•  Decision of Supreme Court on “Timing of Determining Easiness of Changes” and “Intentional Exclusion” in Infringement under Doctrine of Equivalents 
•  Main Content and Commentary on Revised Trademark Act and Design Protection Act
•  Admissibility of Free Implementation Defense Based on Prior Design that Served as Basis for Application of Exception to Lack of Novelty
•  Patent, Trademark, and Design Application Trends in Korea in 2022
•  Korea ranked 4th for 3 consecutive years for international patent applications(PCT) and 11th for international trademark applications
•  C&S News

•  Decision of Supreme Court on “Timing of Determining Easiness of Changes” and “Intentional Exclusion” in Infringement under Doctrine of Equivalents  _Woo-Taek HWANG, Patent Attorney

Recently, the Supreme Court (ruled on 2023. 2. 2, 2022hu10210 decision) clearly presented the criteria for the timing of determination on the easiness of changes and intentional exclusion in relation to the patent infringement under doctrine of equivalents, which has been issues in numerous disputes between parties.
 
[Timing of determination on easiness of amendment in patent infringement under doctrine of equivalents]
 
To regard a product of an accused infringer, as compared with the patented invention of a patentee, as belonging to the scope of patent rights, each of the elements recited in the claims of the patent and the organic coupling relationship between the elements of the claims shall be included in the product of an accused infringer as is.
 
Although the scope of protection of a patent is determined by the matters recited in the claims (Article 97 of the Patent Act), in the case in which the elements of the claims and the corresponding elements of a product of the accused infringer are not literally the same but they are in an equivalent relationship, this case is deemed to fall within the scope of protection and infringement is acknowledged because there could be linguistic limitations for the patentee to describe the invention in the claims, and if attempts to evade patent infringement through small changes are neglected, patent rights cannot be practically protected. Considering the purpose of the acknowledgement of patent infringement under the doctrine of equivalents as above, it would be reasonable to assume that even publicized data between the filing of the application of the patentee and the time of infringement could be taken into account in determining the easiness of changing the elements of the claims.

Considering the purpose of doctrine of equivalents, it would be reasonable that, in the claim scope confirmation case, if the product of an accused infringer has changed portions among the elements recited in the claims of the patent, it can be decided whether such changes could easily be conceived by a person skilled in the art by taking into account the data publicized after the filing of the application of the patentee at the time of the decision of the claim scope confirmation case.

[Reduction of claim scope and intentional exclusion in examination process]

The decision on whether a certain element is intentionally excluded from the scope of the claims during the examination process of an application for the invention of a patentee shall be made by taking into consideration the specification, the opinion presented by the examiner at the patent office from the filing of the application to the registration of a patent, and the patentee’s intention and reason for amendment in the amendments and arguments filed by the patentee during the examination process.

Therefore, it could not be concluded that the entire elements present in the area between before the reduction of the claim scope and after the reduction of the claim scope are intentionally excluded from the claim scope by comparing the elements before reduction and the elements after reduction on the ground that the claims have been amended to reduce the claim scope during the examination process. In view of the various circumstances revealed in the examination process, including the reasons for amendment, such as the amendment in which the claim scope was reduced to exclude the elements disclosed in the cited references with the intention of avoiding the cited references presented in the notice of rejection, the intentional exclusion can be acknowledged when applicant had an intention to exclude a certain element from the scope of patent rights.

• Main Content and Commentary on Revised Trademark Act and Design Protection Act  _Jung-Won LEE, Attorney / Patent Attorney

1. Enforcement of Revised Trademark Act and Design Protection Act
As the Trademark Act (Act No. 18817, enforced on February 4, 2023) and the Design Protection Act (Act No. 18886) were revised in 2022, and have recently been enforced, significant changes have taken place regarding trademarks and design systems. The main content of the revised Act is as below.

2. Revised Trademark Act
(1) Expansion of trademark use (effective on August 4, 2022)
Trademarks have been displayed online and a variety of digital products have been distributed online through unilateral downloads. But under the Trademark Act before revision, the act of using a trademark was defined as “acts of transferring or delivering goods or goods packaging marked with a trademark, or exhibiting, exporting, or importing for the purpose of transferring or delivering the goods or goods packaging,” such that there was a problem that it was unclear whether the use of trademarks online could belong to the above-described act of use.

