[Ip-health] =?WINDOWS-1252?Q?South_Korea:_Revisions_to_South_Korea=92s_IP_La?= =?WINDOWS-1252?Q?ws_In_2007?=

[Gaëlle Krikorian]

South Korea: Revisions to South Korea’s IP Laws In 2007

 From Bae Kim & Lee PC
25 April 2007
Article by Eui In Hwang, Boh Young Hwang and Yoo Geun Lim

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.

Trademark Law

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.

Design Law

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.

Copyright Law

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.

The content of this article is intended to provide a general guide to
the subject matter. Specialist advice should be sought about your
specific circumstances.