Inventive step judgment case regarding ‘spacer for de-molding deck’ [Supreme Court ruling on October 8, 2024, Decision 2021Hu11216]
Whether trademark right is infringed by reform activities of luxury goods [Patent Court ruling on October 28, 2024, Decision 2023Na11283]
Korea's LG ranks first in global green and low-carbon patent applications
‘Trademark Coexistence Agreement System’ has led to mutual prosperity between large and small businesses
South Korea achieves world No. 1 in patent applications filed, relative to GDP and population
C&S News

Inventive step judgment case regarding ‘spacer for de-molding deck’ [Supreme Court ruling on October 8, 2024, Decision 2021Hu11216]

Woo-Taek Hwang, Patent Attorney
Sung-Soo Ahn, Patent Attorney

1. Overview
In trials or lawsuits challenging the validity of a patent, the main issue is whether the patented invention has an inventive step. Accordingly, various legal principles for judging the inventive step of the patented invention are presented.
The typical principles for judging an inventive step are: (1) whether the combination of prior art references is technically difficult due to the differences of the technical fields (Supreme Court ruling on October 25, 2012, Decision 2012Hu2067), (2) whether the claims including multiple elements can be organically combined as a whole, based on a unique problem-solving principle and have difficulty in configuration and a unique effect (Supreme Court ruling on September 6, 2007, Decision 2005Hu3277), (3) whether the prior art references present implications or motivations for achieving the patented invention, or a person skilled in the art can easily achieve such a combination in light of the technological level at the time of filing the patent application, technical common sense, basic tasks within the pertinent technical field, development trends, and demands of the relevant industry (Supreme Court ruling on May 16, 2014, Decision 2012Hu115), and (4) when applying the legal principles (2) and (3) above, whether there is a negative teaching in the publicly known technology (Supreme Court ruling on October 25, 2012, Decision 2012Hu2067), and whether it is determined retrospectively that a person skilled in the art could easily invent the invention, assuming that he or she knows the technology disclosed in the specification of the patented invention that is the subject of the judgment of an inventive step (Supreme Court ruling on July 22, 2010, Decision 2008Hu3551).
This article introduces a Supreme Court decision that comprehensively considers the ‘technical field to which the invention belongs’ stipulated in Article 29(2) of the Korean Patent Act and the various prior art references in principle (3) above, among the representative inventive step judgment principles mentioned above, in order to determine the inventive step of a patented invention.

2. Issues
The plaintiff (appellant), the patentee, asserts that the patent invention and Prior Art Reference 1 relate to a spacer used in the demolding steel deck plate method, and have technical tasks to solve the problems (impaired appearance, inconvenience of work, inability to reuse formwork plywood, detachment of the embedded portion) of inserts used in the formwork method, and Prior Art Reference 2 relates to a spacer used in the formwork method, and thus, Prior Art Reference 1 and Prior Art Reference 2 differ from each other in terms of the detailed technical fields thereof, and also, since Prior Art Reference 1 and Prior Art Reference 2 have many differences in their configurations, not only are there many technical difficulties in combining Prior Art Reference 1 and Prior Art Reference 2, but also even if Prior Art Reference 1 and Prior Art Reference 2 are combined, the patented invention is not easily derived. 
In this regard, the Patent Trial and Appeal Board made a decision that claims 1 and 2 of the patented invention were invalidated because of lacking an inventive step over Prior Art References 1 and 2, and the Patent Court also made a ruling that dismisses the plaintiff's arguments.

3. Supreme Court decision
The Supreme Court supported the lower court’ decision by stating that the lower court, which determined that claim 1 of the patented invention was invalidated because of lacking an inventive step, did not make any mistake in the judgment by misunderstanding the legal principles or violating the Supreme Court precedents.

