- BackgroundThe patent term extension system was first introduced in Korea on July 1, 1987. Under the 1987 Act, a petition for patent term extension may be filed only during the last three (3) years of the original term of the patent. Under the new 1990 Act, however, a petition for patent term extension may be filed within three (3) months from the date of the approval and six (6) months prior to the expiration date. The current law is basically the same as that of 1990.Some Changes to the current patent term extension system went into effect on April 3, 2013. The key change to the current system is limiting the number of PTE instances from multiple available chances to only one. Under the current PTE system in Korea, PTE may be available only to the "first" regulatory approval for "a new chemical entity."
- Subject Patent and Procedures for PTEA patent is eligible for term extension if the patent is related to an approved medicinal or agricultural product, if the patent was unable to be practiced after grant due to pharmaceutical or agricultural regulatory approval requirements. Such a patent should claim a compound, composition indicating use, formulation for (1) an invention relating to a drug which requires a product approval under the Pharmaceutical Affairs Act ("PAA"); or (2) an invention relating to an agrochemical which must be registered under the Agrochemical Management Act ("AMA").Only registered patentee may apply for patent term extension to KIPO. If the patent right is jointly owned, all the patentees must jointly apply for an extension of the term.An application for PTE must be submitted within three months from the date of the approval under the PAA or from the date of the registration under the AMA. The application, however, may not be submitted less than six months prior to the expiration of the original patent term. Also, a petition for patent term extension may not be filed after the expiration of the patent term. An application for patent term extension should be supported with evidence to show the reason for the extension.
- Period of Patent Term ExtensionsThe term of a patent can be extended only once. In case a product approval (or registration) is sought for multiple patents, the term is extended for each patent. However, in case multiple product approvals (or registrations) are sought for a single patent, the term is extended only for the first approval (or registration).Under the old law, even an approval for a combination product whose components had been previously approved by KFDA could be the basis for PTE. In addition, the approval for a second use of an approved drug could also be the basis for PTE, since the approval was regarded as the "first" approval for the new use. Further, in some cases, even an approval for a new formulation comprising an approved active ingredient could be the basis for PTE, if the new formulation was not simply different in the dose of the active ingredient but was a different administration form compared to the previously approved drug (e.g., injection vs. tablet).However, under the current law and regulation, PTE may be available only once to the "first" regulatory approval for "a new chemical entity."The period of PTE shall be the total length of non-working time to obtain authorization or registration under provisions of the PAA or AMA to work a patented invention. For example, for drugs, the period commencing from either the approval of a protocol for clinical testing from the government authority after obtaining a conditional approval to manufacture for clinical testing or the date the patent is registered, whichever is later; to the date that the final approval to market.The maximum patent term extension obtainable is five (5) years regardless of whether the actual period of non-working caused by the statutory requirements under the relevant Act exceeds five years.
- Appeal to the IPTAB and the Patent CourtIf an examiner of KIPO rejects the petition or application for patent term extension, the applicant or petitioner may appeal to the IPTAB of KIPO. The appeal must be filed within thirty days from the date a certified copy of the rejection is served to the applicant or his agent. On the other hand, a 3rd party may challenge PTE through Invalidation Trial at the IPT of KIPO. If a losing party in the IPT proceedings wants to appeal against the decision of IPT, the party may bring a lawsuit to revoke the IPT decision to the Patent Court within thirty days from the date of receiving the decision.
Patent Term Extension (PTE) in Korea
Appeal Procedure to KFTC’s Decision and Order to the Seoul High Court
KFTC’s decision or order does not become effective until the formal written decision and order has been issued. Following receipt of the KFTC’s written order, the respondent party may appeal as followings:
1. Filing an Request for re-hearing & suspension of
enforcement
A respondent who is
dissatisfied with the decision may file a request for re-hearing to the KFTC
within 30 days from the receipt of the written decision.
The KFTC may hold a new
hearing and make a decision within 60 days, but it can extend the
decision-making period up to 30 days.
