The Supreme Court ruled Conditions in detail for Doctrine of Equivalents

The Supreme Court of Korea ruled conditions in detail for the doctrine of equivalents in the patent infringement cases. (Supreme Court Decision on Aug. 21, 2001, Case No. 98Hu522, Nissan Kagaku Gokyo Kabushiki Kaisha vs LG Chemical Company) Although the Supreme Court has ruled the doctrine of equivalents as a base of recognition of patent infringement, it should be noted that the Court has detailed the conditions applied for the doctrine of equivalents in a concrete form to ruling of this case.

In the said case, the Supreme Court decided that in order for an accused product or method to belong to a scope of patented invention, an organic coupling relationship between each structural element of the patented invention should be contained in the accused product or method in its entirety. Even if a structural element in the patented claim is substituted or changed, the substituted constitutional element(s) of the accused product or method are thought to be on the equal relations with those of the patented invention such that the accused product or method still belongs to the scope of the patented invention under the doctrine of equivalents if the accused product or method falls into the following conditions:

(a) principles to overcome problems are identical to the patented invention;

(b) the same object can be accomplished as that of the patented invention by the said substitution and substantially same effect can be obtained; and

(c) the said substitution is obvious to a person having ordinary skill in the art to which said invention pertains.

However, the Court ruled that the doctrine of equivalents cannot be applied if the accused product or method corresponds to a prior art or can be easily conceived from a prior art by a person having ordinary skill in the art at the time of filing of patented invention, or if there is any special circumstance where the elements substituted are intentionally excluded from the scope of claims during the prosecution of the patent.

Furthermore, the Court also ruled that "a latter invention which exploits a former patent belongs to a right scope of the former patent if the relationship between them is just add-ons of new technical elements to the subject matter of the former invention by the latter invention and it is so constituted that the latter invention contains all subject matters of the former invention and uses all the subject matters of the former invention as they are".

With regard to the latter invention using catalyst, the Supreme Court decided that "integrity of technical construction in a manufacturing method patent, by adding a catalyst in chemical compositions producing method, that is, integrity of a series of organic combined relation for creating a particular object materials by adding a catalyst to a start material, is not regarded as being lost, such that even in a case where productivity is markedly increased by addition of catalyst, the latter invention is regarded as an invention which exploits the former patent", which made it clear that the latter invention infringes on the former patent.

It should be noticeable that the Supreme Court has precisely ruled a patent infringement case based on the doctrine of equivalents, and it is understood that this precedent will become one of the most important standards in discriminating a patent infringement by way of doctrine of equivalents, although it is inconvenient not to have clearly ruled a discriminating time of substitutability as to whether it is at the time of patent filing or at the time of committing an act of infringement. The present ruling is also noteworthy in that a latter invention utilizing a catalyst infringes on the former patent, which is the contrary to the precedent ruled by the Court.

Semiconductor Layout Design Right Registrable with only design drawings

On the 4th of October 2001, the Korean Intellectual Property Office (KIPO) announced in advance for legislation "an implementation regulation amendment draft on Semiconductor Layout Design Act" with a gist that a design right may be awarded with submission of only design drawings at the time of registration of semiconductor integrated circuit mask work right.

In order to obtain a registration of a semiconductor topography right, an actually-manufactured semiconductor chip or photographs of chip had to be submitted in the past. There is a disadvantage in the old way of registration in that manufacturing cost of chips was no less cheap such that except for already-marketed chips, registration of semiconductor layout design right was next to impossible.

The amended draft calls for submission of topography drawings worked on a computer stored on storage media such as CD or the like, instead of actual chips or photographs. As a result, it is anticipated that small scale semiconductor design houses, institutes, individuals can easily register semiconductor layout designs.

The Promoting Office of Semiconductor Circuit Layout in the KIPO said we cannot deny the fact that previous protection of semiconductor design assets has been centered on enterprises eligible for manufacturing semiconductors on their own capacity, and explained that, as the semiconductor mask works are being switched to small and medium industries, necessity has been heightened for protection of layout design drawings manufactured by institutes or individuals regardless of commercialization. The Office also explained as backdrop of the amendment that, even if semiconductor mask work drawings are not readily available for commercialization, layout right must be protected in general in consideration of risks that secrets of design assets might be leaked out. The draft is expected to take effect within this year through legal proceedings.

KIPO Criticized by National Assembly for Poor Examination

It was revealed that the KIPO had recklessly issued wrong decisions in examining patents applied by applicants, resulting in frequent filing of oppositions and appeals by applicants to the KIPO and the Intellectual Property Tribunal(IPT), and increasing rates in favor of the applicants.

