Showing posts with label KIPO. Show all posts
Showing posts with label KIPO. Show all posts
Statistics of KIPO - IP Applications Trend Over Three Years in Korea
Statistics of KIPO - IP Applications Trend Over Three Years in Korea
Statistics on New IP Applications Filed to KIPO in 2013
KIPO published the annual report of 2013 that includes statistics of filing numbers.
In 2013, KIPO received 204,589 new patent applications that is 8.3% increase to 2012 year; 10,968 new utility model applications that is 11.7% decrease to 2012; 66,940 new design applications that is 6.0% increase; and 147,667 new trademark applications that is 11.4% increase to 2012.
In total, KIPO received 430,164 new applications with an 8.4% growth compared to the total number of 2012.
Menarini’s Priligy (Dapoxetine HCl) Use Patent held Not Valid as being Obvious
Menarini launched Priligy in Korea. Dapoxetine HCl is the active ingredient in Priligy tablets. Korean patent No. 719, 977 covers the branded products and is listed in Green List of KFDA. The patented invention is “Methods of Using Rapid-Onset Selective Serotonin Reuptake Inhibitors for Treating Sexual Dysfunction.” The patent at issue is not for a compound invention but for the second use invention. The Korean patent for the second use invention will expire on June 5, 2021. Several Korean generic companies filed invalidity proceedings to challenge the second use patent. Menarini will face generic companies’ challenges soon.
On August 23, 2013, the IPT of KIPO held that the patent in issue is not valid because the compound and its use have been disclosed in the prior art. There has been no challenge to the compound patent so far. The key issue for the second use patent was a new limitation of “on as as-needed basis” in claim language. The patentee argued that such a new limitation was not found in the prior art and made the claimed use invention being novel and nonobvious over the prior art. However, the IPT rejected the argument on the ground that such limitation is related to a method of administering a drug and thus such limitation may not be regarded as an element for a patent claim under Korean patent law.
The patentee appealed the IPT decision to the Patent Court and the case is pending.
EV Battery Patent Infringement Lawsuits – LG Chem vs. SK Innovation
Two Korean companies, LG Chem and SK Innovation are major suppliers for EV batteries to top 10 global car makers including GM, VW, Renault, etc. In 2012, LG Chem filed a patent infringement lawsuit against SK Innovation at the Seoul Central District Court. The court for the first instance trial held last Friday that LG’s patent was not infringed by SK Innovation.
The patent in issue is directed to the inorganic material-coated separator that is a key part of large rechargeable batteries for EV battery. The court held that SK Innovation’s inorganic material-coated separator has a different structure from the porous structure of the active layer coating the separator of LG Chem’s patented invention.
On the other hand, under the bifurcated system in Korean patent law, SK Innovation challenged the validity of LG Chem’s patent and was successful in invalidity proceedings at the IPT of KIPO and further at the Patent Court. However, the Supreme Court revoked the lower court decision of invalidity and returned the case to the Patent Court. The invalidity case is pending at the Patent Court.
LG Chem announced to appeal the first instance court decision to the Seoul High Court immediately after they received the losing decision.
Low Dose Entecavir Formulation in Korean Patent held as being Obvious by the IPT of KIPO
Entecavir is the active ingredient in Baraclude tablets of BMS. The drug has been sold for the treatment of chronic hepatitis B virus infection in Korea. When Korean generic companies noticed that a US district court found that entecavir would have been obvious in light of the prior art, they filed an invalidity trial to challenge the validity of the corresponding Korean compound patent, too. The invalidity case is pending in the IPT of KIPO.
On the other hand, Baraclude is covered by another patent for low dose formulation of entecavir. Several companies including those want to launch generic versions of Baraclude after expiry of extecavir compound patent, filed separate proceedings to challenge non-obviousness of law dose formulation over the prior art. The subject Korean patent is No. 757,155 that claims low dose entecavir formulations of 0.5mg or 1.0 mg for the treatment of chronic hepatitis B virus infection. The prior art discloses enetcavir compound, its use, a range of doses and animal test data, but did not disclose claimed doses.
On April 30, 2013, the IPT held that low dose entecavir formulations of 0.5mg or 1.0 mg should be regarded being obvious over the prior art. To the IPT decision, the patentee BMS appealed to the Patent Court and argued that a person of ordinary skill could have neither anticipated nor determined the claimed low dose formulations of 0.5mg or 1.0 mg entecavir from the prior art. Oral hearings were held two days for expert witness examination and BMS’s expert argued at the Patent Court that determining specific doses for human required numerous trials. The panel of 3 judges in the Patent Court will decide the case on March 14, 2014.
