletes and movie stars are used in advertisements, etc. in an unauthorized manner, the victims are compensated far less than actual damages that occurred, so proper protection has not been available for monetary damages. According to the Unfair Competition Prevention Act as amended, in case economic damages are caused by unauthorized use of names or images of famous people, obtaining civil remedies, such as request for injunction, request for compensation for damages, etc., and relief through administrative investigation or recommendations of correction by the Korea IP Office, etc. are now possible.   An Act of Unjustly Obtaining and Using Data Established as an Act of Unfair Competition This amendment to the Unfair Competition Prevention Act contains a provision regulating an act of unjustly obtaining and using data generated for the purpose of trade as an act of unfair competition. This is to securely lay the protective foundation for secure trade of data that is taking off as an essential resource comparable to financial capital in the digital era.  According to the amendment, the victim of an act of unjustly obtaining and using data may utilize relief provisions, such as request for injunction or request for compensation of damages, an administrative investigation or recommendation for correction by the Korea IP Office, etc. The amendment will go into effect on April 20 of next year at the same time as the Basic Law for Promotion of Data Industry and Encouragement of Use. The amended Act seeks to protect the data owner by establishing only the act of unjustly obtaining and using data that has been accumulated and managed for the purpose of trade as an act of unfair competition, as granting exclusive right to data itself would discourage use of data and disrupt development of data industry, which is still in the incubation stage.    

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  October 2021   -   HANYANG International Patent and Law Welcomes a New Member

  Mr. Seung-Yong (S. Yong) Lee joined HANYANG International Patent and Law as of October 1, 2021. One of the nation’s leading practitioners in the fields of trademark and designs, Mr. Lee brings with him over 20 years of extensive and diverse experience both in practice and leadership. Mr. Lee was formerly a partner at Y. P. Lee, Mock & Partners and worked at other established firms such as Park, Kim & Partners. Mr. Lee served as the president of the Korean Trademark Society in 2014, the chairman of the trademark, design, and copyright committee and a vice-president of the Korea Patent Attorneys Association (“KPAA”) between 2018 and 2020, and currently serves as the director of the Korea Intellectual Property Society, a director of AIPPI-Korea, a member of the trademark committee of AIPPI, and a member of the copyright committee of APAA.   A brief curriculum vitae of Mr. Lee is as follows:   Seung-Yong Lee, partner patent attorney   - B.A., German Language Education, Seoul National University - M.A. German Language Education, Korea National University of Education - B.A. Electronics, Soongsil University - LL.M. Max Planck Institute, Munich Intellectual Property Law Center - Admitted to the Korea Patent Bar (1997) - Park, Kim & Partner (1998-2000) - OORI IP & Partners (2001-2002) - Y. P. Lee, Mock & Partners (2002- August, 2021) - IP Law Lecturer, Myongji University (2012) - Foreign Trademark Systems Lecturer, International Intellectual Property Training Institute (2015-2018) - Trademark Policy Advisor, Korean Intellectual Property Office (KIPO) (2012) - President, Korean Trademark Society (2014) - Planning Director, Korea Patent Attorneys Association (2014-2016) - Chairman, Trademark, Design, & Copyright Committee, Korea Patent Attorneys Association (KPAA) (2018-2020) - Panel Member, Korean Internet Address Dispute Resolution Committee (IDRC) (2016-2019) - Vice-president, Korea Patent Attorneys Association (KPAA) (2018-2020) - Chairman, Special Committee for Studying IP Systems of North and South Korea (KPAA) (2018-2020) - Director, Korea Intellectual Property Society (2020-present) - Director, AIPPI-Korea (2011-present) - Member, Trademark Committee (AIPPI) (2015-present) - Member, Copyright Committee (APAA) (2015-present)    

• 80

  October 2021   -   Revision of Patent Act, Trademark Act, and Design Protection Act

