2014년 7월 10일 목요일

3. Disputable Agenda on Precedent Case


Claim 5
To form a metal panel in which a filing member is to be filled between a front plate and a rear plate which are made of a colored steel sheet, a method of forming a continuous metal panel comprising: continuously forming said front plate and rear plate having a certain width, in a lengthwise direction; forming caulking grooves having a narrow width to be in equal intervals in a lengthwise direction to said front plate; forming a connection groove portion and a connection projection portion respectively by bending upper and bottom portions of said front and rear plates; installing a cover so that said caulking grooves may be sealed with an outside; stiffening in a manner to fill a filing member between said front and rear plates; and loading said panel by cutting into a necessary length for use

Claim 6
The continuous metal panel as claimed in claim 5, produced by use of an insulator in which a filing member is selected from a polyurethane foam (PU), a glass wool board (G/W), a mineral wool board, a rock wool board (R/W), a styrofoam board (EPS), a polyester foam board or a plastic insulation board

‘A discrepancy of an inventive category between an independent claim and a dependent claim’



□ Argument of Plaintiff
A. An invention subject to confirmation appertains to the scope of right of claim 5 invention regarding the subject case.
B. An invention of claim 6 regarding the subject case is a product invention; whereas, the invention subject to confirmation is a manufacturing method invention. In this regard, a category of an invention is specified differently such that an inter-comparison cannot be realized. Hence, a claimed matter of the trial to confirm the scope of right by the defendant, with respect to the invention of claim 6, should have been dismissed as being unlawful.
C. Even if, the category of invention as for the invention of claim 6 of the subject case holds an ambiguous description such that the scope is not recognized, for which protection is sought, in such a case, it is impossible to inter-compare the invention described in claim 6 and the invention subject to confirmation. Hence, a claimed matter of the trial to confirm the scope of right by the defendant with respect to the invention of claim 6, should have been dismissed as being unlawful. Further, the aforementioned ambiguous description is just a matter to be examined on an additional invalidation trial.
D. The invention described in claim 6 of the subject case is interpreted clearly as a product invention. Further, even if ‘…continuous metal penal’ described in the end of the scope of claims is a typographical error of ‘…a method of forming a continuous metal penal’, a skilled artisan can readily appreciate the scope of claims by reference to the detailed description of the invention and the drawings, so the scope for which protection is sought, can thus be specified.
E. Moreover, if the invention of claim 6 regarding the subject case is interpreted as a method of forming a continuous metal penal, the invention subject to confirmation furnishes all constituents same as or equivalent to those of the invention of claim 6 regarding the subject case, it thus pertains to the scope of right of claim 6 invention regarding the subject case.
F. Therefore, the trial decision of the subject case being concluded differently from above should be canceled since it is unfair.



□ Issue
       Whether a claim for a trial to confirm the scope of right is available or not, by taking into account another invention in a different inventive category from the patent invention as an invention subject to confirmation
       Whether, in cases where there is an ambiguous description in the scope of claims of the patent invention such that the scope of right cannot be specified, a claim for a trial to confirm the scope of right becomes illegitimate



□ Gist of Decision
       Whether it is possible to claim a trial to confirm the scope of right by taking into account another invention in a different inventive category from the patent invention, as the invention subject to confirmation -> Possible
According to Articles 94, 2 of the Patent law, in cases where a patent invention is a product invention, a patentee has the exclusive right for acts of manufacturing, using, assigning, leasing, importing, or offering for assigning or leasing (including displaying for the purpose of assignment or lease) the product commercially or industrially. Therefore, inside the scope of right of the product invention, not only the product but also the inventions as regards a manufacturing method and a usage method which are related with the product shall be regarded as being included.
Thus, in such a trial to confirm the scope of right as to confirm the scope of patent invention for which protection is sought (i.e., the scope to which the effects of patent right extend), it is obviously possible to confirm whether an invention of a process subject to confirmation pertains to the scope of patent invention, which is a product invention, for which protection is sought. More specifically, it is possible to determine sufficiently whether or not the scope of right falls within the another scope of right by comparing both inventions, in a manner that examines whether a product related to a process invention subject to confirmation (in cases of an invention regarding a manufacturing method, a product produced by the manufacturing method, or the like), includes all constitutions of the product of the patent invention. Therefore, based on the grounds that the patent invention of the subject case and the invention for which confirmation is sought are in different categories, it cannot be determined that the claim for trial to confirm the scope of right should be dismissed as being illegitimate.


