Korea Introduces Treble Damages in Infringement Cases and Reverses the Burden of Proof

Bilingual Version

Korea has officially adopted punitive damages for willful infringements of a patent right or a trade secret. Effective July 9, 2019, any intentional infringement of a patent right or its exclusive license in Korea shall be imposed punitive damages. The amount is up to three times the damages recognized by the court. The adoption of punitive measures is to ensure that the infringed right holders can be fully compensated and to curb unethical business practices in which competing market players prefer to infringing and paying damages, rather than negotiating and paying the appropriate licensing fees as provided by law. 

This new provision was included in an amendment bill of the Korean Patent Act and was passed by the National Assembly of Korea on December 7, 2018. The amendment bill also shifts the burden of proof, in patent infringement litigation, to the party denying a specific act of the alleged infringement. If the accused party fails to justify the specific act with sufficient evidence, the court may assume the allegedly infringing act to be true. 

Under the current Patent Act, the burden of proving a specific act of infringement in patent litigation lies with the accuser. The right holder has the obligation to identify an infringing product or service; but, in most cases, such evidence is not publicly or easily available. The defendant may win the lawsuit by simply denying the allegation. The Act and  the Korean Civil Procedure Code were amended in 2016 so that the court may order the alleged infringer to produce materials necessary to verify the alleged infringement. It however doesn’t bring a substantial change in the situation.

Eight Factors in Damage Calculations 

According to the newly added provisions, Articles 128 (8) and 128 (9) of the Korean Patent Act, the court will consider the following eight factors in determining whether the act of infringement is willful or intentional, as well as the amount of damages to be awarded.  

  • whether an infringer is in a dominant position (superior status); 
  • the degree to which an infringer recognized the willfulness of his misconduct or potential damages that a Plaintiff may sustain; 
  • the scope of damages suffered by a Patentees; 
  • economic benefits that an infringer obtained as a result of the infringing act; 
  • the period and frequency of the infringing act; 
  • penalties arising from the infringing act;
  • the scope of an infringer’s assets; and 
  • the degree of remedial efforts by an infringer. 

The adoption of treble damages for willful infringement is expected to redress certain distortions in the technology market and to encourage licensing between companies, as well as aid the infringed right holders to sufficiently recover their damages through litigation. The provisions regarding the punitive damages will be applicable to infringements occurring after the effective date of the revised Acts. 

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Newly Passed Amendment to Taiwan’s Patent Law: Relaxation of D.A. Requirement, Longer Term of Design Protection, Revised Invalidation Procedure

Bilingual Version

The amendment bill to Taiwan’s Patent Act approved by the Executive Yuan in late 2018 was passed on April 16, 2019, by the Legislative Yuan. It extends the term of protection for design patents from 12 to 15 years. The bill, originally proposed by the Intellectual Property Office (TIPO) early last year, aims to create a more robust patent protection system, enhance the case review efficiency of patent remedies and promote industrial innovation.  

A total of 17 articles were included in the amendments. Seven major changes introduced are summarized below:

1. Restrictions relaxed on divisional patent applications of intentions and utility models for longer deadline and boarder applicable scope(Article 34, 46, 71, 107, 119 and 120)

According to the current Patent Act, divisional patent applications, only allowable for eligible inventions, shall be filed “within 30 days after the date on which an approval decision for the original patent application is served.” The draft amendments relax the time limit from 30 days to three months upon receiving the approval or reexamination decision for the original application. The new stipulation applies to patent applications for not only inventions, but also utility models. 

The related provision in Article 29 of the Enforcement Rules of the Patent Act which prescribes “ a request for division ….. is filed based on the invention(s) disclosed in the description or the drawing(s), but not those claims that have been approved in the original patent application…..” will be added to the Patent Act. Any causes in violation of said provision shall be regarded as the grounds for unpatentability and invalidation. 

