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Title

An IP dispute from court litigation to dispute mediation.(News Letter No. 496)

Author 

KH

Post Date 

2023-01-16

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1. An IP dispute from court litigation to dispute mediation.

From 2023, it is possible to resolve the disputes related to intellectual properties including patents, trademarks, etc., trade secrets, unfair competition acts, which are received in the Seoul Central District Court (SCDC), through the committee for mediation of disputes over intellectual property rights.

KIPO, SCDC and Korea Intellectual Property Protection Agency (KIPPA) signed a business agreement having the main point that a court-connected mediation is operated, to develop and activate a mediation system.

With this agreement, among the cases received in SCDC, SCDC connects a case which needs an IP expertise and is appropriate to solve by mediation to the committee for mediation of disputes over intellectual property rights, and this mediation committee forms a mediation department consisting of experts by IP fields to proceed with the mediation procedures.

In the event that mediation is established through the procedures, huge litigation cost and time to bear when continuing litigation are able to be saved.

Additionally, the above three agencies agreed to mutually and positively cooperate when educating a member of the mediation committee and to share the mediation-related information and materials.

The commissioner of KIPO said that it was significant to conclude the business agreement with SCDC which has received and processed the most IP cases and she expected many more IP dispute cases to be rapidly solved through mediation.

The president of SCDC said that he expected the people directly involved to obtain rapid and satisfied results through the professional mediation committee and both the court and KIPO would have an important opportunity to accumulate know-how to solve IP disputes.

The president of KIPPA expected that the mediation system in the IP area would be more activated through this business agreement, and he also said that KIPPA operating the secretariat of the mediation committee of disputes would fully support the mediation committee to be smoothly operated.

The mediation committee of disputes over IP rights was established in 1995 by KIPO, to support the disputes such as IP rights (patent, trademark, design, utility model), an employee’s invention, a trade secret, an unfair competition act, etc. to be rapidly and economically solved.

In the case where a request for mediation is filed, since the result of mediation by an expert is available within 3 months, this system has gotten a lot of attention from an individual and a small/medium company under difficult economic conditions.



2. Classification of goods to which a design is applied has changed from 2023.

- The criteria for classification of goods of designs, such as a mask for blocking droplets, some cosmetics containers, etc., has changed.

According to KIPO, since the design goods classification criteria including some goods, such as a mask for blocking droplets, has changed from January 1, 2023, an applicant needs to be aware when filing a design application.

This is in line with the official operation of the 14th edition of Locarno Classification from January 1, 2023, reflecting the results of the ‘15th meeting of experts of the Locarno International Classification to prepare the international standards of industrial design goods classification.

Since the criteria of some goods has changed, those goods change as to whether they are subject to an application for registration of a partially examined design. In this regard, particular attention is required when filing the application.

The subjects of an application for registration of a partially examined design are the goods, belonging to Classes 1, 2, 3, 9, 11 and 19. Whether to grant a right is determined within about 1 month.

For example, a mask for blocking droplets has changed from Class 2 (partial examination) to Class 29 (examination) and the examination period thereof becomes longer to about 7~8 months. However, a lipstick tube as a packaging container has changed from Class 28 (examination) to Class 9 (partial examination), so that the examination period is expected to be shortened to about 1 month. In this regard, advance preparation needs to be taken so that there will be no problems in a design application strategy.

If an application does not describe goods based on the changed goods classification, this may add a procedure of issuing a notice of request for submission of an argument relating to a correction of goods classification.

The changed classification criteria have applied to applications filed since January 1, 2023. The 14th edition of Locarno Classification and the list of goods by classes have been published at the KIPO website (www.kipo.go.kr) from January 1, 2023.



3. IP investment supports the leap of innovative companies.

The Financial Services Commission (FSC) and KIPO jointly held the 4th IP financial forum.

This forum proceeded with the subject on activation of IP financial investment. About 100 participants of this forum included the vice-chairman of FSC, the commissioner of KIPO, and business people of investment agencies, banks, guarantee agencies, invention rating agencies and companies interested in IP investments.

The Korean government has activated IP finance and made efforts for small and medium companies and venture enterprises, etc. lacking material security or lacking credibility so as to secure business funds by using IP.

As a result, in 2021 the Korean IP finance exceeded 6 trillion Korea Won for the first time and a total of 5,565 small and medium companies and venture businesses, etc. could secure business funds by utilizing IP.

However, the proportion of IP investment was only 14% compared to the total IP finance. Moreover, the situation is that the investment conditions of IP have deteriorated, with the constriction of the investment market due to the domestic and abroad economic environmental changes, such as the global constriction, high price, high interest rate and high exchange rate, etc.

In this regard, this forum was held to seek a plan to activate the IP investment by sharing the best IP investment cases and to listen to experts including finance agencies and companies, etc. in diverse fields.

Specifically, the discussion was related to the operability of an IP account of Korea Fund of Funds, the best IP investment cases from a venture investor (Venture Capital), financial investment through strategic IP management, and securing a corporate growth engine, etc.

