Registration of Copyright Work at KCC in Korea

1. Obtaining of Legal Presumption

A person whose real name is registered as the author of a registered work shall be presumed as the author of the work.

A work for which its date of creation or the initial date of disclosure is registered shall be presumed to have been created or made public on the registered date. However, if a work is registered more than one year after its creation, it shall not be presumed to have been created on the date registered. In addition, when a registered work is infringed upon, it shall be presumed that the infringement has occurred due to negligence at least.

2. Priority of Rights between Conflicting Parties

In case a party is assigned with economic rights or the right to publication is established and these rights are registered, the registered assignee or the registered owner of the publication rights shall prevail over the duplicate assignee or the duplicate publication right holder.

3. Procedures

4 steps for Copyright registration: preparation, submission of application, examine and request complement, approve and issue a certificate of registration.

 

 

(1) Preparation - identifying the subject, the type of registration and the applicant’s eligibility before processing the application.

It is required to claim one registration for single work and category by the principle for registration, “one registration for one work” Additionally, only an obligee or obligor of registration can apply.

(2) Submission of Application

An applicant may submit the application, required documents, deposit copies of your work and registration fee electronically.

(3) Examine and Request for amendment

Copyright office examine the application submitted for registration whether it qualifies all the requirements. It will be requested to submit amendments if it does not.

(4) Approve and Issue a certificate of registration

When application is qualified, registration is approved and a certificate of registration is issued.

 

Appraisal and Expert Opinion by the Korean Copyright Commission

Appraisal system of KCC provides expert opinion on possible copyright infringement to help settle disputes over the use of copyrighted works such as writings, literature or computer programs.

For example, courts in infringement lawsuits may request KCC to provide expert opinions regarding similarity between source codes. The expert opinion may be an important basis for judges to decide the case.

 

 

 

Pfizer Prevailed in Pregabalin Lyrica® Patent Infringement Lawsuit in Korea

Based on Pfizer’s Lyrica patent, Korean courts granted preliminary injunctions for patent infringement against two Korean pharmaceutical companies in 2015.

 

Furthermore, in June 2017, the Seoul Central District court awarded Pfizer damage compensations for pregabalin patent infringement. However, the Korean Court did not grant injunction against Korean companies who sell generic products with off-labels.

 

The active ingredient of Lyrica is pregabalin that is a known chemical compound and a derivative of GABA (gamma-aminobutyirc acid). Further, the pharmacological effect of pregabalin is known as a depressive neurotransmitter and has been sold as an anti-convulgent drug for a long time. Pfizer discovered a new medicinal use of pregabalin. The subject Korean Patent No. 491282 is directed to a new use of pregabalin for treating pain. It is a second use invention that is one of the main indications of Lyrica.

 

Korean companies challenged validity of the subject patent on the ground that the new use of pregabalin for treating pain can be anticipated or is obvious over the prior art. They alleged that the pain killing effect might be in the scope of anticipation of an ordinary skilled person because the prior art discloses the compound and its neurotransmitter depressing effect. Also, the blocking of certain neurotransmitter flow may be correlated with anti-pain effect. The IPT of KIPO and the Patent Court, the Supreme Court, however, maintained the patent by rejecting non-obviousness challenge.

 

After validity challenge was failed, Korean generic companies restricted indications of their label only to anti-convulgent. They carved out pain killing use from their labels.

 

The patentee argued that the change of label is not enough to avoid patent infringement liability because the sale of generic drugs has slightly dropped or never changed even after the carved-out pain treatment indication from the labels. Accordingly, the generic companies shall be liable for the patent infringement of their continued sale after the label change.

 

The Seoul Central District Court did not agree with the patentee’s argument. The court held that the patent is directed to a second use invention and without indication of the claimed use, there is no patent infringement.

 

The Seoul Central District Court only awarded the patentee damage compensation based on the sale before the label change – carved-out claimed indication from the generic’s labels. Pfizer appealed to the Patent Court and the off-label case of pregabalin is still pending.

 

Patent Cancellation in Korea

Like Japan, Korea adopted a new procedure to cancel patents registered on or after March 1, 2017. A cancellation request may be submitted from the registration of a patent until 6 months from the publication of the patent.

 

Still invalidation actions to patents are available simultaneously. Previously, non-interested parties may file an invalidation trial against a patent within 3 months of the patent registration and interested parties may file an invalidation action at any time.

Under the new law, any party may file a cancellation action against a patent within 6 months of the patent publication date. But non-interested parties may no longer file invalidation actions.

Unlike invalidation trials, grounds for cancellation are limited to (i) lack of novelty or inventive step in view of "written" publications, including patent and non-patent literature (as opposed to public use or knowledge) and (ii) violation of the first-to-file rule. Other grounds of patent invalidity must be asserted at an Invalidation Trial.

In case any claim of the patent is cancelled, the patentee may appeal to the Patent Court within 30 days. However, in case the cancellation request is dismissed or rejected (IPT held the patent valid), the petitioner is not allowed to appeal.

 

 

Arbitration in Korea at KCAB (The Korean Commercial Arbitration Board)

Usually, many license agreements have arbitration clauses. Accordingly IP lawyers have to handle arbitration issues inevitably and we have been assisted and represented our clients regarding arbitration matters.

KCAB (The Korean Commercial Arbitration Board) was established in 1966 and had been duly approved as an official arbitration institution in the Republic of Korea. As international trade and commerce increases, disputes have been arising. In case parties decided to use arbitration, KCAB has been frequently chosen to resolve disputes.

 

There are two kind of dispute resolution systems ensuring enforceability of their decisions; judicial and arbitration proceedings. Due to its strict confidentiality, arbitration is not as well known while it has been used as typical ADR process.

 

Arbitration only handles such disputes related to contracts with arbitration agreement in it or a separate written agreement. For KCAB, a model Arbitration Clause must be included in contracts as follows: “Any disputes, controversies, or difficulties, or differences which may arise between the parties out of, in relation to, or in connection with this contract, or for the breach thereof, shall be finally settled by arbitration in accordance with the Arbitration Rules of the Korean Commercial Arbitration Board and under the Laws of Korea.”

 

KCAB has developed rules and practice to meet users’ high and various demands and then would become a new arbitration hub in northeast Asia. KCAB recognizes the paramount need to be neutral, independent and internationally minded administrator in order to deliver the most reliable, efficient and world class dispute resolution services.

 

Usually litigation in foreign country can be costly, time-consuming. KCAB arbitration can provide fast, impartial and confidential resolution of business disputes, and sometimes cheap compared to litigation.

 

Korea is a signatory state of the U. N. Convention on the Recognition and Enforcement of Foreign Arbitral Awards (New York Convention) since 1973. Also KCAB has signed around 50 international cooperation agreements with similar arbitral organizations throughout the world.

In closing, the followings are copied from the website of KCAB:

“In summary, the most significant and attractive features of KCAB arbitration for international parties are:

 

1. Impartiality - The KCAB is independent, neutral and respected arbitral institution.

2. Party autonomy - Parties may choose the arbitrators, place, language and procedure of the arbitration.

3. Finality - Arbitration decisions are final and binding on the parties, enforceable in the courts of the vast majority of countries.

4. Efficiency - Disputes are resolved both quickly and expertly, saving time and cost.

5. Privacy - Proceedings are closed to the public and the award is confidential.”