(1) Extend the time period 3 to 5 years

Under the Korean Patent Act, the Commissioner of the Korean Intellectual Property Office (KIPO) or the President of the Intellectual Property Trial and Appeal Board (IPTAB) must notify a payer of overpayment or erroneous payment of any patent fees and official fees. These payments are refundable at the request of the payer. However, under the previous version of the Korean Patent Act, a request for a refund cannot be filed more than three years after the payer received the notice of overpayment or erroneous payment.

Many of the refundable patent fees are not paid to the payers due to the payers missing the three-year deadline to claim a refund, even if KIPO notifies the payers about the availability of the refund.

In order to more broadly protect the rights of those who have overpaid or erroneously paid patent fees and official fees, the deadline to claim a refund of patent and official fees has been extended from three years to five years by way of the amended Korean Patent Act, which went into effect on October 18, 2022. However, the revised rule does not apply to patent applications for which for a claim for a refund of patent fees or official fees was overdue (under the previous three-year deadline) prior to October 18, 2022.

 

(2) Expand types of Patent Applications eligible for expedited examination related Important Technology

Article 9(1) of the Enforcement Decree of the Korean Patent Act regulates which patent applications that are eligible for expedited examination. This article was partially revised to provide fast examination services for patent applications related to state-of-the-art technology in order to stimulate competitiveness of high-tech industries.

Accordingly, cases eligible for expedited examination now include semiconductor patents (limited to patent applications publicly announced by the Commissioner of KIPO with a detailed object and a request period for expedited examination), which is related to advanced technology important for improving the national economy and competitiveness, and the revised Enforcement Decree of the Korean Patent Act has been in effect since November 1, 2022.

 

(3) Expansion of virtual product names and scope of recognition for trademark protection related to metaverse

“Metaverse” is a portmanteau of “meta,” meaning virtual and abstract, and “universe,” which refers to the real world. Until now, companies have mostly been trying to create virtual characters that wear clothes with high-end brands in partnership with gaming companies, but they are starting to actively utilize it, which could lead to actual sales in the future.

Nike, a global sportswear giant, filed trademark applications online with the United States Patent and Trademark Office. These applications for footwear and clothing for avatars cover seven trademarks including “Just Do It,” “Air Jordan,” and “Jumpman” logos, and its swoosh logo.

※ Source: Joongang Daily (https://www.joongang.co.kr/)

 

In addition, the U.S. fast food chain McDonald’s has filed at least 12 trademark applications related to virtual restaurants, cafes, concerts, other virtual services and items. The firm also filed trademark applications including downloadable multimedia files for its artwork, text, audio and video files, and NFTs. McDonald’s is reported to have proceeded with metaverse trademark applications for its McCafe brand
※ Source: Block Chain Today (http://www.blockchaintoday.co.kr)

 

In order to react to the recent market trends, the Korean Intellectual Property Office (KIPO) has adopted “Virtual Goods Examination Guidelines” that have been effective since July 14, 2022 according to a surge* in metaverse-related trademark applications in Korea.

* (2010 to 2019) 20 applications → (2020) 6 applications → (2021) 17 applications → (May 2022) 717 applications

※ Source: Korean Intellectual Patent Office

 

Based on the examination guidelines, only names of goods in forms such as “downloadable image file (virtual apparel),” “computer program in which virtual apparel is recorded (virtual goods),” etc. were accepted before, but the scope of selection of names for applicants has been expanded so that forms such “virtual and real goods” such as “virtual apparel,” “virtual shoes,” etc. are now accepted.

 

In other words, virtual goods were classified as goods similar to image files or computer programs in the past, but now they are classified into an individual group of goods separate from image files, etc. and it has been decided to sort virtual goods in detail by reflecting properties of real goods. Thus, this approach will avoid risks of trademark dispute in the virtual world and is expected to address a problem of an excessively narrow scope of selection for trademarks.

 

No.	Classification	Goods for application (Example)	Eligibility of title
1	9	Downloadable virtual goods	Ineligible
2	9	Computer program in which virtual goods are recorded	Ineligible
3	9	Virtual apparel	Eligible
4	9	Virtual shoes used in virtual world	Eligible
5	9	Downloadable virtual apparel	Eligible
6	9	Retail store services featuring downloadable virtual apparel	Eligible

                                                            < Example of eligibility of title of goods >

※ Source: Korean Intellectual Patent Office

 

In addition, virtual goods and real-world goods are, in principle, considered and examined as goods that are not similar to each other. While some insist that virtual goods are similar to real-world goods since they partially include and express elements such as the names and main appearances of real-world goods, virtual and real-worlds goods have different uses and distribution approaches from each other, and are basically considered unlikely to be confused by consumers.

However, when a trademark similar to a famous trademark is filed, the office examines whether the likelihood of confusion exists between the subject trademark and the famous trademark.

 

                            < Example of determination of similarity regarding virtual goods >

※ Source: KIPRIS (http://www.kipris.or.kr/) (Materials provided by KIPO)

 

Soon, with the development of virtual and augmented reality technology, various hyper-connected new goods such as metaverse platforms are expected to lead the global market. While no clear guidelines for determination of similarity between virtual and real-world goods had been provided before, prospective applicants need to make an effort to secure intellectual property rights related to virtual goods in advance now that these guidelines stating that virtual and real-world goods will be considered dissimilar in principle have been presented.