| Spring 2016 |
| PATENT |
| Significant Changes to the Korean Patent Act |
| Two major amendments to the Korean Patent Act were signed into law on February 4 and March 3, 2016, respectively. The amendments make a number of important changes to Korean patent procedures, such as a new patent cancellation system, greater ease in proving patent infringement and damages, and a shortened period for requesting examination. Some of the notable changes are discussed below. Read more |
| Korean Supreme Court Upholds Validity of Pfizer's Patent for Lyrica® |
| The Korean Supreme Court recently upheld the validity of a second medicinal use patent based on pregabalin for use as a pain reliever. Pregabaln is the main indication for Lyrica®, one of Pfizer's best selling drugs. This is the first case in Korea where the validity of a second medicinal use invention patent was upheld by the Supreme Court. In doing so, the Supreme Court has provided new important principles for determining the inventiveness of an invention based on the descriptions in prior art references. Read more |
| Amended KFTC Intellectual Property Rights Guideline Takes Effect |
| On March 30, 2016, the Korea Fair Trade Commission ("KFTC") announced that the amended Guideline Regarding the Unfair Exercise of Intellectual Property Rights (the "IPR Guideline") became effective on March 23, 2016. One of the major drivers for amending the IPR Guideline was that the previous IPR Guideline regulated de-facto standard essential patents ("SEPs") as if they were regular SEPs. In response, the KFTC received opinions stating that such regulation could over-regulate the justifiable exercise of IPRs. Also, the KFTC intends to amend the purpose of the IPR Guideline to the "promotion of free and fair competition" (from the previous "promotion of fair trade practices") and clarify when a refusal to license patents can be viewed as unfair. The amended IPR Guideline also streamlines certain provisions which are not directly related to the anti-competitiveness assessment. Read more |
| All Things Korean Biosimilars: Industry Developments and Biological Patent Listing |
| Korea is emerging as a global leader in biosimilars. With recent regulatory approvals in multiple jurisdictions, Korean companies are making significant headway in the market. Boasting a market value of USD 10 billion, Celltrion, a pioneering and increasingly competitive Korean player in a global biopharmaceutical market long dominated by big-name drugmakers, has received approval to sell Remsima (its biosimilar version of the blockbuster drug Remicade) in over 50 countries worldwide, including Europe, Canada, Japan, and, earlier this month, the U.S (to be co-marketed with Pfizer as Inflectra). Not to be outdone, Samsung Bioepis, another Korean competitor, has received approval from the European Commission for SB4, a biosimilar referencing Amgen's Enbrel (etanercept) for the treatment of rheumatoid arthritis. Samsung Bioepis also is currently developing five other biosimilars which reference some of the world's top-selling biologics, including Remicade, Humira, Herceptin, and Avastin. Read more |
| TRADEMARK, DESIGN, COPYRIGHT & UNFAIR COMPETITION |
| Comprehensive New Amendments to the Korean Trademark Act |
| The National Assembly has recently approved a major amendment to the Korean Trademark Act ("Act"), which will go into effect on September 1, 2016. This is the first comprehensive amendment to the Act in 26 years. We have highlighted some of the more important changes below. Read more |
| Unregistered Handbag Designs Can Be Protected Under UCPA "Catch-All" Provision |
| The Seoul High Court recently rendered a significant decision that further clarifies the meaning of the "catch-all" provision of the Korean Unfair Competition and Trade Secret Protection Prevention Act ("UCPA"). The catch-all provision is a recent addition to the UCPA, having entered into force on January 31, 2014, and serves to cover acts of unfair competition not contemplated by the other provisions of the UCPA, by prohibiting the infringement of another's right to profit through the unauthorized use of any "output" produced by the other through considerable effort and investment to advance the infringer's business in a manner that contravenes fair trade practice or competition order. Read more |
| "Lost Balls" Can't Be Found…and Refinished |
| Golf is one of the most popular sports in Korea. However, because top quality golf balls can be quite expensive, there is a substantial market in Korea for refurbished golf balls (which are typically balls recovered from golf courses after being lost during play by the original owner). A Korean court recently held that the use of the original trademarks on such "lost" or "refinished" balls by the refinisher constitutes infringement of the trademark rights of the original ball manufacturer (contrasting with other jurisdictions such as the U.S.). Read more |
| Copying of Game Rules Violates the "Catch-All" Provision of the UCPA |
| King.com Ltd. ("King"), the developer and distributor of the "Farm Heroes Saga" game, filed suit in the Seoul Central District Court in 2014 against Avocado Entertainment Inc. ("Avocado"), the developer and distributor of a similar game called "Forest Mania." King sought an injunction against copyright infringement and unfair competition by Avocado, as well as damages. On October 30, 2015, the court held that Avocado copied certain game rules from Farm Heroes Saga, and that this constituted a violation of the Unfair Competition Prevention and Trade Secrets Act ("UCPA"). The court specifically ruled that the copying was unfair competition under the "catch-all" provision of Article 2(1)j of the UCPA. Read more |
| New Examination Guidelines for Screen Image Designs |
| The Korean Intellectual Property Office ("KIPO") recently published new examination guidelines (the "Guidelines") specifically concerning the registration of screen image designs, such as GUIs, graphic images, and icons. The new Guidelines have been effective since the beginning of this year, and seek to address the growing need for detailed guidance in response to the increase in screen image design registrations in recent years. The Guidelines illustrate the basic general examination requirements relevant to screen image designs with various examples, and have substantially revised the previous practice to take into consideration the unique nature of such designs. Read more |
 |
Jeongdong Building, 17F, 21-15 Jeongdong-gil, Jung-gu, Seoul 04518, Korea Tel: +82-2-2122-3900 Fax: +82-2-2122-3800 Email: ip-group@kimchang.com www.ip.kimchang.com |
| This e-mail service is provided for general informational purposes only and should not be considered a legal opinion of Kim & Chang nor relied upon in lieu of specific advice. | |
| If you would like to UNSUBSCRIBE from this service, please click here. | |
|
If you have problems viewing this message, please click the following URL or enter it into your web browser: http://www.kimchang.com/newsletter/201604/en/newsletter_ip_en_spring2016.html |
|
| This e-mail message and any attachments are intended for the exclusive use of the individual or entity named above and may constitute information that is privileged or confidential or otherwise protected from disclosure. Dissemination, distribution, forwarding or copying of this e-mail by anyone other than the intended recipient is prohibited. If you have received this e-mail in error, please notify us immediately by telephone or e-mail (ip-group@kimchang.com) and completely delete or destroy any and all electronic or other copies of the original message and any attachments. | |
| © Kim & Chang 2016. | |