Under the New Design Protection Act, a Design applicant may claim 12-months Grace Period in Korean instead of the former 6 months from September 22, 2017.

l  Grace Period for Design Applications Will Be Extended to One Year

 

Under the current Design Protection Act (DPA), a design shall not be deemed to lose novelty over an identical or similar design as long as the application for the design is filed within six (6) months from the date when the identical or similar design was first published. From September 22, 2017, under the new DPA, the current six months grace period extends to one year.

 

Based on 12 months grace period under the new law, an inventor, a designer or his assignee may obtain a design protection certificate like patent through filing an application for any already disclosed design within 12 months from the date of novelty destroying event. The disclosure as novelty destroying event might be done by a designer, his assignee or a 3rd party.

 

In order obtain such benefit of grace period under the Korean law, a foreign applicant must meet substantive and procedural requirements as follows:

 

The applicant must claim the novelty grace period (i) at the time of filing the application (documentation of the previous disclosure can be submitted within 30 days from the application date), (ii) "up until KIPO issues a final decision whether to grant a design registration" (so an applicant can now claim the grace period at any time while the application is still pending), (iii) when filing a response to an opposition filed by a third party, or (iv) when filing a response to an invalidation action filed by a third party.

 

l  Evidence of Priority

 

Under the old DPA, in order to claim priority, an application must include drawings substantially identical to the drawings in the foreign priority application, and a copy of the priority application certified by the foreign government must also be submitted.

 

Under the new law, KIPO furthermore will accept other documents to confirm the details of the foreign priority application. The applicant may use the WIPO Digital Access Service to submit priority documents (the Service allows priority documents to be securely exchanged between IP offices directly).

l  Procedural Points

 

1.      Priority claim under the Paris Convention or PCT may not apply beyond 12 months from the first disclosure.

 

A foreign applicant must file a Korean patent application at KIPO with 12 months from the first disclosure event regardless of claiming priority under the Paris Convention or PCT. Otherwise, a foreign applicant will lose a chance to obtain a design or patent in Korea under 12 months grace period.

2.     An applicant must disclose all and each event of invention disclosures when files an application at KIPO

 

When a designer or an inventor had disclosed his design or invention several times before he has filed a patent application before KIPO, the applicant must disclose all of them and request benefits of 12 months grace period for all and each events of disclosures. Otherwise, the unreported event may be a basis to deny the novelty of the filed design or invention.

 

For example, (1) an inventor disclosed an abstract about his invention in a brochure of a conference on October 1, 2013 and (2) gave a detailed presentation about his invention before audience in the conference on October 10, 2013 and then (3) published his article about the invention on November 1, 2013 and further (4) the organizer of the conference uploaded the inventor's presentation at an official website of the conference on November 10, 2013.

 

In order to be safe based on benefits of grace period under the Korean law, a designer or an inventor must disclose all of the above 4 events and claims benefits of 12 months grace period for all of them when he files an application at KIPO within October 1, 2014. For example, if an applicant did not report No. 4 event of posting his presentation at the conference website, it may be a basis for denying novelty of the invention.

However, it may be possible to argue that the designer or the inventor could not know the event and did not have any intent to deceive KIPO. Accordingly an applicant may probably overcome such a hurdle but it is better to check all possible events of disclosures and report all and each of them to KIPO. On the other hand, in case an applicant did not disclose No. 2 event or No. 3 event, he cannot save his application from loss of novelty by his disclosures before the filing date.

 

 

Patent Infringement Litigation Procedure in Korea

1.      Complaint and Answer

 

A patentee may initiate a lawsuit by filing a complaint that includes the parties’ information, prayer of remedy and grounds why the defendant is liable to the plaintiff. The plaintiff may seek a court granting an order of barring the opposing party’s infringing manufacturing, marketing and selling activities; the seizure or destruction of all finished or half-finished infringing products in the opposing party’s possession and compensation for damages.

 

The defendant may submit a written answer to deny or accept the complaint within 30 days of being served the complaint. Furthermore, the defendant may file a counterclaim. But, due to bifurcated system about independent invalidity action, the defendant may not file a counterclaim to invalidate the subject patent.

 

2.     No Discovery like the US type is available.

 

3.     Briefs and Evidence as Exhibits

After the court has served the answer to the plaintiff, the parties are required to exchange briefs and exhibits. Each party may object to those exhibits that are irrelevant or inappropriate. The plaintiff ordinarily files his briefs at first, and then the defendant files his briefs in turn. A court may allow the parties having another opportunity to exchange briefs before a preparatory oral hearing which is a kind of scheduling meeting. The court usually permits a 3~4 weeks period for each brief filing. The court usually rules on the admissibility of the objected exhibits in the oral hearing.