Restrictions relaxed on divisional patent applications of intentions and utility models for longer deadline and boarder applicable scope
Restrictions relaxed on divisional patent applications of intentions and utility models for longer deadline and boarder applicable scope

2.Review-efficiency improvement of invalidation proceedings(Article 73, 74 and 77)

In order to avoid undue delay in invalidation proceedings, the amendments impose restrictions on invalidation actions that the grounds and evidence for invalidation shall be submitted within three (3) months, i.e. relaxed from one (1) month, after the date of filing the said action. Any submission after the required period shall not be examined. There is also new restrictions on post-grant amendment during the invalidation action in the draft amendments. 

3. Amended Stipulation for filing post-grant amendment of utility model patents (Article 118)

The post-grant amendment of utility model patent shall be rendered after substantive examination, instead of the formality examination stipulated currently. It can be filed only when said utility model patent is under invalidation proceedings, under litigation, or after its request for a technical evaluation report being accepted.

4. The term of design patents extended to 15 years from the filing date (Article 135)

The protection term of design patents is extended from currently twelve (12) years to fifteenth (15) years, to be exact, from the filing date of the application in response to the industrial propositions on the issue and following international practices. 

5.Controlled preservation of patent-related records(Article 143)

Due to insufficient storage space and following international practices, only patent files, such as application documents, description, claim(s), abstract, drawing(s), with confirmed enduring value shall be preserved permanently. Other patent-related documents shall be kept for a period of no more than thirty (30) years in this amendment draft. 

More specifically, patent-related documents shall be retained for twenty (20) years for inventions, ten (10) years for utility models and fifteen (15) years for designs, unless otherwise approved. As for patents reviewed and approved by the authority purposely, the related documents shall be retained for thirty (30) year for invention, fifteen (15) years for utility models and twenty (20) years for designs.   

6. Amendments to support the rule of law development (Article 29 and 57)

Applicants claiming priority, in accordance with Article 28, shall submit a certified copy of the first patent application, which indicating when and where it’s filed, within sixteen (16) months after the earliest priority date. 

Currently, Article 29 provides that applicants, who unintentionally fail to claim priority at the time of filing, may apply for reinstatement of priority claim within the same period. The draft amendment further clarifies that the priority claim shall be deemed not to have been made if the applicant fails to either apply the reinstatement or submit the required documentation within the 16-month time limit. 

In addition, Subparagraph 6, Paragraph 1, Article 57 of the Act is deleted from the listed invalidation grounds of patent term extension. Because the periods of time allowable for patent term extension include the period of domestic and/or foreign clinical trials conducted to obtain a pharmaceutical or agrichemical approval from the central competent authority in charge (Ministry of Health and Welfare or Council of Agriculture, Executive Yuan) according to Subparagraph 1, Paragraph 1, Article 4 and Subparagraph 1, Paragraph 1, Article 6 of the Regulations for Ratifying Extension of Patent Term. It is not relevant whether or how long any foreign patent authority has approved a patent term extension to the pharmaceutical or agrichemical. 

7. Transitional arrangements(Article 157-2, 157-3 and 157-4 )

At the time the amended Patent Act comes into force, pending application for design patents, post-grant amendment of utility model and invalidation proceedings, as well as divisional applications for eligible inventions and utility models, shall apply the newly amended Act. The amendments shall also apply to design patents in effect and extinguished for failure to pay annuities in time. 

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TSMC, Qualcomm, SEL Lead the Patent Rankings 2018 in Taiwan

Bilngual Version

According to newly released government statistics in Taiwan, TSMC (Taiwan Semiconductor Manufacturing Company) has been ranked No. 1 in residents’ patent applications with 944 cases, for three straight years since 2016, and No.1 in residents’ patent grants with 430 patents for the first time in 2018. As for non-residents’ patent activities, Qualcomm Inc took the first place with 1,011 applications and SEL (Semiconductor Energy Labor) with 474 grants.

