1. KIPO’s 2022 government work report
◈ Support to establish national technology development strategies is expanded by using IP data.
◈ An IP protection system suitable for the digital environments such as a metaverse, an AI, etc. is prepared.
◈ The three (3) examiner’s consensus consultation examination system is expanded to the core technology fields including semiconductors, vaccines, etc.
KIPO published the ‘2022 work report’ to excel to be a strong IP country, by leading the digital economy.
【Strategy 1】The creation and utilization of excellent IPs are to be promoted:
-Carrying forward digital growth strategies by using IP data
-Supporting the technology-based business start-up and growth by creating core and/or original patents
-Revitalizing the IP finance and promoting the IP transaction and commercialization
【Strategy 2】 The fair IP protection systems are to be constructed:
-Forming the IP protection systems to meet with environmental changes
-Supporting responses to domestic or overseas IP disputes
-Improving the enforcement of IP protection laws
【Strategy 3】 Trusted examination and trial services are to be provided:
-Providing high-quality examination and trials services
-Improving the quality of IP administration services
【Strategy 4】 The IP basis preparing for the future is to be formed:
-Strengthening local IP capacities
-Nurturing the IP professional manpower
-Expanding the global IP cooperation.
2. Amendments to the ‘Unfair Competition Prevention and Trade Secret Protection Act’ have been promulgated.
According to KIPO, amendments to the ‘Unfair Competition Prevention and Trade Secret Protection Act’ (hereinafter, referred to as the ‘Amendment Act’) were promulgated on December 7, 2021 and have been implemented in 2022. In the Amendment Act, an act of fraudulently obtaining and using data and an act of using the portrait or name of a famous person, without permission, are newly established as an act of unfair competition.
① The act of fraudulently obtaining and using data is newly established as an act of unfair competition.
As the capability of securing and utilizing data has been a core factor to influence the competitiveness of a company due to the advent of the data economy era, countries around the world have rushed to reorganize the data-related systems to adapt to their own circumstances.
In South Korea, opinions have raised to form an environment where data are freely used and distributed, by making reasonable compensation for the expense and effort which were taken for the data construction.
However, since if an exclusive right were given to data itself, the utilization of the data will be reduced and there will be a risk of hindering the development of the data industry which is still in the development stage, the Amendment Act newly establishes only the act of fraudulently obtaining and using data which have been accumulated and managed for the purpose of trade, as an act of unfair competition, so that a data holder can be protected.
In the future, when an act of fraudulently obtaining and using data occurs, it will be possible to request, in a court process, for prohibition against the action and it will also be possible to demand compensation if damages occur. Further, it is possible to request, at KIPO, for an administrative investigation so that relief, such as a recommendation for correction’ is available.
Specifically, criminal punishment (an imprisonment of up to 3 years, a fine of 30,000,000 Korea Won or less) is possible as to an act of neutralizing technical protective measures.
Relating to the revision to ‘the basic law relating to the promotion of data industry and use’ (October, 19, 2021) by the Ministry of Science and Technology (MST), this system improvement by KIPO is considered as a case of carrying forward the excellent collaboration and positive administration between KIPO and MST.
② The act of using the portrait or name, etc. of a famous person, without permission, is newly established as an act of unfair competition.
As the influence of the Korean Wave has expanded and the customer attraction of a portrait or name, etc. of a famous person has increased, illegal actions of use without permission have occurred. However, since the previous law had no explicit rules, it is difficult to protect it.
Opinions were raised to rapidly introduce the relevant law, by referring to the overseas cases from US, England and Japan, etc., which early recognize the property values, such as the portrait, etc. of a famous person and regulate the use thereof, without permission.
In line with the voices from the relevant industry, the Amendment Act newly establishes an act of using a portrait or name, etc. of a famous person, without permission, as an act of unfair competition, enabling the collection of damages based on the Unfair Competition Prevention Act.
In the future, when an economic benefit is infringed by an act of using a portrait or name, etc. of a famous person, without permission, it is possible to request, at the court, for prohibition against such an act of using it without permission and it will also be possible to demand compensation if damages occur. Further, it is possible to request, at KIPO, for an administrative investigation so that a remedy, such as a recommendation for correction’ is available.
3. A guideline of patent and trade secret strategies is published and distributed.
On December 22, 2021 KIPO announced the publication and distribution of a ‘guideline of patent and trade secret strategies (IP-MIX)’ (hereinafter, referred to as the ‘guideline’) to prepare the optimized technological protection strategies.
The guideline has been prepared to perfectly protect a R&D achievement by properly selecting and combining a patent and a trade secret, based on whether it is easy to imitate it, rather than to protect the R&D achievement by means of a patent or a trade secret.
A patent is for the exclusive use of its patented technology for 20 years, on the premise of disclosing the technology; whereas, a trade secret can be used in a secrete state, without a time limitation, if a holder of the trade secret is able to manage it as a secret.
As shown in the trial of infringement to a battery trade secret between LG Chemistry and SK Innovation, which was terminated at the beginning of 2021, a trade secret has been mainly used as the protection means of a new technology, especially, a process technology, and accordingly, an importance in the way of protecting it as a trade secret as well as a patent has been highlited.