A. Judgment on the technical field to which Prior Art References 1 and 2 and the patented invention belong 
The spacers of Prior Art References 1 and 2 and the spacer of claim 1 of the patented invention are both technologies used in the industrial field of forming concrete using a slab method, and have the operational effect of securing a thickness of a concrete cover as a technical configuration arranged between the rebar (truss girder) and the formwork (deck plate), so that Prior Art References 1 and 2 and claim 1 of the patent inventions belong to the same technical field.
B. Judgment of inventive step by citing several prior art references (Regarding differences 1 to 4 in the original judgment)
① (Difference 1 in the original judgment) Considering the technological level at the time of filing the patent application, and the development trend of the relevant technical field, etc., since a person skilled in the art at the time of filing the patent application could selectively apply the spacer used in the formwork method or the spacer used in the demolding deck plate method as required, it may not be technically difficult for a person skilled in the art to apply Prior Art Reference 2, which relates to a spacer used in the formwork method, to the spacer used in the demolding steel deck plate method.
② (Differences 2 and 3 in the original judgment) Since the spacer including an insert function is a well-known technology widely used in the spacer field at the time of filing the patent invention, including the spacers used in the formwork method and Prior Art Reference 1 discloses the configuration in which a spacer body formed of a synthetic resin material and performing an insert function by having a female screw combined with a spacer head by insert injection molding, it may not be technically difficult for a person skilled in the art to combine the female screw, the insert injection molding, and the synthetic resin material, which are disclosed in Prior Art Reference 1 to Prior Art Reference 2 in order to apply Prior Art Reference 2 to the spacer used in the demolding deck plate method. Additionally, there is no basis for considering that a considerable amount of material must be used in the basic body of Prior Art Reference 2 in order to combine the components of Prior Art Reference 1 with Prior Art Reference 2, and introducing the components of Prior Art Reference 1 to Prior Art Reference 2 cannot be determined to cause the technical significance of Prior Art Reference 2 to be lost, and it is also difficult to see that there are negative teachings in this regard.
③ (Difference 4 in the original judgment) A basic body of a support element bending portion of Prior Art Reference 2 and a spacer head reinforcing piece of claim 1 of the patented invention are components for strengthening the degree of bonding with the spacer body and preventing detachment, and the support element bending portion of Prior Art Reference 2 and the spacer head reinforcing piece of claim 1 of the patented invention have the same purpose and function, and therefore, changing the shape of the support element bending portion of Prior Art Reference 2 to the shape of the spacer head reinforcing piece of claim 1 of the patented invention may be considered as a simple design change within the scope of ordinary creation.

4. Implications
The Supreme Court decision pointed out that (1) the technical fields of claim 1 of the patented invention and the prior art references are identical to each other, and (2) introducing the components of Prior Art Reference 1 into Prior Art Reference 2 cannot be determined to cause the technical significance of Prior Art Reference 2 to be lost, and it is difficult to see any negative teachings in this regard, and ruled that claim 1 of the patented invention is invalidated because of lacking an inventive step by the combination of Prior Art References 1 and 2. 
However, the spacer used in the demolding steel deck plate method of Prior Art Reference 1 is provided to solve the problem of the insert of the spacer used in the formwork method of Prior Art Reference 2, and thus, it is difficult to see that the spacers of the two methods have the same purpose of use, the same technical tasks, and the same problem-solving principles. In light of the difficulty in seeing that the cited references can be used interchangeably because the cited references have different structural characteristics depending on the method, when considering the purpose, technical configuration, and operational effects of the spacer comprehensively (Supreme Court ruling April 25, 2003, Decision 2002Hu987), there is a question as to whether sufficient consideration has been given to whether the combination of Prior Art References 1 and 2 is identical to the claim of the patented invention, and whether introducing the components of Prior Art Reference 1 to Prior Art Reference 2 does not lose the technical significance of Prior Art Reference 2 or does not have negative teachings. 
In addition, it is questionable as to whether the defendant's arguments that the shape of the support element bending part of Prior Art Reference 2 can be easily changed to the shape of the spacer head reinforcement piece corresponds to a hindsight consideration. 
Therefore, in future similar invalidation lawsuits, it seems necessary for the patent attorney to respond more specifically and meticulously with regard to the above-mentioned questionable part.

Whether trademark right is infringed by reform activities of luxury goods [Patent Court ruling on October 28, 2024, Decision 2023Na11283]

Jung-Won LEE, Attorney / Patent Attorney

The Patent Court has ruled that ‘reform products’ made by repairing luxury goods infringe trademark rights. ‘Reform’ denotes repairing used clothing or other products to create a new product with a completely new design, and is also called ‘upcycling.’ However, there is considerable controversy in the industry regarding the ruling that the frequent reforming practice among general consumers is judged to be trademark infringement. In this article, the significance of the ruling and its impact on future trademark disputes will be discussed.

1. Basic facts
Reformer A has been doing business since 2017 by disassembling a product that a consumer requests to be reformed, manufacturing a new product, and delivering the product back to the consumer who requested the reforming. In February 2022, Louis Vuitton Malletier filed a claim for damages against Reformer A on the grounds that the reforming of its products infringed its trademark rights.

2. Judgment of district court (Seoul Central District Court, October 12, 2023, Decision 2022Gahap513476)
In response to Louis Vuitton Malletier's claim, the first trial court ruled that Reformer A infringed Louis Vuitton Malletier's trademark rights. First, the court considered that reform products were also products under the trademark law. In other words, “use of trademark” under the Trademark Act is the act of displaying a trademark on a product or packaging thereof, and in this case, the term “product” denotes goods that themselves have an exchange value and become the object of independent commerce.
On the other hand, considering that the well-known Louis Vuitton trademark is repeatedly displayed on the fabric of the reform product, and this technique is also commonly used in the industry, making the trademark very prominent, and that a significant number of reform products are quite similar to the plaintiff's products, it was ruled that the defendant's act constitutes an act of trademark infringement, as there is a possibility that a third party would be confused about the source when the reform product was distributed on the market.

