1. A movement to integrate a new patent information standard (ST.96)

 

A movement to integrate a new patent information standard (ST.96) is active centering on Korea and the U. S. A.  Information user convenience will expand thanks to standardization of data related to intellectual property (IP) that is different from country to country.  Whether countries including those in Europe that have been using the existing standards would participate is a matter of concern.

 

The KIPO announced that Korea and the U. S. A., among the major five countries in which patent applications are filed for intellectual property (IP), started to apply the ST.96, which is a new standard format.  The ST.96 is a standard which is provided with more detailed guidelines and data exchange unity than the data formats ST.36 (applied in 2004), ST.66 (applied in 2007) and ST.86 (applied in 2008) that were different from country to country.

 

 

2. There has been a sharp increase in the use of a business secret source certification system that prevents technology leakages

 

Company A, which was involved in business secret infringement litigation against foreign companies last year, had a hard time because it could not prove its own technology (business secret) that it has developed as a result of many years of effort.  A business secret refers to a production method or knowhow  such as the method for manufacturing Coca-Cola.  Protection is ensured by filing an application for a patent, but if it is difficult to file a patent application for a technology that cannot be easily imitated by other companies or the defense industry, it may be kept as a business secret.  But since it is hard to prove the existence of a business secret, a company like Company A could be in a difficult situation if other companies raise law suits or make infringements on the business secret.  Company A recently began using the business secret source certification service of the KIPO to protect its own technology.  This service certifies the fact that a business secret has been held since the point of time at which it was registered.

 

3. Government-owned patent may be paid for after it is used

 

The KIPO announced on the 22^nd that the procedure of disposition will be improved to a ‘free use before paying’ system and it will be implemented from the coming October for the transfer of government-owned patents to the private sector and activation of them for business purposes.  Government-owned patents are rights of duty invention filed and registered by civil servants in the name of the government and are currently more than 3,300 in number.

 

At present, if a private enterprise wants to use a government-owned patent, it should pay first a license fee equivalent to the estimated amount of sales.  So a company may be reluctant to use a government-owned patent as the initial operating expenses including the licensing fee could be a burden to the company.  A pay-later system is to reduce the burden of the initial operating expenses for small-and-medium businesses and provide a rational payment system for the benefit of the company using the patent.  The company will pay only the license fee according to the actual quantity of sales within three years after the term of the contract is expired.

 

4. A government-led IP evaluation system to be built

 

The government will improve the intellectual property (IP) evaluation system for technologies and patents.  IP transactions will be activated by the integrated building of a database of technological transactions between public organizations.  A government budget support policy will also be established to reduce IP financial risks.  The Presidential Council on Intellectual Property held a ‘consultative meeting of organizations related to IP technology evaluation’ at the Korea Technology Center and voted for public institution DB integration.  The consultative meeting is a follow-up action relating to the scheme of enhancing the reliability of evaluating agencies, which includes building the standardized IP valuation system, joint utilization of the DB, and introducing a quality control system, that were discussed at the second ‘IP valuation financial policy consultative meeting’ held last month.  However, IP financing such as obtaining secured loans from the financial world is not easily achieved because of low evaluation reliability.

 

5. Exporters to China hampered by China’s reinforcing utility model rights

 

As China reinforced the exercise of utility model rights to protect their businesses by a great deal, a number of Korean businesses are harmed.  The utility model right was designed to protect an art at a ‘design’ step of an idea that is apt to die out compared with an ‘invention’ that has the patent right protected.  Unlike Korea, China implements a no-examination system whereby a utility model is registered without an examination process once it is filed for application.  Although registration is very easy, there is a high possibility of  later becoming embroiled in a dispute. 

 

It was confirmed on the 22^nd that the damage to Korean businesses that have advanced into China, such as receiving warning notices with regard to infringement on IP rights and being embroiled in law suits, is snowballing as China engages in IP policies about not only technology patents but also utility model rights. 

 

6. Supreme Court sentence 2013.5.24 2011 HU 2015 judgment

[Rejection decision (PAT) suit for cancelling the judgment]

 

[Decisions]

 

[1] The criteria for novelty judgment of an invention, in the case that the invention in which the range of components is expressed by numerical limitation is different in whether or not there is numerical limitation or only within an existing range, compared with the invention known publicly before filing the application.

 

[2] In the issue in which the KIPO examiner made a rejection decision for reasons including the one that the application invention has novelty denied by the compared invention, regarding the patent application of the application invention titled “A Sputtering Target and Transparent Conduction Membrane”, it was ruled that there is illegality of misunderstanding the legal principle relating to novelty judgment of the numerically limited invention in the original judgment, in which it was nevertheless regarded differently, despite that the application invention has novelty not denied by the compared invention.

 

[Summary of Judgment]

 

(1) In the case that numerical limitation has significance as a technical means for attaining a task different from that of the publicly known invention and its effect is extraneous, or in the case that a marked difference of effect occurs inside and outside the range of limited numerical values compared with the publicly known invention, the numerical range cannot be deemed to be disclosed specifically in the publicly known invention, and further, the numerical limitation cannot be deemed to be no more than a well-known and commonly-used means that can be properly selected by those skilled in the art.

 

(2) Since not only the numerical range cannot be deemed to be specifically disclosed in the compared invention but also the numerical limitation cannot be deemed to be no more than a well-known and commonly-used means that can be properly selected by those skilled in the art in the technical field to which the invention belongs, it was ruled that there was illegality of misunderstanding the legal principle relating to novelty judgment of the numerically limited invention in the original judgment, in which it was nevertheless regarded that technical configuration was substantially identical to that of the compared invention and novelty was denied, despite that the application invention has novelty not denied by the compared invention.