Expedited Examination for Green Technology Patent Application
KIPO provided accelerated examination system for green technology patent application. It is to examine green technology patent application more expeditiously than normal track examination as well as accelerated track for other technology patent applications.
Korea enacted the Low-Carbon Green Growth Basic Act to promote new developments with low carbon and green growth. Under the new law, the government issues certification of green tech or financial aid to companies who are involved in green technology. Any inventions generated by such projects are eligible for the expedited examination. These include solar, wind, geothermal, tidal, wave energy, biofuels, energy storage technologies such as advanced batteries, other renewable energy techs. Also, it includes carbon capture and storage technologies, LED lighting, etc.
According to KIPO, an application may obtain examination result as the first office action within Ione (1) month from the request. It is really short time while it takes about 17 months on average to have the first OA for an ordinary application. In case an application is finally rejected and an applicant has appealed, the case will be processed as an accelerated appeal proceeding as well. The outcome of appeal will be provided within four months. Under normal appeal trials, it takes about ten months to be decided.
In order to request such expedited examination for green tech patent application, an applicant must submit a search report to KIPO. The prior art search report should be made from one of the official prior art search organizations designated by KIPO that includes Korea Institute of Patent Information, WIPS and IP Solution.
So far, examination results have been given within one month in all but a few cases that failed to satisfy the super-accelerated examination prerequisites. The fastest case to date took only 11 days from application to registration.
According to KIPO, an application may obtain examination result as the first office action within Ione (1) month from the request. It is really short time while it takes about 17 months on average to have the first OA for an ordinary application. In case an application is finally rejected and an applicant has appealed, the case will be processed as an accelerated appeal proceeding as well. The outcome of appeal will be provided within four months. Under normal appeal trials, it takes about ten months to be decided.
In order to request such expedited examination for green tech patent application, an applicant must submit a search report to KIPO. The prior art search report should be made from one of the official prior art search organizations designated by KIPO that includes Korea Institute of Patent Information, WIPS and IP Solution.
So far, examination results have been given within one month in all but a few cases that failed to satisfy the super-accelerated examination prerequisites. The fastest case to date took only 11 days from application to registration.
Tips for Saving Cost in Korea
There are several ways to save the cost of prosecuting a patent application and maintaining once it has been granted. And the key to considerably lowering the expense is to reduce the number of claims by incorporating multiple claims.
There are three ways in which reducing the number of claims can help save cost. First, an applicant can save cost during substantive examination, where the applicant must pay the total amount of US$37 multiplied by the number of claims in addition to the official fee of US$121. Second, once the patent has been granted, the applicant can reduce the amount of annuities, where they are charged based on the basic fee of US$36 multiplied by the number of granted claims in addition to the official fee of US$42. Lastly, the applicant can save the cost of translating the claims and the costs of prosecution and maintenance.
Much like EPO and JPO, multiple dependent sub-claims are permissible under Korean patent law. And for PCT route applications, it is recommendable to redraft claims to reduce the number of claims by using multiple dependent claims before starting the international phase.
But the Korean Rule of claim dependency is different from that of the EPO and the USPTO. According to the Korean Regulation, “No claim referring to two or more claims shall refer to another dependent claim to which two or more claims are referred.” This is to avoid high complexity caused by limitless dependent sub-claims. Therefore, the number of claims must be reduced within the limitation of the Rule in Korea.
In closing, an applicant can effectively reduce the number of claims without altering the scope of claims, and accordingly is able substantially to cut the cost of prosecuting an application and maintaining the granted patent.
But the Korean Rule of claim dependency is different from that of the EPO and the USPTO. According to the Korean Regulation, “No claim referring to two or more claims shall refer to another dependent claim to which two or more claims are referred.” This is to avoid high complexity caused by limitless dependent sub-claims. Therefore, the number of claims must be reduced within the limitation of the Rule in Korea.
In closing, an applicant can effectively reduce the number of claims without altering the scope of claims, and accordingly is able substantially to cut the cost of prosecuting an application and maintaining the granted patent.
Recent Developments of KIPO Examination Capability
According to WIPO statistics, Korea has been ranked No. 4 in the number of patent filings with KIPO, and No. 5 in the number of PCT application filings in the recent several years. KIPO announced that they achieved one of the fastest examinations in the world. KIPO has over 1,000 members including about 700 patent examiners. Among the patent examiners, nearly 40% of the examiners have doctorate degrees and the others are well qualified as they passed a high standard national examination.
KIPO has been serving as both an international search authority and an international preliminary examination authority for international applications under the PCT since January 1, 2006. The USPTO, which files the largest number of PCT applications in the world, has designated KIPO as a competent international searching and examination authority for international applications filed at the USPTO under the PCT. The USPTO decision can be interpreted as recognition that KIPO’s examination capabilities meet world standards. According to KIPO, their fees are much less than those of the USPTO and the EPO.
