ABOLITION OF OBLIGATORY SUBMISSION OF KOREAN TRANSLATIONS OF CERTIFIED PRIORITY DOCUMENTS

The Korean Intellectual Property Office (KIPO) is paving the way toward amending the enforcement regulations of the Patent Act by abolishing the obligatory submission of Korean translations of certified priority documents. According to the current enforcement regulations of the Patent Act, if an international applicant is claiming priority of a previously filed patent application in a corresponding jurisdiction, it must submit Korean translations of certified priority documents to the Commissioner of the KIPO, thereby creating the burden of increased application costs to foreign applicants.

Provisions in the Patent Cooperation Treaty and patent laws of most countries including the United States, Japan and China require submission of translations of priority certificates only if the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable. Under KIPO's patent examination practice, a Korean translation of a priority certificate is useful only when a prior art is found between the priority date and filing date.

In line with these trends, the KIPO is considering amending the patent enforcement regulations for submitting Korean translations only when they are required for examination.

Meanwhile, Rule 51bis of the PCT Regulations states, inter alia, that "the national law applicable by the designated Office may, in accordance with Article 27, require the applicant to furnish a translation of the priority document, provided that such a translation may only be required where the validity of the priority claim is relevant to the determination of whether the invention concerned is patentable." Countries currently applying said PCT provision include Korea, EPO, Denmark, Great Britain, Spain and Switzerland.

The KIPO will publish a legislative notification of the draft amendment in September of 2004 and will enforce the amended law on May 1, 2005 upon approval by the Cabinet counsel.

PATENT DIVISIONAL APPLICATION MAY RAISE DOUBLE PATENTING PROBLEMS (DAIICHI SEIYAKUSHA v. KUKJE PHARMACEUTICAL COMPANY ET. AL.; KOREAN SUPREME COURT CASE NO. 2002HU2778 )

I. Background of the Case

An invention relating to a method for preparing optically active Pyridobenzoxazine derivatives was granted registration to Daiichi Seiyaku Kabushikigaisha (Patent Registration No. 60571). A divisional application based on the parent application was later filed during the examination stage and granted registration (Patent Registration No. 75803).

Kukje Pharmaceutical Company et. al. lodged a patent invalidation trial against the divisional patent registration on the ground of double-patenting, and the Patent Court nullified the patent on October 25, 2002. On appeal, the Supreme Court reversed the ruling of the Patent Court and set a precedent by setting a standard with regard to the lawfulness of divisional applications.

II. Decision by the Patent Court

The Patent Court ruled that the specifications for both the divisional application and original application were essentially identical as covering the same invention and held claim 1 in the divisional application to be unlawful and nullified it for double patenting.

When comparing the two patents' respective specifications and claims, the starting material of the IB compound in claim 1 of the divisional application is identical to the intermediate of the X compound of the original application in that both patents include a process of manufacturing a compound of the general formula (VI) from a compound of general formula (IB,X), with the exception of the following: the process of manufacturing X compound from X" compound is added to the original application, which is missing in the divisional application; and Claim 1 of the divisional application includes a process of a starting material of IB compound being reacted with diethyl (ethoxymethylene)malonate to manufacture an IC compound, and the IC compound is processed through a conventional method to manufacture a compound of general formula (VI) which is the object material, whereas, in the original application, no mention is given with respect to the manufacturing process of the IC compound, and the intermediate of X compound is processed via the conventional method to manufacture a compound of general formula (VI), which is the object material.

With regard to the differences mentioned above, the third embodiment of the divisional application describes that the IB compound of the starting material of claim 1 is manufactured from 3S-7,8-difluoro-2,3-dihydro-3-methyl-4[(S)-n-paratoluenesulfonylprolyl]-4H-[1,4] benzoxazine obtained from the second embodiment.

The 3S-7,8-difluoro-2,3-dihydro-3-methyl-4[(S)-n-paratoluenesulfonylprolyl]-4H-[1,4] benzoxazine obtained from the second embodiment belongs to the X" compound of the starting material in the original application. The third embodiment is identical to the thirteenth embodiment of the original application in terms of content. Furthermore, in the specification of the divisional application, no other method of manufacturing the starting material of the IB compound from other compounds is described except for the 3S-7,8-difluoro-2,3-dihydro-3-methyl-4[(S)-n-paratoluenesulfonylprolyl]-4H-[1,4] benzoxazine described in the third embodiment, such that it can be construed that claim 1 of the divisional application includes the process of manufacturing the IB compound from the X" compound as described in the original application.

Further, the process of manufacturing the IC compound from the starting material of the IB compound is cited in claim 1 of the divisional application, which is identical to the fourteenth and fifteenth embodiments of the original application in terms of content, such that the original application is deemed to include a process of manufacturing the IC compound by reacting the IB compound with diethyl (ethoxymethylene)malonate in view of the descriptions in the embodiments of the original application.

III. Decision by the Supreme Court

On appeal, the Supreme Court defined a divisional application as an application for a patent on a distinct invention carved out of a pending parent application consisting of two or more independent and distinct inventions. In case two or more inventions are filed in one application, two or more inventions must be described in the scope of claims, detailed description, or drawings. In the course of dividing an original application, the detailed description or drawings of the invention submitted in the original application may be re-used. Furthermore, an invention that is described in the detailed descriptions of the original application can be divided into a divisional application if deemed to be an independent and complete invention. Under these circumstances, whether the claim of the divisional application is identical to the claim of the original application should be determined by comparing their technical constructions in their claims. Even though there are certain differences in the constituents of both claims by an addition, deletion, modification or the like of the prior well-known art, if no new effectiveness is generated by such differences, then the two claims will be deemed to be identical.