2. Filing a lawsuit for appeal to the Seoul High Court
The respondent party may appeal
the KFTC’s decision to the Seoul High Court. In addition, the party may file a
petition for a stay of the enforcement of order to the Seoul High Court, too.
The party shall file a
lawsuit to the Seoul High Court within 30 days from the receipt of a written
decision or re-hearing result.
3. Final Appeal to the Supreme Court
A losing party at the Seoul
High Court may appeal to the Supreme Court within 14 days from the receipt of
the decision.
Seoul High Court Denied Qualcomm’s Appeal for Stay on September 5, 2017
The Seoul High Court denied
the Qualcomm’s petition to stay the order of the Korea Fair Trade Commission
(KFTC). The court found that company’s business wouldn’t suffer irreparable harm
while the company appeals. Irreparable harm typically is the legal threshold
that courts use when determining whether to grant a stay.
Qualcomm announced it
would appeal the Seoul High Court’s decision to the Korea Supreme Court. Link: Qualcomm
press release
The case is an
intermediary process and the court’s decision to deny the petition to stay does
not impact Qualcomm’s appeal of the KFTC decision and order. The main lawsuit
is pending before the Seoul High Court.
Further, the KFTC’s order
reviewed by the Court does not invalidate any existing license agreements, does
not prohibit Qualcomm from entering into licenses for its standard essential
patents (SEPs) and other patents at the device level and does not limit the
royalties Qualcomm can seek or collect for SEPs under its current or future
licenses as long the license agreements are consistent with Qualcomm’s FRAND
commitments.
The Korea Fair Trade Commission (KFTC) Rendered Full Decision and Order Against Qualcomm on January 20, 2017
The Korea Fair Trade
Commission (KFTC) rendered its full decision and findings of the investigation
into Qualcomm’s market power and anti-competitive business practices.
Partner, Kook-Hyun Kim
Kevin, Kook-Hyun Kim, Attorney at Law / Patent Attorney, kkh@kasanlaw.com
Kevin,
Kook-Hyun Kim is an attorney at law who represents and provides counsel to
clients in in-depth legal matters related to intellectual property law. Since
starting his career as a patent and trademark attorney in 1994, his practice
encompassed virtually all aspects related to intellectual property from
drafting and prosecuting patent applications to patent trials and litigation,
and over the years, he has provided professional services relating to trademark
registration, licensing and litigation to both domestic and multinational
corporate clients.
Before joining KASAN, he worked at Kim & Chang, Lee & Ko and Myung-Shin & Partners. While working at Kim & Chang, he has prosecuted a large number of inbound patent applications and was extensively involved with representing multinational corporate clients in patent trials and litigation. At Lee & Ko, his major domestic clients included LG electronics and LG-Philips LCD, which he represented in technology transfers, litigation, trade secret, copyright and trademarks.
Before joining KASAN, he worked at Kim & Chang, Lee & Ko and Myung-Shin & Partners. While working at Kim & Chang, he has prosecuted a large number of inbound patent applications and was extensively involved with representing multinational corporate clients in patent trials and litigation. At Lee & Ko, his major domestic clients included LG electronics and LG-Philips LCD, which he represented in technology transfers, litigation, trade secret, copyright and trademarks.
He
is regularly involved with patent and trademark infringement litigations.
Particularly, he has successfully represented domestic clients (defendants) in
landmark patent infringement lawsuits. Though a patentee asked for the largest
damage compensation in the history of our patent infringement lawsuits,
attorneys for the defendants, including Mr. Kim, successfully defended the
clients in a trial that lasted for 3 years.
At
KASAN from 2006, he has worked for many clients regarding IP infringement
litigation cases, arbitration cases, opinions, etc. The list of representative
litigation cases is attached below.
Kevin
is a frequent speaker at various seminars attended by domestic and
international patent practitioners. He served as an adjunct professor for
patent practice at Yonsei University, school of law for 5 years. And he regularly
gives lectures at the Korean Invention Promotion Association and the Korean
Patent Attorney Association.
