Benefits on Prior Art Search to Korean Language Documents in ICT Fields

Korea becomes one of the largest pools of patent publications in the world. In every year, KIPO receives over 350,000 domestic patent applications with specifications written in Korean. Furthermore, Korea already had the largest number of patent applications per year in the world in several technology fields.

1. Market Trend

 a. Mobile Phone

Samsung extended its lead in the overall mobile phone market as well, selling more than one in four phones worldwide in the third quarter of this year. While Apple’s market share in the worldwide mobile phone market increased slightly, the pricing of the new iPhone 5s and iPhone 5c in both mature and emerging markets failed to entice consumers as hoped. The table shows a recent market trend of smartphone sales.

 b. Embedded OS

In the smartphone operating-system market, Android continued to dominate the industry with more than 80 percent of the market's share in the third quarter of 2013. And, while Apple's iOS and BlackBerry suffered a drop in their worldwide market shares, Microsoft’s Windows Phone showed significant growth, albeit from a low base.

 c. Digital / Smart TV

Samsung retained its leadership position in the global Smart TV market amid the competitive holiday season of 2013 with a 26.4 percent share as TV vendors rapidly deploy Smart TV capabilities to garner higher average selling prices (ASPs), according to the latest Strategy Analytics research, “Smart TV Market Share Report Q4 2013″.

Samsung’s nearest competitor, LG, registered a 14.4 percent market share of Smart TV shipments. Although Sony ships fewer Flat Panel TV (FPTV) units than LG, it has been aggressive in its efforts to add Smart TV capabilities to nearly all models it currently offers, which helped Sony capture another 14.3 percent of the Smart TV market.

Samsung and LG have done well in growing their overall FPTV market shares while also refreshing their line-ups with more high value-added products like Smart TVs that have slowed ASP decline at these two companies. Not coincidentally, both companies witnessed a surge in Smart TV market share in the same period.

2. Patent Applications Trend in Recent 5 Years

 a. Mobile Phone/Embedded OS Fields

 b. Digital TV Field (excluding display panel technology) 

3. Korean Patent Documents as Prior Art Pool

 

Accordingly, it is certainly necessary to search and review patent publications in Korean for prior art searches. Nonetheless, it is really difficult to fully understand Korean texts because Korean is a language far remote from English. Usually it has been our experience that we can often find a critical prior art written in Korean that was never considered during patent examination in EPO or USPTO.

Search is not simple. Rather it requires expertise in strategy and deep understanding of technology. We have been entrusted for prior art search by large companies who have multinational patent litigations. Our experienced experts can provide high value-added search strategy and results for analyzing and compiling of patent database information. We have a lot of search and analysis experiences in smart phones, digital TV, video data processing, etc.

Statistics re Korean Patent Applications from WIPO world IP indicators 2012

In 2011, KIPO received about 180,000 patent applications. Among them, 23%, 40,890 Korean patent applications were filed by foreign applicants. Korea was ranked the 5th in the world in the number of patent applications by foreign applicants.

Patent Office	Non-Resident Filing	Total Filing	Percentage
KR	40,890	178,924	23%
Japan	55,030	342,610	16%
China	110,583	526,422	21%
Germany	12,458	85,674	14%

<Data Source: WIPO, World IP Indicators, 2012> 

In addition, 12,139 Korean patent applications – accounting for approximately 25% of the 40,000 Korean patent applications by foreign companies – were filed by American applicants.

Origin	Office
	US	EP	CN	JP	KR
US	-	34,987	28,457	23,414	12,139
CN	10,545	2,548	-	1,401	752
JP	85,184	20,568	39,231	-	15,234
KR	27,289	4,889	8,129	5,007	-

As for PCT routes, KIPO is highly trusted internationally. Further, KIPO become one of the most important offices because KPO has been appointed as the PCT International Searching Authority for about 1/3 of the U.S. PCT applications.

Year	2007	2008	2009	2010	2011
PCT applications 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

For example, Major US companies who appointed KIPO as their PCT International Searches in 2012 include Intel, MS, HP, Google, 3M, Hughes, Applied Materials, Caterpillar, Kimberly-Clark.

Functional Language in Claim

In general, a claim with functional language is very often objected by the Examiner in Korean patent practice. Examiners usually consider functional wordings or expressions used in claims rendering the scope or constitution of the claimed invention unclear and indefinite. Further, they seem to surely have the opinion that such functional expressions make the scope of the functional language claim to be unduly broader than the subject matter supported by the specification.

However, functional wordings or functional expressions are surely allowed under Korean patent practice when no alternative and effective expressions that can clearly and definitely describe the claimed subject matter; the meanings of the functional expressions are fully supported by the detailed description of the invention; and the functional expressions do not pose any problems in defining the scope of the claimed invention. For example, for the specifications of electronic technology field, functional wordings are usually and often allowed in claims. An examiner who is in charge of examinations for chemistry, biotechnology or pharmaceutical patent applications, has relatively high tendency to reject functional language claims.