       Whether a claim for a trial to confirm the scope of right becomes illegitimate in cases where the scope of right is not specified due to the ambiguous descriptions of the scope of claims regarding the patent invention -> Determination available
A trial to confirm the scope of patent right is to specifically confirm the scope where the effects of the right extend, in relation with the invention subject to confirmation. In regards to the specific confirmation, under a premise that the scope of patent invention is being recognized, there are included a confirmation by which the recognized scope of right is compared to the invention subject to confirmation so as to identify whether or not the effects of the patent right apply, as well as another confirmation whether the effects of the subject patent right do not reach to the invention for which confirmation is sought because the scope of patent invention for which protection is sought itself is not fundamentally recognized.
Furthermore, in cases where the technical scope of the invention itself cannot be specified because a part of the constituents of the invention is abstractive or obscure at the time of filing even given the description of the scope of claims and the detailed description of the invention and the description of the drawings regarding the patent invention, it is difficult to judge ‘being applied/not being applied’ through a specific constitutional comparison with the invention for which confirmation is sought. However, this is a case in which there is no recognized the scope of the patent invention for which protection is sought thus the effects of the patent right are not extended to the invention for which confirmation is sought. As examined above, it is a form to confirm the scope of right, which is obviously predetermined by the trial to confirm the scope of right. Hence, it cannot be deemed that the claim for trial to confirm the scope of right with respect to the corresponding patent invention becomes unlawful because of the circumstance wherein the technical scope of the patent invention cannot be specified. Such a legal principle shall be identically applied so long as the technical scope for which protection is sought cannot be specified either, which is resultant from cases where an inventive category is ambiguous as well.



       Whether a claim for a trial to confirm the scope of right becomes illegitimate in cases where the scope of right cannot be specified due to the ambiguous description of the scope of claims regarding the patent invention or not -> Determination available
The invention described in claim 6 of the subject case, may be interpreted as a product invention that is so-called process limitation that limits a product invention, in that the scope of claim is ‘…as claimed in claim 5, the continuous metal panel produced by use of an insulator in which a filing member is selected from a polyurethane foam (PU), a glass wool board (G/W)…’ and its end demonstrates ‘continuous metal panel’ being a product invention and that there is description ‘produced by use of…’ just in front thereof, thereby somewhat corresponding to a manufacturing method. By the way, putting together the following, ‘continuous metal panel’ described in the end of the scope of claims with respect to the invention described in claim 6 of the subject case, may be regarded sufficiently as a typographical error of ‘a method of forming a continuous metal panel’.
(Omitted)
Putting together above, the invention of claim 6 of the subject case may be deemed to claim ‘continuous metal panel’ which is a product invention being a process limitation, or to omit ‘a forming method’ erroneously while trying to claim ‘a method of forming a continuous metal panel’ which is another manufacturing method invention in a different category therefrom (it is difficult to regard it even as an explicit typographical error). Consequentially, the scope of claims is not described explicitly such that the technical scope cannot be specified, therefore, the scope of right is not recognized.



5. Conclusion
□ Notice the description of the scope of claims
- If the scope of claims is described unclearly, a risk may occur in which the scope of right may be denied.
- The invention of claim 5 of the subject case and the invention for which confirmation is sought underwent the judgment whether the scope of right is included through a specific technical constitutional comparison as below.
Item
Technical Constitution
Comparison Result
Preamble
To form a metal panel in which a filing member is filled between a front plate and a rear plate which are made of a colored steel sheet
No difference
Constitution 1
continuously forming said front· rear plates having a certain width, in a lengthwise direction
No difference
Constitution 2
forming caulking grooves having a narrow width to be in equal intervals in a lengthwise direction to said front plate
No difference
Constitution 3
forming a connection groove portion and a connection projection portion respectively by bending upper and bottom portions of said front and rear plates
No difference
Constitution 4
installing a cover so that said caulking grooves may be sealed with an outside
Different
Constitution 5
stiffening in a manner to fill a filing member between said front and rear plates
No difference
Constitution 6
loading said panel by cutting into a necessary length for use
No difference


- However, with respect to the invention described in claim 6, just because the scope of claims is not clearly described, a judgment was made without a comparison for a technical constitution, whereby it does not appertain to the scope of right.

2014년 5월 6일 화요일

A precedent about the inventiveness of the patent


The Supreme Court's Precedent has been published which states that the inventiveness of the patent already registered should not be judged in the trial for confirmation of the scope of right to define an application range of patent right.

