25th April, 2016
KOREAN PATENT ACT
Some notable changes in the Korean Patent Act from the recent amendments will come into effect on 30 June 2016:
1. Ex parte patent cancellation proceeding
Anyone can file a petition to cancel a patent with the KIPTAB (Korean Intellectual Property Trial and Appeal Board) within six months from the publication date of the patent registration. The challenge can be based on prior art that should be submitted by the petitioner. Interestingly, a decision not to cancel a patent by the KIPTAB under the new cancellation proceeding cannot be appealed whereas a decision to cancel a patent can be appealed. The new cancellation proceeding will apply to patents registered on or after 1 March 2017.
2. Timeframe to file request for substantive examination
Under the amended Patent Act, for applications filed on or after March 1, 2017, the time frame to file a request for substantive examination will be shortened from five years to three years from the filing date.
3. Burden of proof in patent infringement litigation
In patent infringement litigation, if the alleged infringer does not comply with the court’s order to produce relevant material or information, the accusing party’s contention of patent infringement will be deemed true by the court, which will substantially ease patentees’ difficulties in proving infringement and damages. The new amendments will apply to patent infringement litigations filed on or after 30 June 2016.
KOREAN TRADE MARK ACT
Some notable changes in the Korean Trade Mark Act from the recent amendments which will come into effect from 1 September 2016
1. Change of the time criteria of the similarity determination in the trade mark examination
Under the amended Trademark Act, the similarity review will include only those marks alive at the time of the final decision of the allowance, which will help applicants avoid wasting time and cost in re-applying after the pre-registered trademark expires.
2. Supplement provision for non-use cancellation trial
The standing for filing a non-use cancellation trial will be extended to “anyone” from “an interested party”, which will save the time previously spent on determining the scope of the interested party in such trials. Additionally, the cancelled trademark is deemed to be expired retroactively on the day of the request of the trial, upon the decision of cancellation.
3. Removal of the provision preventing registration during one year after the trade mark expiration
Under the amended Trademark Act, an identical or similar trademark can be registered even where one year has not elapsed after the earlier trademark right is extinguished.