Patent and Utility Model Laws
South Korea has introduced various amendments to its patent and utility model laws, effective for applications filed from July 1 2007. These include new requirements for drafting detailed descriptions and claims, and the adoption of late filing of claims. The amendments also impose a duty to examine each claim on examiners and shorten designated periods, effective from July 1 2007.
Korea’s current patent law requires a patent application to describe the purpose, construction and effect of inventions separately. However, the foregoing requirement will be amended (based on the regulations of the Patent Cooperation Treaty and foreign countries) to allow applicants to simply describe inventions "concretely and clearly" under the drafting requirements of the ordinance of the Ministry of Commerce, Industry and Energy.
Under an expected amendment to Article 42(3) of the Patent Law and Article 8(3) of the Utility Model Law, applicants will have more freedom to describe their inventions without the formality of separately describing the purpose, construction and effect of the inventions.
The newly-added Article 42(6) of the Patent Law and Article 8(6) of the Utility Model Law provides that claim(s) must define constructions, methods, functions, materials or the relationship therebetween (or configurations, structures or the relationship therebetween), which are regarded as essential to clarify the matters to be protected. This replaces the provisions that claim(s) must define only features indispensable for the construction of an invention (or device). As such, applicants can draft claims more liberally, include claims drafted in terms of functions or operating means, and not merely in terms of constructions.
With the addition of Article 42(5) to the Patent Law and Article 8(5) to the Utility Model Law, applicants are allowed to defer the inclusion of claims in a patent/utility model application before the laid-open date of application (18 months from the filing date of the original application under Article 64(1)). Applicants will have more time to draft claims more effectively.
The newly-added Article 63(2) of the Patent Law and Article 14(2) of the Utility Model Law require examiners to concisely describe the grounds for all rejected claims in the examination of patent/utility model applications. Therefore, applicants will be fully informed of the specific grounds for each rejected claim.
Article 15(2) of the Patent Law and Article 4 of the Utility Model Law have been amended to allow an applicant to apply to shorten the designated period (such as a due date for filing a response to the office action) for the prosecution of patent/utility model applications. In other words, an applicant can submit a response prior to the two-month period for submitting a response to an office action and request the Korea Intellectual Property Office to issue a decision prior to the expiry of the designated period. The examiner must subsequently issue the decision immediately rather than waiting for the two months to pass.
South Korea’s Trademark Law has been partially amended, effective from July 1 2007. The amendments include an expansion of the scope of trademarks to be protected as trademark rights, an expansion of the scope to convert an application, an expansion of the period to file a trademark opposition and recognition of nonexclusive licenses by first use.
A trademark is conventionally defined as a sign, a character, a figure, a three-dimensional shape or any combination of colour with the preceding items. However, Article 2(1)-1 of the Trademark Law has now been amended to also protect a colour mark, a hologram mark, a motion mark and other types of visually perceivable objects as trademarks.
Under an amendment to Article 19 of the Trademark Law, an applicant may convert applications for trademarks, service marks and collective marks into each other. A renewal trademark application can also be converted into a trademark application for supplemental of designated goods.
Article 25(1) of the Trademark Law has also been amended to extend the trademark opposition period of 30 days from the date of publication to two months from the date of publication.
Article 57-3 to the Trademark Law provides that where a person has used another owner’s trademark in Korea before the filing date of an application for the trademark, but without intending to engage in unfair competition, and that trademark has been recognized as the person’s mark by Korean users at the time of filing the trademark application, the person who first used the mark identical or similar to the owner’s registered mark is granted a nonexclusive right to continue to use the mark.
South Korea’s Design Law has been partially amended, effective from July 1 2007. The amendments include an expansion of the grounds to reject applications for unexamined design registrations and the exclusion of prior application status for a rejected or abandoned application. In addition, it provides recognition of nonexclusive licenses by first use, an expansion of the period to file a request for a secret design and an increased opportunity to request a grace period for a novelty design.
Article 26(2) of the Design Law has been amended to reject an application for unexamined designs if the design can be invented easily in view of a widely-known configuration, shape, colour or any combination thereof in Korea. Therefore, when considering applications for unexamined design registration for products, such as clothing or bedding, registrations for designs lacking creativity will be rejected and be available to anyone because there would be no substantial difference between the applied-for designs and well-known designs.
