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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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▲ Previous 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)
▼ Next May 2020   -   Amendment of Patent Act Expanding the Scope of Damages for Infringement of Patent