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Five (5) advanced countries (“IP5”) have started the patent examination cooperation (179)

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KH

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2009-11-06

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1. Five (5) advanced countries (“IP5”) have started the patent examination cooperation

For the first time, veteran patent examiners from five (5) advanced countries (the Republic of Korea, US, Japan, China and Europe; called “IP5”) in the intellectual property (IP) fields met to narrow differences in the patent examination systems among the nations.

The IP5 examiner workshop to strengthen the examination cooperation among the advanced countries in the IP fields was held in Dajun for four (4) days starting on October 20, 2009. In the October 2008 meeting of the commissioners from the IP5 patent offices held in Jeju-do, Mr. Jung-sik KOH, Commissioner of the Korean Intellectual Property Office (KIPO), proposed the workshop. The first workshop was held in the Republic of Korea.

The representative examiners from many technical fields (such as mechanics, chemical industries and information communications, among the others) attended the workshop, learning the best practice of each country. About 200 people including visitors attended the workshop.

According to the 2009 statistical report published by the World Intellectual Property Organization (WIPO), the number of applications filed in the world (based on 2007) was 1,850,000. IP5 countries held 80% of this number. The number of applications filed by IP5 countries has continuously increased. Therefore, the time of waiting for examination is becoming longer in the IP5 countries.

Further, due to the differences in the patent examination systems of the countries, the possibility of predicting whether a patent will be granted has been lower and a lot of time and costs have been required to deal with the different examination results. Therefore, it is true that applicants have had difficulties and inconveniences in obtaining patents in different countires.

In the meeting of the commissioners from the IP5 patent offices held in 2008, each country agreed to share the vision of ‘the examination cooperation among the countries’ to jointly deal with the aforementioned problems and to promote ten (10) basic projects. However, this IP5 examiner workshop is the first meeting to inspect the usefulness/value of each basic project by actually applying it to an examination case.

If the work to unify the patent system and examination practice by preparing the common standards among the five (5) countries progresses without any failures, the difficulties and/or additional costs that the applicants had borne are expected to be considerably reduced. Additionally, considering the current situation that about 30% (about 420,000 applications) of the total number of the applications filed by the five countries overlap, the workshop will be expected to contribute to the improvement in the efficiency of the substantial work (i.e., patenting process).


2. KIPO has officially operated the ‘standard patent specialist team’

The specialist team has been officially operated to systematically support the creation of Korean standard patents.

According to KIPO, the ‘standard patent semiconductor IP team’ has operated from October 23, 2009, to professionally support the creation of high value-added standard patents by the industry-university-institute.

The standard patents mean patents to be necessarily used in technically embodying the relevant standards. Since the standard patents have both of the market power as standards and the exclusive right as patents, their ripple effects are very great.

The standard patent semiconductor IP team will perform the existing semiconductor layout IP-related work, the operation/research of the standard patent system, the development of the standard patent-related manpower, the establishment and promotion of the standard patent-related basic policy, and the mentoring project to expedite the creation of standard patents, among others.

This year, the standard patent semiconductor IP team will prepare a program to strengthen the KIPO internal capacity to support the standard patent activities. It will also conduct research on a system to systematically support the creation of the standard patents of companies and research institutes, among others.

Further, the standard patent semiconductor IP team has a plan to newly promote the ‘standard patent mentoring project’ from next year. In this project, experts support the customized creation of standard patents, focused on small and medium companies and middle standing companies. It will consider a scheme to support the university researchers participating in the standardization activities to obtain the standard patents.


3. The Supreme Court of Korea finally concluded the patent trial of ‘invalidating Plavix patent’

The final decision of the ‘Plavix’ patent trial has been made to be given for the Korean pharmaceutical companies.

On October 15, 2009, the Supreme Court, Division III, (Judge: Young-cheol SHIN, Justice of the Supreme Court) dismissed the appeal in the ‘(patent) registration invalidation’ trail which sanofi-aventis filed against 16 Korean generic drug companies including Dong-A Pharmaceutical company among others.

In the decision of the trial, the court ruled, “the original trial decision stating that the novelty and inventive steps (of the original product) are denied is fair and has no misunderstanding of legal principles and no contravention to judicial precedents.”

Accordingly, the court announced, “the appeal (of the plaintiff) shall be dismissed and the party defeated shall bear the costs for the appeal including the expenses related to the intervention to assist one of parties.”

Therefore, there will be no risk of compensation for damages that may be borne by the Korean generic drug companies including Dong-A Pharmaceutical company.

Especially, this decision drove a wedge in the ‘ever-greening’ strategies of the original drug companies to prolong their patents. In this point, it is predicted that this decision will influence the ‘Lipitor’ trial, among others, which has been pending in the appellate trial.


4. Korean company fights against the Chinese counterfeits

The Korean and Chinese officials have started the control of counterfeits in China, called the ‘heaven of counterfeits’.

On October 27, 2009, KIPO held the ‘presentation to distinguish the counterfeits from Korean companies’ products’ in Shaoxing City, Zhejiang Province, China. Ninty-nine (99) people including the officials who control trademarks and people related to large shopping malls attended the presentation.

In the presentation, the subjects for education include the products of Samsung Electronics, LG Electronics, Hyundai Mobis, Dorco, Three-Seven, EXR, and Basic House, among others. Specifically, since the products of Samsung Electronics are the most popular, there are a lot of Samsung counterfeits.

Cooperating with the Korean companies, the officials participating in the presentation will ferret out counterfeits in about fifty (50) industry and commerce places under the State Administration for Industry and Commerce in Shaoxing City.

 

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The Korean Intellectual Property Office (KIPO: Commissioner: Jung-sik KOH) and the World Intellectual Property Organization (WIPO) jointly held the ‘WIPO regional training program’ (180)

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The Republic of Korea concluded the MOU of the ‘Patent Prosecution Highway (PPH)’ with Canada and Finland. (178)