One (1) Year Grace Period for Design Application in Korea

From September 22, 2017, the new Design Protection Act extended the six months grace period to one (1) year.

Under the previous Design law in Korea, a design would not be deemed to lose novelty over an identical or similar design as long as the application for the design was filed within six months from the date when the identical or similar design was first open to the public.

And the applicant must claim the novelty grace period when filing (i) the application (documentation of the previous disclosure can be submitted within 30 days from the application date), (ii) a response to an office action issued by the Korean Intellectual Property Office ("KIPO"), (iii) a response to an opposition filed by a third party, or (iv) a response to an invalidation action filed by a third party.

Under the new law, the grace period was extended from the six months to one year. And the time limit for claiming the grace period was changed from (ii) "when filing a response to an office action issued by KIPO" to (ii) "up until KIPO issues a final decision whether to grant a design registration."  Therefore, under the new law, an applicant can claim the grace period at any time while the application is still pending.

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The Korean Supreme Court decided Formats of TV Reality Shows May Be Protected under Copyright Law

Reality Shows do not follow fixed formats. They are not fixed but spontaneous or changeable. The issue addressed by courts in Korea is whether a format of Reality show is a copyright work such as "a dramatic work" under the Korean copyright law.

On November 9, 2017, the Korean Supreme Court decided in SBS v. tvN case that the format of TV Reality Show may be a copyright work and may be protected under Copyright Law (case No. 2014 Da 49180). Lower courts denied copyright protection for the format itself of TV Reality Show but the supreme court reversed.

The defendant asserted that their show was a parody of the plaintiff’s program. And the lower court denied copyright protection for the TV reality show format and addressed the case was not a copyright infringement because the format of TV show is idea, not specific expressions. The court stated that Reality shows mostly consist of incidents, behaviors and conversations between the participants.

However, the Korean Supreme Court reversed the lower court ruling and addressed that the TV reality show format may be protected because the combination and arrangements of all elements are expressions but not ‘ideas’ and that can be distinguished from old formats, thus is an independent creative work. Even though each one of elements is common and not original, the combination and order of all elements has creativity. It is true even if the show contains elements of spontaneity and events that change from episode to episode.

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The Korean Supreme Court Affirmed the Lower Court Decision of Copyright Protection to Pornography

On June 11, 2015, the Korean Supreme Court affirmed the lower court decision that pornography works may be protected by copyright (case No. 2011 Da 10872). The Court stated that pornography works may be protected under copyright even though legal measures have been implemented to block pornographic materials. The courts pointed out that morality is not relevant to copyright issue.

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Foreign Parties May Submit Briefs in English and Argue in English for Patent Cases before the Patent Court and the IP Special Court in Korea

From May 2018, new International Panels for patent lawsuits will be established and foreign parties may submit documents in English and argue their case in English before the courts. That means that briefs in English may be submitted and oral hearings may be conducted in English. The specialised panels will be in the Patent Court and the lower court for the 1^st instance lawsuit.

The Korean Patent Court had a trial on June 28 2017 for an oral hearing in English. The case was an appeal to the IPTAB decision on a patent application of 3M Innovative Properties Company.

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Patent Exhaustion of Method Claims in Korea

On November 10, 2017, the Korean Patent Court affirmed the lower court decision that the patent right of method claims might be exhausted. (Case No. 2017Na1001 decision)

 

The courts pointed out that a patentee may not seek double compensation through product claims and method claims. Patentees may be allowed to avoid patent exhaustion through simply drafting patent claims to describe a method together with a product or an apparatus.

 

The courts held that the sale of an item that substantially embodies the method exhausts the method patent. The product “substantially embodies” a patent where (1) it has “no reasonable non-infringing use” other than to practice a patent and (2) it embodies “essential features of the patented invention”.

 

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