The Supreme Court Sets an Important Precedent Concerning the Description Requirements of the Pharmacological Effects of a Patent

The Supreme Court of Korea recently held that a pharmaceutical-related invention, which requires the disclosure of pharmacological effects, shall be recognized as a complete invention only if the specification includes experimental data supporting the described effects or specific descriptions substantially equivalent to such data, so long as there are no exceptional circumstances, e.g., where the pharmacological mechanism of the described effects is already specifically known prior to its filing date. [In re Pfizer, Inc., Supreme Court Decision, 2001Hu65, November 30, 2001].

The originally filed specification of the above case describes the method for indirectly measuring the pharmacological effect of the claimed chemical compounds and the general range of IC 50 of the entire chemical compounds. However, it does not contain any specific experimental result for supporting the pharmacological effects of the individual chemical compounds.

The Examiner in charge of this case issued an preliminary rejection based on the indefinite description. The applicant thereafter filed an amendment by adding the values of IC 50 for the individual chemical compounds which were provided in the examples of the present invention.

The Patent Court originally held that "the amendment of adding the specific experimental results, expressed as quantitative numeric values, which supports the pharmacological effects of the present invention, made the present invention complete. That is, the amendment added a new signigicant technological matter into the specification to objectively support the pharmacological effect, resulting in a substantial change of the invention. Therefore, the amendment shall be rejected under the old Patent Act article 51, paragraph 1, since the amendment changed the gist of the specification."

The Supreme Court affirmed the judgment of the lower Patent Court and held that "generally, a person of ordinary skill in the art can easily implement an invention relating to the field of mechanical apparatus even though the specification lacks examples of the implementation.

However, in the field of chemistry, also referred to as experimental science, it is hard to implement or predict the effects of the invention, although it varies on the complexity of the invention. Therefore, if the specification lacks experimental data, the chemical invention cannot easily be implemented by a person of ordinary skill in the art and be considered complete as an invention.

In particular, if the specification includes experimental data to support the described effects or descriptions substantially equivalent to such data, so long as there are no exceptional circumstances, pharmaceutical-related inventions shall be regarded as complete and meet the description requirements of the specification; a subsequent addition of such data by amendment to the originally- filed specification alters the gist of the specification."

The above holding of the Supreme Court sets a precedent and establishes an important guideline concerning the description requirements of the pharmacological effects of a patent.

New Business Venture to be Established at National and Public Universities

In order to promote research and development at national and public universities, the National Assembly recently amended the Patent Act and the Technology Transfer Promotion Act (TTPA) to allow national and public university professors greater control in their discoveries. With the new laws to become effective as early as June 2002, Seoul National University will be the first of its kind in Korea to pave the road to becoming the first national university to establish its own business venture, which will entitle them to exclusively control and manage its faculty members patents.

Under the current laws, faculty members at national and public universities must transfer their intellectual property rights to the government, which then holds and obtains the rights to the patents. As a result, professors at national institutions were given little incentives to produce patents which inevitably would reach the hands of the government. This is evidenced by the fewer number of patent applications and registrations compared to the private universities and government-assisted institutions, which led to many accusations that research and development by national and public university professors were not protected as patents.

The revision of the patent laws will enable the national and public universities to manage its professors inventions with greater flexibility and facilitate the technological transfer of its patents via an exclusive legal entity or a business venture. In addition, the amendment will allow the national and public universities to reinvest the profits generated from their patents back into their research and development fund and provide greater incentives to its faculty members by compensating them for their works.

Seoul National University, one of the premier educational institutions of Korea will take charge of this opportunity by taking exclusive control of its faculty members patents by establishing a business venture, strictly geared to promoting the research and development of technology. This business venture will take the form of a corporate body which will manage the whole gamut of activities relating to patent filings obtained from the professors research and discoveries. In effect, the revisions of the patent laws will not only facilitate the transfer of their technology know-how with more ease to the industrial sector, but it will also help the nation become globally competitive.

Korea Ranked 8th in PCT Applications in 2001

The Republic of Korea finally joined the worlds top ten in the number of international patent applications filed via the PCT in the year of 2001.