   The bill for revision of the Patent Act, the Trademark Act, and the Design Protection Act passed the plenary session of the National Assembly on September 29, 2021. The revised texts of the laws will be published sometime in October and will go into effect six months from the date of publication. The key points of the revision are as follows.   1. (Common Changes Applicable to All Three Acts) The period during which the decision of rejection can be appealed is extended from 30 days, currently in effect, to 3 months The period during which the decision of rejection can be appealed is extended from 30 days (currently in effect) to 3 months. This is to provide an applicant with sufficient time to prepare for an appeal, taking into consideration that the period during which the decision of rejection can be appealed is 3 months in the US, Japan, and China.   2. (Common Changes Applicable to All Three Acts) Relaxation of Requirements for Restoration of Extinguished Rights The current provisions in the Patent Act, the Trademark Act, and the Design Protection Act allow additional relaxation of procedure within 2 months of occurrence in case rights are extinguished for “no fault of the applicant for which the applicant is responsible” when rights have been extinguished due to expiration of time for submission of documents or payment of official fees, etc. However, in practice, no case was recognized as “no fault for which the applicant is responsible.” In the revised laws, “no fault for which the applicant is responsible” has been changed to “reasonable cause.” For example, it is expected that, if the applicant were hospitalized for Covid 19 and could not comply with the procedure, the case would be acknowledged as a “reasonable case,” which would allow an application for restoration of extinguished rights to be accepted.   3. (Patent Act) Newly Established Route for Divisional Application after the Decision in an Appeal against the Decision of Rejection It has been the case that the decision of rejection is rendered against the entirety of a patent application even in case where only parts of claims contained matters subject to rejection and the remainder of claims are allowable. Under the Patent Act currently in effect, there was no way to obtain patent even for parts of claims that have been determined to be allowable by the examiner in case the appeal is dismissed after the decision of rejection is appealed because it is impossible to submit an amendment or file a divisional application once appealed. In the Revised Act, a new divisional application scheme has been introduced to enable filing of a divisional application by separating allowable claims even if the decision of rejection is maintained at the appeal (the decision to dismiss the appeal).   4. Introduction of Sua Sponte Review Process after the Decision of Allowance A new provision has been established to allow for cancellation of the decision of allowance and a sua sponte review in case the examiner discovers a clear reason for refusal before registration of establishment of rights of trademark / design application for which the decision of allowance has been made. This is to prevent establishment of defective rights containing a cause for cancellation. An identical clause was established for patent applications in 2016, but cases are scanty where a patent was been reviewed sua sponte after the decision of allowance.     

• 79

  April 2021   -   Whether Use of a Later-Filed Registered Trademark Which Is the Same as or Similar to an Earlier-Filed Registered Trademark Constitutes an Infringement of the Earlier-Filed Registered Trademark

  - With the decision of Case No. 2018Da253444 (Supreme Court, March 18, 2021)(en banc) at the center   A trademark right holder has an exclusive right to use the registered trademark. However, Article 92 of Korea Trademark Act limits active effects of the trademark right by prescribing that consent of a prior-right holder must be obtained in case use of the registered trademark is in conflicts with earlier-filed patent rights, utility model rights, design rights, or an earlier-generated copyright. Meanwhile, as Article 92 does not define the case of a conflict between trademark rights, whether it would fall under an infringement of an earlier-filed registered trademark in case the trademark right holder of a later-filed registered trademark, which is the same as or similar to the earlier-filed registered trademark, uses one’s own registered trademark without consent of the right holder of the earlier-filed registered trademark.   1. Previous Stance of the Supreme Court In case of a conflict between trademark rights, even in a case the right holder of a later-filed registered trademark uses the registered trademark without consent of the right holder of an earlier-filed registered trademark, it was deemed that an infringement is not constituted. (Decision of Case No. 86Do277, Supreme Court) However, in case a later-filed registered trademark is invalidated by an invalidation trial, the corresponding trademark right is deemed void ab initio, and an act of using the later-filed registered trademark would constitute an infringement retroactively from the time of its first use. The Supreme Court ruled in previous decisions: in case a later-filed registered trademark is invalidated, ① in a civil suit, the defendant is responsible for compensation of damages for an illegal act from “the time of first use” unless the defendant has a justifiable excuse for not being aware of the existence of the plaintiff’s trademark or for believing that the defendant’s trademark does not fall within the scope of the rights of the plaintiff’s registered trademark (Decision of Case No. 2013Da21666, Supreme Court); and, ② in a criminal proceeding, a criminal act of infringement is recognized for an act committed after “confirmation of decision of invalidation,” (Decision of Case No. 86Do277), respectively.   2. En Banc Decision of Supreme Court Case No. 2018Da253444 (1) Factual Findings   (2) Key Points of the Decision Priority among conflicting trademarks is determined based on the date of application for the trademark under the trademark laws. A trademark registered in violation of this is subject to invalidation by an invalidation trial. In addition, Article 92 of the Korea Trademark Act prescribes that a registered trademark may not be used without consent of the right holder of earlier rights in patent, etc., in case use of the registered trademark interferes with the earlier-filed patent rights, utility model rights, design rights, and earlier-generated copyright of another, so an infringement is constituted if the right holder of the later-filed registered trademark uses the registered trademark on designated goods without consent of the right holder of earlier patent rights, etc. In view of rules and intent of trademark laws relating to such effects of trademark rights, the first-to-file rule, relationship with rights of others, etc., it can be seen that trademark laws are based on the principle that first-filed or first-generated rights take precedence between mutually conflicting intellectual property rights, and it would be reasonable to find that the principle equally applies to conflicts between trademark rights. Accordingly, if a trademark right holder has a trademark registered which is the same as or similar to an earlier-filed registered trademark of another, which was applied for and registered prior to the date of application for registration of the trademark and uses it without consent of the right holder of the earlier-filed registered trademark on goods which are the same as or similar to the designated goods of the earlier-filed registered trademark, regardless of confirmation of decision of invalidation against the later-filed registered trademark, an infringement of the earlier-filed registered trademark is constituted.   3. Review This decision from the Supreme Court changes only the previous decision which found “an infringement of an earlier-filed registered trademark is not constituted until the confirmation of a decision of invalidation of a later-filed registered trademark” and does not change any other decisions. Accordingly, it would be reasonable to view that treatment of the case after confirmation of decision of invalidation would follow previous decisions. A summary of this would be as follows: Going forward, the right holder of a later-filed registered trademark which has close similarity to an earlier-filed registered trademark would need to pay sufficient attention, in important business deployments, to prevent a great harm as much as possible by reviewing (1) whether the consequences of losing the case is something the right holder can afford and by carefully determining (2) whether consent of the earlier right holder may be obtained in case it is necessary, as an infringement may be constituted even if the registered trademark is used before confirmation of decision of invalidation unlike before in case of a dispute. Otherwise, it would be a safer course of action not to use a trademark whose likelihood of dispute is great in the first place even if the trademark is registered.    