On January 28, 2019, TIPO (Taiwan Intellectual Property Office) released its IPR Statistics Report 2018 in which new applications for all three types of patents slightly dropped by 1 percent to 73,421 cases. 78 percent of the patent applications were filed for inventions, a 3 percent increase from 2017. Besides, 18,365 cases of these invention applications were filed by residents and 29,064 cases by non-residents, with a 1 percent and a 4 percent growth respectively.

Among local applicants, TSMC has filed 944 (invention) applications, earned 430 patent grants in 2018, and continues to be the highest-ranked. AU Optronics Corp came in second with 586 filings, followed by Acer with 476 filings. IC designer Realtek Semiconductor Corp cracked the top ten for the first time with 195 applicants, a 60 percent increase from the previous year. In addition, HTC returned to the ninth places for the third time with 185 applications, a notable 78 percent yearly growth.

Among foreign applicants, Qualcomm overtook Alibaba Group with 1,011 applications and a 67 percent yearly growth, the largest increase within the top ten non-resident applicants. The Chinese e-commerce giant slipped to the second place with 599 applications, a 27 percent drop from a year earlier. DISCO with 285 filings and Corning with 272 filings have both made the top ten for the first year.

There are 25 universities and 6 research institutes named in the top 100 rankings. The total numbers of new invention and utility model filings by these 25 universities rose by 5 percent to 1,054 cases and 26 percent to 789 cases, respectively. The filings for design patents dropped by 2 percent, with a slower decline, to 53 cases. The only university included in the top ten rankings is Far-East University with 184 applications, mostly (159) for utility models. Of the applications for inventions, the best performer was National Cheng Kung University with 92 cases, followed by National Tsing Hua University and National Chiao Tung University, both with 85 cases.

New applications for inventions filed by the 6 research institutes saw a 5 percent decline in 2018. ITRI (Industrial Technology Research Institute) remains in the top five with 441 cases at the fifth place. Following is NCSIST (National Chung-Shan Institute of Science & Technology) with 112 cases at the 23rd place.

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China’s Supreme Court Will Hear Appeals on IP Lawsuits Involving Strong Technical Background

【Bilngual Version】

中國最高人民法院

Supreme People’s Court ( SPC ) by Rneches ,CC BY-SA 3.0

According to a decision made by the Standing Committee of National People’s Congress on October 26, 2018, appeal cases involving strong technical backgrounds will be heard by China’s Supreme People’s Court ( SPC ), effective January 1st, 2019. Such legislation that aims to unify standards for hearing intellectual properties (IP) cases and further enhance the judicial protections for IP rights covers disputes on invention patent, utility model patent, new varieties of plants, layout design of integrated circuits, technical secret, computer software, anti-trust, etc. 

Based on the “ Decision of the Standing Committee of the National People’s Congress on Several Issues concerning Judicial Procedures for Patent and Other Intellectual Property Cases”,  the decision is made as follows:

I. The Supreme Court has the jurisdiction over appeals of first instance judgements or rulings in IP civil lawsuits involving relatively strong technical backgrounds, including disputes on invention patent, utility model patent, new varieties of plants, layout design of integrated circuits, technical secret, computer software and anti-trust. 

II. The Supreme Court has jurisdiction over appeals of first instance judgments or rulings in IP administrative lawsuits involving relatively strong technical backgrounds, including disputes on patents, new varieties of plants, layout design of integrated circuits, technical secret, computer software and anti-trust. 

III. For retrial requests or Procuratorate’s protest against those effective first instance judgments, rulings or mediations in above mentioned lawsuits, the Supreme Court has the authority to apply trial supervision procedure, or otherwise designate lower courts, to hear such retrial requests or protests. 

IV. The Supreme Court shall report the implementation status of this Decision to the Standing Committee of National People’s Congress upon completion of the three-year term.

V. This decision comes into effect on January 1, 2019.

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Under the current practice, the appeals against the decisions of the first instance court on patent infringement litigation and patent validity are heard at provincial level high courts. These cases will only go before the Supreme Court if a further appeal is allowed. Thus, judges in different courts may have some difference in the technical knowledge, as well as the interpretation and opinion of the law.