Further, he was involved with the WIPO's educational project, as a counselor to the Korean Invention Promotion Association and the Korean Intellectual Property Office. Both organizations provided the WIPO with online education materials related to patent, trademark, copyright, trade secret, etc.
Mr. Kim is an active member of LESI, INTA, APAA, KPAA and the Korea Bar Association.
Mr. Kim received a B.S. and an M.S. in Pharmaceutics from Seoul National University (SNU) in 1987 and 1989, respectively, a Masters in IP from Franklin Pierce Law Center of UNH in New Hampshire, U.S.A. in 1994, and a LL.B. from Seoul National University in 2000.
Mr. Kim passed the Korean patent bar examination in 1993 and the Korean bar examination in 2000.
Mr. Kim wrote a book, “Business Secrets Protection Law” in 2010.
He is versed in English and Japanese.
Further, he was involved with the WIPO's educational project, as a counselor to the Korean Invention Promotion Association and the Korean Intellectual Property Office. Both organizations provided the WIPO with online education materials related to patent, trademark, copyright, trade secret, etc.
Mr. Kim is an active member of LESI, INTA, APAA, KPAA and the Korea Bar Association.
Mr. Kim received a B.S. and an M.S. in Pharmaceutics from Seoul National University (SNU) in 1987 and 1989, respectively, a Masters in IP from Franklin Pierce Law Center of UNH in New Hampshire, U.S.A. in 1994, and a LL.B. from Seoul National University in 2000.
Mr. Kim passed the Korean patent bar examination in 1993 and the Korean bar examination in 2000.
Mr. Kim wrote a book, “Business Secrets Protection Law” in 2010.
He is versed in English and Japanese.
- Representative Cases after 2006 at KASAN from 2006
-
Pfizer Inc. v. Ahn-Gook, a Korean Pharmaceutical Company
Kasan
IP and Law Firm successfully defended a Korean pharmaceutical company against
allegations of infringement of a patent relating to Pfizer’s blockbuster
medicine Norvasc® in preliminary injunction and permanent injunction
infringement litigation, and successfully represented the Korean company in
invalidation proceedings, trial to confirm the scope of a patent right and
appeals against the trial decisions before the Korean Patent Court and the
Supreme Court.
-
Pfizer Inc. v. Hanlim, a Korean Pharmaceutical Company
This
is the first case regarding “off-label” drug issue in Korea. The patent is
directed a new use of a known compound, pregabalin. Kevin represented Hanlim
and successfully defended permanent injunction claim and restricted damages
against the patentee Pfizer.
-
Tokyo Electron Limited v. IPS, a Korean semiconductor equipment company
We
successfully represented a Korean semiconductor manufacturing equipment company
in patent infringement litigation before a civil court, invalidation trials
before the IPT in KIPO, appeals against the trial decision before the Korean
Patent Court. Also we successfully represented our client in criminal
prosecution proceedings relating to trade secret theft allegation against TEL.
-
Gilead v. Daewoong, a Korean pharmaceutical company
Our
firm successfully defended a Korean pharmaceutical company against allegations
of infringement of a patent relating to Gilead’s blockbuster drug Hepsera®, in
preliminary injunction case, patent infringement litigation, invalidation trials
before the IPT in KIPO and appeal against the trial decision.
-
Konami v. a Korean game company
The
firm successfully defended a Korean game company in copyright and trademark
infringement litigations and criminal prosecution cases, relating to Konami’s
famous characters and trademarks.
-
KEC, a Korean electronics company v. ASE
We
defended ASE against a Korean electronics company in criminal prosecution and
litigation relating to theft of trade secret involving semiconductor packaging
technologies.
-
P&G v. Wooshin, a Korean pharmaceutical company
We
successfully defended a Korean generic company in invalidation trial, trial to
confirm the scope of a patent and appeal against the trial decisions before the
Korean Patent Court and the Supreme Court relating to developing and marketing
of a generic version of P&G’s patented medicine Risedronate Sodium for
treating osteoporosis.