• 78

  April 2021   -   Introducing a New Member of HANYANG International Patent and Law

    Mr. Guangen Jin, a Chinese patent attorney, joined HANYANG International Patent and Law as of April 1, 2021. Mr. Guangen Jin is fluent in Korean, having obtained a master’s degree in Electrical/Electronic Engineering in Korea and having worked at Korean enterprises, and has ample experience with practice in the patent field in Korea, and Mr. Jin is expected to provide unrivaled services in the Chinese-language-related tasks to our clients.   Education Yanbian Science & Technology University (B.S., Electronic & Computing, 1998) Yonsei University (M.S., Electrical & Electronics, 2007)   License Passed Chinese Patent Bar (2014)   Experience Samsung China, Communications Network Equipment Set-Up (1998) Tmaxsoft R&D Center Korea (2007) GE Korea IT Center (2010) Korean Patent-related Services (2015 ~ Present)   Languages Chinese(native), Korean(native), English      

• 77

  March 2021   -   Introducing a New Member of HANYANG International Patent and Law

  Mr. Kyong-Mo Ahn joined HANYANG International Patent and Law as a partner patent attorney as of March 2, 2021.   Mr. Ahn was admitted in 1993 as a patent attorney and has been in charge of handling patent matters in electric/electronic/mechanical fields and Japanese clients at Kim & Chang, Central International Patent and Law, etc. Mr. Ahn has experience in handling a variety of electric, electronic, and mechanical patent prosecution cases, negotiations for semiconductor memory patent license, negotiations for secondary battery patent license, laser printer patent infringement litigation, video game device patent infringement litigation and settlement negotiations, and other cases in infringement litigation and negotiations, and has completed trainings for the Japanese language and Japanese patent practice at Keio University in Japan and at a major Japanese semiconductor corporation. We look forward to serving our clients with even better services moving forward.   Mr. Ahn’s brief curriculum vitae is as follows.     Kyong-Mo Ahn, partner patent attorney - B.S. Material Engineering, Seoul National University - Passed the Patent Bar in 1993 - Kim & Chang - Central International Patent and Law - KAIST (Korea Advanced Institute for Science and Technology) - Completed Trainings for the Japanese Language and Japanese Patent Practice at Keio University in Japan and a Major Semiconductor Corporation in Japan    

• 76

  October 2020   -   Provisions for Intellectual Property Protection Introducing Treble Damages for Trademark/Design Infringement and Idea Theft Pass in the Korea National Assembly