According to statistics compiled by the WIPO, Korea filed a total of 2,318 PCT (Patent Cooperation Treaty) applications, moving the nation up in the rankings from its 11th spot (1,514 PCT applications filed) from the previous year to number 8.

The United States remained in first place with 43,000 applications, followed by Germany (13,616), Japan (11,846), UK (6,233), France (4,619), Sweden (3,502), and the Netherlands (3,187). Canada and Switzerland followed Korea with 2,030 and 2,011 filings, respectively.

International patent applications by way of the PCT passed the 100,000 application mark for the first time in history due to a 10% annual increase of filings from the previous year. China and India doubled their PCT filings for two consecutive years, with 1,670 applications (188.4 % increase) and 361 applications (102.6%), respectively, the fastest growths among the 115 signatory countries. Experts predict China to quickly climb the charts and make its way into the top ten by next year.

War of the Roses - Going Once, Going Twice, Sold

The Seoul High Court held that the Korean Agricultural and Fishery Marketing Corporation infringed the trademark of Kordes GmbH, a German seedling company, and awarded the latter 4.9 Million Won (approximately US$37,700) in damages.

The Court recognized that the Korean companys (auctioneer) unauthorized use of the name Red Sandra, owned by Kordes, in an auction for roses, constituted trademark infringement, even though the use of the mark by the Korean auctioneer was meant only to identify the auctioned goods.

The German company brought suit based on its 23 Korean trademark registrations, all of which are rose names, to prevent the Korean company from infringing its rose trademark.

Trademark Rift brew Between Renault-Samsung Motors and BMW

A trademark dispute between Renault Samsung Motors Co., Ltd., a Korean motor company, and BMW, a German motor company, is likely to escalate into a lawsuit in the Republic of Korea. BMW contends that Renault Samsung's new product "SM3," scheduled to be launched late this year, is confusingly similar to BMW's series of trademarks.

BMW's passenger cars are serially identified as 318, 325, 520, etc., according to their respective engine displacement (3, 5, 7, sequence). BMW has a variety of trademarks registered all over the world in accordance with these combinations. The company acquired trademark registrations in the Republic of Korea for the series 518, 520, 525, etc. after a bitter dispute with Renault Samsung in 1999.

As a result, Renault Samsung was only able to obtain a trademark registration of "SM5". Renault Samsung's passenger cars for export are further restricted to "SQ5"; "SM5" cars are prohibited outside of Korea. BMW once acquiesced with Renaut for the 518 and 520 sequence to be used by Renault Samsung as the cars had already been on the market. However, BMW made itself clear by saying that "although we had no choice but to approve the use of 'SM5', we are compelled to bring a lawsuit against Renault Samsung when they dare to commence using 'SM3'."

Against BMW's allegation, Renault Samsung refuted that BMW was trying to extend their marks too far and contended that "as long as the SM series are registered in Korea, we find no obstacles ahead in using 'SM3' in Korea."

New Attorneys

Our firm has expanded to include one new attorney-at-law and three patent lawyers, whose profiles are provided below:

Mr. Jeong-Kyu Lee (Patent Attorney)
* Bachelor of Electronic Engineering from Seoul National University
* Obtained registration as a Patent Attorney in 1999

Mr. Howard H. Chung (Foreign Legal Consultant)
* Bachelor of Arts in Art History from the University of Virginia
* Juris Doctorate from the Benjamin N. Cardozo School of Law, Yeshiva University
* Former Trademark Examining Attorney at the United States Patent and Trademark Office (2000-2001)

Ms. Su-Jin Suh (Patent Attorney)
* Bachelor of Clothing & Textiles from Seoul National University
* Course work in University of Massachusettes at Lowell (major in Polymer Science)
* Master of Clothing & Textiles from Seoul National University (major in Textile science)
* Obtained registration as a Patent Attorney in 2001

Mr. Seung-Jin Kim (Patent Attorney)
* Bachelor of Genetic Engineering from Korea University
* Master of Biological Science from Korea Advanced Institute of Science and Technology (KAIST)
* Obtained registration as a Patent Attorney in 2001