• Method for Determining Whether to Fall within Scope of Rights of “Product by Process Claim”
• Revision to “Act on Unfair Competition Prevention and Trade Secret Protection”
• Changes to Intellectual Property Trial in Korea
• Seeking Breakthrough in Exports through Increase in Overseas Patent Applications by Korean Companies 
• Companies Entering the U.S. and Japanese Markets can Obtain Patents Within as Early as 3 Months through the Patent Prosecution Highway (PPH)
• C&S News

• Method for Determining Whether to Fall within Scope of Rights of “Product by Process Claim”_Nam-Ki KIM, Patent Attorney

[2020Hu11059 Decision by Supreme Court, January 28, 2021]
1. Overview
A ‘product by process claim (hereinafter referred to as a ‘PbP claim’)’ is an invention in which the claim is described as a product claim and includes a description of a method of manufacturing the product. Such PbP claims are recognized for the purpose of diversifying the objects of product inventions and diversifying the means of description for the creation of technical ideas. Apart from the recognition of PbP claims, there have been various interpretations of the PbP claims.

There have been recent cases with regard to the interpretation of the scope of rights of PbP claims.
2. Interpretation of PbP claims¹
(1) Theories
As for the interpretation of PbP claims, there are two main interpretation theories.
1) Product identity theory
If there is identity as a product, even products produced by a method different from the manufacturing method described in a PbP claim are included in the scope of rights of the PbP claims.
2) Process limitation theory
In light of the notion that the technical composition of a claim should be interpreted on the basis of the subject matter described in the claim, the technical composition of a PbP claim is limited to the products manufactured by a method described in the PbP claim.
(2) Recent Cases
In the en banc decision in the 2011Hu927 case, which was issued on January 22, 2015, the Supreme Court adopted the product identity theory for the interpretation of PbP claims when determining patent requirements of the PbP claims.

Also, in the 2013Hu1726 decision issued by the Supreme Court on February 12, 2015, which refers to the 2011Hu927 decision, the same interpretation criteria was specified for PbP claims when interpreting the scope of rights of the PbP claims.
After the 2011Hu 927 decision, when determining patent requirements and interpreting the scope of rights, the product identity theory was adopted without considering whether it is a true PbP claim or non-true PbP² claim.

3. 2020Hu11059 Decision by Supreme Court, January 28, 2021 
(1) Overview
The case was an appeal case to the Supreme Court in a rights scope confirmation trial for a subject patent, and claim 1 and the relevant description in the specification of the subject patent are as below.

A product subject to confirmation in this case relates to “tablets containing polaprezinc of a d90 of less than 30 μm as the main ingredient and manufactured using a wet granulation method.”
(2) Decision
Regarding the interpretation of the scope of rights for a PbP claim, the Supreme Court stated that “In determining whether to fall within the scope of the product by process claim, the technical composition should not be limited to the manufacturing method thereof, but should be understood as a product having a structure or properties specified by the entirety of descriptions in the claims, including the description of the manufacturing method, and should be compared with the invention subject to confirmation.” It was decided based upon the above legal principles that, although the subject matter in claim 1 of the present case and the product subject to confirmation are identical, in that both contain polaprezinc as an active ingredient of which a ratio and a size thereof are limited, literal infringement and equivalent infringement were not established⁴ because the subject matter in claim 1 is a tablet having a structure and properties specified by being manufactured by a direct compression method, whereas the product subject to confirmation is a tablet having a structure and properties specified by being manufactured by a wet granulation method.

4. Conclusion and notes
Through the decisions, the Supreme Court presented a unified criteria based on the product identity theory in determining the patent requirements of PbP claims and also in interpreting the scope of rights of the PbP claims. In other words, the patent requirements and
the scope of rights of PbP claims are interpreted based on the product of which a structure or properties are specified by the manufacturing method described in the PbP claims. Therefore, when preparing a patent application and including a PbP claim, it is necessary to consider whether the structure or properties of the product are specified by the manufacturing method described in the PbP claim.
Also, the criteria regarding PbP claims in overseas countries could be different. The table below summarizes the interpretation of PbP claims in major countries.⁵ Since there are differences as shown in the table below, it may be necessary to individually consider the circumstances of each country when filing overseas. 

However, in relation to PbP claims, the issues still remain regarding the ambiguity of the criteria for specifying the structure or properties of the product and the different criteria in overseas countries.

1  The summary of the part of the discussion on “How to determine whether a product by process claim is included in the scope of rights” presented in the Patent Law Society’s 2021 TOP 10 patent case law seminar.
2  A “true PbP claim” refers to a claim which specifies a product based on a manufacturing method because there are circumstances in which it is impossible or difficult to directly specify the product based on the structure or characteristics thereof at the time of filing an application, and a “non-true PbP claim” refers to a claim which specifies the product by description of the manufacturing method even in the absence of such circumstances. 
3 Methods for making tablets include a direct compression method and a wet granulation method. The direct compression method is directly compressing and tableting powder, whereas the wet granulation method is making granules and mixing the granules with excipients and tableting.
4  In particular, the patentee of the patent in this case filed an amendment and agreement to overcome the reasons for rejection during the examination process. In the agreement, the present invention claimed technical features for manufacturing tablets by direct compression.
5  The summary of the part of the discussion on “How to determine whether a product by process claim falls within the scope of the rights in the Patent Law Society’s 2021 TOP 10 Patent Case Law Seminar.
 