Applicants can compare the quality of examination, costs and conveniences of each patent office to conduct international searches and preliminary examinations of PCT applications. According to KIPO, Microsoft, Intel, Hewlett-Packard, Google, 3M and Kimberly-Clark have used KIPO as their PCT International Search Agency.
Under the circumstances, foreign applicants may obtain a search or examination report within ten months after filing a patent application in Korea. We believe that the applicant, like Microsoft Corporation, might benefit from KIPO’s highly qualified and speedy examination capabilities.
Basics on Claims under Korean Patent Law
1. Description requirement
Article 42, paragraph 4 of the Patent Act
stipulates: "claims shall be supported by the detailed description of the
invention and shall define the invention clearly and concisely." Claims must
be supported by the detailed description of the invention. That means that the
scope of each claim must be identical or equivalent to the subject matter
described in the detailed description. Thus, an applicant should draft a
specification to include a wide variety of examples with respect to the claimed
invention.
KIPO maintains a rather strict attitude
towards the support requirement through its narrow interpretation of the scope to
be supported. As a practical strategy, a divisional application rather than an
amendment of claims may be used to secure the broader scope of the protection
and avoid prosecution estoppel. But, because it is required that the scope of a
divisional application be within the scope of the original specification, in
order to secure a broad scope of protection the original specification should
include sufficient examples and the descriptions of its equivalents to support
the claimed subject matter.
2. Claim Interpretation
The scope of a patent is defined by the
elements of a claim. It is well settled that each element in a claim is deemed
material to defining the scope of the patented invention. Therefore, only when
every element defined in a claim is found in an accused product or process, the
accused product or process literally infringes the patent right.
Doctrine of Equivalents
It has been long time for the Patent Court
and the Supreme Court to adopt the doctrine of equivalents as a part of Korean
patent law for interpreting claims.
The rationales of the doctrine of
equivalents in Korea are similar to those of the U.S. Thus, it is true that if
the accused product or process performs substantially the same function in
substantially the same way to obtain the substantially same result of the
patented invention, the accused infringes the patent in Korea.
In particular, the Supreme Court held that
the accused product or process infringes a patent where an element of the
patented invention is substituted with another element and, if (i) the
technical concepts or principle to solve the objective of the patented
invention and the accused invention are the same or common; (ii) the
substituted element in the accused invention performs substantially the same
function in substantially the same way to obtain the substantially same result
of the patented invention; (iii) such substitution is obvious to an ordinarily
skilled person in the art. However, the doctrine of equivalents shall not be
applicable to the circumstances that (iv) the accused substitution was already
known to skilled persons in the art at the time of filing an application and
(v) the accused element was excluded from the claimed invention during
prosecution.
Prosecution History Estoppel
Based on the doctrine of equivalents, a
patentee cannot regain his rights to any elements that were abandoned through
an amendment or a response during prosecution. For example, when an element is
excluded through an amendment in order to secure novelty and non-obviousness in
response to the examiner’s rejection, an invention
with an equivalent element is outside the scope of the patent.
The Supreme Court held that prosecution
history estoppel should be applied in view of specification, opinions of an
examiner from filing of the application to issuance of a patent and the intent
of an applicant as indicated in the amendments and arguments during
prosecution. Furthermore, in a patent containing more than one claim, the
prosecution history of each claim should be independently reviewed to decide
whether certain subject matter was intentionally excluded from the scope of the
claim.
Basics of Patent Prosecution Process in Korea
Korea has the first-to-file rule. All unexamined applications are automatically published after 18 months from the filing date in Korea or the earliest priority date in a foreign country. In addition, after a patent application is granted and the patent is registered, the granted specification shall be published. As a third party observation, once an unexamined patent specification has been published, any party may submit any relevant information relating to the patentability of the application to KIPO in order to prevent granting a patent thereof. The third party may not reveal their indent through a straw man action.
In other side, an applicant may warn in writing an alleged infringer about possible infringement of the claimed invention after his application has been published. And the applicant may obtain reasonable compensation of damage from the alleged infringer. A reasonable amount of compensation will be determined from the date of receipt of the warning letter. The compensation, however, can be collected only after the registration of the patent application
A patent application will be examined only when an applicant requests the examination of the application within 5 years of the filing date in Korea or the international filing date for a PCT route application. If no request for examination is made by the deadline, the application is deemed to have been withdrawn.
A registered patent may be invalidated only through an invalidation proceeding in KIPO. Because the IPT in KIPO has exclusive jurisdiction on the invalidation trial, an infringement court case may not invalidate the subject patent.
