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The settlement of patent disputes will be faster (News Letter No. 238)

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KH

Post Date 

2012-04-17

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1. The settlement of patent disputes will be faster

- The Korean Intellectual Property Tribunal (KIPT) decided to process a trial related to a patent dispute as soon as possible

A patent dispute is expected to be faster and more accurately solved in the future. KIPO announced that it will additionally designate a trial case related to a patent dispute pending at a court or Trade Commission as a subject for a prompt trial and to process the trial within 4 months from the date of filing the trial.

A patent infringement trial (a claim for damages, a decision for an injunction) is processed in a general civil court (a local court, a high court). Separately, an invalidation trial to determine whether a patent is valid or invalid and a scope confirmation trial to determine whether a product of a person working a patented invention belongs to a patent right are processed in KIPT. KIPT has indicated a scope confirmation trial related to a pending patent infringement trial as a subject for a prompt trial, to support the earlier settlement of the patent dispute.

However, as whether a patent is invalid or not (which is a precondition on whether a patent is infringed or not) has been considered as a major issue point, a prompt judgment of an invalidation trial becomes more important. Accordingly, KIPT revised the trial work handling regulations, to indicate an invalidation trial as filed when a patent infringement trial is pending at court as a subject for a prompt trial so that it is processed within 4 months from the date of filing the trial.

In addition, as known in the case of investigating a unfair trade action of an infringement of a patent related to a laser printer photosensitive drum, which was determined by the Trade Commission in September 2011, whether a patent is invalid or not has become an important issue in a determination of a unfair trade action. Therefore, a trial case related thereto is indicated as a subject for a prompt trial or preferential trial based on the issue, to be processed within 4 or 6 months.


2. There is no more place for a stored trademark as not used

- A system of confirming an intention to use a trademark and a system of adding fees will be operated

KIPO decided to reduce the number of stored trademarks which prevent a person who wants to actually use a trademark from using it, by registering a trademark which will not be used practically.

To this end, KIPO announced to fully operate the ‘system of adding fees’ in steps of filing an application and registering a trademark and the ‘system of confirming an intention to use’ in a step of examination.

Under the system of confirming an intention to use, in the event an examiner has a reasonable doubt about the intention of an applicant of a trademark application to use a trademark, the examiner asks the applicant’s intention to use. The applicant proves the intention to use the trademark by submitting materials proving the fact of using the trademark or the fact of preparing to use the trademark.

The system of adding fees has been in operation from April 1, 2012. If the number of designated goods or designated service businesses is in excess of 20 per one when a trademark application is filed, a trademark is registered or a renewal of the trademark is registered, an applicant shall pay additional fees of 2,000 Korea Won per designated goods in addition to a basic fees of 56,000 Korea Won.


3. The number of infringements of venture companies’ patents is more than nine (9) times that of big companies’ patents

It is reported that medium and small companies or venture companies have more infringements of their patents in comparison with big companies. KIPO and the Trade Commission (Chairman: Jungtaik Hyun) jointly studied the actual condition of intellectual property activity. Based on the results of the study, only 0.7% of the big companies being subject to the study for one year (2010) answered that their patents had been infringed. However, 2.4% of the medium and small companies and 6.5% of the venture companies answered that their patents had been infringed. Thus, medium and small companies and venture companies have about 3~9 times more patent infringements in comparison with big companies.

As to trademark rights, medium and small companies have the most infringements. Among the companies being subject to the study, whereas 1.7% of the big companies and 0.5% of the venture companies answered that their trademarks had been infringed, 2.2% of the medium and small companies answered that their trademarks had been infringed. Thus, medium and small companies are considered as having more trademark infringements by about 1.3~4.4 times, compared with big companies or venture companies.

The aforementioned results of the study were obtained through a survey conducted targeting 17,440 companies, universities and public research institutes over the country, which had filed the patent or trademark applications. Every year, KIPO has carried out a sample survey on the whole process of creation, protection, use, etc. of intellectual property targeting these survey subjects. From last year, KIPO and the Trade Commission jointly do a survey in the field of non-infringement of intellectual property rights.


4. Medium and small companies are out of the fear of patent trolls

While patent attacks of a foreign company to a Korean company have rapidly increased, a system has been prepared to minimize a threat of a international patent dispute of a medium or small electronic or IT company. A medium or small company which is weak in patent counteracting power can in advance estimate a possibility of a patent infringement when entering an overseas market or developing a new product.

Korea Electronics Association (KEA; Chairman: Jongyong YUN) announced that, with a support from the Ministry of Knowledge Economy, it will build a system of forecasting an international patent dispute (IPCAST) to provide a demonstration service. This system is to make a medium or small company to deal in advance with a threat of an international patent dispute, thereby preventing the dispute.

This system contains about 30,000 patent litigation records and patent data used for patent litigation which were took place in US for the last ten (10) years. It also includes information of a new patent litigation occurring per week-unit in US.

In the later half of this year, 4,000,000 US registered patents will be databased and a ‘dispute sensitivity engine’ will be built in the system, to provide the ‘information of dispute sensitive patents’ which are graded according to the priority of a patent dispute possibility. When a medium or small company in advance inputs patent information (the title of a patent, the name of a technology, a name of a patent owner, etc.), it will receive a warning mail immediately when a trial occurs in US.

As a medium or small company having no personnel exclusively responsible for patent matters can understand a current state of patent disputes and in advance predict a possibility of a patent dispute by a plaintiff, defendant, litigation court, company and technology, KEA expected its power of dealing with a dispute to increase.

The head of a patent support center under KEA said, “66% of medium and small companies advanced into foreign markets without considering the information of competitors’ patents. This system is capable of minimizing damages due to patent disputes and effectively managing patent dispute risks.”  

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