   (Amendments and Revisions to Trademark Act, Design Protection Act, Unfair Competition Prevention Act, and Patent Act to go into effect in April, 2021)   The bill for amendments and revisions to Trademark Act, Design Protection Act, Unfair Competition Prevention Act, and Patent Act passed in the Korea National Assembly and will go into effect from April, 2021. The key points are as follows.   1. Introduction of Treble Damages Provision for Infringement of Trademark and Design Rights Trademark Act and Design Protection Act have been amended to introduce a punitive damages provision allowing up to three times the recognized amount of damages in case of willful infringement of trademark rights or design rights. This expands the punitive damages provision for infringement of patent rights and trade secret, which was introduced in 2018 to Patent Act and Unfair Competition Prevention Act, to trademark and design fields.   2. Revision of the Basis for Royalty Computation regarding Infringement of Trademark Rights and Design Rights (“Conventional” à “Reasonable”) The basis for computation of damages by royalty in case of infringement of trademark and design rights has been revised from “a conventionally obtainable amount” to “a reasonably obtainable amount.” From this, increase in the recognized royalty rate is expected in the future.   3. Increase in Statutory Damages for Infringement of Trademark Rights (￦50 Million à ￦100 Million) The maximum award for statutory damages, which was introduced to Trademark Act in 2011, has been increased from 50 million Korean won to 100 million Korean won (in case of willful infringement 300 million Korean won). The change is to reflect the expansion of the market for sale of goods, inflationary factors, etc. and to enhance the effectiveness of trademark protection along with treble damages provision. When demanding compensation for damages, the trademark right holder must prove the amount of damages, but statutory damages provision allows the court to compute the amount of damages within the amount not exceeding the statutory amount with proof of infringement only, easing the burden of proof borne by the trademark right holder.   4. Introduction of Punitive Damages Provision Allowing Compensation of up to Three Times the Damages from Idea Theft Unfair Competition Prevention Act has been amended to allow compensation of up to three time the damages from an act of idea theft. In addition, in case the recommendation for correction for an act of unfair competition is not followed through, the facts regarding violation can be publicly announced so as to enhance the effectiveness of administrative investigation and recommendation for correction.   5. Change from an Offense Subject to Complaint to No Punishment against the Will of the Victim The bill for a revision of Patent Act to allow for punishment against an act of patent infringement without a complaint from the victim has passed the Korean National Assembly. Under the current Patent Act provisions, an offense of patent infringement is “an offense subject to complaint” where an investigation into the patent infringement may only be launched when there is a complaint from the patent right holder, and the complaint must be filed within six month from the date of act of infringement.   In the revised Patent Act, an offense of patent infringement has been revised to allow for ex officio investigation. However, under the revision, the offense cannot be punished against the will of the victim. Over the years, it has been pointed out that the reason that infringement of intellectual property has not ceased is due to the fact that there is more to be gained through infringement than the price to pay. If the “punitive damages” provision introduced against patent infringement is expanded in all directions to acts of infringement of trademark and design rights and idea theft in order to strengthen the effectiveness of intellectual property protection, the level of protection for intellectual property overall will be greatly elevated.   Commissioner of the Korea IP Office, Young-Rae Kim, stated, “With the current amendments and revisions, strict and fair enforcement against infringement of intellectual property has been made possible, and the foundation for fair trade for fair value of intellectual property in the market going forward has been set. In order to facilitate the current amendments and revisions, we will quickly proceed with improvement of basis for computation of damages, which was first introduced into Patent Act, as well as introduction of system for collection of evidence for patent protection for small-to-medium-sized business.”     

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  May 2020   -   Amendment of Patent Act Expanding the Scope of Damages for Infringement of Patent

  An amendment of Patent Act was passed by the National Assembly on May 20, 2020 to go into effect from December, 2020.   The key point of the amendment includes a change in the provision regarding compensation of damages for infringement of patent which would be advantageous to patent rightholders.   Under the Patent Act currently in effect, the amount of damages is computed by multiplying the amount of profit per unit of the patent rightholder by the number of infringing goods sold by the infringer. However, the maximum production capability of the patent rightholder operates as its ceiling.   For example, if the production capability of the patent rightholder is 100 units, even if the infringer sells 10,000 products in the market, the patent rightholder may not receive compensation for 9,900 units of infringing products exceeding the patent rightholder’s production capability (100 units).   Once the amended Patent Act goes into effect, the patent rightholder will be able to receive as compensation the amount of royalty in accordance with licensing of the patented invention regarding the 9,900 units for which no compensation was available in the past.   The summary of comparison of available compensation is as follows: * (Current Patent Act) Production Capability of the Patent Rightholder X Per Unit Profit ** (Amended Patent Act) (Production Capability of the Patent Rightholder X Per Unit Profit) + (Number of Units Exceeding Production Capability of the Patent Rightholder X Reasonable Royalty)   The amount of compensation of damages for infringement of patent is expected to greatly increase by this amendment of Patent Act expanding the scope of the amount of damages along with the treble damages regime for intentional infringement of patent which has been in effect since July of last year.   Meanwhile, the Korea Intellectual Property Office is seeking to introduce a Korean style discovery system into the litigation process against infringement of patent to enable patent rightholders to more easily secure evidence to prove infringement of patent and damages.    

• 74

  December 2019   -   Amended Patent Act with Strengthened Protection for Software Patents to Go into Effect on March 11, 2020

  Amended Patent Act with strengthened protection for software patents was published on December 10, 2019 and will go into effect on March 11, 2020.   1. Reasons for the Amendment and Key Points Korea Patent Act currently in effect does not recognize a computer software program as a product and a software program itself is not a protectable subject matter. In case of method inventions regarding software, etc., Korea Patent Act codified only an act of using the method embodied in the computer software program when claimed as a method invention as an act of using the invention, so an act of transmitting software through information network has been deemed not to fall under an act of using the invention. For this reason, in case of method inventions, the Korea Patent Act has been amended to include an act of inviting to use the method as an act of using the invention. However, in order to constitute patent infringement, the act would have to fall under the case of “inviting to use the method while knowing use of the method would infringe upon a patent or an exclusive license.”   2. Rules under the Amended Patent Act In the amended Korea Patent Act, using a method invention is codified as “an act of using the method or an act of inviting to use the method.” In codifications regarding effects of patent, a new rule that, “in case of using a patented invention by inviting to use a method, the effect of patent only covers an acts of inviting to use the method while knowing the use of the method infringes upon a patent or an exclusive license” has been established.   3. Our Comments The current Korea Patent Act does not recognize “a computer program” as a product, and “a computer program” as a subject matter of a claim is not recognized. A claim for a computer program must be recited in the form of “a computer program stored in a computer readable medium” In order to regulate an act of transmitting a computer program online infringing upon a patent, this amended Act amended the existing law to include “invitation to use a method invention” in the realm of using an invention. “Invitation to use a method invention” may include “all acts of facilitating use of a method invention”, so transmitting a computer software program online is included in “inviting to use a method invention.” The amended Korea Patent Act to go into effect took patents laws of the UK, Germany, and France into consideration which already codified “offering a process for use” as a type of use of the invention. However, regarding this provision in the amended Korea Patent Act, there are some critical opinions worrying about possibilities of occurrences of unreasonable situations since there are scarce case laws based on the similar provisions even in the UK, Germany, and France and the amended provision applies to all method inventions, not limited just to a method invention of software. Regardless, in order to stop an act of transmitting a software through information network by the amended Korea Patent Act, it is crucial to have a method claim regarding a computer program.  

