• Scope of determination as to whether “the invention subject to confirmation has been specifically identified to the extent that it can be distinguished from others in terms of common sense in society,” presented by Supreme Court decision 2021Hu10725
• Interpretation of the term “business profit” in Article 4(1) of the Unfair Competition Prevention and Trade Secret Protection Act confirmed by Supreme Court decision 2022Ma5373
• Applications for industrial property rights increased in 2023 with increase in semiconductors and secondary batteries applications
• Expanding support for prioritized examination for secondary battery 
• Korea, “No. 1 in the world” in Screen Sports Applications 
• C&S News

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Scope of determination as to whether “the invention subject to confirmation has been specifically identified to the extent that it can be distinguished from others in terms of common sense in society,” presented by Supreme Court decision 2021Hu10725  _Woo-Taek Hwang, Patent Attorney

1. Overview
The trial subject (invention subject to confirmation) of a patent claim scope confirmation trial refers to the specific invention which is the subject of a trial, that is, a specific embodiment1. The identification issue of an invention subject to confirmation in a claim scope confirmation trial is important, in that it clarifies the subject of the trial as a legal requirement of a request for trial and as a part of the purpose of the request, such that the specifications and drawings attached to the request for trial should be prepared with caution. 
However, it would not be easy for an applicant to identify an invention subject to confirmation, there would be many disputes between both parties as to whether the invention subject to confirmation is identified, and even the Korean Intellectual Property Trial and Appeal Board or the court could not easily determine whether the invention subject to confirmation is identified. In this respect, we will examine the subject decision which deals with whether the invention subject to confirmation is specifically identified to the extent that it can be distinguished from others in terms of common sense in society.

2. Supreme Court decisions related to identification of invention subject to confirmation
Whether the invention subject to confirmation has been legally identified would be a legal requirement for a patent trial. Even in the case that no clear argument was to be filed from the relevant party, if doubtful, the Korean Intellectual Property Trial and Appeal Board or the court shall examine and clarify the issue (see Supreme Court decision 2003Hu656, April 29, 2005, Supreme Court decision 2012Hu85, April 25, 2013, and the like).

When requesting a claim scope confirmation trial of patent rights, the invention subject to confirmation, which is the subject of the request for trial, shall be identified in detail to be able to be compared with the patented invention (see Supreme Court decision 2003Hu656, April 29, 2005, Supreme Court decision 2010Hu296, May 27, 2010, and the like), and shall be specifically identified to the extent that it can be distinguished from others, as an object to confirm whether it falls within the scope of rights of the patented invention according to common sense in society (see Supreme Court decision 2010Hu3356, September 8, 2011, Supreme Court decision 2017Hu2291, May 28, 2020, and the like). 
 

Whether the invention subject to confirmation is identified shall be determined on the basis of the specifications and drawings of the invention subject to confirmation and while considering the same comprehensively. Thus, even if there are unclear parts in the specification of the invention subject to confirmation or a portion of drawings do not match the description in the specification, when it is possible to determine whether the invention subject to confirmation falls within the scope of rights of the patented invention by comprehensively considering the other descriptions and drawings in the specification of the invention subject to confirmation, the invention subject to confirmation should be deemed as being identified to the extent that it can be distinguished from others as an object to confirm whether it falls within the scope of rights of a patented invention according to common sense in society (see Supreme Court decision 2010Hu296, May 27, 2010, Supreme Court decision 2017Hu2291, May 28, 2020, and the like).

3. Lower court decision (2020Heo4969)
The lower court decision was made on the premise that the description of the diagram (FIG. 1) appears to have been prepared in accordance with the description method and the degree of description of the requested scope of claim 1, and held that the terms used in relation to the diagram, that is, (ⅰ) the basic advertising content (215) is linked to a “tab,” an auxiliary means for changing advertising content, but it would difficult to say that the “tab” itself corresponds to advertising content, (ⅱ) the additional advertising content (216) uses the term “pop-up format” without a specific definition or description, such that it would be difficult to view the technical meaning thereof as clarified, and (ⅲ) the expressions are nothing more than tautology regarding the technical meaning and the organic relationship between user behavior information and billing performance, and it is difficult to recognize the specific technical composition, and thus that it would be difficult to objectively and unambiguously identify the technical composition of the invention subject to confirmation to the extent that it can be distinguished from others simply based on the descriptions alone. The decision consequently ruled that, when considering the diagram and also the definition/description and web page description, the composition of the invention subject to confirmation has been specifically specified to the extent that it can be distinguished from others in terms of common sense in society.

