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KIPO held an IP-field FTA overall presentation (News Letter No. 374)

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KH

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2017-12-18

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1. KIPO held an IP-field FTA overall presentation

- The FTA major matters in IP-field and the counter strategies to IP-related disputes are introduced.

The Korean Intellectual Property Office (KIPO) held a ‘2017 IP-field Free Trade Agreement (FTA) overall presentation’ for overseas expansion companies, experts and general people on November 28, 2017 in a big meeting room of the Korea Intellectual Property Center (Yeoksam-dong, Seoul, the Republic of Korea).

As the number of the countries including the US, China, EU, etc. with which the Republic of Korea entered into the FTA expands to fifty-two (52), this presentation was prepared for the better understanding of Korean companies, which have advanced or want to advance into foreign countries, in the IP-field matters of FTA.

This IP-field FTA overall presentation provided an explanation of the FTA major matters with China, Vietnam, etc. which the major countries including US, EU, etc. and Korean companies have actively advanced into. Specifically, the presentation introduced a plan to protect foreign geographical indication and a counter plan to a illegal preoccupancy of Korean famous trademarks. The presentation further provided a current international discussion status of biological genetic resources as the law to implement the Nagoya Protocol has been executed and a support plan to cope with an IP dispute in a foreign country.


2. A meeting of the commissioners of KIPO and SIPO has led a re-ignition of two-country economic cooperation

- This year, KIPO and SIPO first concluded a memorandum of understanding (MOU) between the central government agencies of the two countries.

Mr. Yunmo SUNG, KIPO Commissioner, had a meeting with Mr. Changyu SHEN, SIPO Commissioner, on November 17, 2017 in Hangzhou, China, to increase the cooperation level such that the two countries’ cooperation results in patent and design fields are connected to the international success cases.

Especially, in this meeting, the MOU was concluded as to a ‘patent collaborative search pilot (CSP) program’ in that KIPO and SIPO examiners together examine the same invention submitted in applications filed in the two countries. This has the meaning that for the first time, China has gone hand in hand with Korea to participate in the CSP program. This is the first MOU which the central government agencies of the two countries have concluded this year.

KIPO and SIPO also agreed with a plan to carry forward an electronic exchange of a design priority document as soon as possible. When a Korean applicant files a design application with SIPO or when a Chinese applicant files a design application with KIPO, KIPO and SIPO electronically exchange the priority document to be submitted. Therefore, the cost and burden of submitting a priority document are expected to be greatly reduced. Up to now, there is no case of electronically exchanging a priority document between countries.

KIPO and SIPO decided to further strengthen the cooperation in the design field. That is, KIPO will positively cooperate with SIPO in strengthening the design examination ability and developing the design classification system.


3. To easily secure a US Patent…

- Requirements for requesting a Korea-US Patent CSP are lessened and procedures thereof are simplified.

KIPO and USPTO have implemented a 2nd CSP program from November 1, 2017.

Under the CSP program, when an application for the same invention is filed with KIPO and USPTO, the KIPO and USPTO examiners share prior art information which is needed in determining whether the invention is patentable and are able to examine that application faster than other applications.

Specifically, since USPTO exempts the fee of requesting a preferential examination (about 5,000,000 Korea Won), a Korean company’s time and cost of acquiring a US patent are greatly reduced.

The 1st pilot program was progressed for two (2) years until August 31, 2017. During this period, 112 requests for the CSP were filed from Korean and foreign companies (77 from Korean companies and 35 from foreign companies).

An average examination processing period was 7.5 months, which was shortened by about 3.5 months compared to a general examination case. The patent registration rate was 84.4%, which was higher by 25.2%p compared to a general examination case. The examination results (patent registration or rejection) of both KIPO and USPTO were 85.3%.

During the 1st pilot program, Korean and foreign applicants made favorable comments that the program contributed to the shortening of the examination processing period and the improvement of the examination quality. Nevertheless, there were opinions that the requirements for requesting the CSP were strict and some of the relevant procedures were irrational.

Therefore, the 2nd pilot program is improved to solve the applicants’ inconvenient matters.
First, previously, when requesting the CSP, all invention(s) described in the applications filed with KIPO and USPTO must be the same (that is, all the claims should be the same in the two applications). However, the requirements for requesting the CSP are relieved to allow that only a representative invention should be the same (that is, only an independent claim should be the same.)
Second, even though KIPO and USPTO share the information of the prior art through the CSP, an applicant has the burden to submit it to USPTO due to the USPTO’s unique system. However, the procedures have been simplified to reduce this burden.


4. Korean companies swept the semiconductor memory market have filed the most patent applications

- Trends of Korean and foreign patent applications for the semiconductor memory fabricating technology

While the Republic of Korea has strengthened the first place in ranking in the world semiconductor memory market, it has filed the most patent applications in the same field.

According to KIPO, the number of Korean patent applications in the field of the semiconductor memory fabricating technology including semiconductor memory design, production and packaging was a total of 20,665 during the last five (5) years (2011~2015), by filing about 4,000 applications every year.

The companies which filed multiple applications were Samsung Electronics (4,388 applications, 21.2%) and SK Hynix (3,739, 18.1%) taking 1st and 2nd places in ranking, respectively, followed by Intel (759, 3.7%), TSMC (572, 2.8%), Micron (357, 1.7%), Western Digital (150, 0.7%) and Toshiba (140, 0.7%).

Korean companies filed a great number of the applications relating to the sub-specialized element technology overall the fabrication processes from ‘design’ to ‘complete product’, whereas foreign companies having no production facilities in Korea filed a small number of the applications by selecting the ‘structural scheme’-focused technology.

In the US which is a ferocious battlefield of large-scale patent disputes, 58,838 patent applications were filed during the same period, which was about three times the number of Korean patent applications.

The companies which filed multiple US patent applications were SK Hynix (2,594 applications), Samsung Electronics (2,566), Toshiba (2,289), Micron (2,120), IBM (1,977), Western Digital (1,289) and Intel (1,008). In the relevant US applications, Korean companies took 1st and 2nd places, contending for the lead.
 

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KIPO held a presentation for policy trends of trademark and design systems to be newly changed in 2018 (News Letter No. 375)

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Searching patent information becomes easier and convenient (News Letter No. 373)