Korea’s National Assembly approves the Revised Patent Law Bill (Implementation Bill of Korea-U.S. Free Trade Agreement)

Revised Patent Law Bill, such as Korean Patent Act, Utility Model Act, Trademark Act, and Design Act, was approved by Korea’s National Assembly on November 22, 2011. The passing of the revised bill was done with parliamentary passage of the Korea-U.S. Free Trade Agreement and the main contents of each sector’s revised bill are as below.

 

1. The common revised matters

 

The commonly revised contents of Korean Patent Act, Utility Model Act, Trademark Act, and Design Act are as follows.

 

(1)   Order of Secrecy Maintenance System

Regarding the Korean Patent Act, a system was introduced for a court to be able to order secrecy of the other party if a party summons and requests based on predetermined reasons regarding confidential information that such party possesses in a relevant patent right infringement litigation. (Newly created Article 224 Section 3 to Article 224 Section 5 of the Korean Patent Act).

 

This system will apply to the first infringement litigation case relevant to patent right or exclusive license after the implementation of the revised act.

 

Utility Model Act, Trademark Act, and Design Act have been also revised as such.

 

(2)   Abolition of principle of the Treaty

Article 26 of the Korean Patent Act stating “where a treaty contains special provisions relating to patents that are different from those of this Act, such special provisions shall prevail” has been abolished. This Article was abolished because it is inconsistent with the constitutional provision because a treaty signed and promulgated in accordance with the procedures of the constitution shall have the same effect as domestic law.

 

Utility Model Act, Trademark Act, and Design Act have been also revised as such.

 

2. Main contents of Revised Korean Patent Act (Utility Model Act)

 

The Revised Korean Patent Act contains following contents and the Revised Utility Model Act contains the contents of the same purpose.

 

(1)   Extension of the grace period for a public disclosure from 6 months to 12 months

In case that a patent applicant discloses voluntarily his/her invention prior to filing of a patent application, the grace period (safe harbor period), which allows the applicant to maintain his/her novelty/inventive step if the patent application was filed within 6 months of the date of the public disclosure, was extended to 12 months (Article 30 Section 1 of the Korean Patent Act).

 

This system shall apply to the first patent application after the implementation of the revised law. The implementation date shall be the Korea-U.S. Free Trade Agreement effective date and although January 1, 2012 was mentioned as a possible prime effective date, it has not been decided as of yet.

 

(2)   Extension of the term of the patent right due to patent delays

A system that will extend the term of the patent right as long as the delayed period upon request of the applicant shall be introduced for cases that the registration for patent right was delayed for reasons that an applicant cannot be held responsible for (newly created Article 92 Section 2 to Article 92 Section 5 of the Korean Patent Act).

 

The application requirement shall be as follows and this system shall apply to the first patent application after the implementation of the revised law.

 

(i)       The registration for patent right takes more than 4 years from the patent application filing date or 3 years from an examination request, whichever is later.

 

(ii)      The patent owner shall file a Registration for Extending Term of Patent Right 3 months from the registration of the patent right date. 

 

(iii)     In case that the patent right is shared, all members to the patent right shall file a Registration for Extending Term of Patent Right jointly.

 

 

(3)   Abolition of patent revocation system based on non-usage of a patent

Where a patented invention has not been worked for more than three consecutive years in the Republic of Korea without a justifiable reason, a person who intends to work the patented invention may request the Commissioner of the Korean Intellectual Property Office to adjudicate for the authorization of a non-exclusive license thereon (Article 107 Section 1 Paragraph 1 of the Korean Patent Act). Where a patented invention has not been continuously worked in the Republic of Korea during a period of two years, the patent right may be revoked upon the request of any interested party (Article 116 of the Korean Patent Act). However, this revised bill abolishes the patent revocation system based on non-usage of a patent (Deletion of Article 116 of the Korean Patent Act).

 

However, regarding patent rights revoked in accordance with the previous regulation, it shall be binding in accordance with the previous regulation.

 

 

3. Main contents of the Revised Trademark Act are as follows.

 

(1)   Recognition of "sound and scent marks" within the scope of trademark protection

The scope of trademark shall be recognized to include a non-visual mark, such as sound and scent, if such may be expressed visually using letters, symbols, shapes, or any other methods.

 

This system shall apply to the first trademark application after the implementation of the revised act.

 

(2)   Introduction of Certification Mark

The current focus of the function of a trademark is “to uniquely identify its product to distinguish from other entities.” However, by introducing the Certification Mark System that will certify the quality, source, country of origin, and mode of manufacture, it hopes to strengthen the quality warranty function of trademark and to provide accurate information to consumers regarding its products.

 

This system shall apply to the first trademark application after the implementation of the revised act.

 

(3)   Abolishment of requirements for recordation of trademark exclusive licenses.

Among trademark right of use, exclusive right of use became effective upon recordation. However, such is being abolished and "exclusive right of use becomes effective without recordation of trademark licenses at Korean Intellectual Property Office" similar to non-exclusive license system.

 

This revised regulation shall become effective from the date when Korea-U.S. Free Trade Agreement becomes effective.

 

(4)   Introduction of statutory damages

A system that will relieve a right holder or exclusive license holder from bearing burden of proof regarding damages less than 50 million KRW shall be introduced and the right holder or exclusive license holder may elect between actual damages and statutory damages.

 

A right holder or exclusive license holder may request damages regarding infringement of his/her registered mark or similar mark under the same or similar designated goods from the infringer, whom infringed his/her mark or exclusive license holder's with an intent or negligent. However, the right holder or exclusive license holder is restricted to request damages within the scope of less than 50 million KRW.

 

This revised regulation shall become effective from the date when Korea-U.S. Free Trade Agreement becomes effective.

 

4. Revised Design Act

 

Except for the introduction of Order of Secrecy Maintenance System, there is no new information introduced to the revised Design Act.