Therefore, in the revised Trademark Act, in addition to the existing traditional types of use, the act of displaying a trademark online and on digital products has been stipulated as an act of using a trademark (Article 2(1), 11, Item Na of the Trademark Act). Accordingly, the scope of acknowledgment of trademark use has been expanded in cancellation trials for non-use of trademarks, and litigations for damages caused by the use of trademarks by others without permission, and hence the protection of trademark rights holders has been strengthened.

(2) Introduction of reexamination request system (effective on February 4, 2023)
Under the Trademark Act before revision, when an applicant received a rejection of a trademark registration, there was no countermeasure available, other than filing a request for an appeal against final rejection. However, the revised Trademark Act introduces a system for requesting reexamination of a trademark, allowing a request for reexamination of a final rejection of trademark registration (Trademark Act, Article 55-2). A person who has received a final rejection of trademark registration shall amend the designated goods or trademark for which a rejection has been made and may request reexamination of the trademark application within three months (if the period under Article 116 is extended pursuant to Article 17 (1), the extended period) from the date of receipt of a certified copy of the final rejection. However, reexamination cannot be requested if there has already been a rejection following reexamination or a request for an appeal against a final rejection. When reexamination is requested, the fee is reduced by KRW 220,000 per category, as compared to requesting an appeal against a final rejection.

(3) Introduction of partial rejection system (effective on February 4, 2023)
Under the Trademark Act before revision, even if there are grounds for rejection for only some designated goods in an application for trademark registration, in a case in which the applicant did not address the grounds for rejection, the goods with no grounds for rejection were also rejected. The revised Trademark Act has introduced a partial rejection system in which, if there are grounds for rejection of only some of the designated goods listed in the trademark application, trademark registration for the remainder of designated goods can be made (the Trademark Act, Articles 57, 68, and 87). 

This system shall be applied to applications filed after February 4, 2023, which is the effective date of the revision. In addition, under the system before revision, when requesting an appeal against a final rejection, a trial fee was charged for all designated categories of goods, but after the revision, the fee for an appeal request shall be paid for only the designated category of goods for which there are reasons for rejection. Therefore, it is expected that there will be an effect of reducing the handling fee in both the case in which some of designated goods are rejected and the case in which an appeal is requested for the rejected designated goods, which could be beneficial to applicants.

3. Revisions of Design Protection Act
In the Design Protection Act, which was revised and enforced on June 10, 2022, the crime of design right infringement was changed from a crime of self reporting, which requires the complaint of a design rights holder to file a lawsuit, to a crime not requiring the complaint of a design rights holder to file a lawsuit unless there is the expressed intention of the design rights holder not to punish the infringer (Article 220(2) of the Design Protection Act). In the case of a crime of self-reporting, there was a problem that the deadline could be passed in the review process after confirming the infringement, as the victim could not file a complaint after 6 months had elapsed from the date the victim found the culprit (Article 230 of the Criminal Procedure Act). As a result, there has been a problem of excessive complaints in order to comply with the deadline even though the infringement is not clear. In addition, as for the investigative agency, since it is impossible to proceed with an investigation if there is no complaint from the design rights holder, it was difficult to actively conduct an investigation until the design rights holder’s intention to sue is confirmed, which raises the issue that it is not an effective means to protect the rights holder.

Accordingly, the revised Design Protection Act has further strengthened the protection of design rights holders by stipulating design right infringement as a crime not requiring the complaint of a design rights holder to initiate and proceed with an investigation. The revised Design Protection Act applies to crimes having occurred or being continuing after the Act came into force (Articles 1 and 2 of each supplementary provision).

4. Conclusion
With the enforcement of both the revised Trademark Act and the revised Design Protection Act, many systems have been introduced to bring convenience to acquiring and enforcing the rights. In particular, through the partial rejection system in the revised Trademark Act, applicants are able to secure trademark rights within the scope of registration without rejection of the entire application for minor reasons of rejection. Through the reexamination request system, applicants can respond to rejections through a relatively simplified procedure instead of requesting an appeal against a final rejection. It is expected that the use of domestic intellectual property rights will become more active with the introduction of various systems that promote the convenience of intellectual property rights holders.
 

