National Entry Period for PCT Applications Simplified to 30 Months

The national entry period for Patent Cooperation Treaty (PCT) patent application filings for the Korean national phase will be simplified to 30 months from the earliest priority date (the earliest filing date in cases where there are two or more earlier applications, or the international filing date in cases where there are no priority claims) according to the revised Korean Patent Act, which is to become effective on March 12, 2003.

Currently, the national entry period is 30 months from the earliest priority date if a request to enter into the International Preliminary Examination is made and 20 months if the request is not made. According to the revised Korean Patent Act, these terms will be simplified to 30 months regardless of the request to enter into the International Preliminary Examination. There is one exception however, in that, any PCT application having a priority date of 20 months expiring before March 12, 2003 should enter into the national phase before expiration of 20 months from the earliest priority date in cases where the International Preliminary Examination has not been requested.

The Fair Trade Commission Levies Sanctions against Owners of Patent-infringing Imported Goods

The Fair Trade Commission of the Korean Industry and Resources Ministry levied one of its first sanctions on patent-infringing imported products.

The patent holder, IONMACK Corporation, requested the Fair Trade Commission to conduct an investigation and take corrective measures on household bean curd manufacturing devices imported from China and domestically marketed by three companies, including SK Global Corporation, asserting that these goods infringed on its patent rights. After conducting an investigation, the Fair Trade Commission found the household bean curd manufacturing devices of the three companies to infringe on the patent owned by IONMACK. The Commission ordered the three companies to stop importing and marketing the devices and take corrective measures in due course. The companies were also ordered to pay penalties ranging from KRW 520,000 to KRW 820,000.

Any company or person who is ordered to take corrective measures may file an appeal within 30 days from the date of receiving the order from the Commission. If an appeal is filed, the Commission then renders a decision within 60 days. Those who do not comply with the Commission’s orders may be imprisoned not exceeding three years or fined not exceeding KRW 30 million.

Although the Commission has levied such sanctions on trademark and copyright violations in the past, this is the first time it has issued a punitive order on the basis of patent encroachment.

Madrid Protocol to Become Effective on April 10, 2003

Korea finally has become a member of the Madrid Protocol, the treaty that provides a centralized international system of registering trademarks. Under the Madrid Protocol, which is slated to become effective on April 10, 2003, a Korean applicant may file a single international application with the national office, the Korean Intellectual Property Office, designating the member countries in which registration is sought. A foreign applicant may file an international application designating Korea as well. The treaty provides a cost-effective solution to registering trademarks around the world because only a single filing fee is paid.

Canon, Inc. Wins Two Patent Infringement Suits in Korea

The Suwon District Court of Korea ruled in favor of Canon, Inc. (Japan) on all counts of two patent infringement suits against Samsung Electro-Mechanics Co., Ltd. on December 13, 2002.

Canon, Inc. sought an injunction against the manufacture and sale by Samsung of photosensitive printer drums that were alleged to infringe two Canon patents and requested compensation for damages. The Court ruled that Samsung infringed Canon’s patent drums and issued an injunction preventing Samsung from further manufacturing and selling the infringing products and also ordered Samsung to destroy facilities used for manufacturing the infringing articles. Further, the Court awarded damages in favor of Canon, Inc. in the amount of approximately KRW 770 million won.

The Patent Court Holds Internet-based Business Methods are Eligible as Patents

I. Background of the Case
Samsung Electronics Co., Ltd. filed a patent application on “Remotely-controlled educational method and device thereof on the Internet”with the Korean Intellectual Property Office on October 1996 and was granted registration in 1999.

A Korean Company named “Chinbo Network Charm Saesang” filed an invalidation trial against Samsung’s patent on the basis that Samsung’s patent lacked: a) eligibility and industrial utility because the business method did not use natural laws, and b) inventiveness from the prior arts.

The main claim in the patent reads as follows:

An educational device remotely controlled via the Internet comprising:

(1) a terminal device on which a user requests data to a server device and performs tasks including the processes of displaying and searching data;
(2) a connecting unit for connecting the terminal device and the server device to the Internet including an interfacing unit;
(3) a server device including:

(a) an operating system for operating each device such that the data inputted from the interface unit can be processed; and
(b) remotely-controlled means for education that performs the steps of:

(i) transmitting examination pages requested by the user through the terminal device;
(ii) evaluating the pages of the user’s examination and returning an examination report back to the user, thereby implementing a remotely controlled study on the Internet; and
(iii) storing and managing the examination report.

II. Decision Rendered by the Patent Court
a) Samsung’s patent is neither based on a simple mathematical principle nor on a simple use of common functions in computers or the Internet, but is based on a technical means for accomplishing concrete and practical effects. Less restriction is given to time and place, while achieving remotely-controlled education for continuous studying and evaluation. The remotely-controlled educational device, which is connected via a technical communication means called the Internet, transmits examination pages and reports in the field of education.

The remotely-controlled educational device includes a terminal device and a server device, wherein the terminal device comprises: means including a connecting unit, an interface unit and an operating system; and a remotely-controlled educational means including a CGI program unit, a database unit and a database control unit, wherein the terminal device and server device are systematically coupled. These devices are technically-operated devices and remotely-controlled educational means which utilize the natural laws, and simultaneously commonly and repeatedly use the technical means, such that the present invention is considered to be a technical idea applying the natural laws.

b) As mentioned above, the present invention claims neither an idea nor an artificial promise for remotely-controlled education, but claims a technical device for providing an effective educational service via the Internet. Also, the present invention can be repeatedly and continuously used for Internet-related industries, educational industries, and the like, and is considered to be useful for industrial development.

c) It is well-known in the computer or communication technology field that in order to exchange data among a plurality of computers connected via communication networks, a client computer requests data from a server computer via a predetermined protocol. The server computer then transmits the data to the client computer, where a user displays the transmitted data via a terminal device, such that the elements (1) and (2) in the main claim of the present invention are well-known or commonly-used technologies.

d) Element (3)(a) in the claim is a well-known and commonly-used technology, which must be installed for exchanging information between a server computer and a client computer for providing a web site’s information via the Internet medium.

e) There is nothing technical about step (3)(b)(i) which transmits the examination pages through the terminal device, and this step is well-recognized and easily conceivable by those skilled in the art from the cited prior art (Exhibit No. 5) which describes “a remotely-controlled education on the web of server/client models and master/slave models.

f) Step (3)(b)(ii) is substantially the same as those published in Exhibit No. 6, in that “the user’s input is analyzed and the next command page is transmitted on the basis of said input” and Exhibit No. 7-1 regarding the “step of going through a simple test” or “procedural evaluation steps.”

g) Step (3)(b)(iii) is very similar to that disclosed in Exhibit No. 6, in that “the contents of various input fields listed on a document received from the command software are transmitted” and “assistance can be obtained by a CGI-convertible program automatically generating a CGI-bin script appropriate for processing transmitted results. The step of managing and storing students’ examination reports in (3)(b)(iii) has been practiced in the past in the educational field.

h) In conclusion, the claim of the present invention lacks an inventive step over the cited prior arts, and thus is invalidated, while the Internet-based business method itself is eligible as a patent.

III. Comments
This case is noteworthy in that it is the first case the Korean judicial court has ruled that an Internet-based business method is eligible as a patent. Although the present case was invalidated due to its lack of inventive step, the court acknowledged the eligibility of the so-called business method patents, and set forth a criteria for determining business method patents in the future.