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  July 2019   -   Copyright Is Infringed If the Rule of the Game/Style of Expression Is Similar (Korea Supreme Court, Case No. 2017Da212095, decided on July 1, 2019)

  1. Summary of the Decision   The first Supreme Court decision came out which held that, in determining creativity of a game, it is necessary to weigh not only the creativity of each component, but also whether the game has creativity in creative intent, scenarios, etc., which is distinguishable from other games as a whole. This is the first decision which specifically provides a standard for determining creativity in a copyright infringement lawsuit for a mobile game. The Supreme Court found that “the plaintiff’s game has creative individuality so that it can be subject to copyright protection” and held that, “as the defendant’s game includes creative format of expression in accordance with selection, arrangement, and organic combination of major components which technically implemented the plaintiff’s creative intent and scenarios, both games can be viewed as substantially similar.”   2. Background Information   (1) In April, 2013, King.com launched Farm Heroes Saga, which enjoyed huge popularity. Then, in January, 2014, Avocado Entertainment launched Forest Mania, which is similar to Farm Heroes Saga. King.com initiated a lawsuit in 2015 claiming that Forest Mania copied their Farm Heroes Saga. Both games are of the type in which players align three tiles of the same shape to make them disappear and obtain scores corresponding to the number of tiles that disappear. King.com claimed that “combination of rules of the game, the step of introducing new rules, and the visual design of the game, etc. fall under the works protected by copyright law” and that Forest Mania copied Farm Heroes Saga as is.” (2) This case drew the attention of the mobile game industry and mobile game users from the moment the lawsuit was initiated. In the process of producing numerous games, copyright infringement and unfair competition issues arose due to appearance of similar games. (3) Main interfaces of the plaintiff’s game and the defendant’s game are as follows.   (A) Plaintiff (King.com: Farm Heroes Saga) (B) Defendant (Avocado Entertainment; Forest Mania)   3. Case History   (1) Decision of the District Court The District Court found that Forest Mania did not infringe upon the copyright for Farm Heroes Saga. However, the court found that Forest Mania’s rules of the game and method of progression are so similar that Forest Mania violated the Unfair Competition Prevention Act and ordered Avocado Entertainment to pay one billion one hundred sixty eight million one hundred ten thousand Korean won (W1,168,110,000, which is equivalent to around $1,000,000 USD) in damages. (2) Decision at the Court of Appeals The Court of Appeals dismissed all claims of the plaintiff, finding that no acts of the defendant fall under copyright infringement, violation of Unfair Competition Prevention Act, or illegal acts under the Civil Code. (3) Decision of the Supreme Court (A) The contentious points during the hearing were whether the game developed by King.com is a creative work which can be protected as a copyrighted material and whether it is substantially similar to the game by Avocado Entertainment. (B) The Court explained that “the game developers of King.com’s Farm Heroes Saga selected necessary components for the game based on their accumulated experience and knowledge in game development and arranged and combined them in accordance with their own creative intent” and that “King.com’s game can be subject to copyright protection because it came to have creative individuality clearly distinguishable from previous games by selecting, arranging, and organically combining major components which are technically implemented in accordance with specific creative intent and scenario regardless of whether individual components’ creativity can be recognized.” (C) In addition, the Court pointed out that “the game by Avocado Entertainment contains creative format of expression in accordance with selection, arrangement, and organic combination of major components which technically implement the creative intent and scenarios of King.com’s side as is, so both games are substantially similar.”   4. Significance of the Decision and Future Expectations This decision is the first decision establishing specific standards for determining creativity of mobile games and acknowledging copyright infringement by recognizing creative individuality distinguishable from previous games. The prevalent view was that rules of games themselves fall under ideas which cannot be protected under the copyright law, and there has been no other decision, which recognized copyright infringement for games in actual cases. This decision is expected to serve as an important standard in cases involving infringement of copyright relating to games in the future and reflects the trend in policy favoring protection of intellectual property rights, such as copyright, etc.    

