Enforcing Your IP in KOREA 22 August 2008 Lee, Hyun-Song

1 Table of Contents Korea IP Protection Level Korea IP Protection System Protection of Patent Protection of Trademark Protection of Copyright and Related Rights KIPO’s Activity for IP Protection

Korea IP Protection Level

3 IMD (International Institute for Management Development) –IP protection level ranking (2007) : 34th / 55countries 30 OECD members + 25 emerging developing countries PRA (Property Rights Alliance, Washington D.C, USA) –Level of IP protection (2008) : 23rd / 115 countries 20th among 30 OECD members PRA’s IP protection ranking evaluates “legal protection”, “patent protection strength”, “copyright infringement loss” and “trademark protection” USTR (United States Trade Representative) –Priority watch list (PWL) → Watch list since 2004

4 Results of IP Enforcement in Korea

Korea IP Protection System

6 IP System in KOREA Intellectual property Neo-IPs Patent (including plant variety) Utility model Industrial design Trademark : Korean Intellectual Property Office : Ministry of Culture, Sports and Tourism Industrial property Copyright and related rights Computer program Layout design of semiconductor integrated circuits Prevention of unfair competition Protection of trade secrets Geographical Indications Business method

7 KOREA IP Protection System

8 Major Protection Bodies (1) IP Protection Policy Council (2004) –Prime Minister’s Chief Secretary (Chair), 9 Ministries including Ministry of Justice, KIPO –Major function Nation-wide IP protection coordination & support KIPO –Patent Act, Utility Model Act, Trademark Act, Industrial design protection Act –Semiconductor integrated circuits layout design Act –Unfair competition prevention and trade secret protection Act –Crack-down on counterfeit products

9 Major Protection Bodies (2) Public Prosecutor's Office & the Police –Crack-down and criminal prosecution of counterfeiting Court –General court –Patent court KCS (Korea Customs Office) –Customs Act –Suspend customs clearance and investigate KTC (Korean Trade Commission) –Unfair Trade Behavior Investigation and Remedy for Industrial Damage Act –Enforce corrective measures such as fine against import & export of IP infringing goods

10 Major Protection Bodies (3) Ministry of Culture, Sports and Tourism –Copyright Act –Computer program protection Act –Copyright Commission Ministry for Food, Agriculture, Forestry and Fisheries –Seed industry Act –Agricultural quality control Act Not exclusive right, only ex officio action Local Governments

11 Laws that Protect IP in Korea

Protection of Patent

13 Action Plan for Infringement Acknowledgement of infringement Collection of information –Infringer, infringing goods, amount, catalogue Confirmation of infringement –Trial to confirm the scope of the right Proving infringement –Goods, picture, witness Warning letter –Can be used as intentional infringement Legal action –License, civil or criminal action

14 Infringement Direct infringement –All element rule –Doctrine of equivalents –Improvement relationship Indirect infringement –Special unit of invention

15 Infringement: Example PatentObjectInfringement A+B+C O A+B+cO A+B+CA+B+C+DO A+B+CA+B+c+DO A+B+CA+BX A+B+CA+B+DX A+B+C(a)+B+CX A+B+CA+(b)+B+CO a is subgroup of A, but has special effects b is redundant, c is equivalent to C

16 Enforcement of Patent (1) Industrial property Dispute mediation (ippc.kipo.go.kr) –Civil action Settlement –Fast and economic solution Several months for the settlement –Settlement Protocol has legal power as legal reconciliation –Both party can apply

17 Enforcement of Patent (2) Intellectual Property Tribunal –For right holder Offensive trial to confirm the scope of the right Trial for correction –For infringer Trial for invalidation of registration Defensive trial to confirm the scope of the right Invalidation trial of registration for extension of term of patent right Trial for Invalidation of correction Appeal procedure –Patent court -> Supreme court

18 Enforcement of Patent (3) Court ( –Civil remedy Injunction against Infringement (possible for provisional measures) –Regardless of intention –Exclusive license to discontinue or refrain from infringement –Destruction of the infringing articles and removal of the facilities Compensation for damages –For intentional infringement –Multiply the expected profit of single unit by the number of counterfeit goods sold Recovering the business reputation Compensation for unfair profits gained by the infringer –Criminal sanctions Only for intentional infringement Offense subject to complaint Dual liability Imprisonment up to 7 years or fine up to 100,000,000 won (~$100,000) Appeal procedure –High court -> Supreme court

Protection of Trademark

20 Protection of Trademark An exclusive right –The owner of trademark –Registered with KIPO –On designated goods Considered to Infringe –Using or intention to use the same or similar trademark to the same or similar designated good

21 Enforcement of Trademark (1) Anti-counterfeiting Activity –KIPO the counterfeit goods reporting center (ippc.kipo.go.kr) –Public Prosecutor's Office & the Police Cyber police agency ( –Korea Customs Office ( Trademark and Copyright –Ex officio –Easy and efficient way

22 Enforcement of Trademark (2) Intellectual Property Tribunal –Trial for invalidation –Trial to confirm the scope of the right Defensive Offensive –Trial for revocation –Trial for revocation of right of use Appeal procedure –Patent court -> Supreme court

