Korea Ranked Third in Terms of Patent Registrations Around the World

According to a recent report published by the World Intellectual Property Organization (WIPO), Korean nationals filed 73,378 patent applications in the year 2000, the fourth most, preceded by Japan, the United States and Germany, with 388,879, 175,582 and 78,754 patent applications, respectively, in that order. In terms of patent registrations, Korea ranked third in the world with a total of 22,943 patent registrations. Japan led the group in this category with 112,269 patent registrations, followed by the United States with 85,071.

In terms of per capita or population per unit, Korea ranked second with 16 patent applications per 10,000 nationals. Japan reigned in this category with 31 patent applications per 10,000 nationals. Germany, the United States and the United Kingdom followed with 10, 7 and 6 patent applications filed per 10,000 nationals, respectively.

Patent applications filed within a nation comprise those filed by nationals as well as foreigners. The number of patent filings by foreigners is an indicator of strong foreign capital investment related to a particular technology, while the number of patent filings by nationals is an indicator of R&D activity within the concerned country.

Counting only the number of foreign patent registrations within a particular country, the United States headed the list with 72,425 patent registrations, followed by the United Kingdom (29,586), France (26,101), Germany (24,684), Japan (13,611) and Korea (12,013).

Korea and China to Promote Joint Prior Art Search System

The Korean Intellectual Property Office (KIPO) and the Chinese Patent Office agreed, as of September 2002, to promote a joint prior art search system for patent applications filed simultaneously in Korea and China. Discussion between the Commissioners of the two Offices was initiated in April 2002 and resolved around August 2002.

The joint prior art search program will be conducted based on independent prior art searches of relevant technical fields and then shared by the two countries.

This program was similarly instituted by the Japanese Patent Office (JPO), the United States Patent and Trademark Office (USPTO) and other patent offices of developed countries in Europe and has been ongoing since 1993. The KIPO and JPO also launched a similar program in 1999.

The promotion of the joint prior art search between the KIPO and Chinese Patent Office reflects a trend in increasing patent applications between the two Offices and a need to minimize the work load and shorten the examination period of patent applications.

Patent Court Allows Additional Reference Material to Support Previously Cited Prior Art

The Patent Court recently upheld the Intellectual Property Tribunal‘s (IPT) decision in allowing the panel of trial examiners of the IPT to cite additional reference material that wasn’t presented during the examination process. Decision No. 2000, Huh 5490. The petitioner asserted that the citing of the new reference material was inappropriate, but the Patent Court held that the additional reference material merely supported the prior art presented during the examination stage.

The Korean Intellectual Property Office (KIPO) refused to grant a patent for the subject invention on the ground that claim 6 of the invention, relating to a pharmaceutical compound having an anti-diabetic effect, was previously known in the cited prior art. The applicant contended that its invention was inventive over the cited prior art in that claim 6 of his invention contained only an (S) enantiomer, an isomer capable of producing anti-diabetic effects.

The applicant petitioned the IPT to review the examiner‘s decision of refusal. The panel of examiners upheld the examiner’s decision and cited additional reference material in support of cited prior art. The petitioner appealed to the Patent Court and contended that the citing of the additional reference material was inappropriate, the cited prior art did not mention the (S) enantiomer and its effects, and that it was never given a chance to review the new reference material.

The Patent Court ruled that although the petitioner‘s invention composed of (S) enantiomer and the cited prior art composed of racemates are different in structure, they have the same objectives in that they are used for medical purposes to treat diabetes. The Patent Court concluded that in order for claim 6 to be inventive: 1) the presence of the (S) enantiomer should not be easily anticipated from the cited prior art composed of the racemic compound; 2) there should be difficulty in separation of the (S) enantiomer; or 3) the (S) enantiomer should have an outstanding anti-diabetic effect over the known racemate. The petitioner’s invention failed to meet of the above requirements.

The Patent Court ruled that the new reference material cited by the IPT was allowable because it was used merely for supporting the well-known fact that a particular enantiomer has favorable characteristics of producing pharmaceutical effects over the racemate and the other enantiomer. The Patent Court determined that the new reference material was not new prior art material but rather supported the cited prior art.

Patent Commissioned Within Scope of Employment Held to Belong to Employer

A dispute over a patent involving the input method of "Hangul" (Korean alphabet) in mobile phones was resolved in the Seoul District Court.

Chief Judge Suh of the Seoul District Court dismissed a temporary injunction suit where a current employee, Mr. Choi and other former employees sued their employer to exercise a patent right made in the course of employment. Mr. Choi et al. asserted that he and some other former employees of Samsung Electronics invented the Hangul input method during their course of employment as members of a new product development team. The plaintiffs contended that they were the rightful patent holders according to the Invention Promotion Act. The Court determined that the case had no merit and dismissed the suit.

In a companion suit involving damages of KW 1 billion in profits, Chief Judge Park rendered a decision in favor of Samsung Electronics, determining that the invention was made in the course of employment and that it was lawful for the company to take the profits because the "work was made for hire" for the benefit of the company as the rightful owner.

Patent Examination Period to be Shortened to 15 Months by Year 2005

The Korean Intellectual Property Office is expected to increase its corps of examiners by appointing 89 new examiners by the end of 2002, 80 additional examiners by the end of 2003 and 80 more by the end of 2004. The increase in examiners will lead to a gradual decrease in the examination period from the current 23 months to 15 months by year 2005.

ShowTec Sues Amway over its Business Method Patent

ShowTec, a Korean Internet application service provider, filed a patent infringement suit against Amway, a worldwide direct-selling conglomerate, over a business method patent that involves the delivery of packages to members who place orders via the Internet. ShowTec is expected to sue other companies doing business in the same field in Korea, such as Nuskin.

The business method patent in question was filed in 1999 and registered in 2002. ShowTec filed the complaint once it learned that the market of on-line delivery was valued at approximately KW 7 billion. Amway anticipates their on-line sales volume to account for more than 80% of its total 1 billion sales this year.