An assemblyman, Mr. SeungMin Hwang indicated in the parliamentary inspection of the KIPO on the 12th of September, 2001 at the National Assembly Industrial Resources Committee that appeals against final rejections before the IPT are on the increase every year. Also winning ratios at the Patent Court are also increased per annum against the IPT's erroneous decisions. According to Mr. Hwang, appeal rate at the IPT was at about 30% level in 1999 while it has already reached a 29% level as of July this year.

The problem is that the winning rate at the Patent Court in defiance to decisions made by the IPT was upped from a 13% level in 1999 to a 21.6% level in 2000 and to a 36.5% as of now. He asserted that there are some problems in trial decisions at the IPT comprising examiners from the KIPO.

Another assemblyman, Mr. Hyuntai Shin berated by saying that oppositions to patent publication have reached 8,611 cases for the past three years among which 4,429 patents have revoked by the oppositions, which graphically shows that professionalism lacks in the patent examination process. Mr. Shin requested an appropriate measure to cope therewith, saying that one of the reasons of quality degradation in the professionalism results from frequent personal changes in the civil servant society.

In response to the assemblymen's indications, the Commissioner of the KIPO said that with regard to quality and speed, an everlasting dilemma of examination, inasmuch as examination speed has reached a certain level of advanced countries, the KIPO will exert to focus on improvement of examinations and quality thereof.

"StarTAC" and "STARTECH" are similar

The Supreme Court of Korea held that both marks of "StarTAC" and "STARTECH" are similar therebetween and the designated goods of "cellular phone" pertaining to "StarTAC" and "communication utilities for vehicle use" belonging to "STARTECH" are also considered similar, reversing the decision by the Patent Court (Supreme Court Decision on July 27, 2001, Commissioner of KIPO vs Motorola, Inc.)

Presented below is the summary of the original decision (Patent Court Decision on March 4, 1999, Case No. 98Huh9741):

(1) The cited mark "STARTECH" cannot be deemed to be an indivisible whole. It can be divided into "STAR" and "TECH" in which 'STAR' is an easy-to-understand word for general consumers and "TECH" is readily perceived as an abbreviation of "technical, technics, technique or technology". And, the rear portion "TECH" is descriptive, showing the quality or efficacy of its designated goods.

(2) Appearance-wise, the subject mark "StarTAC" can be separated into "Star" and "TAC" where "Star" is composed of upper case "S" and small cases "tar" and "TAC" comprises of all upper cases. "StarTAC" does not create any secondary meaning on its own when the two portions are combined.

(3) Furthermore, the "STAR/Star" portion in both marks is considered descriptive in connection with their pertaining class (local class 39) in which a lot of marks containing "STAR/Star" portion were allowed to be registered and coexist. Therefore, only the "TAC" portion of the subject mark can be considered as a main part which can be compared.

(4) Conceding that marks containing "TAC" such as "TABTAC, HYPERTAC, VISTAC, MINITAC, Y-TAC, ELTAC, ACETAC, KOSTAC, SPRINGTAC, STAC, AMTAC, HITAC" were all registered in local class 39 when the subject mark was filed for registration, TAC does not seem to be descriptive. In the above examples, TAC is a coined word which has no meaning and cannot be easily separated in which the forward part of each mark has only 1 through 3 short syllables. Consequently, the subject mark which has a descriptive part of "Star" and distinctive part of "TAC" and the cited mark comprised of only descriptive parts "STAR" and "TECH" are not similar therebetween.

(5) Though there are chances that both marks are phonetically confused in an abstract and typical point of view, the appellant, marketing flip-type cellular phones which bears "MicroTAC" in the Republic of Korea from 1988 through 1993, accounted for the lion's share of local cell-phone market, and has established itself as a renowned distributor with respect to the "TAC" portion which distinguishes itself from the other products. In addition to these, the designated goods of both marks are sufficiently differentiated in terms of their quality, distribution channel, and consumers. Ultimately, the subject mark and the cited mark are not liable to be confused each other as to their quality or origins even if both marks are used in the same market.

Against the above decision, the Supreme Court reasoned as follows :

As held in the above decision of the Patent Court, we the Supreme Court judges also hold that the "STAR/Star" portion of both marks and "TECH" portion of the cited mark are descriptive and only the "TAC" portion of the subject mark are recognized as distinctive. It is admitted that both marks are not similar in their appearance and meaning. In terms of phonetical point of view, however, they are considered extremely similar as the subject mark is pronounced [sta:rt k] and the cited mark is pronounced [sta:rtek]

Even though it is conceded that the applicant, marketing flip-type cell-phone bearing "MicroTAC", has accounted for the local cell-phone market to a considerable extent before filing the subject mark, the effects of the proposed fame of the "MicroTAC" shall not extend to the subject mark "StarTAC". Last but not least, it is not liable for general consumers in the Republic of Korea to be confused with respect to the origins of both marks if the both marks are used in the same market designating same or similar wares.