23 Enforcement of Trademark (3) Court ( –Civil remedy Injunction against Infringement –Regardless of intention –Exclusive license to discontinue or refrain from infringement –Destruction of the infringing articles and removal of the facilities Compensation for damages –For intentional infringement –Multiply the expected profit of single unit by the number of counterfeit goods sold Recovering the business reputation –Criminal sanctions Only for intentional infringement Offense indictable without complaint Imprisonment up to 7 years or fine up to 100,000,000 won (~$100,000) Appeal procedure –High court -> Supreme court

24 Enforcement of Trademark (4) Protection of unregistered, well-known trademarks –Prohibiting the registration for an identical or similar mark Identical or similar Cause confusing to the public To use obtain unjust profit –Protected by Unfair Competition Prevention and Trade Secret Protection Act

Protection of Copyright and Related Righs

26 Protection of Copyright and Related Rights Copyright, Computer program –Computer program by patent More powerful protection Personal or Association –Korea Federation of Copyright Organizations –Korea Music Copyright Association –The Korean Society of Authors –Korean Radio & TV Writers Association –Korean Association of Phonogram Producers –Federation of Korean Music Performers –Korea Reprographic and Transmission Rights Association –Korea Broadcasting Performers’ Association –Software Property-right Council

27 Protection of Foreigner’s Copyright National treatment for member of International Treaty –UCC (Universal Copyright Convention) Korea (1987), Thailand (Not yet) –Berne Convention for the Protection of Literary and Artistic Works Korea (1996) Thailand(1931) –TRIPs (Agreement on Trade-Related Aspects of IPR) Korea(1995) Thailand (OK) –WTC (WIPO Copyright Treaty) Korea(2004) Thailand (Not yet) The same treatment as Korean’s (Even for non member) –The copyright of foreigner which published in Korea for the first time –Published in Korea 30 days after the original publication in the foreign country

28 Enforcement of Copyright (1) Copyright Commission ( –Civil action Settlement –Fast and economic solution Take around 3 months for the settlement Application fee less than 100,000won (~$100) –Settlement Protocol has legal power as legal reconciliation –Both party can apply Korea Customs Office ( –Trademark and Copyright Ex officio Easy and efficient way

29 Enforcement of Copyright (2) Court ( –Civil remedy Regardless of intention Compensation for damages –Within 10 years from the infringement, or within 3 years from the recognition of infringement Petition for cease or defense for infringement Compensation for unfair profits gained by the infringer –Criminal sanction Only for intentional infringement Principally offense subject to complaint –Within 6 months from the notice of infringement Offense indictable without complaint –habitual crime for profit Imprisonment less than 5 years or fine less than 50,000,000 won (~$50,000)

30 Registration of Copyright Need to register? Basis for legal evidence –Opposing power for infringement –Proof of creation –Can make infringement as Intentional one Open to the member of international treaty Copyright –Copyright Committee ( Computer Program –Korea Software Copyright Committee (

KIPO’s Activity for IP Protection

32 Recent Trend of Counterfeiting Increase of import/distribution through 3rd country –Domestic manufacturing & distribution decreased due to continued enforcement and stronger penalties, but recently foreign import of counterfeit is increasing Distribution through the Internet Increasing –Inflow of counterfeits through internet sites opened in overseas

33 KIPO’s Activity for IP Protection (1) Crackdown together with Prosecutor, Police & Local Gov. –Enforcement staff at local government : 250 –Detect counterfeiters and arrest violators * Results of crackdowns on counterfeit goods

34 KIPO’s Activity for IP Protection (2) The most common counterfeit goods

35 KIPO’s Activity for IP Protection (3) Reward System for Reporting Counterfeiting –Receives reports on counterfeit goods and transfer to prosecutors’ office or conduct joint enforcement –Pay reward for reporting counterfeit manufacturer or seller * reward : from 200,000 won to 5 million won * Results of the counterfeit goods reporting center

36 KIPO’s Activity for IP Protection (4) Legal enhancement for IP protection –Statutory damages for trademark counterfeiting Court can recognize damages of the plaintiff based on statutory amounts even when the right holder fails to prove actual damages –Stronger Trademark Protection & Prevent Infringement –Non-disclosure order & criminal penalty Court can order non-disclosure of confidential information exchanged during litigation and can criminally charge violations –Infringement information easily exposed during litigation→ expedite litigation and improve quality of deliberation –Stronger penalties against infringement and expand scope Stronger penalties against infringement –Prison term 5yrs → 7yrs, Fine 50 million won → 100 million won (2001) Expand scope of unfair practices –Dead copy, Cyber-Squatting (2004), Dilution (2001)

37 KIPO’s Activity for IP Protection (5) Stronger Enforcement for On-line Counterfeit –Identify on-line websites selling counterfeit goods and refer for investigation or site shut-down * On-line counterfeit good enforcement system Criminal investigation Shutdown or suspend site Cancel ID or blog Suspend ID and stop sales * BCC (Broadcasting Communication Deliberation Committee) : Subsidiary body of the Broadcasting Communication Committee for preventing distribution of harmful information over the Internet

Thank you Lee, Hyun-Song Tel: +82-(42) Fax: +82-(42)