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  March 2019   -   Korea Supreme Court overrules an existing line of case laws and finds that ”a licensee may request a patent invalidation trial.” (Case No. 2017 Hu 2819, Korea Supreme Court, en banc, decided on February 21, 2019)

  1. Summary of the Decision   (1) Korean Patent Act defines that “a party in interest or an examiner may request an invalidation trial.” Here, a party in interest is someone who has direct and practical interest in extinction of a patent right for fear of being legally disadvantaged in any way due to the continuation of the patent right to an invention and includes a person who has engaged in or is planning to engage in manufacture and sales of goods of the same kind as the patented invention in question. By this reasoning, unless there is a particular reason, an interest in requesting a patent invalidation trial may not be deemed extinguished just for the reason that a licensee to a patent right has not been challenged or is without fear of being challenged by a patent right holder.   (2) Generally, various restrictions are imposed on licensees, such as payment of royalties for license or restriction on the scope of license, etc., and a licensee may escape these restrictions by obtaining a decision to invalidate a patent through a patent invalidation trial. Even if a cause for invalidation of a patent exists, until the decision to invalidate the patent is confirmed, the patent continues to be effective and its existence cannot be arbitrarily denied, and, even if a patent invalidation trial is requested, considerable time and expenses are required until the confirmation of the decision to invalidate the patent. For these reasons, a person may defer the dispute as to the validity of a patent to a later date and practice the patented invention by obtaining a license from the patentee first even if the person would like to practice the invention without obtaining a license to the patent, so the mere fact that a person obtained a license cannot be deemed conclusive as an expression of intent not to dispute the validity of the patent.   (3) Therefore, all previous decisions, including Korea Supreme Court Case 76 Hu 7, decided on March 22, 1977, and Korea Supreme court Case 82 Hu 58, decided on December 27, 1983, which found that a person is not a party in interest just for the reason that the person is a licensee, to the extent those decisions are contrary to the present decision’s findings, are hereby overruled.   2. Background of the Case and the Patent in Question   (1) The plaintiff (IBEX PT Holdings, Co. Ltd.) is a patentee for the patent in this case, titled “A Method of Encoding Video in AMVP Mode,” and is registered as a licensor with the patent in this case recorded in “HEVC Patent Portfolio License Program” (hereinafter “HEVC License Program”) of MPEG LA(www.mpegla.com) which is a standard essential patent pool relating to video images.   (2) The defendant (Samsung Electronics, Co. Ltd.) is a registered licensor with its own patents recorded in the HEVC License Program while being a registered licensee having a license to practice the patented inventions on a list of patents in the patent pool above and is a manufacturer and seller of goods involving video images using the same kind of video compression technology as the patented invention in this case.   (3) In case a decision to invalidate the patent in this case is confirmed, by operation of Article 6.1 of the HEVC License Agreement, the agreement between the plaintiff and MPEG LA will become ineffective and the patented invention in this case will be excluded from HEVC License Program, so the defendant would be able to practice the patented invention in this case freely without any restriction.   (4) This is a case where the defendant requested a patent invalidation trial upon discovering the existence of an obvious reason for invalidation (violation of the expanded first-to-file rule) of the patented invention in question.   3. Our Recommendations   (1) We expect there will be an increase in the number of cases requesting a patent invalidation trial by a licensee paying royalties for standard patents following this decision. (2) For patent right holders, it is strongly recommended that a patent right holder insert a “no challenge clause” in a license agreement, e.g. “a licensee acknowledges the validity of the patent and will not contest the validity of the patent,” in order to prevent patent invalidation disputes with licensees. While there is a debate as to the effectiveness of such a clause, it appears to be the most effective solution in practicality at present.    

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  December 2018   -   Amendments to Patent Act and Unfair Competition Prevention Act in Koera: Introduction of Punitive Damages Provision

