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The patent application filing system will be partially revised beginning the next year (News latter No. 291)

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KH

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2014-07-01

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1. The patent application filing system will be partially revised beginning the next year

- A research note or English thesis itself will be possible to be filed as a patent application and a period taken for filing the application will be shortened by about 3.7 months.

- A red light as to trademark broker acts and a green light for valuable trademark registrations.

It will be possible to file a patent application using only the completed ‘idea description data/materials’ arranged as thesis or research result to be published in an academic journal. In addition, when a famous celebrity’s or broadcast program’s name is registered without authorization, the registration can be cancelled.

The revision of the Patent Act will ease the formality of filing an application by making it possible to use the English language in an application to be submitted and to file the application regardless of formal description requirements.

Further, when a mistranslation is mistakenly made in an international patent application, it will be possible to make a correction. The period for submitting a Korean translation of the international patent application will be possible to be extended by 1 month.

Further, when a patent right lapses by not paying patent fees, it is possible to restore the right by paying restoration fees. Previously, it has been possible to restore a right only when the relevant invention is being carried out.

Under the revision of the Trademark Act, when a person having a trade connection on business first files a trademark application with intent to preoccupy the trademark even though knowing that it is the other’s trademark, the trademark application will be rejected and not be registered.

When an achievement (such as a celebrity’s name, etc.) resulting from another’s considerable investment is registered as a trademark, no one shall use it without the consent of the rightful person and the rightful person may cancel the registration of the right.

Even though a mark is not distinctive, such as property indication, if it is recognized as a trademark of a specific person by use, the trademark will be easily registered under the revised Trademark Act easing the requirements.

Even if a trademark to be used goods having no relation to a famous trademark is filed and causes no confusion of its origin, if the trademark is likely to damage the distinction or reputation of the famous trademark, such trademark shall not be registered.
The revised Patent Act regarding the ease of requirements to restore a patent right and the revised Trademark Act go into effect on the date of promulgation (June 11, 2014 on schedule). The revised Patent Act regarding the ease of requirements to acknowledge the filing date of a patent application and other matters will be enforced from January 1, 2015 to modify the subordinate laws and to prepare the computer system.


2. Laws relevant to the introduction of an international design application filing system, etc. will be enforced from July 1, 2014

According to KIPO, the Design Protection Act revised to strengthen the competitiveness of the Korean design industry and to realize the creative economy will be completely enforced from July 1, 2014.

The Design Protection Act to be enforced has the following main points:
① introduction of the international design application filing system according to the Hague Agreement (hereinafter, referred to as ‘Hague Application Filing System’);
② extension of the period of a design right and strengthening of the right protection of a creator; and
③ improvement of ease and convenience of an applicant of a design application.

To strengthen the protection of the design creator’s right,
① the period of a design right is extended from 15 years to 20 years;
② a design modified from a foreign design is more strictly examined;
③ independent right scopes are given to similar designs derived from one design;
④ an opportunity is expanded to relieve a design which is opened prior to the filing of the design application and is rejected its registration; and
⑤ even after an application of a design is filed, it is possible to file again a design application for an important part of the design, thereby strengthening the protection of a design core part.

Unnecessary requirements in the procedures of filing a design application are sharply abolished and an applicant’s convenience is significantly improved.
① it is possible to file a single application for up to 100 designs at once;
② an examiner corrects a minor error by authority for a design registration;
③ it is possible to amend to an application during a reexamination or trial process so that a design of the application may be registered without repeating unnecessary examination procedures;
④ when a design application is withdrawn, an object of official fee return (such as the official fees for claiming a priority) is expanded; and
⑤ when registration fees are not paid due to unavoidable circumstances, the payment period is extended so that the fees may be paid within 2 months from the date on which the unavoidable circumstances end.


3. KIPO held a presentation meeting on counterplans for intellectual property (IP) disputes for Korean companies advancing into China

- There were discussed the latest issues on IP in Chinese markets and know-how to react to disputes by type.

KIPO (Commissioner: Young-Min KIM) and KOTRA (Korea Trade-Investment Promotion Agency: President: Young-Ho OH) jointly held the presentation meeting on counterplans for IP disputes for the Korean companies advancing into China on the annexed building (IKP) to KOTRA on June 27.

In this meeting, the latest IP issues including the revised matters of the Chinese Trademark Law were introduced to the Korean companies advancing in Chinese markets where the IP disputes and damages have rapidly increased. Also, proper counterplans and the relevant government support projects were suggested by dispute case of IP (patent/trademark/copyright, etc.). These are to improve the dispute-reacting capability of the Korean companies which have not been able to enter IP dispute prevention and counterstrategies because of a lack of experts and the burden of expenses.

Those attending the meeting shared various IP dispute cases by Chinese locals’ actions of maliciously first registering a trademark of a Korean company’s product without authorization, selling illegal fake products in an online open market, infringing a copyright, etc. Further, specific counterplans were explained by using an infringement case.


4. An object to be protected as a patent in the software (SW) field is expanded

- The revised examination standards for a computer SW-related invention will be applied to an application(s) filed beginning July 1, 2014

SW-related companies’ inconveniences are expected to disappear in the future. KIPO announced that an invention described in a computer SW-related claim(s) of an application to be filed from July 1, 2014 would be patentable by the revision of the examination standards for a computer SW-related invention.

This revision reflects the opinions from the SW industries to request to protect diverse types of the SW technology as patents, by solving applicant’s inconveniences and easing the formal descriptive requirements.

The SW technology has been diversely developed as it has been converged and complicated with medical, automobile industries or it has became, in the forms of mobile apps, as necessaries in our life.

However, the computer program, such as mobile apps, was not included into the objects to be protected as a patent. The number of cases where the computer SW-related inventions were not patented due to this reason was average over 600 per year.

The examination standards as revised include the following major matters: ▲a name change of the examinatio  

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It is possible to file a trademark application in Korean in foreign countries (News letter No, 292)

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