• Revision to “Act on Unfair Competition Prevention and Trade Secret Protection”  _Jung-Won LEE, Attorney / Patent Attorney

The revised “Act on unfair competition prevention and trade secret protection” (hereinafter “the Unfair Competition Prevention Act”) was promulgated on March 28, 2023 and will come into effect on September 29, 2023. The revised Act stipulates a new exception to the illegal use of a trade dress of another person’s product or business and statutes of limitations for claiming prohibition against idea theft. The main revisions are as below.

1. Establishment of new exception to the act of using trade dress of another person’s product or business for illegal purposes
Article 2, Paragraph 1, items (Ga) and (Na) of the Unfair Competition Prevention Act define an act of causing confusion with another person’s product or business by using a trade dress identical or similar to that of widely recognized and belonging to another person’s product or business as an act of unfair competition in Korea.
There was, however, a controversy as to whether even the act of using a trade dress by a user who had already been using the same or similar trade dress in good faith before the trade dress for another person’s product or business became widely recognized could be included in the acts of unfair competition. In response thereto, the Supreme Court has maintained the position that, unless the Unfair Competition Prevention Act provides an exception for such circumstances, the use of the trade dress by a bona-fide prior user also constitutes an act of unfair competition (2002Da9011 decision by Supreme Court, March 25, 2004).
The revised Unfair Competition Prevention Act established a new exception to the acts of confusion between products and business entities in order to prevent bona-fide prior users from suffering unexpected damage as described above.
According to the specific details, the revised Unfair Competition Prevention Act stipulates that “a case where a trade dress identical or similar to the trade dress of another person’s product or business continues to be used without any unlawful purpose from before the trade dress of the product or business of another person became widely recognized in Korea” and “a case where a person continues to use the trade dress without any improper purpose as a successor to the person in such a case” are not included in the act of confusion between products and business entities. Accordingly, as to those subject to the exception a fairly wide range of exceptions can now be recognized as bona-fide prior users and their successors.
Meanwhile, in the revised Unfair Competition Prevention Act, a new right to claim for prevention of misidentification and confusion has also been established by taking into account the fact that, if multiple entities who use the same or similar trade dress are present due to the allowance of the above exception, ordinary consumers may suffer unexpected losses. Therefore, a new provision was established which allows the right holder of the trade dress of a product or business widely known in Korea to request bona-fide prior users to indicate necessary information so as to prevent misidentification or confusion about the source, which is deemed to take into consideration the aspect of consumer protection.

 2. New statute of limitations for claiming prohibition against idea theft
Article 2, Paragraph 1, Item Cha of the Unfair Competition Prevention Act states the idea theft, which is “an act of illegally using information containing another person’s technical or business ideas having economic value for one’s own or a third party’s business benefit in violation of the purpose for which the information was provided, or providing the information to others to use it in the course of business negotiations or transactions, such as business proposals, bids, public offerings, and so on,” as an act of unfair competition. The victims of idea theft can request an injunction and compensation for damages against the person stealing the idea.
However, among the relief measures for idea theft, the right to claim prohibition against the idea theft has no separate statute of limitations provision, such that it has been interpreted that a claim for prohibition against the idea theft can be filed indefinitely without statute of limitations. There has been, however, a controversy over the issue of fairness and it could be harmful to legal stability, as compared to the right to claim compensation for torts under civil law, which is subject to a statute of limitations of 3 years from the date of knowledge of the damage and the perpetrator or 10 years from the date of the tort.
Accordingly, the revised Unfair Competition Prevention Act newly established that, unless the right to claim a prohibition against idea theft is filed within “3 years from the date of knowledge of the fact that business interests are infringed or likely to be infringed and the act of stealing the idea” or “10 years from the date the act of stealing the idea began,” the statute of limitations will be complete. 

3. Conclusion
The revised Unfair Competition Prevention Act could prevent bona-fide prior users from suffering unexpected losses by excluding, from unfair competition, the continued use of the trade dress of another person’s products and business by bona-fide prior users. Meanwhile, by newly establishing the right to claim for prevention of misidentification and confusion against bona-fide prior users, rights holders of the trade dress of products or business widely known in Korea can protect their right to claim for prevention of misidentification and confusion as to bona-fide previous users. The revised Act is evaluated as a measure to harmonize the rights of bona-fide prior users and the rights holders of a trade dress of product or business.
Also, since the statute of limitations for the right to claim prohibition against idea theft has been newly established, in practice, it is necessary to note that victims of idea theft should exercise their rights at the appropriate time to avoid situations in which they can no longer seek prohibition against idea theft due to the completion of the statute of limitations.

