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Recent Developments in IP Law - Korea

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Trademark, design 6 months, trial 6 months (patent/utility model 9 months) ... Trademark applications: 115,014. 7th country in # of PCT filing. About 1100 ... – PowerPoint PPT presentation

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Title: Recent Developments in IP Law - Korea


1
Recent Developments in IP Law - Korea
  • Association of Patent Law Firms
  • September 21, 2006
  • Sunhee Lee (Sughrue Mion)

2
Patent Act Amendment 2006
  • Backgrounds
  • KIPOs new policy to shorten the period to issue
    first office action
  • Patent application 10 months,
  • Trademark, design 6 months,
  • trial 6 months (patent/utility model 9 months)
  • Harmonization with international treaties

3
Patent Act Amendment 2006
  1. Abolition of Opposition
  2. Expansion of prior art to include an invention
    publicly known outside Korea
  3. Extension of time limit for entering national
    phase of PCT application
  4. Abolishment of requirement to submit Korean
    translation of priority documents

4
Patent Act Amendment 2006 (Cont)
  1. Expansion of subject of 6-month grace period to
    cover sales and marketing
  2. Expansion of patentable plants
  3. Third party observation

5
1. Abolition of Opposition
  • Background
  • Opposition and invalidation are duplicative
  • Opposition procedure takes more than 1 year to
    conclude
  • No appeal -gt opposer, when looses an opposition,
    initiate an invalidation

6
Abolition of Opposition (Cont)
  • Applies to patent registered after July 1, 2007
  • Current within 3 months from the publication
    date, anyone file an opposition
  • Under new law anyone may request an invalidation
    trial within 3 months from publication date, and,
    after 3-month period, only interested person may
    request an invalidation trial

7
Abolition of Opposition (Cont)
2001 2002 2003 2004
Opposition 265 301 274 244
Invalidation 538 647 611 661
Average time (opposition) 10.9 m 11.5 15.9 14.4
8
2. Expansion of prior art
  • Art. 29, sec. 1(1)
  • Effective date Oct. 1, 2006
  • Current publicly known or worked in Korea, prior
    to the effective filing date
  • New law publicly known or worked in a foreign
    country may be prior art

9
3. National entry of PCT application
  • Art. 201, sec. 1
  • March 3, 2006
  • 31 months from earliest priority date

10
4. Korean translation of priority documents
  • Effective Jan. 1, 2006
  • Submission upon request by an examiner or a trial
    examiner

11
5. Subject of 6-Month grace period
  • Art. 30, sec. 1
  • Effective March 3, 2006
  • Expand to cover all types of activities
    disclosing inventors own invention, such as
    sales and marketing
  • Old law publication certain conferences and
    exhibitions involuntary disclosure

12
6. Expansion of patentable plants
  • Abolish Art. 31
  • Art. 31 only those plants that are asexually
    reproducible can be patented
  • Effective Oct. 1, 2006

13
7. Third party observation
  • New Art. 63 bis, effective Oct. 1, 2006
  • Anybody may submit prior art references prior to
    publication of an application
  • Expected shorten time period to issue first OA
    (10 months), which is earlier than first
    publication of an application

14
7. Compulsory Licensing
  • Amendments to compulsory licensing provisions to
    implement DOHA declaration to facilitate an easy
    supply of essential drugs to certain countries

15
Utility Model Act
  • Current UM (a kind of petit patent) registration
    without examination will be changed to
    post-examination grant system
  • Same procedure to patent examination process
  • Effective Oct. 1, 2006
  • backgrounds

16
Utility Model Act (Cont)
  • Abolish dual application and adopt conversion
    between utility model and patent applications

17
Case Law
18
Compensation for Employee Invention
  • Patent Act, Art. 40, sec 1 an employee has right
    to appropriate compensation for his (her)
    employment invention when the application or
    patent is assigned or exclusively licensed to
    employer via a contact or employment agreement