Patent
Prosecution Process
Overview of Basic Structure
Legal System in Korea
There are three tiers of courts in Korea: the District Courts, the High Courts and the Supreme Court. The Supreme Court located in Seoul consists of a Chief Justice and 13 Justices. Korea follows civil law tradition. Accordingly, a decision of the Supreme Court does not have binding authority but since the lower courts follow the Supreme Court’s interpretation of a law, the effect of a Supreme Court decision amounts to a binding force on the lower courts. Neither the jury system nor punitive damage compensation exists in Korea.
The District Courts and its Branch Courts hear the first instance of cases. For example, a patentee must bring a patent infringement lawsuit before a District Court or a Branch Court of a District Court that has jurisdiction over the case. The High Courts are appellate courts. A panel of three judges hears patent infringement cases.
The Patent Court
The Patent Court is the court that specializes in IP, and is located in Daejon which is a city 200 km south of Seoul. The Patent Court is a high court having exclusive jurisdiction over all appeals of the IPT and KIPO. There are 5 panels of 3 judges and 17 technical experts assisting judges of the Patent Court as law clerks. They have different technical expertise, and thus ensure a broad coverage of technology. Further, most of them are former ex-examiners having at least 10 years experience examining patent applications at KIPO.
KIPO and the IPT
The Korean Intellectual Property Office ("KIPO") is located in Daejeon. Within KIPO, the Intellectual Property Tribunal ("IPT"), as Board of Appeal, handles appeals, invalidity proceedings, and proceedings to determine the scope of patent rights. Invalidation Petitions must be brought to the IPT, which has exclusive subject matter jurisdiction for the validity of patents, utility models, industrial designs and trademarks. KIPO has four examination bureaus: Trademarks & Design, Machinery & Metals, Chemistry & Biotechnology and Electric & Electronic.
Bifurcated System
Invalidity must be reviewed by IPT. The district court may not decide invalidity of a patent. Any party interested in the validity of a granted patent may initiate an invalidation proceeding by filing an invalidation petition to the IPT. The invalidation petition may be filed even after the expiration of the subject IP rights. A panel of 3 board examiners reviews the case and may allow oral arguments hearing for both parties.
Need for Korean Patent Application
1. Korea Has an Attractive Market with a Respectable Size.
i. In 2013, Korea has a sizable market, and is currently the 13th largest economy in the world. Moreover, Korea is in the midst of broadening its scope of trades, as well as increasing the size of such trades through Free Trade Agreements (FTA) with the United States, Europe, China, Japan, and more.
ii. Current Status of FTA
Since entering into FTA with the United States in 2012, and with the European Union in 2011, the size of trades between Korea and the US and the EU is continuing to increase. Korea is in the process of entering into FTA with China and Japan as well.
2. Numerous International Companies Are Currently Applying for Patent Protections in Korea.
i. In 2012, the number of Korean patent applications reached approximately 190,000 – this makes Korea the 5th largest nation in the world, in terms of number of patent applications. Approximately 40,000 applications – 21% of the total 190,000 applications – are submitted by foreign companies, reaffirming Korea’s status as a convenient forum for patent protection.
ii. In addition, 11,000 applications – accounting for approximately 25% of the 40,000 patent applications by foreign companies – were filed by American companies.
3. The Korean Intellectual Property Office (KIPO) Is Highly Trusted Internationally, And Is Appointed To Be The PCT International Searching Authority in Approximately 1/3 Of The U.S. PCT Applications.
Year
|
2007
|
2008
|
2009
|
2010
|
2011
|
PCT application in USA
|
54,042
|
51,642
|
45,627
|
45,008
|
48,596
|
PCT international
Search by KIPO
|
2,735
|
11,371
|
13,356
|
13,319
|
15,168
|
Source: WIPO, PCT Yearly Review 2012 (May 2012), KIPO
Chief Foreign Enterprises as PCT International Search Requester in KIPO (2012)
- INTEL (semiconductor)
- MICROSOFT (software)
- HEWLETT-PACKARD (computer and electronic appliances)
- BAKER HUGHES (oil well development)
- Applied Materials (semiconductor production equipment)
- THE REGENTS OF THE UNIVERSITY OF CALIFORNIA (medical supplies and chemistry)
- GOOGLE (internet search)
- 3M (electronic and information technology)
- CATERPILLAR (machines of construction)
- KIMBERLY-CLARK WORLDWIDE(health and hygiene item)
4. Using KIPO’s Accelerated Patent Examination Track Provides the Shortest Turnaround Time for Patent Issuance in the World.
ii. Quickly obtaining patent protections in Korea may have a positive influence in acquiring patent protections overseas for the invention.
iii. Please refer to the link below for specific requirements and protocols for requesting the KIPO accelerated track for examinations.
http://goo.gl/Acw3I7