Adoption of double application system for Patent and Utility Model

 (Exclusive right exercisable within 6 months after filing)

  As from July 1, 1999, amendments to the Korean Patent Act and Utility Model are enforced to allow an owner of an invention to apply simultaneously for patent and utility model protection, and exclusive right can be exercised within 6 months after filing. If both rights are granted, the applicant must choose one to use. The amendments are very good systems for applicants who want an early exercise of rights, especially for those in small and medium industries and private inventors in and out of Korea. However, there is a drawback in that an effective right of utility model cannot be obtained on method patent, chemical components and the like as protected objects of Korean Utility Model Acts are limited to the shape, structure or combination of industrially usable articles. The amendments are applied to filings lodged after July 1, 1999 and those filed before this date are not allowed the dual application system.

In order to obtain a registration of utility model under the old Utility Model Act, substantive requirements necessary for registration such as novelty, inventiveness and the like of the design have to be all furnished for substantive examination by examiners at the Korea Industrial Property Office (KIPO). However, as from July 1, 1999, registration of utility models is allowed without the substantive examination based upon a mere formal examination. Since utility model rights are granted rapidly, the term of protection is cut to 10 years from the application filing date. The old term was 15 years from the filing date. This system of utility model registration based upon the mere formal examination allows applicants to secure a right very quickly and then let them later "upgrade" to a better form of protection.

To protect against the exercise of unqualified utility model rights, the Act has created procedures for a post-registration opposition. The Act also requires a KIPO examiner to provide a technical evaluation of each registered utility model upon request of the registrant. This technical evaluation has to be presented by the right holder to any alleged infringer before the right holder could exercise his or her rights on the utility model. Now, a utility model is registrable within 3 months from the filing date. The amended Utility Model Act will enable examiners to concentrate examinations on patent applications away from examinations of utility models, thereby substantiating examinations of the patent applications and markedly shortening examination periods thereof.

Referring Method of Claims extended

An amendment to Implementing Decree for Patent Law has been enforced as from July 1, 1999. Under the old decree, no definite regulations were available regarding reference of one dependent claim to two or more independent claims, and patent application of such case was frequently rejected by examiners in the KIPO. According to the amendment, it is stipulated that one dependent claim can refer to two or more independent claims. The amendment also deleted the old decree Art. 5-3 which says "A dependent claim shall be described in as many numbers as possible necessary for restricting, adding or embodying an independent claim or other dependent claim". Some of the examiners have rejected dependent claims having a little different restricting matters as substantially redundant claims and as described in more numbers than are necessary. However, rejection by reason of redundant claims constitutes a lame excuse and runs against precedents made by the Supreme Court, which has lead an abolition of the article.

The amendment has made the referring methods of claims in Korea similar to those of Japan and Europe. Only difference is that the Korean amendment still prescribes that "any dependent claim referring to two or more claims ("multiple dependent claim") cannot refer to other multiple dependent claim."

"OCEAN FAMILY" Considered as Similar to "FAMILY FOOD CO., LTD."

The Korea Supreme Court (KSC) has dismissed an appeal to the final rejection against a mark of "OCEAN FAMILY" that was based on the similarity to a prior mark of "FAMILY FOOD CO., LTD., with Korean characters". (Issued by Dept. No. 3 of KSC on Dec. 23, 1998 - Case No. 97HU3470)

According to the decision, the judges at KSC have decided that the subject mark "OCEAN FAMILY" is confusingly similar to the cited mark "FAMILY FOOD CO., LTD., with Korean characters" in terms of concept and pronunciation even though they can be obviously differentiated therebetween in appearance. Detailed grounds of the above decision are as below:

Part of "FAMILY" in the subject mark is easily separated from the remaining portion because the word, "OCEAN" is superposed by the word "FAMILY". Whereas, in the cited mark, the same word of "FAMILY" is also more conspicuous than other part of "FOOD", which is descriptive in connection with the designated goods such as cuttlefish and fish salami, etc. and "CO., LTD.", which are indistinctive. Therefore, both the subject mark and the cited mark may be read only as "FAMILY" and thereby confusions might be raised when they are co-used in the market places.

AN UNREGISTRABLE MARK OF "B.S. GREEN"

The KSC has also decided that a mark of "B.S. GREEN" filed in the field of compound fertilizers and manganese fertilizers, etc., which affect characteristics of soil, may mislead consumers. (Issued by Dept. No. 1 of KSC on Dec. 22, 1998 - Case No. 97HU3029)

According to KSC, a mark, which may confuse consumers with regard to quality of goods, as defined in Art. 7-1-11 of the Korean Trademark Act, means that composition of that mark may induce consumers to misunderstand its designated goods to have different characteristics from its original purposes. And consideration of a mark to cause such an inducement should be standardized by a generally accepted idea in the field of trading and commerce.

Meanwhile, the applied mark "B.S. GREEN" in this case has a term of "GREEN" as a main part and designates kinds of fertilizers, which may affect natural environment of soil. Given the above, in case this mark is used for goods, which are not related to an anti-polluting action, consumers might be misled into accepting that goods under this mark are helpful in protecting the natural environment. Therefore, it is reasonable that this mark is finally and affirmatively rejected pursuant to Art. 7-1-11 of the Korean Trademark Act.