1. KIPO published 「Intellectual Property and Innovation」 No. 7.
- This academic journal includes domestic and overseas IP issues, such as the creation of industrial designs using an image-generating AI, etc.
To improve people’s interest and understanding in IP, KIPO published the 7th 「Intellectual Property and Innovation」, which is an academic journal discussing precedent cases, domestic and overseas policy trends and major issues in the IP field.
「Intellectual Property and Innovation」 has been published once per year to share updated information of IP issues and to actively communicate with experts from industry, government and academia, and stakeholders to discuss current policy challenges.
This 7th journal includes those that have become hot topics recently: ▲ creation and an industrial design using image-generating AI and the related IP right issues, ▲ infringement of IP right regarding digital content, ▲ introduction plan on interior design protection, ▲ issues on idea protection ways, ▲ patent term extension system according to permission, etc., ▲ conflict problems between the Unfair Competition Prevention Act (Item L) (stealing other’s achievements) and the IP Act, and ▲ Japanese sustainable development goals (SDGs)-related policy trends, etc.
This 7th journal also includes: ▲determination of the order of applications of a selective invention, ▲ case analysis of determination whether a design subject to be exception of lack of novelty and a design filed in an application are the same, ▲ interpretation of a connection (connecting phrase) in a claim, ▲case law trends on crystalline form inventions, ▲ procedures and methods to determine whether to conform to main purpose, and ▲ in-depth research results of determination of requirements for writing an application for bio medical products, etc., focusing on precedent cases of the Korea Patent Court and Supreme Court and the overseas cases.
2. The revised 「Unfair Competition Prevention Act」•「Patent Act」 have been fully operated from August 21, 2024.
① When stealing a technology (patent, trade secret, idea), punitive damages are up to 5 times.
② When stealing an idea, KIPO directly issues a corrective order and imposes a fine upon non-compliance of the corrective order.
③ A fine for a corporation is strengthened by 3 times, and upon trade secret infringement, even its manufacturing facility is confiscated.
④ A damage or deletion of a trade secret by hacking, etc. is punishable.
From August 21, 2024, the limit of punitive damages relating to an act of stealing a technology is strengthened from 3 times to 5 times, and the commissioner of KIPO is able to issue a corrective order regarding an act of unfair competition, such as an act of stealing an idea, etc. In the case of failure to comply with corrective orders, a fine is imposed up to 20,000,000 Korea Won.
According to KIPO, these revised 「Unfair Competition Prevention and Trade Secret Protection Act」 (hereinafter, referred to as the ‘Unfair Competition Prevention Act’) and 「Patent Act」 went into effect on August 21, 2024.
<① As to technology theft, a punitive damage is up to 5 times.>
The limit of punitive damages is strengthened from 3 times to 5 times, to raise awareness as to technology theft acts (acts of stealing a ▲ patent, ▲ trade secret and/or ▲ idea). This is a measure to improve the vicious cycles wherein the perception that it is more profitable to ‘copy a technology’ than to own a patent or trade secret, etc. by developing the technology has become widespread and wherein more and more damaged companies have been giving up on lawsuits since even though they won the lawsuits, the damage amount was not sufficient from the perspective of the victim companies.
The quintuple punitive compensation is the highest level even when it is compared domestically and internationally. For a trade secret, in US which strongly protects technologies, the maximum amount of punitive compensation is twice as much. To date, China is the only country to offer the quintuple compensation.
<② As to an unfair competition act, such as an act of stealing an idea, etc., KIPO directly issues a corrective order.>
KIPO directly issues corrective orders against unfair competition acts, such as ▲ an act of stealing an idea in the technology transaction processes by business proposal, bid or contest, and/or ▲ publicity right infringement by using, without permission, the name, portrait or etc. of a famous person.
