Amendments to the Korean Patent Act and Trademark Act

Korean Patent Act and the Trademark Act have been amended, and will come into effect from June 30, 2016, and September 1, 2016, respectively.  Of the many changes made in these amendments, the more notable changes are introduced as follows:

1. Amendments to the Korean Patent Act

(1) Alleged Infringer’s Obligation to Produce Information

In patent infringement litigation, if the alleged infringer does not comply with the Court’s order to produce relevant information, the accusing party’s contention of patent infringement by the alleged infringer will be deemed true by the Court, enabling the accusing party’s burden of proof on infringement lighter.  The newly enacted provisions for this are as follows:

Article 132 (Production of Information) ① In litigation for patent rights or exclusive license, upon the request by one of the parties, the Court can order the opposing party to produce the information relevant to proof of the alleged infringement or assessment of the damages incurred from the alleged infringement.  However, if a person in possession of such information has any reasonable grounds to refuse submission thereof, the Court’s order for production of information is no longer enforceable.

② If the requested party contends that there are reasonable grounds for refusal on submission of the requested information per Article 132(1), in order to determine whether such assertions are reasonable, the Court can order the requested party to submit documents or information supporting his/her assertions of refusal.  In this case, the Court shall keep the submitted documents or information confidential.

③ If the information to be submitted pursuant to Article 132(1) is considered as “trade secret (hereinafter, it means the trade secret defined under Article 2(2) of the Decree of the Unfair Competition Prevention and Trade Secret Protection Act),” but is required for proof of the alleged infringement or assessment of the damages, the requested party’s refusal on submission of such information cannot be deemed reasonable under Article 132(1).  In this case, such information shall be reviewed by the people and within the scope designated by the Court, only for its purpose of production order.

④ If the requested party does not comply with the Court’s order to produce information without any reasonable grounds for refusal thereof, the Court can decide the opposing party’s assertions on the presented information as true.

⑤ In case that the requested party does not comply with the Court’s order to produce information without any reasonable grounds for refusal thereof as specified in Article 132(4), if the requesting party has undue burden on specific assertion of the truth of the presented information, or cannot prove the truth of the presented information by other supporting information or material, the Court can decide the facts that the requesting party intends to assert by the presented information as true.

(2) Refund of the Fees

In case that the patentee gives up his/her rights to the patent, or Decision of Rejection on the patent application is withdrawn, the fees for patent registration or filing a Request for Trial in response to the Decision of Rejection can be refunded under the newly enacted provision.

2. Trademark Law Revision

(1) Change of the time criteria of the similarity determination

Currently, determination of the similarity between the marks is conducted citing all of the registrations alive as of the application date.  As a result, prior registration that has expired during the examination procedure has to be considered when the applications are reviewed.  However, the amendments stipulate that the similarity review will only include those marks alive at the time of the final decision of the registration allowance, which will help applicants avoid wasting time and cost in re-applying after the pre-registered trademark expires.

(2) Supplement Provision for a Non-Use Cancellation Decision

Under the current act, there has been a criticism that the non-use cancellation action has not sufficiently prevented the accumulation of non-used trademarks, in that it has limited the eligibility of the petitioners as “interested party,” and has no retroactive effect of the decision.  Recognizing the onus, amendments have extended the standing for filing an action to “anyone” regardless of the interest at stake, which will save the time used to be spent to determine the scope of the “interested party.”  In addition, the amendment will allow cancelled trademark to expire retroactively on the day of the request of the action, upon the decision of cancellation.  These amendments are expected to encourage an actual use of the marks, and thus curbing the waste of the available marks.

(3) Removal of the Provision Preventing Registration during one year after the Trademark Expiration

The current law prevents registration of the applied-for mark, which is identical or similar prior registrations of others, where one year has not elapsed after the date such prior trademark rights are extinguished.  The purpose of the provision was to prevent possible misunderstanding and confusion of consumers which may arise due to remaining trademark effects of prior trademark.  However, the revised law removed such provision, and this revision is expected to reduce the time and cost of applicant used to be spent for a new registration, as well as to contribute to expediting the right obtainment procedure.