FTA (Free Trade Agreement) has been concluded between U.S.A. and South Korea: updates related to intellectual property rights

Pfizer Inc. vs. Ahn-Gook Pharm. Co.,Ltd

The invalidation trial against Pfeizer’s material patent regarding NORVASC (amlodipine besylate), KR91020, which was initiated by Ahn-Gook pharm.(Korea), was denied by KIPT on July 25, 2006. However, when the case was taken to the Patent Court, the KIPT decision was overturned on June 13, 2007 in favor of Ahn-Gook pharm.

Also, the trial, requested by Ahn-Gook pharm., to confirm the scope of the material patent (KR91020) on July 11, 2006, alleging that its invention does not fall within the scope of KR91020, was rejected by the KIPT on February 28, 2007.  However, the Patent Court overturned the KIPT’s decision on June 13, 2007 in favor of Ahn-Gook pharm.

Prior to this, the Seoul Southern District Court canceled the provisional disposition order, which was issued against Ahn-Gook pharm.’s Levotension. (Please refer to our news letter of April, 2007)

International Searching Authorities required to conduct a search on Korean patent documents as of April 1, 2007

 In October 2005, the World Intellectual Property Organization (WIPO) passed a revised bill of the Patent Cooperation Treaty (PCT) by a unanimous vote of 128 member nations, that searching Korean patent documents should be done during the examination of the patentability of the international patent applications. Therefore, as of April 1, 2007, it became necessary for the International Searching Authorities, such as USPTO, EPO, and JPO, to search Korean patent documents while they examine the international patent applications.

Demand for KIPO’s International Search on PCT applications is on the big incline

The number of requests for International Search, which is being utilized to check the presence of prior arts and to determine the patentability of inventions, made to KIPO (Korean Intellectual Property Office) by global international corporations when they proceed with filing PCT international patent applications is on the big incline.
 
On April 23, 2007, KIPO announced that the requests for the Search are mainly made by global international companies, such as 3M and Microsoft, and such number of requests marked 570 cases in the first quarter of this year, which covers 77. 6% of the total 735 requests made last year.
 
In particular, the number of international patent Search requests received through USPTO are 535 cases which cover 93.9% of the total requests, and it turned out that most of the requests were made by global international corporations like 3M (214 cases), Microsoft (169 cases), and Thomson (14 cases).
 
Such an incline is presumed to be a result of KIPO’s highly enhanced processing capacity attributing to achievement in the fastest processing time for patent examination in the world, a world-class quality of examination, abundant patent examination resources, improved patent information DB, and relatively low fees.
 
In September of 2006, Microsoft decided that they will request International Search on international patent applications to KIPO and has been requesting more than 50 cases a month since then.
 
KIPO has been working as an International Searching Authority and International Preliminary Examining Authority according to the Patent Cooperation Treaty since 1999.

Estoppel not allowed: 2005 doh 4210 (Korean Supreme Court, February 23, 2007)

In a recent case, the Korean Supreme Court held that "when an applicant or a patent proprietor has consciously excluded a product being compared with a patented invention from the patented claims during the process of examination or registration, it is not allowed for the patent proprietor to assert that the product being compared with the patented invention is included in the scope of the patent invention thereby infringing the patent right thereof because such an assertion violates the doctrine of estoppel.  Furthermore, the determination of whether the product being compared with the patent invention was consciously excluded from the patented claims during the process of examination or registration shall be based on the information, such as the Examiner's opinions and the applicant's arguments and amendments presented during the prosecution as well as the specification." 
 
In order to overcome the official actions regarding the technical effects of a drying room, the applicant of the patented invention with the title of "Apparatus for successively manufacturing the paster boards of an album" (Patent Registration No. 24509) limited the scope of the patented invention by amending "an upper surface and a lower surface of a source sheet coated with an adhesive pass through a drying room once respectively" to "an upper surface and a lower surface of a source sheet coated with an adhesive pass through a drying room twice respectively" and newly added, to the specification, the technical effect of "complete drying of the adhesive and economical efficiency according to reduction of the space of the drying room," which was caused by such a limitation.
 
The patent proprietor asserted in the lower court that the dependant's apparatus for producing the paster boards of an album, which employs "the process of an upper surface and a lower surface of a source sheet coated with an adhesive passing through a drying room once respectively," infringes its patent right, and the lower court ruled that the defendant's apparatus infringes the patent right based on doctrine of equivalents.
 
However, after the case went to the Korean Supreme Court on appeal, the Court held that "it is reasonable that the defendant's apparatus was consciously excluded from the patented claims during the examination prosecution, and thus, it is not allowed for the patent proprietor to assert that the defendant's apparatus is included in the scope of the patent invention to infringe the patent right because such an assertion violates the doctrine of estoppel.”

Two marks should be viewed in their entireties when determining similarity when both marks contain a similar but non-distinctive portion and such portion should not be given weight in such determination: 2007 Huh 1756 (Korean Patent Court, April 25, 2007)

In determining whether the subject mark is confusingly similar to the opposing mark due to the “energise” portion which is included in both of the marks, it is to be noted that “energise” is a verb form of the word, “energy,” that is found in the 3,000 English vocabulary of Korean high school level students. (in the dictionary, the very ending, “-ize” is noted as American English while “-ise” is noted as the equivalent British English), and it has been commonly used in the context of body and skin health in Korea. For that reason, the general consumers will easily consider the cosmetic products bearing such a portion to mean that the product will provide energy to the skin, thereby rendering the portion to lack distinctiveness.  Therefore, it is unlikely that the similar portion in the marks would cause confusion as to the source of the marks, but rather, the subject mark and the opposing mark are not confusingly similar based on the difference in appearance and pronunciation.