Announcement of Revision of Korean Patent and Utility Model Law

Korean Intellectual Property Office ("KIPO") has announced that Korean Patent Law and Utility Model Law will be revised within this year to accelerate prosecution of patent and utility model applications and to harmonize related regulations with international standards; some details of which are as follows:

An applicant may voluntarily amend his/her application ahead of a first rejection to the application as long as no "new matter" is added. If any new matter is appended in the voluntary amendment, it will constitute a basis for rejection of application. Under the present Patent or Utility Model Law, the voluntary amendment is allowed within 15 months from a priority date if "gist" of the application is not changed by the amendment. Change in the gist of the application can be a ground for rejection of the amendment.

In order to accelerate a prosecution, the number of total rejections will be limited to a certain frequency, which is not yet determined, though. The preferential examination system will be so changed as to allow an application to apply therefor even if it is not laid-open. Only a laid-open application has been allowed to request a preferential examination so far. As for other changes for expediting the whole process in the procedure of Correction Trial, publication of a corrected patent and opposition against the corrected patent are due to be abolished. While an Invalidation Trial is pending, a request for Correction in the procedure of the Invalidation Trial will be allowed instead of a request for new Correction Trial. A Trial for Invalidation of Correction will be disused, and an Invalidation Trial will be allowed on the basis of illegal correction of an issued patent.

Technical information open to the public through the Internet will be regarded as being legitimate "prior arts" for rejecting patent or utility model application.

One utility model application can include a group of articles contained in one patent application, so that the subject matters of a patent application and a utility model application can be the same in order to increase usefulness of Double-Application system(under the Double-Application system, inventions on articles may be filed as both patent and utility model applications for fast enforcement.). In order for proper protection of a utility model right holder, a "Presumption of Negligence" will be applied to an infringer of a utility model right on which a Decision of Maintenance is made in Technology Evaluation procedure.

KIPO has planned to hear from related government officials on this revision bill, hold a public hearing after review by the Revision Committee and submit this bill in September, this year to the regular session of National Assembly.

《PRECEDENT》

Trademark "DECOSHEET" to be finally decided to be descriptive

Decision by The Supreme Court of Korea Invalidation Trial Case No. 99HU154 (Nov.12,1999)

As to whether a mark falls under Art.6-1-(3) of the Korean Trademark Act prescribing that descriptive mark cannot be registered due to its lack of distinctiveness, such elements as quality, effectiveness, use, situation of the distribution channel of the goods should be objectively taken into account. Only the mark intuitively perceived in its meaning should be considered descriptive, save for the mark whose meaning can be only understood by and after a deliberate consideration and a consultation with dictionary.

The trademark registration "DECOSHEET" is accounted as descriptive when used with regards to decorated appliances. When the mark is used, on the other hand, with respect to goods not directly applied to decorated material other than the decorated appliances, the mark is liable to mislead or deceive consumers as to the quality of the goods. The consumers may consider the goods as not being just a general sheet but a decorative sheet.

《Personal Profiles》

Kim, Jung & Co. have great pleasure to have a new patent attorney, Mr. Sewon Kim, as from December 1, 1999 and a new partner, Mr. Kwonhee Lee, as from February 1, 2000 to provide better services to our clients.

Mr. Kwonhee, Lee (partner)
* Former representative patent attorney at Bae, Kim and Lee
* Qualified as patent attorney in 1987
* Bachelor of law from Dankook University

Mr. Sewon, Kim (patent attorney)
* Qualified as patent attorney in 1999
* Bachelor of Electrical Engineering from Seoul National University