The guideline compares and analyzes the pros and cons of a patent and a trade secret and it also lists the selection standards to be considered when selecting the technical protection means, such as a reverse engineering possibility, a problem upon publishing a technology, and management strategies, etc.
The guideline also includes a number of cases where a patent and/or a trade secret are selected or combined, focusing on that a concept can be easily understood and used in the research field.
In addition, reflecting on the situation where attention is focused on developing an mRNA vaccine concerning COVID-19, the guideline presents a method of protecting output by production process and the relevant system, so as to be referred to by a vaccine development company in establish technology protection strategies.
The guideline can be downloaded at the ‘COVID-19 patent information navigation (www.kipo.go.kr/ncov) and the IPO protection comprehensive portal (www.ip-navi.or.kr) at the KIPO homepage.
4. A patent analysis report on a non-mRNA vaccine is published and distributed
-The patent information analysis is provided by vaccine platforms, such as virus vector, synthetic antigen, DNA, etc.
On December 17, 2021, KIPO announced the publication of a ‘patent analysis report on a non-mRNA vaccine’ (hereinafter, referred to as the ‘report’), to assist Korean companies, universities and research institutes to develop COVID-19 vaccines. The report is provided in the patent information navigation (http://kipo.go.kr/ncov).
The report has been prepared to be of help to the researchers, who have worked to develop vaccines, in setting a vaccine research and development direction or in establishing a response strategy to a major patent, by easily understanding a platform patent of a previous non-mRNA vaccine.
KIPO published a patent analysis report of an mRNA vaccine in September 2021. In the report published in December, patents relating to 15 overseas vaccines which have been in global clinical trials have been analyzed by non-mRNAs (virus vector vaccine, synthetic antigen vaccine, etc.).
The materials as used show the features of each platform technology and the current state of major patents held by pharmaceutical companies. The recently published patents and the original core patents regarding COVID 19 vaccines are specifically analyzed by vaccine production processes.
Since the mRNA vaccines of the global pharmaceutical companies, such as Moderna, Pfizer, etc., have been rapidly supplied and the effects thereof have been highlighted, it is a fact that the public interest has been less in the vaccine platform technology which has been previously widely used like virus vectors or synthetic antigens.
However, since a non-mRNA vaccine has the distinct advantages that it has been verified with respect to the safety and side effects for a relative long time in comparison to an mRNA vaccine and it has been easily stored and distributed, KIPO explained that it is also important to support the development of a non-mRNA vaccine.
Mr. Jisoo KIM, director of the Patent Examination Policy Bureau of KIPO, who leading a ‘task force (TF) in patent support and response to current issues for a vaccine hub’ said, “while the situation gets serious because the Omicron modified virus has rapidly spread, securing a COVID-19 vaccine technology is a very important task.” He also added, “since most Korean companies have focused on the development of a non-mRNA type vaccine, the patent analysis report on a non-mRNA vaccine is expected to contribute to the establishment of R&D strategies of these Korean companies and further this report is expected to be a priming in securing a vaccine sovereignty.”
In the future, KIPO will share the results of analyzing the patents relating to non-mRNA vaccines with Korean companies, universities and public research institutes, through an online/offline patent analysis presentation, and listen to the opinions from the relevant fields.
5. A metaverse to be opened with a patent
-The number of game-related patent applications has rapidly increased around the convergence technology.
KIPO analyzed game-related patent applications filed in IP5 (South Korea, US, Japan, China and Europe). As a result, the number of these applications increased by an annual average of 16% for the last 5 years (2015~2019).
Such an increase is considered due to the market has been changed to a storm of a first-person shooting game, such as “Overwatch”, and a mobile game, such as multiplayer role playing game represented by “Lineage”, beyond “League of Legends”.
Especially, the number of game-related patent applications which are connected to the convergence technology was about 200 by 2015 but were 440 in 2016 and 629 in 2017, showing an increase of 2~3 times or more and then steadily maintaining an increase.
This is understood as the results shown after the relevant industry’s competition to secure an IP right has been intensified since 2016, together with the progress of virtual and augmented reality games, such as “Pokémon Go” and the metaverse platforms, such as “Zepeto”, have been released one after another.
The number of patent applications for the game-related patent technology increased in all of IP 5 including South Korea. The number of the game-related patent applications filed with KIPO increased in 2019 by 1.3 times, compared to 2011. The number of the game-related patent applications filed with the China National Intellectual Property Administration (CNIPA) rapidly increased by 9.9 times.
The number of the game-related patent applications filed with CNIPA passed the number of the game-related patent applications filed with USPTO, with respect to the games connected to the convergence technology in 2016 and the entire games in 2017.
This means that Chinese game manufacturers give priority to the capital strength and have set out to aggressively secure IP rights.
Major applicants of multiple applications are Sony (2,923 applications), Konami (2,393) and Tencent (1,754). The companies having strength in games and information and communication technology are considered as positively setting out to secure patent rights.
The number of the patent applications filed by the Korean national representative game companies, 3N (Nexon, NC soft, and Netmarble), which have gather into the metaverse content business, has rapidly increased by 3 times or more since 2016, through the IP management systems.
The release of “Project MOD” by Nexon, “Universe” by NC soft and the establishment of “Metaverse Entertainment Inc.” by Netmarble are expected to increase the number of patent applications related to the convergence technology to realize a metaverse-linked game.