-
ALCON v. Hanlim, a Korean pharmaceutical company
Kasan
successfully represented a Korean generic company in invalidation trial and
appeal against the trial decision, relating to developing and marketing of a
generic version of ALCON’s patented medicine Patanol® for treating allergic
conjunctivitis.
-
INNOMTEK v. CDM Bridge
The
firm successfully represented INNOMTEK in infringement litigation and
preliminary injunction cases involving Bluetooth and USB driver technologies.
-
TRY Brands v. a personal business owner
We
successfully represented TRY Brands in trademark infringement litigation
involving a well-known trademark for clothing.
-
Shinwha Inc. v. Mirae Inc.
We
represented Shinwha in patent infringement litigation and invalidation trial,
relating to a patent on diffusion film for LCD.
-
Dash Co., Ltd v. a Korean consumer goods company
Kasan
successfully defended a Korean consumer goods company against allegations of
infringement of a patent relating to household goods in preliminary injunction.
-
Sports TOTO Inc. v. a personal business owner
We
successfully represented Sports TOTO in patent infringement litigation,
invalidation trial and appeal for the trial decision against a personal
business owner.
-
Wonik Inc., a Korean semiconductor equipment company v. a former researcher of
the company
The
firm successfully represented a Korean semiconductor equipment company in a
trade secret theft case against a former researcher of the company, throughout
criminal prosecution, preliminary injunction and infringement litigation.
-
Ace Tech, a Korean electronics company v. Hirose Korea, an electronics joint
venture between a Korean company and a Japanese company
Kasan
IP and Law Firm successfully represented an electronics joint venture between a
Korean company and a Japanese company in a trade secret theft case involving
mobile antenna technology against Ace Tech throughout criminal prosecution,
preliminary injunction and litigation for damages.
-
A Korean construction and engineering company “S” v. a Korean construction and
engineering company “I”
The
firm successfully represented a Korean construction and engineering company “S”
in patent disputes and disputes relating to “New Excellent Technology”
certification from Ministry of Land, Infrastructure and Transport.
-
National Health Insurance Corporation v. Seoul National University
We
successfully defended Seoul National University in insurance benefits refund
litigation against National Health Insurance Corporation.
-
SK Chemical, a Korean pharmaceutical company v. Dongkuk, a Korean
pharmaceutical company
We
successfully defended Dongkuk, a Korean pharmaceutical company in patent
infringement litigations, trademark infringement litigation, invalidation trial
and trial to confirm the scope of a patent before the IPT in KIPO relating to a
patented drug of a combination of existing two drugs.
-
National Health Insurance Corporation v. Kyungbo, a Korean pharmaceutical
company
The
firm successfully defended a Korean pharmaceutical company in pharmaceutical
expenditure refund litigation, relating to active pharmaceutical ingredients
exemption provision.
-
Daewoong, a Korean metal working company v. a personal business owner
We
successfully represented a Korean metalworking company in patent infringement
litigation, invalidation trial and appeal for the trial decision, against a
personal business owner.
-
Choistech, a Korean electronics startup v. a Korean electronics company
Kasan
successfully represented Choistech, a Korean small electronics company in a
trade secret theft case relating to electronic accessories for iPhone by
obtaining injunctive relief against a Korean electronics company.
-
Oy Ajat v. Vatech, a Korean medical device company
We
successfully represented a Finnish medical device company Oy Ajat in patent
infringement litigation, invalidation trial, post-grant amendment trial and
appeal against the trial decisions, relating to a dental instrument.
-
Flowmaster Korea v. a Korean software company
Kasan
successfully represented Flowmaster Korea, a subsidiary of American software
company Flowmaster Inc., in a trade secret theft case relating to computational
fluid dynamics simulation software, against a Korean software company.
-
Saerom v. a Korean cable TV company
We
successfully represented Saerom in design right infringement litigation and
related criminal prosecution against a Korean cable TV company.