Transforming intellectual property in Korea
Centre for Japanese and East Asian Studies
March 2007
Intellectual property (IP) is a priority area for the Korean government, to help it strengthen developments in science and technology. To provide a taste of the transformation in Korean intellectual property this article takes a look at some of the many recent changes in Korea's patent information systems and databases, the South Korean Patent Act, and the South Korean Patent Courts.
A leader in the electronic era
The Korean Intellectual Property Office (KIPO) has been a world leader in shortening the patent processing period for patent investigations, mainly through developing an internet-based application service system in 1999 1. This system — KIPOnet — placed online not only the entire process of application, but also investigation, registration, decisions and public gazette IPR publications. For such a relatively small country with a population of 40 million, it was a remarkable achievement for KIPO to formalize the electronic government service system in all sectors of industrial property — before other countries in the world. The World Intellectual Property Organization (WIPO) was so impressed with KIPO's efforts that they designated KIPO to be the first partner to be connected to the WIPO online text interchange system.
In 2005 KIPO went further by building a ubiquitous patent system in which both patent application and investigation could be made available 24 hours a day, every day of the year. This allowed inventors to apply whenever they had the time. These developments have also been furthered by the fact that South Koreans are the highest users of broadband in the world, with both the very young and old actively involved in broadband usage. By October 2006, the e-filing rate for patent applications in Korea reached 97.8 per cent.
Another key step taken by Korea in 2005 was simplification of its investigative process through creating an investigation highway with Japan 2. This highway is designed to accelerate the patenting process in both South Korea and Japan: for applications submitted in both countries, decisions made in one country will be used to accelerate the grant process in the other.
KIPO has also built a patent information database that by 2006 held 15 million bits of Korean patent data, including four million bits of international patent information. Combined with KIPOnet this has helped improve substantively the quality of patent investigation processes in Korean. One outstanding problem with KIPOnet is the description of certain application documents that can be confirmed on offline applications but cannot as yet be confirmed on the online applications.
Most recent amendments to the Korean Patent Act and implications
The dynamic nature of the Korean patent system is illustrated by the fact that since 1961 the Patent Act of Korea has been amended over 24 times. Some ground breaking amendments have been enforced since 3 March 2006, including:
- In Article 36(4) it states that the application which had rejected patent registration before disclosure is no longer seen to exist from the beginning of the application and therefore does not qualify as prior art to deny the patentability of other applications. Technology content which was completely rejected or waived prior to the disclosure of the application constituted hitherto this amendment rejection of a re-application.
- In Article 30(1) all forms of voluntary disclosure that had been made six months prior to the patent application will be excluded from any grounds for patent refusal.
- In Article 201, (1), the filing period for international patent application translations into Korean has been extended from 30 months to 31 months. Therefore, a Patent Cooperation Treaty (PCT) applicant who wishes to obtain a patent in South Korea is able to be incorporated into the national phase more smoothlyâ¦
From 1 October 2006 another noteworthy amendment was made.
- In Article 53 a Convertible Application System was introduced which allows the conversion of a patent application to a utility model and vice versa. This new system replaces the Dual Application System which was a complicated bureaucratic process that was more likely than not to limit the rights of the applicant. The Convertible Application System simplifies and makes more efficient the current patent application system while reducing any unnecessary administrative fees.
From 1 July 2007 three further significant changes will come into effect:
- In the newly created Article 42 (3), at the time of application the applicant only needs to file a specification that gives a full description of the invention. A set of claims for the described invention in the already filed specification need only follow within 18 months of the priority set date or actual filing date.
- In Article 42(3) it will be no longer required to describe separately the invention in sections in terms of object, constitution and effect of invention.
- To improve the quality of the service. KIPO examiners will be required to state clearly the reason(s) in an office action as to why and precisely which claims have been rejected.
Streamlining the Patent Courts
The past few years have seen a plethora of changes in the Korean patent system and in closely related issues such as employees' rights to compensation for inventors, employers rights, new intellectual properties and patent litigation. There have also been several amendments to the Korean Patent Court , including some intended to decrease tendencies for repetition that wastes both money and time.
The Korean Patent Court is highly specialised and was established in 1998 before the establishment of similar courts in both Japan and China. However, in the case of patent litigation, interlinked categories cases are heard by both the Patent Court and the Ordinary Civil Court. This has led to a Bifurcation of Jurisdiction over patent litigation which has had some undesirable outcomes: for example Ordinary Courts may have to suspend their proceedings to await the results of the Patent Court in relation to a judgment on a possible patent infringement. If this were not the case, there could be two inconsistent decisions from the separate courts.
The bifurcated system is also costly, as litigants have to respond to both courts on a single issue. One proposed solution for such problems is to incorporate two separated jurisdictions under the uniformed jurisdiction of the Patent Court that is currently located in Daejon. The Daejon-based Patent Court hears more than 80 per cent of patent infringement cases, but is a two hour car drive from Seoul (capital of South Korea). Those unfortunate enough to have to make such a journey by car, let alone during the rush hour, realise the great inconvenience of this location. This problem may be resolved by either splitting the cases between a number of High Courts in the wider region, or possibly by extending the Seoul High Court and locating a new Patent Court there (as Seoul is from where most of the infringement cases derive).
As shown by the above cases, South Korean IP is in a state of change on all fronts, and is certainly punching above its weight to deliver such a radical transformation.
Notes
1. KIPO's Report on Performance of Major Policy Evaluation 2005 pp6-7.
2. KIPO website, Korea and Japan introduce patent investigation highway, 2 December 2005.
About the Author
Prof. Ruth Taplin
The Centre for Japanese and East Asian Studies of which Prof. Taplin is Director won Exporter of the Year in Partnership in Trading/Pathfinder for the UK in the year 2000. She received her doctorate from the London School of Economics and is the author/editor of 13 books and over 200 articles. The most recent are, Exploiting Patent Rights and a New Climate for Innovation in Japan (London: Intellectual Property Institute 2003); Valuing Intellectual Property in Japan, Britain and the United States (London RoutledgeCurzon: 2004); Risk Management and Innovation in Japan Britain and the United States (London:Routledge/Curzon 2005), Japanese Telecommunications Market and Policy in Transition (London: Routledge/Curzon 2006) with Masako Wakui, Innovation and Business Partnering in Japan, Europe and the United States (London: Routledge 2006).
Prof. Taplin has been Editor of the Journal of Interdisciplinary Economics for 11 years. Currently she is a Research Fellow at Birkbeck College, University of London and the University of Leicester. She was appointed Visiting Professor at the School of International Business and Management, University of Warsaw, Poland.