Improvements of Examinations of Korean Patent/Utility Model Cases

KIPO (Korean Industrial Property Office) has recently announced statistics with regard to applications and examinations of Korean patent/utility model. Table A shows that periods of examinations on applications, appeals and trials have been shortened by over 8 months on an average in the light of statistics in the year of 1994. Examination results for applications in 1998 have been increased by more than 2.2 times than those of 1997. (Table B)

It is also disclosed that man power in examining applications, appeals and trial cases has been continuously augmented. (Table C) An annual examination achieve- ment per examiner has been increased as shown in Table D.

The KIPO cites Tables E through I as evidence that supports an improvement in quality of examining capability.

According to Table E, it appears that the number of appeals against final rejections has been ecreased. Table F shows ratio of success in appealing at the side of requesting parties. Table G is ratio per year during last five years that patent oppositions have been concluded in favor of opponents. Table H is ratio of success in appealing before the Korea Patent Court against decisions of the Patent Trial Board. (During the period from 1994 to 1997, the Appellate Trial Board of KIPO handled the second instance. Now, the Korea Patent Court handles it as from March, 1998.) Table I shows ratio that the Korea Supreme Court has reversed decisions made by the lower court, the Korea Patent Court.

The KIPO analyzes that backgrounds of the above improvements base on increases of examining personnel, outsourcing of search for prior patents/utility models, computerization of administrative system in the relevant fields.

The KIPO keeps groping for unification of examination by ways of drastic contraction of technical scope to be reviewed by each examiner, amendment of patent examina- tion guidelines relating thereto, etc.

Table A : Examination Periods of Patent/Utility Model Applications and Appeals and Trials(A and T), base on completion date (unit : month)

Table B : Examination Achievement (unit : number of case)

Table C : Number of Examiners

Table D : Number of Cases Handled by Each Examiner

Table E : Ratio of Appealing against Final Rejection (unit : %)

Table F : Ratio of Success in Appeals against Final Rejection at the side of Requesting Parties (unit : %)

Table G : Ratio of Success in Patent Oppositions at the side of opponents (unit : %)

Table H : Reverse Ratio by the Patent Court to Decisions of Patent Trial Board (unit : %)

Table I : Reverse Ratio by the Supreme Court to Decisions of Patent Court (unit : %)

Time limit for raising a suit before the Patent Court extends upto 60 days

It is expected that rights for Patent, Trademark, Utility Model and Design will be further redeemed as time limit for raising a suit before the Patent Court is extended from erstwhile thirty days to sixty days to a maximum.

In consideration of the fact that Korean nationals living in a mountainous area or a far remote hinterland and foreigners can hardly take an action within thirty days from a date a decision is received from the Patent Tribunal, the governmental office announced that a time limit for raising a suit has been prolonged according to an enactment known as "operational guide of time limit for action".

The new guideline calls for allowance of extra time limit for action upon request of a demandant within a framework of not more than twenty days for natives and of not more than thirty days for aliens, such that a suit can be maximally filed within sixty days from a date a decision is received from the Patent Tribunal.

PRECEDENT ANALYSIS

Continual Decisions of Invalidations against Marks Imitated with Bad Faith

Punishments are handed down one after another against pending and/or registered marks imitated from famous trademarks in Korea as well as in overseas.

According to the KIPO, a mark known as "CASPER", which was registered and used as from 1993 on kinds of stationery, has recently been invalidated through a decision on trial by the Korea Patent Court. The ground of invalidation is that the mark was imitated from a protagonist's name of a famous cartoon in the United States which had been published since 1960.

The Korea Patent Court has also decided to invalidate a mark of stylized "nr", which was seemingly copied from a famous mark of Japan and of Italy and another similar to "KRIZIA" originated from Italy.

These decisions are noticeable as they conflict with precedents set by the Korea Supreme Court, before establishment of the Korea Patent Court. On October, 1997, the Korea Supreme Court reversed a decision of the KIPO that a mark "MUSSO" for goods of clothes was not registrable because it was identical with a prior trademark for cars in the name of a Korean leading motor company. At that time, the Korea Supreme Court upheld that the latter "MUSSO" mark deserves to be granted a registration because it can be distinguished from the former mark for cars due to difference of designated goods.