On March 20th, 2014, the supreme court decision confirmed the original trial that decided against a demandant with respect to the confirmation suit of patent right scope, in which company “A” specialized in manufacturing a special equipment vehicle (SEV) filed a suit revoking the decision of the Intellectual Property Tribunal (IPT) that determined its designing of feed transportation vehicle is similar with Kim’s registration utility model.

With respect to the claim raised by company “A”, in which “Kim’s utility model is considered as such patent that should be invalid due to the lack of the inventiveness, thus the scope of patent right as itself is not recognized”, the justice department decided as follows: “once a patent is registered, it cannot be judged premised on the invalidity in other processes, unless the invalidity trial is processed”.

Also, it was specified that “the trial for confirmation of the scope of right is such a process as to confirm whether the confirmation subject invention belongs to a scope where the effects of patent right extends” and accordingly, “judging premised on the invalidity of patent as itself at this process, is beyond the object of the system thus, the function of the patent nullity trial may be weakened.

In January 2012, Kim filed the trial for confirmation of the scope of right while asserting the company “A”’s designing of feed return carrier for use of the feed transporting vehicle corresponds to the scope of his utility model registered in 2004.

As the Intellectual Property Tribunal (IPT) decides in a way to cite Kim’s assertion, the company “A” filed a law suit against Kim.

The company “A” argued that “any person skilled in the art can easily devise Kim’s utility model” and that “the patent should be invalid due to the lack of the inventiveness, thus the scope of right as itself is not recognized”.

The patent court rejected the argument raised by company “A”, indicating that “even if there is no inventiveness at the trial for confirmation of the scope of right, the scope of right thereof cannot be denied”.

Therefore, Kim’s utility model was recognized and they judged that company “A”, which manufactures and delivers the feed transporting vehicle having similar structure and principle therewith, has violated the patent right scope of Kim’s.

The Supreme Court noted in connection with the subject judgment, that “the manner has been clarified in which the inventiveness cannot be examined considering the object and gist of the trial system for confirmation of the scope of right” and that “there is a certain significance upon which the precedent has been unified where the positive and negative coexisted.

2013년 1월 23일 수요일

Korean Patent and Trademark Applications Increased in 2012 despite Economic Crisis

- Application for patents and trademarks increased by 8% and 7%, respectively -


Despite uncertain global economic conditions and financial crises throughout last year, Korean applications for intellectual property rights (IPRs) such as patents and trademarks increased last year, according to recent preliminary statistics.

The Korean Intellectual Property Office (KIPO, Commissioner Ho-won Kim) gathered preliminary statistics on IPR applications from 2012 and found that the total number of applications for patents, trademarks, and industrial designs filed in 2012 increased by about 8% to 400,815 from 371,116 in 2011.
Although the uncertainty of the global economy is growing, companies remain committed to dominating new technologies and brands through future-oriented R&D investment, leading to an increase in Korean patent and trademark applications over the past year.

By type, applications for patents increased year-on-year by 7.6% to 192,575, utility models by 5.2% to 12,467, trademarks by 7.1% to 132,620, and industrial designs by 11.7% to 63,153.

From 2009, patent applications showed an increasing trend over the last three years surpassing the 170,000 level despite the financial crisis in 2010 and continued to reach 178,924 in 2011 and 192,575 in 2012.

By applicant, Korean conglomerates filed the most patent applications at 25.5% (49,167 applications), followed by small and midsized Korean businesses at 15.2% (29,187 applications), accounting for 40.7% of all patent applications in 2012. Foreign applicants filed 23.0% of the total patent applications (44,329 applications) in 2012.

More specifically, patent applications by conglomerates increased over the last three years and those by small and medium businesses dropped by 17.1% in 2011, but increased by 8.2% in 2012.
* Conglomerates: ’09 (41,824 applications, △16.1%), ’10 (45,658 applications, 9.2%), ’11 (47,409 applications, 3.8%), ’12 (49,167 applications, 3.7%)
* Small and medium businesses: ’09 (31,883 applications, 10.3%), ’10 (32,558 applications, 2.1%), ’11 (26,983 applications, △17.1%), ’12 (29,187 applications, 8.2%)

Samsung Electronics applied for the greatest number of patents (6,407 applications) among Korean companies, followed by Hyundai Motors (2,598 applications) and the Electronics and Telecommunications Research Institute (ETRI) (2,555 applications). Among foreign companies, Qualcomm (1,240 applications) topped the list, followed by Japan’s Semiconductor Energy Laboratory (653 applications), and Tokyo Electron (451 applications). By country, Japanese companies applied for the most patents (17,091 applications), followed by the United States (12,356 applications), Germany (4,083 applications), and France (1,993 applications).