3. Judgment of Patent Court and basis of the judgment
The Patent Court, which is the second trial court, also ruled that the acts of reformer A constituted trademark infringement. As the basis for this, the Patent Court explained that: ① in order to be considered a product under the Trademark Act, the product does not have to be mass-produced, and if there is continuity and repeatability, it can be considered to be a product even if only one product is produced, ② the reformed product newly used several parts with the plaintiff’s logo that were not present before the reform, ③ considering the reform process and the differences between the products before and after the reform in this case, it appears that the defendant produced a new product that is significantly different in terms of number, size, volume, shape, form, function, etc. as compared to the product before the reform, ④ in the case of the reformed product in this case, it is virtually impossible to restore the product to its original state, whereas it is possible to restore the product to its original state in the case of simple repairs or decorations, ⑤ reforming a product that general consumers would be confused with the plaintiff’s product is a key factor in creating demand for the reform business in this case, and ⑥ it is difficult for general consumers to know that the source of these reformed products is not the plaintiff but the defendant. 

4. Implications (presenting specific criteria for determining trademark infringement)
The Patent Court explained in detail why the principle of exhaustion of rights, which can be generally applied to intellectual property rights, cannot be applied to this case, and thus presented specific criteria that can prevent trademark infringement in similar industries in advance. To summarize, ① the degree of processing of the product must not reach the level of manufacturing a new product, ② the reformed product must have differences that can be easily distinguished from other products of the trademark owner, and ③ the reformer must notify or agree to a prohibition on resale to the requester, etc.
Related industries need to review whether their business methods comply with the standards presented by the Patent Court, and in cases in which the degree of processing appears to be high, they need to proactively notify the fact of reform and prevent consumers from being confused about the source through agreements such as prohibition on resale.

5. Conclusion
As online person-to-person transactions become more active, previously unpredictable business methods are emerging, and ramifications thereof are also increasing. Accordingly, there is an increasing number of cases in which the business method of purchasing products, processing the products, and then reselling the products raises controversies over intellectual property infringement.
From the perspective of general consumers, the subject judgment may seem like a regulation blocking a new business method, but the Patent Court has listed in detail the reasons why the acts of the reformer constitute trademark infringement, and according to such criteria, the Patent Court's judgment in which the acts of the reformer A in this case constitute trademark infringement is evaluated as a reasonable conclusion faithfully reflecting the essential function of trademark rights and the legal intent to protect trademark rights.

Korea's LG ranks first in global green and low-carbon patent applications

As patent applications for green and low-carbon technologies increase worldwide, an analysis of the number of green and low-carbon patent applications over the past eight years showed that LG of Korea ranked first in the world.
According to a recent report published by the China National Intellectual Property Office (CNIPA), the number of green and low-carbon patent applications published worldwide from 2016 to 2023 was approximately 1,275,866, an average annual increase of 4.7%. Thereamong, the number of patent applications in 2023 was approximately 193,184, an increase of 13.0% year-on-year, showing a rapid growth trend. In an analysis of the ranking of applicants for green and low-carbon patents worldwide from 2016 to 2023, LG of Korea took an overwhelming first place (38,534 cases), beating out Toyota of Japan.
The Korea Institute of Intellectual Property announced that while the world is working to achieve the Sustainable Development Goals (SDGs), the Korea Intellectual Property Office (KIPO) is actively responding to overcome the climate crisis by relaxing the priority examination requirements for green technology patents that contribute to carbon reduction recently.

Source: Patent News (September 23, 2024)

‘Trademark Coexistence Agreement System’ has led to mutual prosperity between large and small businesses

The Korean Intellectual Property Office announced that the 'trademark coexistence consent system' that has been implemented since May 1, 2024 in accordance with the revision of the Trademark Act is successfully settled down.

It was revealed hat a total of 600 cases were received in the past 6 months after the implementation of the trademark coexistence consent system, so as to allow for registration of similar trademarks if the pre-registered trademark owner consents.

This case, in which IMDT Co., Ltd. successfully registered a trademark through coexistence consent from a large corporation that is a pre-registered trademark owner, shows that the coexistence consent system is successfully settled down as a domestic startup registers a trademark through coexistence consent from a foreign corporation, and it can be significantly meaningful as an example of win-win cooperation between large corporations and small and medium-sized enterprises.

Source: Press Release from the KIPO (November 15, 2024)

South Korea achieves world No. 1 in patent applications filed, relative to GDP and population

In 2023, Korean residents filed the most patent applications per GDP and population, worldwide.
According to a recent report released by the World Intellectual Property Organization (WIPO), Korea ranked first in the world with 7,309 resident patent applications per $100 billion of GDP. China came in second (4,875 applications) and Japan third (3,974 applications), which is an indicator of Korea's high level of innovation and technology concentration relative to the economic size thereof.
The number of patent applications as filed worldwide increased by 2.7% year-on-year to approximately 3.35 million. In particular, Korea contributed significantly to the global patent growth rate with an increase of 15,628 applications.
This indicator released by the WIPO means that Korea has established itself as a “technology super gap leader” beyond a “patent powerhouse”, and shows that Korea is in the center of the global intellectual property competition.

Source: Patent News (November 28, 2024)

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