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Filing a design application in a foreign country is easy. (News Letter No. 516)

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KH

Post Date 

2023-11-16

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1. Filing a design application in a foreign country is easy.

-KIPO publishes and distributes guidance for an international application for an industrial design according to the Hague Agreement.
-The guidance includes the Hague international application (foreign design application) system and procedures and how to make an international design application, etc.

On October 11, 2023 KIPO announced the publication and distribution of the guidance for an international application for an industrial design according to the Hague Agreement’, so that the public, a company and a patent attorney industry worker, among others. are able to easily understand the relevant system and to file an international application for an industrial design.
Under the Hague Agreement, when an international design application is filed with the International Bureau of the World Intellectual Property Organization, a design right is protected through an examination in the countries (96 countries as of the end of September 2023) joined in the Agreement, including US, China, Japan, etc.
The number of international design applications according to the Hague system trends to increase every year. The number of the international design applications filed in the world in 2022 was 25,030, showing an increase of 11.2% compared to the previous year. In South Korea, the number was 1,346, taking 7th placed in the world (in 2022) and the importance of the international design applications is continually growing.
Since the guidance includes the explanation of the Hague international application system and procedures and how to make an international application, etc., it can be put to good use for people who want to file a design application overseas or who do the relevant work.



2. loan is available immediately after a patent dispute arises!

-KIPO implements an immediate loan for a dispute cost for IP mutual aid (October 10, 2023).
-A rapid response to a dispute is supported for small and medium companies and middle market companies involved in IP disputes.

KIPO announced to implement an immediate loan system for the dispute cost from October 10, 2023, under which when a small or medium company or a middle market company signs up for IP mutual aid is able to take a loan for the cost for hiring a patent attorney or lawyer, etc., immediately after the IP-related dispute occurs.

【IP mutual aid】

When a subscriber, such as a small or medium company or a middle market company, pays monthly installments and needs a large sum of money at once as IP costs, like the costs for IP trial or litigation or costs for filing application at home and/or abroad, etc., IP mutual aid is the IP finance product making it possible to take a loan up to 5 times the amount paid. About 15,000 companies signed up for IP mutual aids and a fund of approximately 180 billion Korea Won was raised by August 2023 since KIPO and the Korea Technology Finance Corporation as an operation entrusted organization launched in August 2019.

When the immediate loan system for a dispute cost is implemented on October 10, 2023, the companies signed up for IP mutual aids are able to immediately take loans for the IP-related disputes, such as trial, litigation, etc.
The reasons eligible for immediate loans are limited to the costs related to IP trial, retrial, litigation for cancellation of a trial decision, patent infringement lawsuit, lawsuit for technology theft, trade secret dispute, and loans are available up to 3 times the amount paid. Previously, when a company pay installments for 6 months after signing up for IP mutual aid, the company was able to take a loan.

Additionally, since an immediate loan is also allowed for an IP dispute which occurred within 6 months before signing up for IP mutual aid, this system more broadly supports a company involved in IP dispute.



3. Obtaining a trademark right becomes faster! KIPO publishes acceptable names of products.

-Acceptable names of products, in addition to publicly announced names, are published (from October 5, 2023).
-It is expected to prevent delays in examination processing time due to errors in product names.

According to KIPO, the names of registrable similar products in addition to the publicly announced product names have been for the first time published since October 5, 2023, to be referred when filing a trademark application.
The names of similar products to be published are a total of 870 in 43 Classes. These names of similar products which did not fall under the previously announced product list have been decided to be acceptable by examiners through many reviews.
When an applicant files a trademark application, the applicant must describe in the application a product(s) to which the trademark is used. At this time, the applicant must describe the name(s) of the product(s) which is acceptable under the Korean Trademark Act. Things to keep in mind is that, when a name which is unclear as to classification is selected since the name of the product is not specified, the trademark cannot be registered.
In addition, even if a name is similar to a publicly announced product name, it may be unacceptable or rejected as an unclear name depending on letter case, spacing, orthography, foreign language or symbol notation, etc.
For examples of similar product names, ‘album for pictures and ‘notebook’ are publicly announced names, whereas ‘photo album’ and ‘note’, etc. fall under similar names. Since the names, which are commonly used as similar meaning to the publicly announced names in the dictionary, are described, their classes are not changed or do not fall under unclear names and therefore these names are acceptable.

The list of acceptable product names is published in KIPO website (www.kipo.go.kr) or KIPRIS website (www.kipris.or.kr), to be used for reference in deciding a designate product(s) when filing a trademark application. KIPO has a plan to expand and provide the names to be published through a continuous review.
According to KIPO, when a trademark application is filed by indicating a designated product(s) with publicly announced product names only, since the trademark has no concern of being rejected due to unclear product names and the applicant gets a 10% discount of the fees for filing the application, it is recommended to file a trademark application with a product name(s) by giving priority to publicly announced product names.



