Revision of the Patent Act and Utility Model Act

A.	Revision according to FTA between the U.S. and Korea
(1) Extension of Grace Period for Filing Publicly Opened Invention The grace period for being open to the public prior to application filing date is extended from 6 months to 12 months. If an inventor or assignee files a patent application for the invention, the invention is regarded as not being open to the public prior to filing the patent application. (2) Requesting Extension of Patent Term Due to Examination Delay When a patent is registered later than a reference date due to, for example, examination delay, the patent term can be extended upon applicant’s request. The reference date refers to a date 4 years since the filing of a patent application or 3 years since filing a request for examination for the patent application, whichever comes later. (3) Deletion of Clause That Cancels Patent Right Due to Not-Working of Invention Domestically Under the current Korean Patent Act, a patent right may be canceled when the patented invention has not been domestically worked. However, the FTA between the U.S. and Korea stipulates that “each nation concerned may cancel a patent right only based on the reasons that can justify the rejection of patent application.” Thus, in the revised Act, the cancellation of the patent right is deleted. (4) Introduction of Non-Disclosure Order for Trade Secret In Patent Infringement Trial The judicial authorities are entitled to penalize the violation of a judicial order regarding protection of secret information created or exchanged during the judicial procedure.
B.	Abolishment of Reexamination-Before-Trial and Introduction of Reexamination Request System
	The reexamination-before-trial is abolished because it caused an increase in trial cases and complicated the object of trials. Currently, the reexamination-before-trial becomes effective only after filing an appeal. Instead, a reexamination request system is newly introduced where the request can be made before filing an appeal together with an amendment of claims. When the reexamination request is filed, the final rejection is withdrawn and the pending application is reexamined to be finally rejected again or to be allowed. Therefore, the applicant can have new opportunities of amendment before filing an appeal, and make the allowable claims to be registered without filing the appeal especially when only a portion of claims has been finally rejected.
C.	Increased Filing Opportunities for Divisional Applications
	In line with introducing the reexamination request system, the opportunities of filing a divisional application has been increased in order to provide an applicant with a chance of filing the divisional application with only patentable claims even after the finalization of the reexamination procedure. Therefore, the applicant can file a divisional application after the reexamination and before filing an appeal with a portion of claims on which the Examiner changed his or her opinion.
D.	Relief of Amendment Requirement after Final Notice to File an Opinion
	Under the current Korean Patent Act, the amendment requirement for claims after final notice to file an opinion is extremely strict so that even a minor error or a procedural defect cannot be cured. According to the revised bill, an amendment for narrowing the scope of the claims is approved as a whole without determination on whether the amendment substantially changes the scope of the invention prior to amendment. Furthermore, an amendment that can make the amendment with new matter to return to the original state will be allowed.
E.	Approval of Computer Program Itself as Patentable Subject Matter
	Computer program itself can be a patentable subject matter and “transmission through information communication network” is included in the action of assigning or leasing.
F.	Introduction of Ex Officio Correction System by Examiner
	In order to prevent the examination procedure being delayed due to issuance of unnecessary Office Actions and to enhance the quality of the specification, the Examiner can correct obvious formal errors or omissions ex officio. In this case, the Examiner should notify the applicant of the ex officio correction so that the applicant can determine whether to accept the Examiner’s ex officio correction.

Revision of the Trademark Act

A.	Expanded scope of protection in trademark rights incorporating non-visual marks: Sound and Scent
	Under the current Trademark Act, trademarks, such as colors, holograms, motion trademarks, and also those that could be visually recognized can be registered. According to the revised Act, sound and scent, which cannot be visually recognized but can be expressed by using signs, pictures or characters can be registered.
B.	Introduction of Certification Mark
(1) Certification mark, which evidences the characteristic of the products or services, will be registered if the applicant shows that he could prove the characteristic and provide continuous and reasonable maintenance of proving the same. (2) The applicant who can prove the characteristic of products or services will obtain registration for the mark so that the certification mark can be used by those who have obtained permission from the applicant to do so. (3) For the accuracy and objectivity of certification marks, the applicant or the registrant may oppose the registration of any mark similar or identical to said certification mark. Also, a certification mark cannot be transferred without the approval by the Director of the KIPO.
C.	Abolished requirement to register exclusive license agreements
	Under the current Trademark Act, an exclusive license agreement becomes effective only after registration with the KIPO rendering the exclusivity ineffective if it is not registered even after it has been fully executed. According to the revised Act, the registration requirement is abolished.
D.	Introduction of non-disclosure order for trade secret in trademark infringement trial
(1) Petitioners in trademark infringement cases will be entitled to choose between actual damages and statutory damages (not to exceed 50,000,000 Won). (2) Also, the court can issue an order of non-disclosure of trade secrets thereby utilizing such information during the trial and preventing disclosure to non-parties.

Revision of the Copyright Act

A.	Exemption allowed in temporary storage of copied material
(1) “Copying” shall mean the reproduction of work in tangible media of expression or the fixation of work by means of printing, photographing, copying, sound or visual recording or other means. (2) Copied materials produced during a technical process using devices, such as computer, while lawfully utilizing copyrighted materials, will be exempt from the definition of “Copying.”
B.	Extension of the copyright term.
	Copy rights and/or neighboring rights (except for broadcasted materials) in a work shall continue to be protected for a period of seventy years after it has been made public or after the author's death. Under the current Copyright Act, the protection is for fifty years. Also, according to the FTA, a grace period of two years will be applied.
C.	Approval of exclusive right of use
	Exclusive right of use, which was only applied to publications, will be applied to the entire spectrum of copyrights. Therefore, during a contractual term between the copyright owner and the other party, the other party will be able to enjoy the right at a similar scope as the owner.
D.	On-line service providers exempt from liability
(1) On-line Service Providers will be exempt from liability if the copyrighted materials are (a) sent and temporarily stored during the transmission (b) cached which accompanies automatic transactions and (c) stored, per the user’s instructions, in on-line service providers' system or link with IP addresses on-line by search engines. (2) It is possible for on-line service providers to request information of the users through administrative procedures for approval.
E.	Prohibition of production and/or trading of counterfeit label, hologram, certificates and etc.
	Any person who produces and/or trades counterfeit label, hologram, certificates and etc. shall be punishable according the Korean Criminal Law.
F.	Prohibition of recording movies without permission
	Any person who records cinematographic works without permission with analog or digital recorders shall be punishable according the Korean Criminal Law.
G.	Prosecution of serious infringements
	In serious infringements, the prosecutor may prosecute the case based on his sole authority without the filing of a complaint by the plaintiff.