In consideration of the aforementioned principle of law, although the contents of an embodiment for claim 1 in the divisional application is partially identical to those of the original application, claim 1 of the divisional application relates to a method of manufacturing a final material of compound (VI) via an intermediate of IC compound from the new IB compound as a starting material. Therefore, the technical feature of claim 1 in the divisional application could be characterized such that the new IB compound was used as a starting material.

Meanwhile, the original application relates to a method of manufacturing a final material of compound (VI) using a conventional method via an intermediate of X (=IB) compound with an X" compound as a starting material. The X" compound added to the original application and the intermediate X compound are both new materials, and in view of the detailed description specified in the original application, the aforementioned process is an essential structural element for manufacturing the most effective compound X (=IB) in terms of gains, such that the process can be considered to have a new effective process which cannot be anticipated in claim 1 of the divisional application, and cannot be simply regarded as a well-known prior art.

Subsequently, the Supreme Court determined that Claim 1 of the divisional application, which does not include the described manufacturing process as an essential structural element, was a separable invention having a technical idea and construction different from those of the original application.

IV. Commentary

Under Korean patent examination practice, if certain parts of claims among many claims are rejected by an examiner, the rejected claims are deleted from the original application. The original application minus the rejected claims proceeds to registration and the rejected claims are divisionally filed for registration. This has been the trend in Korea, but careful attention should be paid when filing divisional applications.

The Supreme Court ruled that the identicalness of two inventions should be determined by comparing their technical structures specified in the claims of both inventions as well as their merits, and even if there are differences in technical structure and the difference is a mere fraction that gives rise to no occurrence of new effects due to an addition, deletion and modification of a well-known prior art, then both inventions will be deemed to identical. In light of the Court's ruling, applicants must follow the criteria set forth by the Supreme Court when preparing claims in divisional applications.

ROLLS-ROYCE PLC v. YOUNG-HO YOON(KOREAN SUPREME COURT CASE NO. 2001Da57709)

I. Background of the Case

Defendant Youngho Yoon, a Korean individual, registered the domain name "rolls-royce.co.kr" with a registry service on June 5, 1999. The menus "profile," "aeroplane," "patent information," and "purchase-related information" were posted on the website. The "profile" menu included a brief history of the Defendant, and the website included hyper-links to websites related to aeroplanes. The information provided in Defendant's website was provided free of charge.

Plaintiff Rolls Royce PLC, a renowned English manufacturer of luxury automobiles, is the proprietor of the domain names "rolls-royce.com" and "rolls-royce.net" as well as the Korean trademark registration "ROLLS-ROYCE".

Plaintiff filed a lawsuit against Defendant with the Chang Won District Court of Korea in 1999 demanding the injunction of the domain name on the ground that the unlawful registration infringed the former's famous trademark ROLLS-ROYCE in violation of the Korean Trademark Act and Unfair Competition Prevention And Trade Secret Protection Act. The District Court ruled for Defendant and the case went all the way up to the Supreme Court. The Supreme Court also ruled in favor of the Defendant.

II. Discussion of the Supreme Court's Decision

At issue is whether a domain name that is identical to a famous registered trademark constitutes trademark infringement or violates the unfair competition laws of Korea.

Article 66(1) of the Korean Trademark Act prescribes that "an act of using a trademark identical to the registered trademark of another person on goods identical or similar to the designated goods, or using a trademark similar to the registered trademark of another person on goods identical or similar to the designated goods" to constitute trademark infringement.

It is undisputed that the core part "ROLLS-ROYCE" in Defendant's domain name is identical to the plaintiff's trademark. For purposes of finding trademark infringement, we should confine our attention to the goods at hand. Defendant's website never posted, marketed or sold any products identical or similar to Plaintiff's products. Hence, it is difficult for the Court to recognize that trademark infringement really occurred or probably will occur. Furthermore, a domain name which indicates an address on the Internet is deemed different from a trademark or label according to the Korean Trademark Act. Articles concerning aeroplanes on Defendant's website are not deemed to threaten Plaintiff's business interests.

With regard to Plaintiff's unfair competition claim, the term "use" prescribed in Article 2-(1)-(ⅱ),(ⅲ) of the Unfair Competition Prevention And Trade Secret Protection Act is considered to be limited for-profit use. However, the contents of Defendant's website does not include Defendant's company name or trademark for commercial purposes. Hence, the fact that Defendant merely used characters identical to the plaintiff's company name or trademark does not violate Article 2(1) of the Unfair Competition Prevention And Trade Secret Protection Act, which stipulates that "an act of causing confusion with another person's commercial facilities or activities by using marks identical or similar to another person's name, trade name, emblem or any other mark which is widely known in Korea shall constitute acts of unfair competition."

Plaintiff alleged that Defendant cyber-squatted the domain name in an attempt to resell the domain name. Plaintiff further contended that Defendant demanded compensation for costs spent studying for seven years in England or several hundred thousand dollars in return for a possible transfer of the domain name to the plaintiff. However, evidence to support the allegation was insufficient.

Accordingly, the Supreme Court affirmed the lower court's decision and found for the Defendant.

III. Commentary

The Korean courts are likely to find for trademark infringement and/or unfair competition when a similar or identical domain name is used for profit purposes. Recently, cyber-squattings have been on the rise and it is recommended that a trademark proprietor register its marks with the domain name registry service before a greedy third party does.