  The National Assembly of the Republic of Korea held a plenary session on December 7, 2018, and passed partial amendments to the Patent Act, Trademark Act, Design Protection Act, and Trade Secret Protection Act.   The key measures of the current amendments can be summarized as introduction of punitive damages provision to patent and trade secret infringements and establishment of the foundation for a government-appointed counsel in patent (trademark, design) trials. Based on this, starting in June of 2019, compensation for damages can be set within the bounds of three times the amount of actual damages determined in case of intentional infringement of patent right, right to exclusive license, or trade secret. Main points of the amendments are as follows.     1. Amendments to Korea Patent Act   A. Establishment of the foundation for appointment of a counsel by the government (Proposed Article 139(2))   In a patent trial, a foundation for appointment of a counsel by the government and reduction of official fees for cases in which the government appoints a representative have been established.   B. Introduction of punitive damages provision (Proposed Article 128 Sections 8 & 9)   Restoration from damages following an infringement of patent right or exclusive license has been fortified by allowing the amount of compensation to be set up to, but not to exceed, three times the amount of actual damages determined in case an intentional infringement of patent right or exclusive license is found and, in determining whether an act of infringement is intentional, by requiring consideration of dominant position of the infringer, the extent of intentionality, duration and frequency of the infringement, the extent of economic profit to the infringer from the infringement, etc.   C. Revision to standard of computation of royalty compensation (Proposed Article 65(2), etc.)   The standard for compensation for damages corresponding to royalty amount allowed to demand from an infringer of patent rights or rights for an invention for which a patent has been applied has been changed from an amount “customarily” obtainable to “reasonably” obtainable.   D. Requirement to present specific acts (Proposed Article 126(2))   An alleged infringer denying the specific acts of infringement alleged by the patent right holder or exclusive licensee is now required to present one’s own specific acts.     2. Amendments to Unfair Competition Prevention and Trade Secret Protection Act.   A. Relaxation of requirements to qualify as trade secret (Proposed Article 2(2))   The requirement that a method of manufacture, a sales method, or information relating to technology or management useful for business activity satisfying a certain condition be maintained as secret through reasonable efforts to qualify as trade secret has been relaxed to requiring only that it be maintained as secret even in the absence of reasonable efforts.   B. Introduction of punitive damages provision (Proposed Article 14(2)(vi)-(vii))   Restoration from damages following an infringement of trade secret has been fortified by allowing the amount of compensation to be set up to, but not to exceed, three times the amount of actual damages determined in case an intentional infringement of trade secret is found and, in determining whether an act of infringement is intentional, by requiring consideration of dominant position of the infringer, the extent of intentionality, duration and frequency of the infringement, the extent of economic profit to the infringer from the infringement, etc.   C. Increases in the scope of infringing activities and the severity of punishment (Article 18 Section 1&2)   An act, for purpose of earning illicit profit or causing damages to rightful holder of trade secret, of taking trade secret out of the designated area without authorization or continuously holding on to trade secret despite having been asked by the rightful holder of trade secret to delete or return the same has been added to a list of punishable acts of trade secret infringement, and criminal sentences and fines have been adjusted higher from up to 10 years of imprisonment or up to ￦100,000,000 in fine in case of infringement where the trade secret is used abroad or while knowing that the trade secret would be used abroad or, otherwise, up to 5 years of imprisonment or up to ￦50,000,000 in fine to up to 15 years of imprisonment or up to ￦1,500,000,000 in fine and up to 10 years of imprisonment or up to ￦500,000,000 in fine, respectively.   D. Increase in fines against participants in preparation and conspiracy in trade secret infringements (Proposed Article 18(3))   Fines for those who participated in preparing or conspiring to commit a crime of trade secret infringement have been adjusted higher.    

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  May 2018   -   The Current State of Operation of and Revisions to the Unfair Competition Prevention Act (to go into effect as of July 18, 2018)

  1. The Key Points of the Unfair Competition Prevention Act   Article 2 Section 1 of The Unfair Competition Prevention Act defines an act of unfair competition as follows:   A. An act of causing confusion with goods of another person by using an identical or similar personal name, business name, trademark, container or packaging of commercial goods of another person, or mark otherwise indicating goods of another person which is domestically widely recognized, or by selling, distributing, importing, or exporting goods using the same.   B. An act of causing confusion with a business facility or activity of another person by using an identical or similar personal name, business name, sign of another person or mark otherwise indicating a business of another person (inclusive of overall outer appearance of the location of provision of business, such as sales of goods, methods of providing services, or signboards, outer appearances, interior decorations) which is widely recognized domestically.   C. An act, other than those described under paragraphs A or B above, without a legitimate purpose as designated by a presidential decree, such as a non-commercial use, etc., of causing damages to the distinctiveness or reputation of a mark of another person by using an identical or similar personal name, business name, trademark, container or packaging of commercial goods of another person, a mark otherwise indicating goods or a business of another person (inclusive of overall outer appearance of the location of provision of business, such as sales of goods, methods of providing services, or signboards, outer appearances, interior decorations) which is domestically widely recognized, or by selling, distributing, importing, or exporting goods using the same. . . . J. An act of unfairly using or causing a third party to use, by providing to the third party, information containing a technological or business idea of another person having economic value from negotiation of a deal or during a deal-making process, such as business proposition, bidding, public contest, etc., in violation of the purpose of provision of such information for business profit of one’s self or a third party. However, the above does not apply to a case in which the person who was provided with such information already knew of the idea at the time the information was provided or the idea is widely known in the business to which it belongs.     2. Revisions   The underlined portions in the above section 1 has been added to the existing provisions in the Act.   (1) The provisions within the parentheses in paragraphs B and C have been added to clarify the parts where availability of protection was not apparent.   (2) Paragraph J has been newly established. An act of obtaining and unfairly using an idea having economic value through business consultation, bidding, or public contest has been written into law as an act of unfair competition.     3. Catch-all provision   The paragraph K below was established on January 31, 2014 as a catch-all provision and has been enforced since (The paragraph was under the heading of J, but has been changed to be under paragraph heading, K, with the addition of the new provision above with the current revisions.)   K. An act of infringing upon economic profit of another person by otherwise using a product of investment or efforts of another person without authorization for one’s own business in a way contrary to the customary practices of fair commercial deal-making or orders of competition.   Due to the requirements of “widely recognized domestically” provision under paragraphs A to C, counterfeiting of goods or services which are not widely recognized domestically could not be prevented in the past.   After the new establishment of paragraph K, many lawsuits have been initiated based on the provision. Various types of unfair trade practices from which protection was difficult to obtain under the previous provisions of Unfair Competition Prevent Act, Design Protection Act, Patent Act have become the targets of new lawsuits and have been found to be acts of unfair competition. For example, copying of trade dress, such as interior of retail shops, etc., copying of packaging of cookies, technology theft, unauthorized copying of designs of entertainer’s accessories, and theft of the poll data, etc., have been found to be acts of unfair compeitition.    

