Several amendments to the Patent Act (“PA”) and the Design Protection Act ("DPA"), which passed the National Assembly on March 2, 2017, went into effect on September 22, 2017. We highlight below the major changes:
Amended PA: patent-related marking rules specified in the PA
The PA was amended to update and incorporate existing regulations concerning patent marking into the statute itself. The amendment is intended to reduce consumer confusion, which may have been caused by misleadingly labeling products as "patented" (e.g., if a product is only covered by a pending patent application).
Generally, patent marking is not necessary in Korea to show that an infringer had notice of an issued patent for purposes of calculating infringement damages, unlike in other jurisdictions where patent marking is used to prove notice of the patent (and the full scope of damages). Patent marking may be helpful for proving damages for the period a patent application was published prior to registration (which are recoverable in Korea and require proof of notice). However, only patent owners and licensees (exclusive or non-exclusive) are permitted to mark their products with the relevant patent numbers or patent application numbers. Moreover, such patent markings are only available for patents and patent applications relating to products or product-making methods.
Thus, even though there is no requirement to have patent markings on your products, if you choose to mark your product, you are obliged to follow the rules defined in the PA.
First, the marking must conform to the following format under the PA:
• Registered Patent (product): Patent XXXXXX
• Patent Application (product): Patent Application (Examination Pending) XXXXXX
• Registered Patent (method): Method Patent XXXXXX
• Patent Application (method): Method Patent Application (Examination Pending) XXXXXX
If markings cannot be made on the product itself, the markings can be made on the container or the packaging instead. However, this is not merely a matter of convenience – if the product can be reasonably marked, then the patentee should not put the mark on the container or packaging.
False marking is considered a crime and an infringer can be subject to imprisonment of up to three years or a fine of up to KRW 30 million (approx. USD 27,000). False marking is defined as using a patent number on an unpatented product, using the words "patent application pending" on a product for which no patent application is pending, or otherwise marking a product in a way that may cause others to incorrectly believe there is a patent or application covering a product.
Amended DPA: grace period for design applications extended to one year
Under the previous DPA, a grace period was provided in which a design could be filed up to six months after the publication or public use of the applicant's identical or similar design without losing novelty, as long as the grace period was properly claimed. An applicant had to claim a novelty grace period at one of four points: (i) when filing the application (documentation of the previous disclosure could be submitted up to 30 days after the application date); (ii) during prosecution, in response to an office action issued by the Korean Intellectual Property Office ("KIPO"); (iii) in response to an opposition filed by a third party regarding the registration of a partially-examined design; or (iv) in response to an invalidation action filed by a third party.
The amended DPA extends the six-month grace period to a full year and also expands the opportunity to claim the grace period during prosecution from responses to office actions only to any time before issuance (i.e., the applicant may now claim the grace period at any time while the application is still pending).
These changes are expected to give design applicants more time to decide whether filing a design application is warranted considering the market response to a design, and to make it easier for applicants to claim the grace period during prosecution.