As with the patent and utility model law amendments in 2006, Article 16(3) of the Design Law has been amended to exclude prior application status for any application rejected or abandoned before being laid-open, thereby protecting a third party who files a design application for undisclosed design in good faith.
Under the newly-added Article 50-2 of the Design Law, if an applicant of a prior application which is rejected due to a known design is working or preparing his/her own business on a design similar to the design of a subsequent design application, the applicant of the prior application is granted a free nonexclusive license for the subsequentlyregistered design.
The period for filing a request for a secret design, which was only at the time of filing under the prior law, has been amended to anytime "from filing to the payment of registration fee" under Article 13(2) of the Design Law. If an applicant has not completed his or her preparation of business prior to the laying open of a design, the applicant can file a request for a secret design even after filing an application.
The newly-added Article 18(3) of the Design Law provides that the request for a grace period for novelty is allowed when converting a similar design application into a single design application as a special regulation to the provision that a grace period for novelty should be requested at the time of filing an application. An applicant has the opportunity to request a grace period for novelty when a similar design application is determined not to be similar to the basic design, and amending (converting) into a single design application becomes necessary.
Several amendments to South Korea’s Copyright Law come into effect from June 29 2007. These include the addition of public transmission rights and digital voice transmission rights and the inclusion of provisions regarding the reproduction of topical articles and editorials. Efforts have also been made to bring the Copyright Law in accordance with the World Intellectual Property Organization’s Performances and Phonograms Treaty (WPPT). New provisions have been added concerning the fair use of works, and the system for protecting and cultivating South Korea’s cultural industry on the internet has been improved.
Article 2, subparagraph 7 of the Copyright Act has been amended to cover the public transmission right "to transmit or provide for use works, etc. by wire or wireless communications for the public to receive or access them". Additionally, Article 2, subparagraph 11 now includes, as a type of the public transmission right, the right of digital voice transmission, which means "public transmission of voices in a digital mode through an information and communications network to be commenced at the request of members of the public (other than general transmission)".
Article 27 of the Copyright Act has been amended to allow reproduction, distribution, or broadcasting of topical articles or editorials posted in newspapers (including internet newspapers) or news communications related to politics, the economy, society, culture or religion by other media institutions, unless their use is expressly prohibited. With the inclusion of internet newspapers in the category of mass media since the enactment of the Act on Guarantee of Freedom and Functions of Newspaper, (effective from July 2004), the Act also applies to internet newspapers.
As South Korea is a signatory to the WPPT, Articles 66 and 67 of the Copyright Act have added protection for performers’ moral rights in accordance with the treaty. With respect to rental of commercial phonograms, performers’ right to demand compensation has been removed. Instead, performers have been granted exclusive rights of rental in a complete sense under Articles 71 and 80.
Further, performers have been granted rights of public performance in unfixed performances (live performances) under Article 72. In addition, foreign performers and phonogram producers are entitled to compensation for broadcasting commercial phonograms based on reciprocity principle under Articles 75(1) and 82(2). Performers and phonogram producers shall have the right to compensation for digital voice transmission, and Articles 76 and 83 of the Copyright Act provide that the method of compensation for use of phonograms for the purpose of school education shall apply to the payment of the above compensation.
To protect authors and to promote the fair use of works, the Act has added provisions concerning acknowledgement of transmission of published works for the purpose of education (Articles 25(2) through 25(4) and Article 10), use of works for which protection period expired (Article 134) and the donation of works (Article 135).
The Copyright Act now includes provisions concerning the obligations of specific types of internet service providers (ISPs) to protect and cultivate the cultural industry. Under the newly-added Article 104, ISPs primarily engaging in services intended for peer-to-peer transmission are obligated, if requested by relevant rights holders, to take technical actions to intercept illegal transmission of copyrighted works or other necessary actions.
Article 103(2) of the Act also stipulates that if any person whose copyrights are infringed has requested the infringing ISP, through proving the infringement, to suspend the reproduction or transmission of his works, the ISP is required to suspend the reproduction or transmission without delay. Moreover, the new provision requires an ISP that suspended the reproduction or transmission of copyrighted information to notify the relevant rights holder who applied for suspension that it has taken place.
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