On March 28 2023, FICPI held a virtual meeting with KIPO to present and support the Resolutions adopted by FICPI’s ExCo in Cannes in September 2022. This meeting was the first one with KIPO after the election of the new Bureau and Mr Kim, KIPO’s Director General for IP Protection and International Cooperation, addressed his congratulations to Roberto Pistolesi, FICPI’s new President.
Eleni Kokkini, CET Executive Vice President, presented FICPI's Resolution on the accessibility of trade mark priority documents and removal of legalisation requirements. Mr Nahm, President of FICPI Korea, welcomed FICPI’s resolution, while Ms Ji Seon Yoo from KIPO commented that KIPO is considering the possibility of enabling accessibility of priority documents to third parties under proper justification and of introducing, if technically possible, the direct electronic exchange of priority documents.
Michael Caine, Vice President of the FICPI Bureau, presented a Resolution on the scope of claims directed to antibodies, explaining FICPI’s concerns that some patent offices were requiring applicants to limit the scope of their claims to exact sequences disclosed in the specification. Mr Doo-Hee Lee, Vice President of FICPI Korea, confirmed that he was indeed aware of such instances within KIPO. Ms Sunghee Choi, patent examiner in KIPO, explained the Office’s position, giving the impression that it would be difficult for applicants to argue for variability within CDRs. Michael emphasised the importance of antibodies in the treatment of diseases and the related high costs to innovators.
Roberto Pistolesi and Swarup Kumar, Deputy Secretary General of the FICPI Bureau, presented FICPI’s Resolution on test results submitted after the filing date, also in connection with the recently published opinion of EPO’s Enlarged Board of Appeal. Mr Doo-Hee Lee of FICPI Korea supported FICPI's resolution. Ms Dana Lee from KIPO explained that it is possible for applicants to rely on post-filed data where those data relate to a technical effect either specifically disclosed or inherent in the disclosure of the specification.
Jürgen Buchhold, Chair of FICPI’s CET 2 Study & Work Group on Designs, presented FICPI’s Resolution on design drawings, explaining especially the need for more than seven views in some cases to better depict the design. Jürgen welcomed the position of KIPO accepting any number of views and allowing several views to be filed for a design. Both KIPO’s representative, Ms Jeeyoung Yoon, and Mr Nahm of FICPI Korea agreed with Jürgen and confirmed that KIPO follows this approach in its practice.
Michael Caine presented FICPI's Resolution on adopting a lenient and flexible approach to missed deadlines and mistakes and commented that, while Japan had recently moved to an "unintentional" standard in accordance with FICPI's resolution, Korea had moved from a standard that would not provide relief if the error was attributable to the applicant or patentee, to a new standard that required a "justifiable cause". FICPI Korea supported FICPI's resolution, calling for application of an "unintentional" standard to missed time limits and mistakes, whereas Ms Jeeyoung Yoon from KIPO explained the current provisions on the “justifiable clause”, which may fall short, though, of an unintentional standard.
Eleni Kokkini presented FICPI’s Resolution on the provision of clear guidance for the protection of NFTs as Trade Marks and welcomed the recent revision of KIPO’s examination guidelines to deal with NFTs. Mr Nahm of FICPI Korea and Ms Moocheol Jeong from KIPO confirmed the revision of the guidelines, explaining that virtual goods authenticated by NFTs are indeed registrable as trade marks in Korea under Nice Class 9 and that virtual goods and physical goods are not considered conflicting in Korean practice, with the possible exception of famous marks.
The meeting was closed with the hope expressed that next time FICPI will meet with KIPO in person.