Under the new passed procedure, the appeals (for patents involving relatively strong technical backgrounds) against the first instance judgments or rulings on IP civil and administrative lawsuits are both heard by SPC. Appeals not involving high technical or complex issues are still heard by local high courts.

【參考資料來源】

 




How EPO’s Internal KPI System Impact on EP Application Nowadays

Bilngual Version

EPO專利審查程序講座
Dr. Klinkski 受邀介紹EPO當前專利審查程序

On November 7, Dr. Robert Klinski, the Managing Director of PATENTSHIP Patentanwaltsgesellschaft mbH, was invited to share his observation on how the EPO’s internal KPI system might have impacted the European Application Process and Result. He also gave applicants and agents valuable advice on how to avoid unwanted situations during the process.

To increase efficiency and quality of EPO service, the office has introduced a set of key performance indicators (KPIs) to monitor examiners’ performance in recent years. The performance rating system greatly boosts the office productivity, but has its downsides, too. Under the current KPI system, the search report in each case is awarded most points, meanwhile, a refusal action is awarded more points than a further written opinion or oral proceeding.

Generally speaking, examiners (held back by the KPI system) have no incentive to prolong the examination process. By way of illustration, if the primary examiner who is in charge of the search report and the first examination has doubt on some issues, he or she might be less willing to write an office action useful to solve problems. Once the search report is completed, the next examiner tends not to overrule the previous opinion, i.e., it’s better to secure a positive result at the early stage of patent application.

On that account, Dr. Klinski suggested that applicants try hard to remove all hurdles, any adverse factors possibly causing a rejection, before filing a patent application and must proactively communicate with the assigned examiner earlier to monitor the progress and unexpected issues. He also shared other matters needing attention and a few checklists to go through for variable scenarios.

Headquartered in Munich, PATENTSHIP provides full cover service for intellectual property matters in German, Europe and worldwide. The office is particularly well-experienced in EP appeal and opposition proceeding, as well as patent drafting, prosecution, and litigation in the fields of Telecommunication, SEPs, Software, Mechatronics System Integration Development, etc.




Joint Seminar by Top Team, BSKB and HL: Regulation Updates and Practice in Taiwan, US and EU

左起冠群陳怡安副理、吳珮琪副所長 、Kim&Chang律師 Duck Soon Chang、HL 資深律師 Michael Conwey、Dr. Daniel Chew、BSKB 資深合夥人 Robert Kenny、徐振康律師、Michael Smith律師、林佳慧律師、謝沛肴副理
Left to Right, Ian Chen and Peggy Wu from Top Team; Duck Soon Chang from Kim&Chang; Michael Conwey and Dr. Daniel Chew from HL; Robert Kenny, Greg Hsu, Michael Smith from BSKB; Jia Lin and Irene Hsieh from Top Team

Bilingual Version

Experts from Birch, Stewart, Kolasch & Birch, LLP (BSKB) and Haseltine Lake LLP (HL) were invited to speak at a joint seminar organized by Top Team on November 28, 2018. They presented a variety of topics including the “Trademark Use in Commerce” requirement and the Post Registration Proof of Use Audit Program in the US; Brexit’s Impact on EU trademarks and designs, and an Update on EPO’s Guidelines for Examination.

Robert Kenny on “Trademark Use in Commerce”
Robert Kenny on “Trademark Use in Commerce”

Robert J Kenny, the senior partner of BSKB, began with the concept of “trademark use in commerce”, the basis for establishing and maintaining trademark rights in the US. He explained the use requirement at different business stages, covering the intent-to-use, extension of international registration and other possible filing/registration bases, as well as the declarations of use under section 8 and section 71. Kenny used real-world examples to demonstrate what constitutes an acceptable specimen of use. He also gave practical suggestions on how to avoid trademark conflicts before the actual use day of a trademark.