 

4.     Oral Hearing

In the first oral hearing, the court will allow parties submitting their arguments and evidence and then will arrange the disputed facts and issues between parties. Through briefs, parties will provide the court with the nature of the controversy, evidence, legal contentions that the parties believe support their positions. The court will decide what issues are presented by both parties and how the case will proceed. It is likely for parties to have two or more oral hearings in patent infringement case.

 

5.     Evidence

 

Korea does not have discovery procedures and jury trials. All lawsuits are tried by judges. Because judges are skilled in the rules of evidence, judges are usually lenient in allowing evidence to be introduced.

 

A.    Document Request

 

Each party can request the court to order the other party to submit relevant documents in issues. The party having the document must submit the document to the court. The court can enforce this order by monetary sanctions and evidentiary sanctions. Evidentiary sanctions include not allowing responding party’s submission of the evidence for his benefits, and more importantly may regard the requesting party’s assertion as true. The document request is not applicable to attorney client privilege documents, attorney work products and confidential information.

B.    Protective Order

 

In case a party insists the document is private, trade secret, or others, the court may order the party to submit the document and then examine without the other party’s participation. Hence it is not permitted for a respondent to refuse document submission for trade secret reasons. Only the party may seek court’s protective order on his information.

 

C.     Expert Opinion

 

The parties can retain experts to testify on their behalf. The party applying for expert opinion should submit expert candidates and manner of expert opinion, and further should pre-pay the cost. If the party applying for expert opinion wins the case, the prevailing party will recover the cost from the losing party. Patent cases need prudent expert opinions that usually need considerable time and cost.

 

D.    Court Inspection

 

Court inspection is adopted for judges to examine and analyze actual objects using the five senses of judges. The court inspection can be the most powerful means for proof if judges recognize the nature and contents of the subject evidence adequately. For example, judges may compare patent’s product with infringer’s product through watching experimentations or seeing or touching by themselves. Though ordinarily it is not easy for judges to comprehend the technical peculiarity through court inspection, the court often allows parties court inspection.

E.     Special Hearing for Technical Issues (Markman Hearing)

 

A court usually set an oral hearing for examining technical features. Both parties may present technical issues including background technology, claimed inventions, elements of the invention and comparison of elements between the patented invention and the accused product or process. Parties are permitted to use drawings, documents, power point presentations, models, real products, demonstrations, and others. It is one of the most important proceedings for parties to be able to have an influence on judge’s decision.

 

F.     Witness Examination

 

The party who calls a witness will conduct the first examination of the witness. The direct examination shall be done by using open-ended questions. For instance, any leading questions, which allow only for a “yes” or “no” answer, are not allowed. The opposing attorney has a chance to cross examine the witness and he is allowed to use leading questions: cross examination. But the cross examination shall be limited to the subject matter raised during the direct examination. When the opposing attorney has finished his cross examination, the attorney who did direct examination has an opportunity to conduct redirect examination. The attorney again cannot use leading questions.

 

Parties may submit an affidavit as documentary evidence for direct examination of a witness. In the oral hearing, only crucial points of the affidavit are examined and other details can be omitted in that direct examination. Accordingly, sufficient time is allotted for cross-examination. When a witness is hostile and is not under the influence of the requesting party, the party may file a motion that the witness must be summoned and when the motion is accepted the party must submit main contents for direct examination in advance.

 

 

Expert Witnesses

The Guideline of the Patent Court may be summarized as follows:

If a party files a request for an expert witness, the party shall attach a declaration that can confirm the expertise and objectivity of the witness.

The Court may issue a preparatory order for examination of an expert witness (e.g. deadlines for submission of a statement of the expert witness and a questionnaire for the direct examination, limitation of the time for examination, and deadlines for submission of arguments and evidence for impeaching the credibility of the expert witness testimony).

The direct examination by the party who requests for the witness shall be made within the scope of the statement of the expert witness. All materials presented or cited in the direct examination shall be submitted as evidence before the date designated for examining the witness.

If an expert witness is a foreigner, the parties may be respectively accompanied by an interpreter for the direct and cross examinations. If a party cannot be accompanied by an interpreter, the party shall notify the Court of the same 4 weeks before the witness examination date and file a request for designation of an interpreter.

