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August 6, 2007

Registration and Enforcement of IP Rights in Korea: A Brief Introduction (Part I)

[Editor's Note: My scant treatment of Korea on this blog has not been intentional. Occasionally, I've dealt with the topic, blogging on fruitless plans to build highway and rail lines across the DMZ into the DPRK (North Korea); the now imprisoned flower-baron Yang Bin's involvement in resort casinos in Shinuiju across the border from Dandong （丹东）; and, if I remember correctly, something about bibimbap.

But readers of our next post will find somewhat more of Asia in Asia Business Intelligence than just China. Our next author prefers to remain anonymous, going by the happy epithet, Drambuie Man. You will find his bio in the first three paragraphs of his post. Those who may wish to contact him should contact me first.]

Registration and Enforcement of IP Rights in Korea: A Brief Introduction (Part I)

I first would like to thank Rich Kuslan for the honor of contributing this piece. His blog is one of my regular reads. I was asked by Rich to contribute something on IP law in Korea. As with anything you know a lot about, its tough to limit yourself to what is essential. Thankfully, one of the previous posts here as Chinese IP Law overview provides a good framework. Many parts of that post, particularly the discussion on business practices, goes for the Korean side as well.

The exact position I am in is somewhat unique, given I am not a Korean lawyer nor admitted to the bar anywhere. I started in the IP field on the practical end, first via working with high-tech companies in the US on Korea. While obstensibly doing marketing, I found my at the heart of matters relating to contracting, patents, IP valuations and IP transfers between companies.

For the past five years I have worked roughly as a paralegal (Korean has no exact analogous word in my experience) for the Law Offices of Book Chon, a Korean law firm specializing in all areas of Intellectual Property Law. Within that time, I have also worked for the Korean Intellectual Property Office, the Korean government office responsible for the review and registration of IP in Korea. While with the government, I worked on cooperative projects between KIPO, other national IP offices and multilateral groups, such as the World Intellectual Property Office, due to my knowledge of Korean IP law and the unique perspective I have as non-Korean. When I have time, I blog on Korean IP news at Dram Man, and on things in general at the Marmot’s Hole.

Below I may give what could be inferred as specific advice. It is not. Rather it is my unfortunately blunt style combined with my over eagerness to help when I can. If you have any practical concerns, contact Korean counsel. Your case is unique and special, and should be considered as such.

Rich’s original post found a US company in a problem. Somebody in Korea was counterfeiting its parts and shipping them to China. For obvious reasons, the story stopped there. However, I can give a practical conclusion for that story. First, an overview.

Korea has a certain reputation for bias against foreign intellectual property applicants and rights holders; sometimes that reputation is deserved in individual cases, but on the whole not true. Things in Korea have radically changed with respect to IP Law, and today Korea boasts one of the more advanced IP legal systems.

Korean patent documents are considered so essential that they were included as Patent Cooperation Treaty (PCT) minimum documentation last year, a distinction shared with the US, EU, and Japan. As part of the PCT minimum documentation, Korean patent information must be searched for all PCT applications (method for gaining early recognition of certain rights and later patents worldwide).

Also last year, the Korean Intellectual Property Office became an International Search Authority for the USPTO, an ability shared with the EU. This designation intends to relive some of the workload for the USPTO. PCT applicants can now indicate that their initial international search for a US filed application can be done by KIPO, thus giving confirmation that the quality of patent examination done by KIPO in this area is on par with US and the EU.

IP Registration: Promise, Despite Pitfalls

Unlike China, Korea has one main office handling IP registration, the Korean Intellectual Property Office (KIPO). KIPO handles the registration of patents, trademarks, and designs, but not copyrights. Korea is also part of the Patent Cooperation Treaty and the Madrid Protocol, allowing international applicants to gain early priority.

A pitfall, however, is the seductive similarity of KIPO and its procedures on paper when compared to the US and Europe. For example, drug companies have a hard time with patents because, among many other things, molecules cannot be patented. Korean trademark examiners read English language marks quite closely, and may fail to see a turn of a phrase or unique wording.

For the latter, consider the booming use of the “e” prefix by marketers today (eFile, eBay, eFriend, etc.). Under Korean law a simple letter is considered to be non-distinct. So if you combine it another descriptive or non-distinct word, a KIPO examiner will likely fail to grasp the coinage of the word and reject the mark for being two non-distinct or descriptive words. So for example, consider proposing the mark “e-Pet Quality Pet Shops” for pet shops. A native speaker grasps the uniqueness of the mark, but to a typical KIPO examiner there is little more than the descriptive “Pet Quality Pet Shops” components and a non-distinct common letter “e,” making the mark unregisterable in Korea.

This is not to say necessarily that you will definitely have these problems in trying to register your IP. However, if problems do arise, take a deep breath and realize that Korea is not the US, the EU or even Japan.

If any problems cannot be resolved with written arguments to the initial examiner, you will find you can appeal a decision to the Intellectual Property Tribunal (a KIPO appeals board), then to the Patent Court and finally to the Korean Supreme Court. (A brief note, the Korean Supreme Court is really the highest appellate court circuit; it is not a “Supreme Court” in an American judicial sense.)

Copyrights fall under the Ministry of Culture and Tourism. The system is remarkably similar to the US. There is no requirement to register your gain a copyright, but you can if you wish.

Read Part 2 here.

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