19
Compensation for Employee Invention(2003 Na
52410)
  • Background of the case
  • Employer (Dong-A Pharmaceutical Co.)
  • oral formulation of antifungal agent
    (itraconazole)
  • failed to develop such formulation
  • Employee
  • proposed a new manufacturing method
  • under this method, a commercially viable
    formulation was obtained and later approved by
    KFDA

20
Compensation for Employee Invention
  • Total 6 inventions relating to oral formulation
  • Employee a named inventor in 3 inventions
  • Internal regulation
  • disposal compensation when an employee invention
    is licensed to another company, the employee who
    made the licensed invention is entitled to 5-10
    of the royalty income
  • No disposal compensation was paid

21
Compensation for Employee Invention
  • License agreement between Dong-A and Janssen
    Korea
  • Dong-As abandonment of itraconazole market
  • Transfer of know-how and exclusive license of 6
    inventions
  • Payment
  • initial commitment fee US 4M
  • initial licensing fee US 2M
  • running royalty 3-5 (in case of three or more
    competing products in the market, 1)

22
Compensation for Employee Invention (Seoul
District Ct.)
  • employers profit due to employee invention
  • (initial commitment fee initial licensing fee
    running royalties)

share of profit attributable to entire inventors
involved (5 in view of internal regulation)
degree of contribution made by the employee at
issue (30)
x
x
23
Compensation for Employee Invention (Issues on
Appeal)
  • Whether the Court can interfere with private
    contract between employer and employee (i.e.,
    internal regulation)
  • Whether the profit gained by Dong-A include
    initial payments in view of its abandonment of
    business and know-how transfer
  • Whether Dong-As RD costs can be deducted from
    its profit

24
Compensation for Employee Invention (Seoul High
Ct.)
  • Employees statutory right to a reasonable
    compensation trumps over private contract in
    relation to employee invention (i.e., mandatory
    provision)
  • Approve three-factor formula of lower court
  • Non-compensatory profit (50) derived from
    sacrifice of business opportunity and transfer of
    know-how
  • Compensatory profit (50) subject to employee
    compensation

25
Compensation for Employee Invention (Seoul High
Ct.)
  • Apportionment of compensatory profit (10)
  • employers substantial investments (RD)
  • internal regulation (5-10)
  • employers aggressive license negotiation
  • Contribution made by employee at issue (30)
  • employees critical role in successful
    development of itraconazole product

26
Abuse of patent right as defense
  • (1) Enforcement of a patent which is invalid for
    lack of novelty
  • (2) Enforcement of a patent which has an inherent
    defect
  • (3) Enforcement of a patent with the full
    knowledge of non-infringement

27
Source of Accused Partys Frustration
  • (1) No patent invalidity defense available in an
    infringement action
  • (2) Separate proceeding required to invalidate
    the patent
  • (3) Statutory presumption of patent validity
    until final and conclusive court decision

28
Unenforceability of a Patent Lacking Novelty
Supreme Court 81 Hu 56 (July 26, 1983)
  • The scope of a patent claim cannot be allowed to
    encompass what was already in the public domain
    as of the filing date of the patent involved.
    Accordingly, such patent claim cannot be enforced
    even if no final decision to invalidate the
    patent has been rendered.

29
Supreme Court Case No. 99 Hu 2853 (April 12, 2002)
  • If an IP right is substantially identical to the
    prior art available before the filing date
    thereof, such right may not be enforced
    regardless of the finality of the invalidation
    decision and without having to compare it with
    the accused partys technology.

30
Supreme Court Case No. 2000 Da 69194 (October 28,
2004)
  • The court hearing a patent infringement action
    may examine whether or not the patent in suit is
    valid, regardless of the status of the patent
    nullification trial.
  • If the patent is shown to have a prima facie
    invalidating deficiency, enforcement of such
    patent may result in an abuse of patent right and
    wrongfully injure the accused party.

