I. Revised Korean Intellectual Property Acts to be implemented in July 2001

Revised drafts to Patent, Utility Model, Design and Trademark Acts were passed by the National Assembly on January 9, 2001 for implementation from July 1, 2001. Major contents of the Revised Acts are as below.

In the Patent Act, an invention disclosed on Internet is further included as being considered unpatentable, and contents and procedures of amendment on patent application are drastically revised. In other words, an applicant is allowed to voluntarily amend same at any time prior to receipt of an office action after the application is filed, thereby expanding the time scope of amendment.

Allowed amendment scope in the patent application according to the previous Act stipulates "an amendment on an application to the extent that it does not change the gist of the application". However the Amended Act calls for "only an amendment of any specification, claims or drawings within a scope originally attached to the first specification, claims or drawings in the patent application", making the amendment more strict. In other words, no new matters are allowed. Furthermore, the amended provision prescribes that only narrowing of a claim is allowed in response to a final rejection.

New clauses are created to relieve a right nullified by non-payment of patent annuity and to make it easy to prove calculating damages against patent infringement. Namely, in case a patentee or exclusive licensee claims compensation for damages from a person who has intentionally or negligently infringed a patent right or exclusive licensee, the damages shall be presumed to be the amount of quantity sold by an infringer multiplied by profits according to cost accounting of the right holder. Also in the amendment, a trial for correction is made not to be requested in the midst of the patent invalidation trial. Request for correction of a patent is however allowed in the proceedings of invalidation trial to thereby promote a speedy completion of the invalidation trial. Some provisions equally applicable to the Utility Model Act are also revised in the same manner as those of the Patent Act.

Design regarding part of an article was not protected according to the prior Act as it is not an object of independent trade and lacks property of an article. However, part of an article is protected in various countries, such that definition of design is amended to define the shape, pattern or color or a combination of these in an article which produces an aesthetic impression in a sense of sight, where the article includes an article in part.

Also in the new Design Act, an indispensible shape for obtaining a function of an article is stipulated as not an object of protection, thereby to be excluded therefrom.

In the Trademark Act, new provisions are enacted in preparation for entrance to Madrid Protocol regarding procedures before national office, procedures before designated office, renewal of term for trademark right based on international registration, special cases of effect on trademark right registration based on international registration and re-application. Provisions regarding the Madrid Protocol will be enforced when Protocol is effected in Korea. Also registration of trademark is allowed even for a conspicuous geographical name which has accumulated good will to gain a distinction as a result of long time use of the trademark prior to application for registration. Furthermore, an applicant of a trademark may warn a person in writing who uses same or similar published trademark and if he or she keeps using the trademark even after the warning is given, the applicant may request a payment of compensation.

II. Examination Guideline Revised for products from Human Genome Project

As a result of publicity of initial Human Genome Project(HGP), and in order to cope with possible increase of the number of applications regarding the HGP products and mass genetic information, the KIPO (Korean Intellectual Property Office) has partially revised an Examination Guideline on the Genetic Engineering of the Biological Engineering field which has been in force since March of 1998. The new guideline has been effective as from January of 2001. The main points thereof are as follows.

With respect to the industrial availability, the standard for judging usefulness thereof is further clarified. That is, a DNA fragment invention intended merely as a probe for obtaining a full length DNA or a SNP (single nucleotide polymorphism) invention for a mere use in medicolegal evaluation is considered lacking usefulness. However, if a relation between an invention and a disease, and use of the invention for diagnosing the disease are experimentally verified, the invention may be regarded as having a usefulness.

With respect to requirement on inventive step, a full length cDNA determined to be a gene of a specific protein only through a homology test result cannot be principally considered having an inventive step. Besides, reflecting recent cases relating to bioengineering invention, a gene(or protein) invention may be claimed along with its mutant by confining its effect and scope of the mutant, if only example of the mutant is included in the specification. In particular, a protein which cannot be specified by its sequence may be claimed if only its function, physico-chemical property, origin and preparation are all described.

Monoclonal antibody invention shall be claimed by specifying its antigen and hybridoma in principle, while it can be exceptionally allowed to be specified only by its antigen as far as the antigen is novel and has an inventive step.