Previously, KIPO could conduct an administrative investigation regarding an unfair competition act, etc. and when a violation act was recognized, KIPO could recommend a corrective action. However, since a corrective recommendation is literally just a recommendation and has no enforcement power, there was a limitation that it was difficult to prevent an unfair competition act from continuing.
This revision is expected to rapidly stop the continuing technology theft situation by overcoming the aforementioned limitation and securing the effectiveness of administrative remedies. When a corrective order from KIPO is not carried out, a violator is subject to a fine up to 20,000,000 Korea Won.
<③ A fine for a corporation is strengthened up to 3 times, and in case of trade secret infringement, the infringing products and the manufacturing facilities thereof are confiscated. >
Considering that a corporation’s participation rate in a crime of trade secret infringement and a crime of violating an unfair competition prevention act is relatively high, a fine for the corporation is strengthened up to 3 times the fine imposed on an offender, to control a corporation’s act of trade secret infringement and act of unfair competition.
In addition, regulations are newly introduced to confiscate not only the product(s) infringing a trade secret but also the relevant manufacturing facilities, thereby blocking, in advance, secondary damages due to the reproduction, etc. of the infringing product(s).
<④ A damage or deletion of a trade secret by hacking, etc. is punished.>
New regulations are established on an act of damaging, losing or changing a trade secret. Damage or deletion of a trade secret by hacking, etc., which takes place outside the scope of traditional trade secret infringement acts, such as unlawful acquisition, use or divulgement, etc., is punishable by the unfair competition prevention act.
Anyone that damages or deletes a trade secret for dishonest purposes is punished more heavily by an imprisonment for up to 10 years or a fine up to 500,000,000 Korea Won.
3. KIPO published 831 ‘similar product names’ which are acceptable when filing a trademark application in addition to publicly announced names.
- Since a registration of a trademark is delayed or rejected when a product name is not acceptable, an applicant’s attention is required.
KIPO updates a list of 831 similar product names which are registerable in addition to the publicly announced names. This is expected to be of help in improving an applicant’s convenience by preventing a delay in registration of a trademark due to a mistaken in description of product names.
When filing a trademark application, an applicant should describe which products the trademark is to be used. In this regard, the applicant should describe the names of products (publicly announced names or similar names) which are acceptable under the Korean Trademark Act. When the product names are not accepted, since the registration of a trademark may be delayed or rejected due to an error in describing the product names, an applicant needs to be careful.
A total of the updated similar product names is 831 under 43 classes. These are the names which examiners have considered as being acceptable through a number of reviews by reflecting the amendments to the announcement and the latest transaction status, etc. even though these are not publicly announced names.
Only the publicly announced names, for example, ‘티스푼’ (Korean transliteration of ‘teaspoon’), ‘곤충수집통’ (insect collection container) , etc. were previously, acceptable, however, after the renewal of similar product names, the similar names, such as ‘찻스푼’ (in Korean, a small spoon used to scoop or stir tea), ‘곤충포획기’ (insect catcher), etc. are acceptable.
The list of similar product names has been viewed by several hundred cases every month since it was published in October 2023. In July, over 1,200 views were recorded, showing that it has been receiving high response from individual applicants. KIPO plans to provide a service by updating changes every year in order to respond to applicants’ continued interest.
4. ‘KIPO-LG AI Research’ upgrade patent examination with AI.
- KIPO and LG AI Research held a presentation of AI utilization strategies.
- The two reviewed an AI technology applicability by patent examination field and established a plan to applying AI technology.
- The two plan to fully carry forward an AI technology demonstration and research project from the second half of this year.
KIPO and LG AI Research held a presentation of AI utilization strategies to support patent examination. Based on these strategies, the two organizations plan to actively start a technology demonstration and research project, to build an AI patent examination system.
To support patent, trademark and design examination work, last year KIPO established the ‘roadmap for AI utilization patent administration innovation (‘23~’27) and built the very large AI language model specified in patent administration, together with LG AI Research.