31
Admissibility of Prior Art Patent Court Case
No. 2003 Heo 4948
  • Invention at issue
  • a medicinal composition for the treatment of
    neurodegenerative diseases (e.g., Alzheimers
    disease, Parkinsons disease) comprising a known
    compound (i.e., estrogen, a female sex hormone)

32
Admissibility of prior art 2003 Heo 4948
  • Argument 1
  • The pharmacological mechanism disclosed in the
    prior art reference (promotion of growth of nerve
    cells) and that employed in the patent
    application (protection of nerve cells) are
    different
  • Inasmuch as the pharmacological mechanism is not
    one of the elements recited in the claims, such
    difference is irrelevant

33
Admissibility of prior art 2003 Heo 4948
  • Argument 2
  • Prior art reference discloses two examples
  • Ex 1 administering a composition comprising
    fluoxymesterone to a 60-year old male patient
    having Alzheimers disease and Parkinsons
    disease
  • Ex 2 employing a composition comprising 1.25mg
    of estrogen and 10mg of methyltestosterone for a
    78-year old female patient suffering from
    Alzheimers disease
  • efficacy data disclosed in the reference lack the
    statistical reliability

34
Admissibility of Prior Art 2003 Heo 4948
  • Argument 2
  • the efficacy data disclosed in the reference
    might not be sufficient enough to make the
    invention patentable
  • if one skilled in the art can rely on the data
    disclosed in the reference to ascertain the
    medicinal efficacy of the invention for the
    treatment of neurodegenerative diseases, that
    reference can be used as prior art

35
Admissibility of Prior Art 2003 Heo 4948
  • Argument 3
  • The reference lacks credibility because the
    patients tested in the working examples were
    diagnosed to have acquired Alzheimers disease by
    using an unreliable method
  • The subject invention has nothing to do with the
    method of diagnosing the Alzheimer disease

36
Admissibility of Prior Art 2003 Heo 4948
  • Argument 4
  • Since the treatment effects of the two patients
    as described in the working examples were too
    dramatic and unusual to actually happen to
    Alzheimer patients, the reference lacks
    credibility
  • Although the reference focuses or exaggerates on
    certain partial aspects of the treatment effects,
    such description cannot be said to lack
    credibility to a person skilled in the art

37
Admissibility of Prior Art 2003 Heo 4948
  • Argument 5
  • Reference lacks credibility because the
    composition used in Ex 1 does not contain any
    female sex hormone and the composition employed
    in Ex 2 contains estrogen in an amount of 1/8 of
    the male sex hormone used
  • It is true that the working examples contained in
    the reference do not directly support the
    medicinal efficacy of a female sex hormone.
    Nevertheless, one skilled in the art, in light of
    the knowledge available as of the filing date,
    can rely on the data disclosed in the reference
    to ascertain the utility of an estrogen
    composition for the treatment of
    neurodegenerative diseases

38
Admissibility of Prior Art
  • Supreme Court Decision (2004 Hu 2307 dated March
    24, 2006)
  • A prior art publication includes not only a
    document which clearly describes the overall
    constitution of a technology but also those
    documents which fail to provide a sufficient
    disclosure due to lack of data or contain
    deficiencies in certain parts thereof so long as
    an ordinary person skilled in the art, in light
    of common technical knowledge and experience, can
    readily ascertain the technical content thereof

39
Admissibility of Prior Art
  • Supreme Court Decision
  • While it cannot be denied that the reference
    contains certain deficiencies, this Court rules
    that one skilled in the art can readily ascertain
    the utility of a sex hormone such as estrogen for
    the treatment of neurodegenerative diseases

40
Statistics in 2005
  • Patent applications 157,114 (about 75 by
    Korean)
  • Foreign Japan (about 40 USA about 30 Germany
    (8), Netherlands (6)
  • Utility Model applications 36,945
  • Design applications 44,957
  • Trademark applications 115,014
  • 7th country in of PCT filing
  • About 1100 examiners (June 2006)

41
THANK YOUSunhee Lee (sxlee_at_sughrue.com)Sughru
e Mion (www.sughrue.com)
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