Recently the Supreme Court held that the scope of protection for an invention is limited to the embodiments clearly specified in the detailed description and drawings when means-plus-function features are exceptionally allowed. The detailed descriptions and drawings of the invention are critical factors to be considered in narrowly interpreting functional claims for purposes of determining the scope of protection. Therefore, it is advisable to keep in mind that many examples should be described in the detailed description when the applicant files an application for a functional claim.

Denied Patent Term Extension for Novartis' Exelon® Patch in Korea

Novartis' Exelon® Patch has been used to treat mild to moderate dementia of the Alzheimer's type and mild to moderate dementia associated with Parkinson's disease. The active ingredient is rivastigmine.

Novartis obtained the first MA for Exelon® Capsule and the second MA for Exelon® Patch in Korea. Exelon® Patch uses a new formulation that allows rivastigmine to be administered in a transdermal therapeutic system (TTS).

Novartis listed two patents in the Green List (http://medipatent.kfda.go.kr) of KFDA pursuant to the linkage system of patent and market approval. The first patent is Korean Patent No. 133,686 that claims chemical compounds including rivastigmine, its pharmaceutical use. The term of the compound patent expired on December 23, 2012. The second patent is Korean Patent No. 569,051 that claims inventions of TTS formulation. The second patent will expire on January 8, 2019.

Novartis has another patent in issue that claims rivastigmine compound for transdermal administration and compositions for them. The patent in issue is Korean Patent No. 121,596 that has actually lmost the same scope of protection that of the basic compound patent of Korean Patent No. 133,686. The background between two patents is somewhat complicated because Korean Patent No. 121,596 stems from transient measure in 1987.

The Patentee and NDA holder, Novartis filed a petition for patent term extension of the basic compound patent on April 23, 2012. In Korea, the patent term extension system was first introduced on July 1, 1987. Under the 1987 Act that applied to the patent in issue, a petition for patent term extension may be filed only during the last three (3) years of the original term of the patent. Upon filing a PTE request, the term of the subject patent shall be extended automatically and shall be terminated on the expiry date retroactively in case the petition has been denied.

KIPO denied Novartis’ petition. Novartis appealed to the Seoul Administrative Court. On September 26, 2013, the court rejected Novartis’ arguments and denied PTE for Exelon Patch patent. The Patentee and NDA holder, Novartis appealed the lower court decision to the Seoul High Court again. The current PTE system has been based on 1990 amendment and the first PTE regulations of 1987 are quite different from those of the current PTE regulations. The PTE regulations of 1987 that must applied to Exelon Patch case had much more narrow scope than those of the current regulations in subject patents and gourds for PTE. Exelon Patch falls in such unfortunate cases during transient period between 1987 and 1990.

Physicochemical Data Addition to the Specification during Prosecution

In general, the specification for a new chemical compound should describe physicochemical data of the claimed compound to such an extent that persons skilled in the art could clearly understand, recognize and reproduce the invention without any additional specific knowledge. However, as for addition of physicochemical data during prosecution, the Patent Court has somewhat differentiated a new compound invention from a new medicinal use invention. The Patent Court held that adding physicochemical data through an amendment does not constitute new matter if examples of a process for preparing claimed chemical compounds are described in detail in the specification. In principle, Korean patent practice requires that all patent applications for novel chemical compounds include physicochemical data in its original specification so as to confirm the production of the compounds. Physicochemical data refers to element analysis data, NMR data, melting point, boiling point, refraction rate, ultraviolet or infrared spectrum, viscosity, crystal type, color or the like. In case a specification fails to contain these data, the application was rejected on the grounds of (i) being an incomplete invention or (ii) failing to meet the description requirement.

The Patent Court decision is significant in that it somewhat relaxes the strict standard applied to all chemical compound inventions that are without physicochemical data. Here is an example. A patent application for novel chemical compounds was rejected by KIPO on the ground that the specification failed to meet the description requirement for a specification. In response, the applicant filed an amendment by incorporating physicochemical data on the claimed compounds, such as structural formulae, melting points and NMR data, into the specification. KIPO rejected the amendment on the ground that the incorporated physicochemical data constituted new matter. The issue was whether the physicochemical data later incorporated into the specification were essential to the confirmation of the production of the claimed compounds, in addition to the initial disclosure in the specification. The Patent Court found that the physicochemical data were not necessary since the production of the claimed compounds was confirmed from the initial disclosure based on the following: (1) chemical names and molecular formulae of substituents for the claimed compounds described in the specification can confirm structural formulae, molecular weights and chemical formulae of the claimed compounds; (2) the description "by crystallization" confirms that the compounds produced are in a solid state; and (3) reaction conditions and processes for preparing the claimed compounds are described in detail to be easily reproduced. The Patent Court has thus held that if the production of the claimed compounds can be adequately confirmed from the initial disclosure in the specification, adding such data to the specification does not constitute new matter.