This time presentation was arranged to share the process and results of deriving the utilization strategies to use the patent-devoted language model which was built and the latest AI in the patent administration and to discuss future promotion content and cooperation matters.
These utilization strategies present the fields which AI is applicable during patent examination and the specific application methods. These also serve as a compass that indicating the direction and the scope of the AI technology demonstration and research and development project. Examiners of KIPO and technical and consulting experts of LG AI Research participated in the process of establishing the utilization strategies.
Specifically, the process of establishing the AI utilization strategies forms of ▲ patent examination procedures and patent information system analysis results, ▲derivation of patent examination fields needing AI support and review of AI technology applicability by field, and ▲ detailed AI technology application plan to realize features by patent examination field.
Based on this presentation, KIPO and LG AI Research will fully carry forward the AI technology demonstration and research project from the second half of this year, to verify performance and effectiveness of the AI technology to be applied to patent examination and to build, step by step, patent examination environments using the optimal AI technology.
5. Information on damages due to overseas counterfeit products of K-trademarks (brands) is viewed easily.
- KIPO reorganized the ‘K-brand protection website’ to prevent damages due to overseas counterfeit products (August 12, 2024).
- The relevant website newly introduces the functions of: visualization of information of damages due to the distribution of counterfeit products, and search of information of trademarks occupied without permission.
The ‘K-brand protection website’ is fully operated, where you can see, at glance, information of Korean companies’ damages due to the distribution of overseas counterfeit products of Korean trademarks (brands).
KIPO newly opens the ‘K-brand protection website’ which has provided information such that Korean companies are able to prevent and prepare for damages due to the preoccupancy of trademarks without permission overseas.
KIPO has provided the K-trademark (brand) protection-related information through the K-brand protection website’ since 2022. However, there was an opinion from companies that the website ‘lacked the functions of visualization and search of information’. To improve these, KIPO has ① visualized information such that damages due to the distribution of counterfeit products can be easily viewed by foreign country and it has ② greatly strengthened the function such that a company can directly search the information on damages due to the preoccupancy of a trademark without permission.
<① Visualization of information on damages due to the distribution of counterfeit products of K-trademarks (brands) by country and by online platform>
Small and medium companies with relatively small business size have had difficulties to respond to overseas counterfeit products due to a number of reasons, such as absence of dedicated personnel, burden of response costs, lack of information, and language barriers, etc., even though damages from counterfeit products actually occurred.
To solve these difficulties of small and medium companies, KIPO improved the relevant website such that the information of damages due to the distribution of counterfeit products of K-trademarks (brands) can be understood, at a glance, by the various forms, i.e., by country, or by online platform, etc.
KIPO additionally provides a way to report counterfeit products by overseas major online platform, thereby seeking to strengthen a response capability so that a company itself is able to block counterfeit products.
<② New introduction of self-search function of information of suspected unauthorized preoccupancy of a trademark>
KIPO also newly adds the function of ‘searching information on suspected unauthorized preoccupancy of a trademark such that a company is able to directly search the information regarding its own damages, thereby improving the efficiency and convenience in providing information. Therefore, the relevant company is able to often check the status of damages, and its active response is expected to be possible.
KIPO has checked the ‘information of suspected unauthorized preoccupancy of a trademark’ since 2017, starting with China, and continued to expand the target countries to Vietnam, etc. around South East Asia including Vietnam, etc. However, during the process of delivering the information of suspected unauthorized preoccupancy to a separate damaged company by mail or e-mail, there were limitations in delivery since in some cases reception was difficult due to changes in company contact person or address.
The director of the Intellectual Property Protection & International Cooperation Bureau of KIPO stressed, “as consumption of K-trademarks (brands) has continued to increase globally, it is very important to provide constant information such that companies are able to take the initiative to prepare for the K-trademark (brand) disputes.” The director also said, “we will do our best for the improvement of the convenience of companies and their response capabilities by continuing to strengthen the functions that companies need in the future.”
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