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  November 2017   -   KIPO announces “IP Policy Directions for the Era of the Fourth Industrial Revolution”

  The Commissioner of the Korean Intellectual Property Office (“KIPO”), Yunmo Sung, announced “Intellectual Property Policy Directions for the Era of the Fourth Industrial Revolution” on November 1, 2017. The plan is to create jobs by creation and protection of strong intellectual property (“IP”) and construction of a virtuous IP cycle platform for use in the industry.     1. Securing Sufficient Manpower for Patent Examination      In order to secure better quality of patent examination, the time spent on patent examination will be optimized to 20 hours per case by 2020, which is on a par with more economically developed countries, from the average of 11 hours per case based on the 2016 data. For this purpose, the plan is to increase the patent examination manpower by 1000 more examiners.     2. Reduction of Invalidation Rate from the Patent Invalidation Trial      From 2019, the entire official fees for patent registration and maintenance already paid to KIPO will be refunded if the patent is invalidated by the patent invalidation trial. Currently, only the portion of the patent maintenance fees corresponding to the years following the date on which the patent invalidation decision becomes final and conclusive is refunded. Considering that the number of cases of invalidation of patent/utility model/design, etc. is around 740, the amount of refund is estimated to be around $ 400,000 USD per year.      The goal is to lower the invalidation rate from the patent invalidation trial from 49.1% in 2016 to 33.0% by 2022. To this end, an “advance notice of invalidation trial decision system,” through which the patent administrative judge can notify the patentee of the adverse result of an impending decision from the invalidation trial in advance for an opportunity for the patentee to make amendments to the claims, will be placed in motion by 2020, and a “trial researcher system” will be introduced in 2018.     3. Introduction of Punitive Damages System (Max. Treble Damages)      An amendment to the Korean Patent Act in 2018 is planned to introduce punitive damages system allowing up to treble damages in case of a willful infringement of patent rights.     4. Preferential Examination for Key Technology for the Fourth Industrial Revolution      A preferential examination system for key technology related to the Fourth Industrial Revolution will be introduced to support early vesting of rights for fundamental and core patents. To prevent vacuum of intellectual property protection in new technologies in particular, IP-related laws and systems will be modified by 2020. The current intellectual property laws limit invention to that created by a human being only, but active responses to invention by an artificial intelligence (“AI”) and disputes regarding infringement through creation of electronic file and transfer will be forthcoming.    

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  May 2017   -   Hanyang International welcomes Mr. Young-Won Cho as Co-Managing Partner

  Mr. Young-Won Cho, a prominent Korean patent attorney, joined Hanyang International Patent and Law as Co-Managing Partner as of April 26, 2017.  Mr. Cho previously served as the managing partner of the Koreana Patent Firm for 20 years and was in charge of patent matters for Japanese clients. After leaving the Koreana Patent Firm, Mr. Cho was in charge of managing INZI International Patent Office, and, with the merger of INZI International Patent Office with Hanyang International Patent & Law, has agreed to serve as the Co-Managing Partner of Hanyang International Patent & Law. Mr. Cho majored in chemistry and bioengineering and has extensive experience in patent prosecution, trial, and litigation. As Mr. Cho is fluent in Japanese, Hanyang International would be able to provide even greater service to our clients. A summary of Mr. Cho's extensive experience is listed below:   Mr. Youngwon Cho Education:       B.S., Engineering, Yonsei University   Experience: Hanyang International Patent & Law, Co-Managing Partner INZI International Patent Office, Managing Partner Koreana Patent Firm, Managing Partner Y.S. Chang Patent Office Admission to Practice Korean Patent Bar (1990)   Publications:   Patent Law Annotated, Design Patent Law Practice   With the addition of Mr. Cho, our firm's leadership now consists of Mr. Yeon-Soo Kim, the Founder and Managing Partner, Mr. Jeong-Suh Park, Co-Managing Partner, and Mr. Young-Won Cho, Co-Managing Partner. There is no change in the operation of the leadership, and Hanyang International will continue to strive to provide even greater level of excellence in service to our clients.