Examining guideline formulated for E-commerce related Invention

The Korean Industrial Property Office (KIPO) formulated a new examining guideline for E-commerce related invention for application on examinations of patent filing as from August 1, 2000. The guideline has defined the E-commerce related invention as "an invention related to a method conducting business and its business method being embodied by computer technology for conduction on the computer in use of various fields such as E-commerce, finance, business management, eduction, entertainment and the like on Internet". The E-commerce related inventions are embodied by computer technology to therefore belong to computer related inventions in principle such that examiners should abide by "examining guideline of computer related invention" for cases not mentioned in the examining guideline for E-commerce related invention when examinations regarding E-commerce related inventions are made.

The said guideline gives a definition about scope of claims, entering requirement of detailed description of an invention, inventiveness of invention, nonobviousness discriminating method and the like. With regard to writing requirement, the guideline says that detailed description of an invention should clearly state object, construction and effect for a person having ordinary skill in the relevant technical field to easily embody the invention and detailed description about "embodied technique where business method is carried out on the computer" should list a concrete construction in enableable manner.

As for inventiveness discrimination of an invention, the guideline specifies that

ⅰ) the invention should be rejected for lacking inventiveness in case a conventional business method is deemed to be embodied by way of a conventional automated technique,

ⅱ) in case a conventional business method is deemed to be embodied by a new technique surpassing a conventional automated technique in view of a technical level in time of filing, the method cannot be rejected due to lack of inventiveness, and ⅲ) in case a new business method is deemed to be embodied with a new constructive element, the method cannot be rejected due to lack of inventiveness.

The KIPO also amended a related Act as from July 1, 2000 for an E-commerce related invention to be favored with a preferential examination. A preferential examination can be requested for a patent application of E-commerce related invention after the publication of application or application of early publication with respect to the E-commerce related invention, where a patent can be granted within six months at the earliest after the preferential examination is applied.

Amended bill on Unfair Competition Prevention and Trade Secret Acts

1. Purpose of amendment

As a preparatory stage for entering into a Trademark Law Treaty(TLT), items to be implemented by the Unfair Competition Prevention Act and Trade Secrets Act, and international rules on trademark dilution prevention are being studied for reflection thereto, and imperfections exposed in the course of law implementation are to be complemented.

2. Main points

1) Behavior of wrongly using distinctiveness or fame of famous trademark even though confusion is not raised with the famous trademark, or behavior of damaging or diluting a mark in an unjust method is ruled as unfair competition behavior to plainly reflect the contents of WTO/TRIPs regulations and WIPO's famous trademark protection criteria and to facilitate to solve confliction between internet domain name and trademark as an effect therefrom.

2) A case is additionally regarded as being a type of unfair competition behavior where an agent or a representative, or a former agent or a former representative use a trademark same as or similar to the registered trademark of a trademark right holder on goods same as or similar to the designated goods of the trademark without due consent from the trademark right owner, thereby complying with the Paris Treaty, Article 6-7-2.

3) Use of flag and emblem belonging to member states of TLT is prohibited on an equal treatment of the member states of TLT as allies of the Paris Treaty, and penal provisions are provided for violations thereof, implementing duties of TLT.

4) A division is made in degree of responsibility between the existing unfair competition behavior and the newly added dilution behavior to hold a person or a legal person responsible for damages and restoration of credit in case of deliberation in violation of the dilution rules.

5) Estimating method of damages is to be improved to easily proceed damages claim suit so that right of the infringed can be effectively relieved for further protection of industrial property rights.

6) Other imperfections found in the implementation of related laws are to be supplemented.