Director-General Tae-keun Rhee of KIPO’s International Cooperation and Customer Support Bureau said, “National interest in IPRs like patents and trademarks is increasing in Korea because of the recent global patent war between Samsung and Apple.” He emphasized that “the more difficult the economic conditions are, the more important it is to expand investment in R&D to acquire key and original patents to prepare for the future.”


 

<Application trends by type>              

(Unit: application)
 
 



<Total IPR application trends>

                                                              (Unit: application)

by KIPO

2011년 12월 19일 월요일

Korea and China to Expand Cooperation on Intellectual Property

Korea and China to open a Patent Prosecution Highway (PPH) -

□ In commemoration of the 20th anniversary of the first Korea-China intellectual property (IP) heads meeting in November 1992, cooperation on IP between the two countries will be largely expanded.

o (Patent Prosecution Highway)
Commissioner Lee Soo-won of the Korean Intellectual Property Office (KIPO) signed a Memorandum of Understanding (MOU) with Commissioner TIAN Lipu of the State Intellectual Property Office of the People’s Republic of China (SIPO) at the 17th Korea-China heads meeting held in Beijing on November 2 (Wed) to open a Korea-China Patent Prosecution Highway (PPH) and Patent Cooperation Treaty - Patent Prosecution Highway (PCT-PPH) starting 1 March 2012.

- Commissioner Lee said, “There were 390,000 patent applications filed in China in 2010 (about 340,000 more than Japan) ranking it second in the world among patent filing countries. As such, the Chinese market has become increasingly important in terms of IP rights. The PPH established between the two countries will make it easier and quicker for Korean companies to register patents in China.”

o (Expanded cooperation between the IP offices of Korea and China)
At the heads meeting, both sides agreed to continue to manage a consultative body of experts on patent examination, informatization, training and designs in order to harmonize the IP systems of both countries. Both sides also agreed to expand and enhance cooperation and exchanges between the two countries such as mutually dispatching IP experts.

- In particular, both IP offices agreed to pursue joint research in order to practice the “civil cooperation of national IP strategies” agreed upon during the summit meeting in May 2010 for the effective implementation of national IP strategies.

o (Fostering IP personnel with Renmin University of China)
During his visit to China, Commissioner Lee also signed an MOU on November 3 (Thurs) with President Ji Baocheng of Renmin University, which is leading the amendment of Chinese laws related to IP rights, to commence exchanges between the academia and governments of Korea and China, perform joint research on IP rights between the two organizations and increase cooperation on education and training.

o Commissioner Lee also gave a special lecture on “Korea’s IP rights systems and economic development” to students of law at Renmin University leading the legalization and development of Chinese IP rights.

- During the lecture, Commissioner Lee introduced Korea’s IP systems and policies and emphasized how policies valuing IP rights have largely contributed to Korea’s economic development. He emphasized in particular that IP rights are critical to driving national economic development and raising corporate competitiveness in today’s global knowledge-based economy. Furthermore, he stated the necessity for the two countries to enhance exchanges and cooperation of IP rights to advance the sustainable economic development of Korea and China.

o (Cooperation with China’s judiciary body)
To expand exchanges and cooperation with the Chinese judiciary body, Commissioner Lee met with Vice-President Xi Xiaoming responsible for IP rights at the Supreme People’s Court of the People’s Republic of China, China’s highest court, and exchanged views on the protection trends of foreign IP companies in China and difficulties faced by Korean companies.

by KIPO

2011년 8월 7일 일요일

Patent regarding medical procedure in Korea

In Korea, medical procedure can not be patented.

One of the requirements of patentability is industiral applicability.

Medical procedures can't be patented in Korea because they are deemed to lack industrial applicability. Only medical instruments and supplies pertaining to surgery, treatment and diagnosis are patentable.

2011년 8월 4일 목요일

2011 Second Quarterly IPR Trends in Korea

- Trademark applications increased by 11.9 percent year-on-year -

□ Application Trends

 A total of 91,225 IP applications were submitted during the second quarter of 2011, recording an increase of 4.8 percent year-on-year.
- By type of rights, patents increased by 4.5 percent and trademarks by 11.9 percent, while designs decreased by 4.2 percent.
※ Utility models are continuously decreasing due to the pre-registration system and the discontinuation of the dual application system (▽ 9.6 percent).