• Changes to Intellectual Property Trial in Korea

The Korean Intellectual Property Office (KIPO) announced that, as the revision to ‘Trial Affairs Handling Regulations’ will take effect from July 1, 2023, it will introduce a “Trial Decision Date Notice System.”

Previously, the exact trial decision date was not stated in the Notice of Closure of Trial Proceeding notifying that the proceeding of a trial case was concluded, such that the trial parties had to wait up to 20 days for the trial decision even after receiving the Notice. To resolve this issue, the adjudication procedure was improved to provide a trial decision date when notifying the closure of trial proceedings.

The KIPO said that it will continue to discover and resolve necessary system improvements in order to resolve patent disputes swiftly and fairly.

Source: Korean Intellectual Property Office Press release (July 2, 2023)

• Seeking Breakthrough in Exports through Increase in Overseas Patent Applications by Korean Companies 

Amid increasing global uncertainty due to the US-China hegemony struggle, domestic patent applications in the first half of this year recorded approximately 107,000 cases, an increase of 4.1%, as compared to the same period last year. Also, overseas patent applications filed to dominate new markets increased by 25.5% compared to the same period last year, demonstrating efforts of Korean companies to turn crises into opportunities.

The Korean Intellectual Property Office (KIPO) announced that the total number of domestic patent applications received in the first half of 2023 was 107,000, an increase of 4.1% compared to the same period last year. 

By technological fields, the increase centered on export-oriented industries, such as semiconductors (4,406 cases, ▲16.2%), digital communication information transmission (3,651 cases, ▲18.9%), and electrical machinery/rechargeable energy battery manufacturing (5,581 cases, ▲6.1%), and the number decreased in the fields, such as e-commerce brokerage transactions (4,689 cases, ▼6.1%), transportation electric vehicle control coordination (2,889 cases, ▼7.8%), organic fine chemical cosmetics preparations (1,865 cases, ▼7.0%).
This can be interpreted as the result of Korean companies recognizing the global supply chain reorganization process as an opportunity rather than a crisis, and establishing a detailed patent strategy focusing on high-tech industries, such as semiconductors and communications.

The number of patent applications filed by Korean companies in major overseas countries such as the United States and China (based on issuance of priority certificates) has steadily increased every year, reaching 29,271 in the first half of 2023, an increase of 25.5% compared to the same period last year.

It is analyzed that, as the target countries for patent applications by Korean companies have expanded from the US and China to third countries, such as India and Vietnam, the target countries for exports are also changing in the same direction as patent applications.
The KIPO stated that, in order to actively support the stable activities of exporting companies in overseas markets, it is necessary to strengthen various support policies tailored to overseas local conditions.

Source: Korean Intellectual Property Office Press release (July 16, 2023)

• Companies Entering the U.S. and Japanese Markets can Obtain Patents Within as Early as 3 Months through the Patent Prosecution Highway (PPH)

The Korean Intellectual Property Office (KIPO) said that, starting from August 1 of this year, it will implement the “Patent Prosecution Highway (PPH) Improvement Policy” which sets the average processing time at each examination stage to 3 months for PPH applications in cooperation with the United States and Japan. 

Previously, in the case of prioritized examination through the PPH, the sending of a first examination notice was managed within 4 months, but it was decided to reduce this period to within 3 months. Also, regulations were revised such that the period for issuing a subsequent examination notice after the applicant files a response is managed to be within 3 months. In the future, applicants who apply for the PPH in Korea, the United States, and Japan are expected to be able to register patents within three months after the decision of the prioritized examination.

There have been discussions among the five advanced patent offices (IP5) to increase the predictability of the examination time for PPH applications. Last year, the United States and Japan implemented the “PPH Improvement Policy” to improve the speed of each examination, and the processing period for each examination stage was set to within 3 months. The KIPO also decided to actively participate in this policy following the Korea-U.S. intensified cooperation agreement (MOU) in the intellectual property field last June, and equivalent services will be provided based on reciprocity.

Regarding this improvement policy, the KIPO stated that it will provide confidence to foreign companies entering Korea by accurately providing the expected period until patent registration, and that it will likely be applied to Korean companies filing applications in the United States and Japan.

Source: Korean Intellectual Property Office Press release (July 30, 2023)

C&S News

• Partner Sung-Soo Ahn Admitted to the Bar in the U.S. 

Sung-Soo Ahn, a patent attorney and a partner at C&S Patent and Law Office, returned to work after admitted to the Illinois state bar. He graduated from Seoul National University and majored in law at the University of Southern California. He currently represents domestic and international corporate clients in a variety of cases, leveraging his outstanding expertise and extensive experience in the mechanical field.

• New Patent Attorneys 

C&S Patent and Law Office has recently hired new patent attorneys in the fields of 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.