Technical Advisors called by the Court

If deemed necessary, the Court may hear opinions of the parties and designate one or more technical advisors.

A preparatory hearing may be held if it is deemed necessary for the technical advisors to understand the case. In the preparatory hearing, the technical advisors may directly question the parties with approval of the presiding judge. If it is necessary for a party to supplement its answer to a question from the technical advisors, the party shall submit its supplemental answer in writing to the Court by a deadline designated by the presiding judge.

 

 

Pre-Hearing Procedures in the Patent Court : Preparatory Hearing or Video Conference for Case Management

Before oral hearings, the court may have a preparatory hearing to submit a summary of arguments and evidence; to summarize disputed issues; and to submit petitions for evidence such as expert witnesses, etc.

The court may hold video conference for case management to discuss the procedural matters of the case with the parties.

In a video conference for case management, the following matters may be handled.

l  The dates of hearings, and matters to be addressed for each hearing;

l  Deadlines for submission of arguments and evidence (including deadlines for submission of summary briefs and expert statements, and the number or volume of briefs to be submitted);

l  Whether to request for evidence requiring a substantial amount of time such as verification, appraisal, and expert witness, and the deadline for such request;

l  Whether to designate a technical advisor;

l  Whether to hold a special hearing session for technical explanation;

l  Whether to hold a claim construction hearing; and

l  Summary of undisputed facts and disputed issues.

 

 

Patent and Drug Marketing Approval (MA) linkage in Korea

It has been more than 2 years to implement the Korean version of HWA of patent drug market approval (MA) linkage. The key features are as bellows:

1.      Listing Drug patents in Green List – the Korean version of Orange Book

When a drug application has obtained a drug market approval (MA) from KFDA, the NDA holder must list patent information in the patent list (“Green List”) of KFDA. The Green List is similar to the Orange Book in the U.S., but is not the same. The deadline to list is 30 days from the receipt date of MA.

 

Unlike the Orange Book in the U.S., a NDA holder must list patents with the claim-by-claim basis in the Green List. Therefore, an applicant must specify every claim that covers the approved drug product and further an applicant must submit detailed explanation between each claim and the approved drug to KFDA.

2.     Submitting a Certification of ANDA Applicant regarding Listed Patents

 

Like the HWA, an applicant of a generic drug application (ANDA) must submit a certification regarding listed patents of Green List to KFDA. The patent certification is similar to those of HWA. For example, an ANDA applicant must file a Para. IV certification if he wants to launch a generic drug before the expiry date of listed patents. In such a certification, the generic drug applicant must provide a detailed statement demonstrating that the listed patent is invalid or that the generic drug does not infringe the listed patent.

3.     Notice to an NDA holder and a Patentee

 

Like the HWA, an ANDA applicant with Para. IV certification must notify the fact that an application for generic drug approval has been filed and the filing date of the application to the product approval holder and patent owner within 20 days of the application filing date. The obligation to notice will apply to an ANDA applicant who will launch their product before the expiry date of term of the listed patent. Otherwise, this provision does not apply to generic applicants who intend to launch their drug after the expiration of the listed patent.

4.     9-Months Stay on Generic Drug Entry

 

Within 45 days from the receipt date of the notice, the patentee may file: a patent infringement action or a scope confirmation trial before the Korea Intellectual Property Tribunal (KIPT) against the generic drug. Further, the patentee/NDA holder may request KFDA to take an action stay generic drug entry for 9 months from the receipt date of the notice from an ANDA applicant. Such stay shall apply only once to each generic applicant.

 

5.     First Generic's 9-Month Marketing Exclusivity

The first applicant may obtain first generic marketing exclusivity for 9 months over other generics. The first applicant for this marketing exclusivity means : (a) to be the first filer of ANDA application or skinny (paper) NDA applications that are similar to 505(b)(2) applications in USA; (b) to be the first filer of patent invalidity petition or non-infringement declaration action before the IPT, and (c) to be successful in obtaining an IPT decision or a court decision from challenging actions against listed patents including a scope confirmation trial or invalidation action. The actions must be filed before filing a generic approval application.

 

6.     Forfeiture of 9-Month Marketing Exclusivity

 

The first generic's marketing exclusivity shall be forfeited if the ANDA applicant failed to obtain MA within 9 months from the filing date; or failed to launch generic within 2 months from the date that the generic may be marketed.