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Intellectual Property (IP) systems to be newly changed in 2020(News Letter No. 425)

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KH

Post Date 

2020-02-03

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1.Intellectual Property (IP) systems to be newly changed in 2020

-Enforcement of the systems to protect S/W sent online and to file an application by a mobile device
-Reduction of the fees of requesting a preferential examination of a patent application filed by a startup and expansion of the subject for a preferential trial with respect to materials‧parts‧equipment

The Korean Intellectual Property Office (KIPO) published the IP systems to be newly changed in 2020, including the enforcement of online sending software (S/W) protection and the introduction of a system of filing a trademark application by a mobile device, etc.

The IP systems to be changed in this year are focused on ▲ supporting an early right of the 4th industrial revolution technology, ▲ increasing the convenience of people using IP services, ▲ supporting innovation growth of IP-based small‧medium‧venture companies, etc.

1-1. Support of an early right of a new technology in the 4th industrial revolution field

ㅇEnforcement of online sending S/W protection: Previously, only the S/W patents which are stored and distributed in recording media (CD, USB, etc.) are subject to protection. However, under this new system, S/W patent protection is enforced regardless of distribution process (effective in March 2020).

ㅇExpansion of the subject for a preferential trial to materials‧parts‧equipment companies: The subject of a preferential trial expands to a trial for invalidation and a trial for confirmation of scope of right wherein a materials‧parts‧equipment company is the party directly involved (effective in January 2020).

ㅇExpansion of the subject for a preferential examination of a design application: The subject for a preferential examination expands to an application for a design using technology, such as Artificial Intelligence (AI), Internet of Things, etc., relating to the 4th industrial revolution. (effective in January 2020).

1-2.Increase in the convenience of people using IP services

ㅇImprovement of an electronic filing system of an application: A filing system is built to make it possible to file a trademark application by various terminals such as a smart phone, etc. The 24-hour receiving time of an application has been available on the weekdays and Saturdays but will be expanded including Sundays. (scheduled to be available in March 2020)

ㅇReal-time process of a partial examination of a design application: A substantial real-time of an examination is shortened (from 60 days in 2019 to 10 days in 2020) by sharply shortening the entire examination period. (effective in January 2020)

ㅇSimplification of the formality of submitting a patent‧utility model application: Previously, when an application is filed, the application (specification) must be submitted in accordance with the fixed forms. However, under the new system, a thesis‧research note, etc. can be submitted as it is, without edition. (scheduled to be available in February 2020)

ㅇReinforcement of utilization of patent classification: The reinforcement of industrial utilization of patent classification is supported by providing, in the website of KIPO, the linked information between “National Standard Classification of Science and Technology – Patent Classification” and “Korean Standard Industrial Classification – Patent Classification”. (effective in January 2020)

1-3.Support of innovation growth of IP-based small‧medium‧venture companies

ㅇReduction of the fee for requesting preferential examination of a patent application filed by a startup: When preferential examination is requested with respect to a patent application filed by a startup, the fee for requesting the preferential examination is reduced by 70%, from 200,000 Korea Won to 60,000 Korea Won. (schedule to be available in January 2020)

ㅇReduction of a patent registration fee of a patent of a small and medium company having an IP secured loan: When a bank holds a patent of a small and medium company having IP finance, such as an IP secured loan, the registration fee of the patent is reduced by 50%. (schedule to be available in January 2020)

Strengthening of a global IP start company growth: KIPO will supply intensive support to a local promising export company in the field of locally-specialized industrial technology, to strengthen the growth of the global IP startup company. (effective in January 2020)


2.KIPO publishes a ‘patent infringement prevention guide for small and medium companies’

According to KIPO, the ‘patent infringement prevention guide for small and medium companies’ is published to prevent small and medium companies from infringing another’s patents and any resulting disputes. This guide includes content for these companies for taking proper action when a dispute occurs.

As the ‘triple compensation system’, wherein anyone intentionally infringes a patent, (s)he must pay the compensation up to 3 times the amount of damages, has been in operation since July 9, 2019, companies should be very careful not to infringe another’s patents.

But, since no precedents or clear judgement bases from the courts are available for the intentional infringements due to the initial stage of implementation of this system, small and medium companies lacking IP specialists have experienced difficulties in preventing patent disputes and coping with the disputes in accordance with the changed system of compensation of damages.

Therefore, last year KIPO operated the research service regarding the judgement bases for intentional infringement and produced the patent infringement prevention guide for small and medium companies, based on the research.

This guide includes ▲ requirements for triple compensation and matters to be considered when calculating the amount of compensation, ▲ bases for judgement on intentional infringement from domestic and overseas cases including Taiwan and US, etc. ▲ tips for countermeasures upon receipt of a warning notice ▲ necessary information, such as KIPO’s support program guidance, etc., for prevention and countermeasure of disputes, etc.


3.KIPO strengthens examination of an application for a trademark, such as famous others’ names and characters, through an analysis of trademark trends

When a trademark application is judged as having an unjustifiable purpose to obtain an economical profit by piggybacking the credit of others though a trademark preoccupancy, KIPO announced to a more strengthened examination of such a trademark application.

According to the current Korean Trademark Law, when a third party not related at all to a user of a trademark files an application for a trademark using a name, such as well-known idol group, popular You Tube or character, etc., the trademark is rejected on the ground of Article 34 (1) ⑥ (namesㆍdesignations of famous others) ⑨ (well-known trademarks), ⑪ (eminent trademarks) ⑬ (unjustifiable purpose) of the Law.

In past, KIPO rejected the applications which were filed, without permission, for trademarks, '소녀시대', ‘동방신기’ and ‘2NE1’, which are idol group names. KIPO also rejected the applications for trademark, ‘뽀로로’ (which is a famous character name) and ‘무한도전-토토가’ (which is a broadcasting program name), since those that were not related at all to the trademark users filed the applications.

To apply fairness of examination to the applications for trademarks by free-riding or using illegally, from this year KIPO announced to further strengthen the examination of trademarks through the program of analyzing trademark trends, so that trademark examiners can in advance share information of the terms which have high possibility of being preoccupied as trademarks.
 

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KIPO held a presentation of trademark and design system trends in 2020(News Letter No. 426)

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The Commissioners’ meeting of KIPO, CNIPA and JPO is held in Kobe, Japan(News Letter No. 424)