4. Subject decision (2021Hu10725)
The subject decision held that, when comprehensively considering the other contents and drawings described in the specification of invention subject to confirmation, (ⅰ) the basic advertising content is fixedly present in a specific location on the main page and is recited as containing advertising-related content, and is specified to refer to an advertising tab fixed at a specific location on the web main page, (ⅱ) the additional advertising content is described as advertising appearing additionally in relation to the basic advertising content by placing a mouse pointer over the basic advertising content, (ⅲ) the entirety of the specific components of the billing are not recited in the specification thereof, but there is the description that the final advertising cost is calculated and billed by collecting information on the behavior of a user who place the mouse pointer over the basic advertising content, and accordingly that even though the detailed technical composition could not be identified, by considering the contents of the specification and drawings, it would be difficult to deny the degree of specificity itself which could be distinguished from others in terms of common sense in society. The decision thus ruled that the invention subject to confirmation would be a subject that confirms whether it falls within the scope of rights of the patented invention in terms of common sense in society and was specifically specified to the extent that it can be distinguished from others, and overturned and remanded the original decision ruled otherwise.

5. Conclusion 
A. Unlike the Patent Court decision, the above Supreme Court decision seemed to recognize “the extent to which it can be distinguished from others in terms of common sense in society” somewhat broadly by interpreting the specification and drawings of the invention subject to confirmation based on knowledge of general Internet technology.
B. In light of the Supreme Court subject decision and the original decision, it appears that it would not be easy to prepare specifications and drawings in a manner in which the invention subject to confirmation can be clearly specified, and thus, when preparing the specifications and drawings of the invention subject to confirmation, even if briefly, they need to be prepared such that all specific details could be set out based on the embodiment.
C. If there is any defect in the specification of the invention subject to confirmation, the trial period would be significantly increased due to procedures such as amendment procedures at the Korean Intellectual Property Trial and Appeal Board and/or cancellation and remand by the Patent Court, and also there would a risk that the request for trial could be dismissed. To prevent this, when requesting a claim scope confirmation trial, applicants and patent attorneys need to prepare specifications and drawings of the invention subject to confirmation in a manner that they could be easily understood by a person skilled in the art.

Interpretation of the term “business profit” in Article 4(1) of the Unfair Competition Prevention and Trade Secret Protection Act confirmed by Supreme Court decision 2022Ma5373  _Jung-Won LEE, Attorney / Patent Attorney

1. Overview
Article 4(1) of the Unfair Competition Prevention and Trade Secret Protection Act (hereinafter, referred to as the Unfair Competition Prevention Act) stipulates that a person whose business interests have been infringed upon or are likely to be infringed upon by an act of unfair competition can request the court to prohibit or prevent a person who commits or intends to engage in an act of unfair competition.
In this respect, since the entity exercising the prohibition request right would be mainly determined depending on the interpretation of the term “business profit,” there may be circumstances in which it is difficult to exercise the right to request for prohibition. The subject precedent actively deals with the interpretation and the scope of acknowledgement as below.

2. Facts
The creditor received permission to use the name “Jeju Ilbo” from Jeju Ilbo around September, 2013 and has been engaged in the newspaper business since then by publishing general daily newspapers under the name “Jeju Ilbo”, while the debtor changed its name to Jeju Ilbo Broadcasting Co., Ltd. and published a newspaper in the name of “Jeju Ilbo” from November 16, 2015.

3. Summary of lower court decision (Gwangju High Court decision, (Jeju) 2021D523, February 14, 2022)
The lower court did not directly interpret the term “business profit” in Article 4(1) of the Unfair Competition Prevention Act in relation to this case, but deemed it to be reasonable that the creditor’s right to request the debtor not to publish a newspaper under the same or similar name was recognized.

4. Supreme Court decision
The Supreme Court held that the name “Jeju Ilbo” is a well-known mark under the Unfair Competition Prevention Act, and that “business profit” under the Unfair Competition Prevention Act would refer to the unique and legitimate profit that a business operator gains while carrying out business activities, and would include not only economic profits, but also business credibility, customer attraction, and competitive status as a fair business operator, and ruled that a person who can request prohibition or prevention due to infringement or concern about infringement comprises a person who has a unique and legitimate interest in the use of such mark, such as the owner of such mark as well as a licensee thereof.