Patent Prosecution Highway Pilot Program between USPTO and KIPO

The Korean Intellectual Property Office (KIPO) and the United States Patent and Trademark Office (USPTO) will start the pilot program for the Patent Prosecution Highway (PPH) on January 1, 2008. The PPH will allow applicants in both countries to obtain patents faster and more efficiently. 

 Under the PPH, an applicant receiving a ruling from either the KIPO or the USPTO that an application is patentable may request fast track of the examination of the corresponding application in the other country. The PPH enables applicants to obtain a patent at an early stage in a foreign country and to enhance the utilization of search and examination results between two IP Offices.

This KIPO-USPTO PPH pilot program is the second PPH participation for KIPO after the KIPO-JPO PPH that was launched in April 2007. The program is expected to contribute to reducing the examination workload for both offices and facilitating the grant of patents in both countries.

	Year	2001	2002	2003	2004	2005
KOREA → US	Applications	6,792	7,757	9,614	13,388	16,643
	Grants	3,783	3,755	4,198	4,590	4,811
US → KOREA	Applications	7,212	7,575	9,366	10,507	9,402
	Grants	3,983	3,248	2,978	4,123	6,784

Brokerage of purchase and sale of unused trademarks and service marks

A company that brokers the purchase and sale of unused trademarks and service marks on behalf of the owner and the buyer has immerged in Korea.
“Names” is the name of the company and it all began when the company realized that, according to the KIPO database, almost 80% of the 850,000 marks in the KIPO database are found to be unused. Based on such information, the company has begun the brokerage between the buyer and seller as of September 19, 2007.
This company plans to cover the entire range of marks, such as construction business, newly built apartment sales, and pharmaceutical trademarks. The brokerage is done through the company website where it connects the purchaser and the buyer.

The CEO of this company stated that he was motivated to begin the service when he realized that almost 200 million USD worth trademarks and service marks have become useless. He believes that through such brokerage, the unused marks can take part in the economy.

In the past, the KIPO has provided technology transfer websites and technology auction markets, however, brokering the purchase and sale of trademarks and service marks is the first time.

Claims Construction: 2007 Hoo 883 (Korean Supreme Court, June 14, 2007)

In a recent case the Korean Supreme Court held that “when determining the range of a patent right, even though the meaning of a term in itself described in the claims is clear, the range of a patent right has to be determined by establishing the technical constitution that the term expresses in light of the specification and drawings if the concrete technical constitution based on the term is vague.”
By using this legal principle, the Korean Supreme Court held that in a patent (Patent No. 0291213) with the title “Compact wheel generator, light-emitting wheel having the same, and manufacturing method therefore,” the term “buffer means” described in claims 1 and 5 is a functional expression, so that the concrete technical constitution is vague based on the term itself. Furthermore, the specification and drawings describe only a structure having buffer wings, thus, the technical constitution expressed by “buffer means” in the patented invention is a structure having the buffer wings or similar structure and an accused invention that does not have buffering means having such a structure is not within the range of the patented invention.

Requisites for the business method invention: 2006 Huh 8910 (Korean Patent Court, June 27, 2007)

In 2006 Huh 8910, the Korean Patent Court stated as below regarding meanings and requisites for the business method invention:

“[1] For an invention to be patented, it must be ‘industrially applicable’ and the term ‘invention’ means the ‘highly advanced creation of a technical idea using the rules of nature.’ Therefore, an invention in a claim just purely using the rules of nature per se, human mental activities, logical laws, or economic laws is not a patentable invention. The determination as to whether an invention is using the rules of nature has to be based on the claim as a whole. When a part of an invention in a claim uses the rules of nature, the invention is not patentable if the invention in the claim as a whole does not use the rules of nature.”

The decision further stated that:

“[2] The term ‘Business Method (BM) invention’ in computer-related inventions means an ‘invention of new business system or method implemented by using information technologies.’ To be a BM invention, information processing by software on a computer has to be concretely realized through hardware. That does not mean that the software is just read out by the computer, but that an information processing apparatus or a processing method is implemented, said apparatus or a method concretely performing information processing for achieving specific purposes through co-operation of software, which is read out by the computer, with hardware. To perfect an invention, all the indispensable elements for achieving the purpose of the invention have to be described specifically and clearly in the claim, rather than the invention in the claim just presenting ideas. When the claim considered as a whole uses human mental activities or universal functions of the computer or the internet, it is not a BM invention. To be accepted as a BM invention, an information processing apparatus or a processing method, which concretely performs information processing for achieving specific purposes by co-operation between the hardware and the software on the computer, has to be implemented, thereby it has to have novel effects beyond simply using the computer or the internet.

[3] The present application titled as ‘system and method for trip planning and managing of company’ is not implemented as an information processing apparatus or a processing method that performs information processing for achieving specific purposes by co-operation between the hardware and the software thereby showing novel effects, but it is composed of the human activities using the general functions of the computer or the internet. Therefore, the present invention cannot be patented.