 By nationality, Korean and foreign applicants rose by 4.9 percent and 4.3 percent, respectively.
- As for patents, Korean and foreign applicants rose by 4.4 percent and 4.7 percent, respectively.
- By region, Ulsan recorded the highest rate of increase at 72.2 percent followed by Chungnam at 19.2 percent.
- By countries of origin, Sweden increased by 24.6 percent and China recorded an increase of 19.4 percent.

 By applicant, conglomerates and SMEs (small and medium enterprises) recorded an increase of 1.6 percent and 6.0 percent, respectively, while universities increased by 76.0 percent.
- Looking at applicants with a significant rate of increase in the second quarter, Hyundai Heavy Industries stood out in patents and utility models, while Busan Bank and Woongjin Coway recorded a high rate of increase in trademarks, and Wooil Fence in designs.

□ Registration Trends

 The total number of IPR registrations in the second quarter of 2011 reached 47,267, recording an increase of 21.9 percent year-on-year.
- By type of rights, patents increased by 19.8 percent, utility models by 36.2 percent, trademarks by 27.4 percent, and designs by 15.6 percent.

 By nationality, Korean applicants increased by 22.6 percent and foreign applicants increased by 18.9 percent.
- By region, Gyeongnam recorded the highest rate of increase at 50.1 percent followed by Ulsan at 47.3 percent.
- By country, Canada increased by 20.3 percent and Japan increased by 11.3 percent.

 By IP rights holders, conglomerates rose by 30.3 percent and SMEs by 12.5 percent. Korean individuals recorded a striking rate of increase of 90.5 percent followed by foreign individuals at 82.7 percent.
- IP rights holders with a significant rate of increase in the second quarter were Samsung Electronics and LG Electronics in patents and utility models, Gunwi-gun (Gyeongbuk) in trademarks, and Sung Sin Art Collection in designs.


□ Examination and Trial Trends

 A total of 39,390 requests for examination were submitted in the quarter, recording a 0.8 percent decrease year-on-year.
- Requests for patent examinations totaled 36,570, a 0.9 percent increase year-on-year, while utility models decreased by 18.2 percent with 2,820 cases.
- Number of requests for PCT international searches stood at 6,245, a 14.9 increase year-on-year, and those processed totaled 5,643 cases, recording a 1.0 percent increase.

 The number of requests for trials totaled 2,718, a 23.6 percent drop year-on-year, while trial disposals totaled 3,713 cases, a 3.1 percent increase.
- By type of rights, the requests for trials of patents and utility models grew by 34.6 percent with 1,689 cases, and trademarks by 31.0 percent with 941 cases. On the other hand, designs dropped by 50.0 percent with 88 cases as compared to the same period of the previous year.


◎ This trend data is based on intellectual property rights statistics collected from the second quarter of 2011 up to July 2, 2011 (based on date of pending, tentative value).
- Actual values may differ from the statistics at the point of acceptance due to causes such as withdrawals and renunciations.
◎ Only new Trademark applications have been summed up.
◎ The rate of increase is based on the same period from the previous year.

by KIPO

2011년 8월 1일 월요일

Request for reexamination (reexamination before a trial) in Korea

Whenever an examiner refuses an application, the applicant can simply request a reexamination after amending the description or drawing(s) . This process is permitted under the revised Patent Act.
Previously, if an application was refused after examination, an applicant had to appeal the examiner's decision of refusal and amend the description or drawing(s) for examination before a trial. On the other hand, according to the revised Patent Act, an applicant does not need to appeal but simply request reexamination with amendment.

Flow chart of a request for reexamination (application filed after July 1, 2009)
①Reasons for refusal from before the date of giving notice of the first refusal, but were not mentioned
②Reasons for refusal which were created by the amendments made after giving notice of refusal, but were not mentioned
③Reasons for refusal mentioned in previous notice of refusal
Flow chart of a request for reexamination
Flow chart of a reexamination before a trial (for applications filed before June 30, 2009, and after July 1, 2001)
①Reasons for refusal from before the date of giving notice of the first refusal, but were not mentioned
②Reasons for refusal which were created by the amendments made after giving notice of refusal, but were not mentioned
③Reasons for refusal mentioned in previous notice of refusal
Flow chart of a reexamination before a trial