The vice-chairman of FSC said that IP finance would be good means to sprout an innovative company which is able to grow as a future global unicorn and FSC would make diverse efforts to support an additional arrangement of the ‘technology financing fund’ forming more than 900 billion Korea Won by 2022, to supply an assessment model of technology for investment, and to advance the IP valuation technique, etc.



4. An online patent trial service becomes smarter.

- KIPO carries forward the construction of a ‘digital patent trial system’ in 2023.

KIPO announced that it would carry forward a project to build a ‘digital patent trial system’ to advance a trial system for the 3 years starting 2023.

For the 3 years (2023~2025), 11 detailed assignments are to be carried forward in a total of 4 areas including the advancement of service to the public, advancement of trial formality, strengthening of support for trial judgement, and strengthening of trial infrastructure.

In the first year, 2023, a total of 4.5 billion Korea Won is to be input for improvement concentrating on the service to the public and the judgement method work.

The major contents to be carried forward are as follows:

First, support is provided to make it easier to make trial documents and to submit evidence.

When making trial documents, the relevant information owned by KIPO is to be automatically input by connecting to KIPO’s database. A function to check in advance any defect in the documents is provided.

In addition, video evidence, which could not be previously submitted, is able to be submitted online. A function of attaching proof documents which have caused inconveniences is also to be improved.

Further, since an unintentional error in input is to be prevented, a rejection of an amendment or a request for trial due to a defect in documents, etc. is to be reduced.

Second, a function of delivering and viewing online documents is to be improved.

It is possible to deliver online large-capacity documents, which were delivered by mail. A period to receive documents at the relevant portal site (https://www.patent.go.kr), is to be improved to receive at all times from 4 days.

An online case search function is to be improved to enable to check a document at the relevant portal site (https://www.patent.go.kr), without a request for reading the document, even though a period (90 days) of keeping a notice has passed or the documents have been mailed.

Therefore, the mailing cost is expected to be reduced and a patent client’s convenience in reading documents is also expected to increase.

Third, trial formality work is to be automated by applying artificial intelligence (AI) technology.

Trial formality work is to check whether about 130 kinds of trial documents have a defect in formality. In this regard, since the types of attached documents to be submitted in an image file are various, whether such a defect is present or not has depended on the examiner’s examination by eyesight.

KIPO will automate the formality examination by AI and optical character recognition (OCR) technologies in automatically recognizing and extracting the information required for the formality examination from the image of an attached document.

When the AI technology is applied, the trial formality work is expected to be remarkably reduced. In the future, the AI technology is also expected to be expanded and applied to the formality work in the application and registration areas.



5. Bloated cloud is solved by edge computing.

- The number of patent applications for a new edge computing-based cloud increased by 3.5 over 10 years.
- Amid the great competition between the US and China, the growth rate of Korean patent applications ranked number two in the world.

As the cloud service using the Internet of Things (IoT) technology has been generalized, the amount of data to be processed by a cloud server has geometrically increased. As an alternative to solve the limit of the server, ‘edge computing’ to distribute and process some data at a user terminal has risen.

Unlike the previous cloud service processing all data in a central server, edge computing is a technology to process data at the periphery (edge) where data generate, such as a sensor, a user terminal, etc. Edge computing enables real-time services by decreasing data load and response time. This is used in autonomous driving, immersive service (AR/VR) and smart factory/farm, etc.

The edge computing market has grown by 45% every year and it is expected to be 4.85 billion dollars in 2027 and the technical competition thereof has become intense so much.

According to KIPO, the number of patent applications relating the edge computing-based cloud technology, which were filed with KIPO by the major IP5 countries (Korea, US, Japan, China and Europe), increased by 3.5 times (from 1,033 to 3,659) over the last 10 years (2011~2020).

By the nationality of an applicant, US had the most applications, 40.8%, (8,228 cases), China 35.5% (7,175), Japan 5.8% (1,169), Korea 3.8% (776) and Germany 3% (602).

The increase rate of the applications filed by Korea was 15%, an annual average, showing a second high growth following China (35.2%). From this, it appears that Korean research and development investment in the edge computing area has been very active.

From the view of the major applicants, 1st was Microsoft (2.3%, 460 applications), 2nd Apple (2.1%, 427), 3rd Intel (1.9%, 387), 4th Meta (1.5%, 295), 5th Google (1.4%, 281), showing that big US information technology companies swept the top ranks.

Among the Korean applicants, Samsung filed the most applications (1.2%, 250), followed by LG (65), ETRI (38), Xavisnet, venture company, (15).

By detailed technical area, 7,322 applications were filed in the immersive service area, such as virtual reality (VR) and augmented reality (AR), 7,309 in the manufacturing and farming industry, 5,666 in the communication protocol area, 2,231 in the AI learning model area, and 273 in the autonomous driving.

It is notable that the number of the applications relating to an AI learning model has increased by 49% on annual average. In this regard, the edge computing market based on AI is expected to rapidly grow in the future.
 

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