While software is automatically afforded copyright protection at the time of creation without the need for any special procedures, copyright protection protects the specific expression of an idea, not simply the idea itself. This can be problematic as no protection is available via copyright with regard to imitation software where the same idea may be expressed in a different way.
There is currently no means to protect software resulting from a developer’s original idea in a manner equivalent to patent protection. Though there have been continued attempts to amend patent law to include protection for software per se, such attempts have failed due to concerns raised by private groups that doing so would excessively expand the range of infringing articles and lead to the shrinking of related industries.
According to current examination guidelines, protection is available for software only when embodied in a “tangible medium”, with no adequate protection available for software distributed online — a situation out of sorts with the reality of the modern world where the distribution of software increasingly revolves around online channels.
Protection for software is available via process patents by specifying a series of processing steps. However, Article 2 of the current Patent Act distinguishes between acts of practicing process and product inventions as follows:
Product: Manufacturing, using, assigning, leasing, or importing the product or offering to assign or lease the product (including displaying the product for the purpose of assigning or lease; hereinafter the same shall apply)
Process: Using the process
As a result, if software infringing a process patent (by way of example, a method of adjusting audio volume automatically in relation to vehicle speed) were to be distributed online for the purpose of sale, this would not be regarded as infringement of the patent. The reason for this is because the act of distributing software online for the purpose of sale is not itself regarded as practicing the patented method (i.e. using the method of adjusting audio volume automatically in relation to vehicle speed).
According to an amendment passed on December 10, 2019 and due to come into effect from March 11, 2020 (Law No. 16804), the above-mentioned Article 2 of the Patent Act will be amended to bring the act of “offering the use of the process” within the definition of practicing an invention, in addition to the current “using the process”. This will mean that acts of selling patent-infringing software online, etc. will be regarded as practicing a patented invention.
Nonetheless, online transmission of patent-containing software will not be deemed patent-infringing in all cases as the amendment contains a requirement that the offering of use of a patented process be intentional (specifically, offered in the knowledge that use of the method would infringe patent rights) in order for patent rights to be effective against the would-be offender.
This limits offenders to sellers who illegally distribute software knowing that patent rights are being infringed. Accordingly, as infringement is not acknowledged if the seller is unaware of the infringement, it will be necessary for patent right-holders to first deliver warnings (cease-and-desist) to sellers illegally distributing software which infringes their patent.
Following the amendment, adequate protection will be available not only against offline sales of patent-infringing software, but also online sales of the same. Offline sales of patent-infringing software may be protected against via patent claims relating to software embodied in a tangible medium (product claims), while online sales may be protected against via patent claims relating to a series of processing steps (process claims).
Written by Jae-hwan SIM
The potential to reduce patent fee expenditure will be of interest to most, if not all, corporations, as the aim of patent departments is normally to build and maintain as strong a patent portfolio as possible within a fixed budget. With this in mind, I would like to share some ways to have already-paid fees refunded and also potentially reduce future costs in Korea.
In principle, already-paid official fees are not refundable. However, there are some exceptions to this rule, specifically with regard to examination request fees and appeal fees. Post-registration, it is also possible to reduce annuity fee expenditure by abandoning specific claims.
Examination request fees
Fees paid to request examination can be refunded to the applicant if the application is actively withdrawn or abandoned before the examination process begins.
Specifically, an applicant may request a refund of the examination fees upon officially withdrawing or abandoning a patent application before any of the following events occur: (i) KIPO issues an order for consultation to resolve double patenting issues; (ii) KIPO receives prior art search results from a KIPO-designated agency; (iii) a first preliminary rejection is issued; or (iv) a Notice of Allowance is issued.
[Example for 20 claims: ₩1,023,000 KRW | Approx. $930 USD]
If a rejection decision is revoked by the Intellectual Property Trial and Appeal Board (IPTAB) upon appeal, the fees paid for filing the appeal can be refunded.
[Example for 20 claims: ₩450,000 KRW | Approx. $410 USD]
Alternatively, if the petitioner withdraws their petition for an appeal before they are notified of the conclusion of appeal examination, 50% of the fees paid to file the appeal can be refunded.
[Example for 20 claims: ₩225,000 KRW | Approx. $205 USD]
If a patentee abandons a patent right, the patent fees (issue fees or annuity fees) will be refunded for the years following the year in which the right was abandoned.
Also, when paying patent registration fees or annuity fees, individual claims can be abandoned to reduce the registration fee or annuity. The following example shows the potential saving throughout the life of the patent if 20 claims are abandoned.
₩260,000 KRW | Approx. $240 USD
₩440,000 KRW | Approx. $400 USD
₩760,000 KRW | Approx. $690 USD
₩1,100,000 KRW | Approx. $1,000 USD
If a patentee does not wish to pursue a pending application, in the case that examination has been requested but the results have not yet been issued, fees may be recouped by actively withdrawing the application rather than allowing it to simply lapse through inaction. Similarly, if an IPTAB administrative trial has been filed to appeal a refusal decision, a portion of the fees paid may be recouped if the trial request is withdrawn.
In addition, when paying patent registration or annuity fees, the fees payable to KIPO can be reduced by abandoning any claims which are no longer required.
On a related note, the period for requesting examination in Korea was reduced from five to three years starting from March 1 2017. However, by filing a request for deferred examination, the issuance of the examination result may be delayed until up to five years after the application filing date. In this case, the examination request fees do not have to be paid when filing the request, and payment can be delayed until two months prior to said five-year cutoff.
Written by Jae-hwan SIM
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