Michael Smith on “Post Registration Proof of Use Audit Program”

The next speaker Michael T. Smith, the Inside Counsel of BSKB, focused on the Post Registration Proof of Use Audit Program, which was officially launched in November 2017 by the USTPO. He talked about the background of the audit program. In July of 2012, the authority began randomly selecting 500 registrations for which owners had filed six-year declarations of use (Section 8 or 71 affidavits of continued use). Those owners were asked to submit proof of use for at least two additional goods or services per class.

It turned out that 253 of the selected registrations (51%) were not able to verify the previously claimed use. 175 (35%) of the registrations had goods and/or services removed; and 80 (16%) were canceled in their entirety because the registrants didn’t even respond. The program improved the integrity of the trademark register by allowing the USPTO to cancel audited registrations with unsubstantiated use claims or remove unsupported goods and services from others and later made the new Post-Registration Proof of Use Pilot Program permanent last November. Smith also shared his opinion about how to respond to the audit under different scenarios.

The following topics were presented by two partners of Haseltine Lake LLP (HL). As everyone knows, the UK and EU have agreed a Brexit deal in November. If the deal is passed by the UK Parliament and signed before the exit day (March 29, 2019), there will be a transition period, extending to the end of 2020, for the UK to enact and implement the supporting legislation. If it’s not, EU law will cease to apply on 29 March 2019, i.e., EU trade marks and designs will be no longer in effect in the UK.

Michael Conway on “Brexit Impact on EU trade marks and designs”

On the base of the 585-page draft withdrawal agreement and the “No-Deal” guidance released earlier, Mr. Michael Conway talked about the Brexit effect on EU trademarks and Registered Community Design (RCD), such as the potential risks, exhaustion of rights, key differences in practice between the UK and EU, cross-border trade and custom procedure, etc. He also offered useful suggestion for how to maintain the continuity of protection of granted trade marks and RCDs.

Dr. Daniel Chew on “Guideline Updates for Examinations in the EPO”.

Later on, Dr. Daniel Chew provided an update on the EPO Guidelines for Examination released in November 2018. He stressed the importance of familiarity with the guidelines which set out the day to day practice for examiners and enable patent attorneys to understand how an examiner is likely to approach an issue. Because, in his observation, examiners refer to case law quoted only in the guidelines. He also briefed the audience the key changes to the former edition.

Jia Lin on “Well-known trademarks practice in Taiwan ”

Jia Lin, the attorney at law of Top Team, shared about invalidation cases involving the “well-known” trademarks in Taiwan and overseas. She recapitulated the related Supreme Administrative Court ruling, decided in 2017, in which the definition, Likelihood of Confusion and Dilution of “well-known” trademarks prescribed in Trademark Act §30(1)(11) were further clarified. She also spoke about different academic opinions and the possible amendment to the Act.

BSKB has been providing a full range of intellectual property law services to clients since 1976 and now become one of the top five IP law service firms in the United States. Its knowledgeable attorneys and agents are particularly experienced in the fields of chemistry, electronics and IT, mechanical engineering and life sciences/biotechnology. Robert J. Kenney has achieved a personal record as the attorney of Trademark Records (surpassing 5000 trademark applications and registrations in USPTO) this July. Michael T. Smith has practiced in the intellectual property field since 2001, focusing on patent prosecution, trademark litigation and other inter partes matters.

Haseltine Lake was established in 1850 and it is now widely regarded as one of the major IP law firms in Europe, with offices in Bristol, London, Glasgow, Munich, Sittard-Geleen, and Guangzhou. Michael Conway leads the firm’s Designs Group and regularly advises clients on registered and unregistered design matters and he speaks English, German and Spanish with basic competence in Mandarin. As a registered UK and European Patent attorney, Dr. Daniel Chew has a PhD degree in mobile and satellite communications and specializes in electronic patent matters, particularly in mobile and communications systems inventions.