[Ip-health] New Rule on the Social Use of Patented Invention

[Heesob Nam]

On January 27, 2010, the Korean Patent Act was amended to facilitate
social use of patented invention. Two changes were brought by the
amendment.

First, the government may use a patented invention in public interest.
This means that the government use is no longer limited to national
defense or other circumstances of emergency. But the government use
must meet a controversial requirement of =93non-commercial use.=94 This is
controversial because the government may allow a third party (mainly
for-profit businesses) to use the patented invention. This rule on the
government use goes into effect on July 28, 2010.

Second, it is made clear that an experimental use exemption
encompasses any activities for getting an approval of pharmaceutical
products or agricultural chemicals. This change took effect as of
January 27, 2010.

English translation of the Amendment:

Article 106bis (Government Use of Patented Invention)
(1) If a patented invention is necessary for national emergency, other
extreme urgency or non-commercial use in public interest, the
government may use the patented invention or allow a person other than
the government to use the patented invention.
(2) When the government or the person other than the government knows
or has demonstrable grounds to know the existence of a valid patent
right, the patentee, the exclusive licensee or the registered
non-exclusive licensee of the patent right shall be informed promptly
of the fact that the patented invention is used according to Paragraph
1.
(3) The government or the person other than the government, when a
patented invention is used pursuant to Paragraph 1, shall pay a
reasonable compensation to the patentee, the exclusive licensee or the
registered non-exclusive licensee of the patent.
(4) Matters necessary for the government use and the payment of the
reasonable compensation are prescribed by Presidential Decree.
<Revised: January 27, 2010, Effective: July 28, 2010>

Article 96 (Limitations on a Patent Right)
(1) The effect of a patent right does not extend to any of the
following subparagraphs.
(i) Working a patented invention for research or experimental purposes
(including research or experiment for the purpose of getting an
approval or reporting a pharmaceutical product pursuant to the
Pharmaceutical Affairs Act or for registering agricultural chemical
pursuant to the Agricultural Chemicals Regulation Act. <Revised:
January 27, 2010; Effective: January 27, 2010>

Heesob