• Admissibility of Free Implementation Defense Based on Prior Design that Served as Basis for Application of Exception to Lack of Novelty 
  (Decision by the Supreme Court on February 23, 2023, 2021Hu10473, confirmation of scope of rights (D))  _Jung-Won LEE, Attorney / Patent Attorney

1. Overview
Recently, the Supreme Court ruled that if a prior design serves as the basis for the application of the exception to lack of novelty, it is not possible to claim a free implementation defense based on the prior design. As this is contrary to the position of the Patent Court, the implication of the exception to lack of novelty and the free implementation defense will be discussed herein based on the positions and grounds of each court.

2. Position of the Patent Court (2022Heo5412)
The plaintiff requested a trial before the Intellectual Property Trial and Appeal Board (IPTAB) to confirm that “the defendant’s design belongs to the scope of rights of the plaintiff’s registered design.” When the IPTAB rendered a decision dismissing the plaintiff’s request, the plaintiff filed an appeal with the Patent Court to request the cancellation of the IPTAB’s decision.

Afterwards, the Patent Court held that a photograph of the product to which Prior Design 2 was applied was taken, and was transmitted to a third party in the form of an electronic file prior to filing the application for the plaintiff’s registered design, and thus that this corresponds to a publicly known design unless there are special circumstances. The Patent Court allowed the defendant’s free implementation defense based on Prior Design 2 and determined that the defendant’s design did not fall within the scope of the rights of the plaintiff’s registered design.

As a basis for the conclusion, the Patent Court held that ① the lack of novelty exception stipulates that a prior design shall not be regarded as being publicly known for the determination of “requirements of design registration,” that ② the lack of novelty exception should be considered “to the extent that the rights and interests of third parties are not harmed”  

when determining whether to register the design, that ③ the legal principle of free implementation defense is that a comparison is made between the prior design and the defendant’s design , not considering the “relationship with the registered design,” and that ④ if the design is unjustly disclosed against the purpose during the transaction process, the design can be protected by the Unfair Competition Prevention and Trade Secret Protection Act.

3. Position of the Supreme Court (10473Hu2021)
The Supreme Court considered that the issue in this case is whether it is possible to claim a free implementation defense based on the prior design that served as the basis for the application of the lack of novelty exception rule. The Supreme Court held that the claim for free implementation defense on the premise that the publicly available design, which is the basis for the application of exception to the lack of novelty, or the design that can be easily implemented according to the combination thereof is in the public domain available to anyone is not allowed, and reversed the decision and remanded the case to the lower court.

The Supreme Court cited as the grounds for the above conclusion that, ① to promote a balance of interests between a third party and a person who has the right to receive a design registration on the premise of a legislative decision recognizing the exception to lack of novelty, the timing and procedural requirements are set up to apply the exception to the lack of novelty, and even if the exception to the lack of novelty is applied, the filing date is not retroactive, that ② the legal principle of free implementation defense, which compares the design subject to confirmation with the prior design, is based on the idea that anyone should be able to use the design in the public domain, and it cannot be concluded that the publicized design, which is the basis for the application of exception to the lack of novelty, is in the public domain, and that ③ as the right to use is granted free of charge to a third party who has not made any creative contribution to the prior design, an unreasonable result may occur if the protection of the third party takes precedence over the right of the registered design rights holder. 

4. Conclusion
After the ruling of the Patent Court, there have been a great deal of controversies about the interpretation of the exception to lack of novelty and free implementation defense. However, based on the decision of the Supreme Court, a principle is now established that if a person eligible for a design registration received a design registration by claiming an exception to the lack of novelty, the prior design, which serves as the basis for the application of exception to the lack of novelty, can no longer be considered to be in the public domain for the free implementation defense.

Applying the legal principle of free implementation defense, which has been recognized in judicial precedent, in preference to the claim for exception to the lack of novelty, which has been explicitly recognized by the law, may lead to an unreasonable conclusion in which the rights holder’s rights are excessively restricted. In this respect, the decision of the Supreme Court is considered highly desirable in that it has established an active stance and clear standards for the protection of rights holders.

• Patent, Trademark, and Design Application Trends in Korea in 2022

The Korea Intellectual Property Office (KIPO) has announced tentative trends in the areas of patent, trademark, and design applications in Korea in the year 2022.

