1. Reducing the examination period for a patent application related to the COVID-19 vaccine to a maximum of one year

The Korean Intellectual Property Office announced on June 22, 2021 that it would designate a patent application in the field of a novel coronavirus infection (COVID-19) vaccine as an accelerated examination for one year from June 23, 2021.

This is to support rapid patent acquisition by prioritizing the patent examination for COVID-19 vaccine technology developed or related to production in Korea.

Accelerated examination is for patent applications related to COVID-19 vaccines that have received national support and patent applications for vaccine companies that are producing or preparing for clinical trials, etc. Vaccine companies are Samsung Biologics, SK Bioscience, Celid, Genexine, Jinwon Life Sciences, and Eubiologics.

By an accelerated examination, a patent examination can be performed within two months. Compared to the general examination, the time required for the examination can be shortened by up to one year.

As of the end of May 2021, 16 patent applications for COVID-19 vaccines by domestic companies that are currently undergoing clinical trials have been confirmed. If domestic vaccine development accelerates with government support in the future, it is expected that the number of applications will increase significantly.

2. Introduction of the design 'New Korean Classification System'... Increasing the predictability of securing rights

The Korean Intellectual Property Office announced on June 30, 2021 that from the 1st of next month, the design classification system will be completely converted to the 'New Korean Classification System (LUC)' based on the Locarno International Classification. Korea has adopted the Locarno International Classification as an official classification system since July 1, 2014 due to the enforcement of the international design application system following the joining of the 'The Hague Agreement on International Registration of Industrial Designs' and has been using it in the filing stage. However, domestic classification with high search efficiency has been used in the examination stage to determine whether or not to grant rights to the applied design.

As a result, the classification system was divided into the application of the international classification product range at the application stage and the application of the domestic classification product range at the examination stage. Accordingly, the Korean Intellectual Property Office developed an advanced New Korean Classification System (LUC) by integrating domestic classifications with excellent search efficiency based on the international classification system subdivided into 'Class' and 'Sub-class'. By applying LUC, individual designers and companies can judge whether an article is similar to the same standard as the Korean Intellectual Property Office examiner in the process of preparing a design application, thereby increasing the predictability of securing rights.

3. 'Buldak', which was registered as a trademark, was recognized as a spicy chicken dish, so trademark infringement was not recognized

The Korean Intellectual Property Office announced on the 8th that careful management of trademark holders is necessary to prevent trademarks from becoming commonly used marks. commonly used trademarks refer to a phenomenon in which a specific person's trademark is freely used by other companies or consumers in the industry, and as a result, the trademark becomes so famous that it refers to the product itself. If this happens, the trademark can no longer indicate whose the product is, and it can lose its value as a trademark, and even if the trademark is registered, it may not be able to claim trademark rights.

For example, Buldak was a 'brand' (trademark) registered as a trademark in 2000. However, as it gained popularity in 2004, people began to recognize Buldak as a spicy chicken dish itself, but the trademark owner did not actively respond. Afterwards, in a trademark dispute, the court ruled that Buldak was already widely recognized as a name for cooking and became a commonly used mark, so other companies using Buldak did not infringe on the trademark.

In addition to Buldak, Choco Pie, Magic Block, Dry Ice, App Store, and Yo-yo (toys) are mentioned as examples of commonly used trademarks.

In order to prevent this, the trademark right holder must promptly claim the prohibition of trademark infringement or, if necessary, claim compensation for damages caused by the infringement if another person uses the trademark as a brand name without permission. When consumers or the media use a trademark as a product name, it is also important to inform the fact that this name is a trademark and a separate product name through continuous publicity.

4. Reinforcing U.S. Trademark Use... Unused trademarks cancelled

From December 27, this year, the amended trademark law that strengthens the principle of use in the United States will come into effect. It is expected that it will become more difficult to secure and manage the trademark rights of Korean companies. The US Patent and Trademark Office (USPTO) is collecting opinions for two months to prepare detailed enforcement rules ahead of the enforcement of the revised Trademark Act. This revision was intended to prevent manipulation of evidence of use as if it was a trademark in use by introducing a system that further strengthens the principle of use.

Looking at the main contents, a new trademark cancellation and re-examination system has been established so that anyone can easily request cancellation to the trademark right holder who has registered a trademark and does not actually use. Cancellation is possible even with the authority of the examiner. A third party may submit to the examiner evidence that the trademark has not been used during the examination period, and the examiner shall decide whether to use the submitted evidence within two months.

Furthermore, in trademark infringement litigation, the Trademark Act stipulates that, in the event of trademark infringement, irreparable damage to the trademark owner is presumed, the trademark right holder can more easily obtain an injunction of prohibition of use. In addition, the period for responding to the U.S. Patent and Trademark Office's provisional refusal notice has been changed from six months to a period from 60 days to six months depending on the case.