5. Conclusion
The subject decision is significant in that it interprets “business profit” broadly and reaffirms that entities that can exercise the right to request prohibition of infringement against acts of unfair competition include not only the owner of the mark but also the user thereof. (see Supreme Court decision, 96Ma364, February 5, 1997).
In particular, the “presence of business profits” under the Unfair Competition Prevention Act is a requirement for a request for infringement prohibition and also requests for damages and credit restoration, and for those whose interests have been infringed upon by unfair competition practices, if it is a legitimate interest, there is now a way for them to exercise the rights thereof, which indicates that the Supreme Court recognizes the importance of protection for intellectual property rights holders.

Applications for industrial property rights increased in 2023 with increase in semiconductors and secondary batteries applications

The Korean Intellectual Property Office (KIPO) announced statistics indicating that in 2023, a total of 557,000 applications for industrial property rights, including patents, trademarks, and designs were filed, an increase of 0.03% from the previous year, turning into an upward trend.
In each technology field, the applications in high-tech and key industries such as semiconductors (▲12.3%), electrical machinery/energy including secondary batteries (▲11.4%), and digital communications (▲10.3%) have been particularly increased.
However, trademark and design applications decreased slightly. Last year, the number of trademark applications was 255,000, a 1.5% decrease from the previous year. Design applications also decreased by 2.3% from the previous year to 55,000. However, it appears that trademark applications have increased in the advertising, restaurant, cafe, baking, and snack-food industries, which indicates that more trademark applications have been filed by small business owners and individual start-ups.
The (KIPO) stated that it is highly encouraging that industrial property rights applications, especially patents, have turned to an upward trend despite the high interest rates caused by global inflation.

Source: Patent News (January 10, 2024)

Expanding support for prioritized examination for secondary battery 

- Examination period for the secondary battery applications was 22.9 months 
      → will be shortened to 2 months.
- Will expand prioritized examination from semiconductors and displays 

The Korean Intellectual Property Office (KIPO), which has designated patent application fields related to national advanced technology as prioritized examination subjects, will also designate and operate applications in the secondary battery field as prioritized examination subjects starting February 19, following semiconductor and display applications*.
* Prioritized examination available for semiconductor applications (November 1, 2022) and display applications (November 1, 2023) – (see C&S Newsletter No. 44)
Secondary batteries are a core technology in the eco-friendly mobility industry, including electric vehicles, and are within an area in which competition to secure patent rights to defend technological competition has intensified. As secondary battery applications are added to the prioritized examination subjects, it is expected that the examination, which previously took 22.9 months on average, could be shortened to just 2 months.
However, applications which apply secondary battery-related technology to other fields (e.g. vehicles including secondary battery devices, or the like) are not subject to prioritized examination.

Source: Patent News (Fabruary 19, 2024)

Korea, “No. 1 in the world” in Screen Sports Applications 

The global screen sports market, including screen golf and screen tennis, is expected to grow at an average annual rate of 13.1% from approximately 4.7 trillion won in 2022 to approximately 11.1 trillion won in 2029, and competition in the area of technological development to secure the market will be increasingly fierce. The screen sports-related applications have increased by an average of 7.8% per year over the past 20 years (2002-2021), and Korea has filed the most applications, accounting for 58.4% of all applications.
By nationality of applicant, Korea filed the most applications (58.4%, 1,715 cases), followed by the United States (17.0%, 500 cases), Japan (8.9%, 262 cases), China (6.4%, 188 cases), and Denmark (4.1%, 119 cases).

Source: Patent News (March 3, 2024)

C&S News

55th anniversary event (February 23, 2024)
C&S Patent and Law Office held the firm’s 55th anniversary event on Friday, February 23rd. At the event, all the staff members went to watch movie together and had dinner, and awards were made to our long-term employees. After the COVID-19 period when it was not possible to hold such events, this event was a meaningful occasion for all staff members to gather together, and it was an enjoyable time for all, reaffirming our cohesion as a single team.

New Patent Attorneys
C&S Patent and Law Office has recently hired a new patent attorney to further strengthen our business capabilities. We will continue to do our best to provide professional services by recruiting talented employees.