4. Now, artificial intelligence (AI) is also trending in X-ray image analysis.

-The number of patent applications related to AI technology of analyzing medical image grew by an annual average of 54.7%.
-The number of the relevant applications filed by Korean applicants increased by an annual average of 67.1%, ranking a 2nd place in the world, following the number of the relevant applications filed by Chinese applicants showing an annual average increase of 86.8%.

The number of the whole world patent applications relating to the technology of analyzing a medical image using AI increased by an annual average of 54.7% over the last 10 years (2011~2020). The number of the relevant applications filed by Korean applicants increased by an annual average of 67.1%, growing the second fastest in the world.


KIPO analyzed the whole world patent applications related to the medical image analyzing AI technology, which were filed in IP5 (South Korea, US, Europe, China and Japan). As a result, the number of the relevant applications was only 58 in 2011 and it grew by an annual average of 54.7% over 10 years (2011~2020) and reached 2,946 in 2020. Notably, the annual average increase over the last 5 years (2016~2020) was 70.9%, showing that the increase in the number of these application has been accelerated.


By the nationality of an applicant, the increase percent (67.1%) of the applications filed by Korean applicants was the second highest in the world, and the number of the applications filed by Chinese applicants showed the highest growth as an annual average of 86.8%.
From the view of the number of the applications filed by the nationality of an applicant, the most applications, 3,477 (39.8%,) were filed by Chinese applicants, followed by 1,733 (19.8%) filed by US, 1,057 (12.1%) filed by Korean, 980 (11.2%) filed by Japanese, and 522 (6.0%) filed by Germany.

<16 Korean applicants including 8 small and medium companies within the world top 100>
The major applicants are: 1st was Siemens Healthineers (4.5%, 393 applications, 2nd was Philips Healthcare (2.6%, 229) and 3rd was Canon Medical Systems (2.1%, 185). As the Korean applicants, 11th was Samsung Electronics (1.0%, 87), 20th was Bio (0.5%, 48) and 24th was Yonsei University (0.5%, 44), etc.
The number of the Korean applicants within the top 100 in the world was 16 including 8 small and medium companies. Notably, the rate of the applications filed by universities as a cradle of technology was 30.2% which was higher than the world average of 23.2%.

<’Herfindahl-Hirschman Index dropped to 46 in 2020… the competition among companies have become fiercer>
It is indicated that the competition among the companies in this field has been intense. In view of the Herfindahl-Hirschman Index which indicates the concentration of patent applications, it was 458 in 2011 but it dropped to 46 in 2020, getting closer to completely free competition. As the interest in the technology of analyzing medical image by using AI has been increased, the participation of new companies is considered as having increased.
The Herfindahl-Hirschman Index indicates the market concentration in a certain industry. As the index is higher, it closes to monopolistic market and thus it is difficult for a new participant to enter the market.



5. KIPO takes the lead in eradicating design infringement crimes!

KIPO’s technical design special judicial police (hereinafter, referred to as the ‘technical police’) held an academic conference to strengthen the response to a design infringement crime, to eradicate design infringement crimes.
This academic conference was prepared to promote the value of a design as an intellectual property right and to seek a plan on how the design industry, academia and legal fields and government-related ministries respond to a design infringement crime.


The campaign for a ‘fair consumer’ was introduced to become a fair consumer (FAIR-conSUMER) to pay a fair reward for the effort to create a design. Guests attended from all walks of life leaded a challenge to declare ‘let’s be fair consumers (FAIR-SUMER) first!’. As a part of government innovation, the fair consumer (FAIR-SUMER) campaign has been intensively carried forward from October 18 to December 17, together with the people of the MZ generation and the technical police, through a ‘citizen participation policy communication project’ of the Ministry of Culture, Sports and Tourism.
The relevant authorities (such as the Fair Trade Commission, Ministry of Culture, Sports and Tourism, Prosecutor’s Office and National Police Agency), the chairperson of Korean Society of Design Science, and the related organizations (such as Korea Intellectual Property Protection Agency and Korea Institute of Intellectual Property, etc.) participated in the challenge to join the declaration of the fair consumer (FAIR-SUMER).


A design counterfeit fair is held in a partial space of the ‘Korea Invention Patent Exhibition’ to be hosted by KIPO (COEX Hall C, C-46). In the fair, a method for general public to determine whether a design is infringed is introduced from the view of the Design Protection Act and the Unfair Competition Prevent Act and the people are able to directly experience design infringing products.
In addition, an event to give small prizes is held when people take part in a quiz to determined whether a design is infringed and participate in the challenge to join the declaration of the fair consumer (FAIR-SUMER). Furthermore, the professional counseling staff of the technical police and the IP infringement reporting counseling center of the Korea Intellectual Property Protection Agency proceeds with consultation on whether a design is infringed.

 

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