Due to the economic recession caused by global inflation, the number of patent applications in Korea in 2022 maintained the same level as the previous year, but the number of trademark and design applications significantly decreased.

First, the number of patent applications was 237,000, the same as the previous year.

As for domestic patent applications by technology field, applications increased mainly in high-tech fields such as semiconductors (Δ18.3%), e-commerce (Δ7.5%), and electronic (digital) communications (Δ5.8%), and decreased in civil engineering (▽17.1%) and other consumer goods such as masks (▽16.1%). In particular, the increase in applications in the high-tech field by Koreans is a result of strategic intellectual property management by Korean companies to secure supply chains in high-tech and key industries such as semiconductors, electronics (digital), and telecommunications under the larger frame of competition for technological supremacy between the US and China. 

On the other hand, international patent applications (PCT applications) in 2022 increased by 6.8% from the previous year to a total of 22,000 cases, exceeding the average increase rate (6.6%) over the five years (2018-2022). In particular, in the case of SMEs, domestic patent applications were at the same level as the previous year, but international patent applications increased by 13% in order to try to advance into overseas markets through technological development without shrinking against the economic recession.

As for the year-on-year change by country for patent applications filed in Korea in 2022, the US (△14%) and Europe (△3.9%) increased, while China (▽0.1%) and Japan (▽2.2%) decreased. In particular, considering the situation in which competition between countries to secure advanced technologies has intensified, the United States seems to have significantly increased applications for semiconductors and advanced technologies. 

Next, trademark applications were 325,000, down 8% from the previous year.

The number of domestic trademark applications decreased by 10% as compared to the previous year to 290,000, reflecting the excessive number of trademark applications in the past, while international applications increased by 13% to 35,000.

Lastly, the number of design applications was 60,000, a decrease of 12% as compared to the previous year.

Domestic design applications decreased by 12% as compared to the previous year to 57,000 cases, and international applications decreased by 7% to 3,000 cases.

Source: Korean Intellectual Property Office press release (January 30, 2023)

• Korea ranked 4th for 3 consecutive years for international patent applications (PCT) and 11th for international trademark applications

In 2022, international patent applications (PCT) filed in the World Intellectual Property Organization (WIPO), including by Samsung Electronics and LG Electronics, increased by 6.8% from the previous year to 22,000 cases, ranking 4th for three consecutive years.

In particular, Korea’s year-on-year increase in international patent applications (PCT) was the highest (6.2%) among the top 10 major countries despite the difficulties caused by the complex economic crisis. The US decreased by 0.6% year-on-year, while China, Japan, and Germany only increased by 0.6%, 0.1%, and 1.5%, respectively.

In 2022, the number of international patent applications (PCT) increased worldwide by 0.3% from the previous year to 278,000, and China filed 70,000 applications, ranking first in the world for the fourth consecutive year. Among the top 10 companies in international patent applications, Korea has two companies, Samsung Electronics (2nd) and LG Electronics (9th), confirming that Korea is a powerhouse in international patent applications.

In 2022, the number of international trademark applications (Madrid applications) decreased by 6.1% from the previous year to about 69,000 (the largest decrease since 2009), but the number of applications filed by Korean companies rather increased.

The number of international trademark applications in Korea in 2022 was 2,000, ranking 11th, and the growth rate was 9% in 2019, 13% in 2020, 24% in 2021, and 2.1% in 2022, which is significantly high as compared to the growth rate of international trademark applications worldwide. 

Source: Korean Intellectual Property Office press release (March 2, 2023)

C&S News

• 54th Foundation Day Anniversary Event (February 24, 2023)

C&S Patent & Law Firm celebrated its 54th foundation day anniversary on February 24th.
This event was a time to celebrate the firm’s founding, and all executives and employees wished for the development of C&S in the future. In addition, awards were given to long-serving employees (2 people on their 30th anniversary, 1 person on their 20th anniversary, 16 people on their 10th anniversary) and a promotion ceremony was held.

• New Patent Attorneys

 C&S Patent and Law Office has recently hired a patent attorney in the field of Electrical Engineering, Electronics and Mechanical Engineering to further strengthen our business capabilities. We will continue to do our best to provide professional services by recruiting talented employees.