1. Statistical Trends in Intellectual Property through May 2022

According to the statistical trends in intellectual property announced by the Korean Intellectual Property Office (KIPO) in June 2022, the cumulative number of applications for patents, utility models, designs, and trademarks from January to May 2022 was 219,543, which was a 6.3% decrease compared to the same period of the previous year.  In May, a 0.01% decrease was seen compared to the same period of the previous year, indicating that  the number of filings has been gradually increasing since to the beginning of the year.  The numbers of registrations for patents, utility models, designs, and trademarks decreased by 1.5%, 22.5%, 14.7% and 7.2%, respectively.  Also, the number of requests for examination decreased by 12.6% compared to the same period of the previous year.  Meanwhile, it was confirmed that the number of registrations for intellectual property rights was 135,099, which was a 3.5% increase.  While 55,637 registered trademarks represented a 0.4 increase compared with the previous year, the numbers of patents, utility models, and designs all decreased, by 5.7%, 21.7%, and 6.3%, respectively.  In addition, the number of appeals was confirmed to have decreased 9.1% compared to the same period of the previous year, with 2,948 being processed during January to May.

 

2. Status of Use of Exceptions to a Lack of Novelty of Inventions

An exception to a lack of novelty of an invention refers to a system in which, even when an invention has been disclosed prior to the filing of the corresponding application as a result of an action of the applicant or against the will of the applicant, if an application for the invention is filed within 12 months from the date of disclosure, the invention for which the application is filed is deemed not to have been disclosed, and a patent is granted (Article 30(1) of the Patent Law).

 

KIPO stated that the exception to lack of novelty of invention was used for 76,063 applications for patents and utility models filed from 2001 to 2020. Compared to the numbers of times it was used annually, the number in 2020 was 5,346, which was a considerable increase in comparison to only 732 in 2001, showing that its use is popular.

Ratios at which exception to lack of novelty of invention is used to numbers of applications are 20.1% for universities, 8.4% for research institutes and public offices, and 8.0% for nonprofit organizations.  Among enterprises, small and medium-sized enterprises (SMEs), medium-sized enterprises, and large enterprises were seen to use it at frequencies of 1.3%, 1.4%, and 0.6%, respectively. KIPO believes that this is because institutions have a strong tendency to first publish an invention through a thesis after technical development and file an application for a patent, whereas companies file an application for a patent immediately after technical development in order to preoccupy the market.

 

The exception to lack of novelty of invention is a so called “grace period,” and has become effective in other major countries.  In the United States, the same grace period of 12 months as Korea is granted regardless whether the type of the invention is publicly known or not.  However, the grace period in Europe and China is 6 months, half that of the United States.  In addition, the form of lack of novelty is restricted to inventions disclosed at international exhibitions in Europe.  China also has stricter requirements, with the form of lack of novelty being restricted to inventions disclosed at international exhibitions held and approved by the Chinese government and academic meetings that they have defined.  Therefore, even if the exception to lack of novelty of invention is used, differences in the system of each country should be taken into account when filing an application in the country.

 

3. Enforcement of an Act of Unauthorized Use of Publicity Rights

As stated in the previous newsletter, Article 2(i)(l) of the Unfair Competition Prevention and Trade Secret Protection Act that took effect on April 20, 2022, adds “the act of infringing another person’s economic interests by using a celebrity’s portrait, name, voice, signature, or other identifiable signs for one’s own business without permission in a manner contrary to fair commercial practices or competition order” as an unfair competition act.

 

When the above unfair competition act occurs, those who are damaged may claim compensation for damage and prohibition, etc., and can now request an administrative investigation with KIPO for corrective recommendations and publication from KIPO.

 

The above provision that recently came into force to protect publicity rights is expected to be used as a device to more broadly protect the entertainment industry in Korea.