Interview With KIPO Commissioner Kim Young-min

South Korea is now considered one of the most influential countries in the IP field. Intellectual Property Watch exchanged a set of questions for Kim Young-min, commissioner of the Korean Intellectual Property Office (KIPO) since 2013, speaking about KIPO’s policies for increasing international cooperation, reducing first action pendency, and preventing “bad faith” trademark applicants in Korea from making unfair profits.

The KIPO website is here. The commissioner’s biography is here.

Q1. What IP trends do you see in Korea?

In 2008, due to the global recession, there was a brief falloff in the number of IP applications received, but we have been seeing a steady increase ever since 2011. In 2013, there were 430,164 applications, a 8.4% increase from 2011 according to KIPO’s internal statistics.

Patent applications increased year-over-year by 8.3% to 204,589, trademark applications by 11.4% to 147,667, and industrial design applications by 6.0% to 66,940, while applications for utility models decreased by 11.7% to 10,968. The number of patent applications has been continually rising since 2010.

The number of international IPR applications from Korea has also seen a steady increase. There were 12,386 PCT applications from Korea in 2013, a 4.5% increase over the previous year, making Korea the world’s fifth most active country in PCT applications, following the United States, Japan, China and Germany.

In 2013, the total number of Korea-originating international trademark applications under the Madrid System increased by 1.6% to 510, the 18th highest amount by country of origin.

< IP applications trend over three years >

Q2. Last year, you announced an action plan for fostering an IP-based creative economy. What was its aim, what has been the outcome so far, and how will this strategy continue to play out in the future?

In June 2013, the Korean government announced a strategy for transitioning the Korean economy into a creative economy, and KIPO followed up by issuing a detailed action plan for Korean intellectual property. This action plan will allow us to turn creative ideas from the general public into high-quality IPRs that will help generate superior jobs and determine future technologies which will be essential to future generations.

Since last year, KIPO has diligently pursued this strategy, and most of its facets are satisfactorily progressing as planned. One of our most significant achievements was to establish a whole governmental policy and institutional strategy to create, protect, and utilise intellectual property, which is the key element of a creative economy.

In addition, we reduced the average first action pendency for patent and utility model examinations down to 13.2 months, and established the basis for creating competitive IP by introducing customer-oriented services, such as a positive examination service, which helps the applicants acquire high-quality patents by boosting interactive communication with examiners regarding the proper scope of the inventions, and a collective examination system in which multiple applications related to one product can be examined simultaneously.

Since successfully implementing this important stepping stone for achieving an IP-based creative economy, we are now pursuing the entire action plan with even greater vigour so as to create further substantive results.

Q3. This year, Korea has said it plans to reduce its first action pendency to less than one year. What efforts are being made to achieve this, and what is the status so far in meeting this goal?

KIPO is devoted to speeding up the patent examination process in order to ensure timely and appropriate protection for creative ideas. In 2013, our average first action pendency for patents and utility models was 13.2 months.

As you mentioned, we expect to further reduce our average first action pendency to 11.7 months by the end of this year. This would make our average first action pendency one and a half months shorter than it was last year. Each month, we have been monitoring the pendency of our examinations, and we are confident that we will keep our promise to the public by reaching our stated goal.

Moving forward, we plan to maintain an average first action pendency of less than 10 months. To meet that goal, we have made our prior art search program more efficient by expanding the role of prior art searchers[1] and providing them with both an in-service training system and a qualification system as capacity build-up programmes.

In addition, our computer and IT system enhancement plan will be another cutting-edge tool for improving patent examination productivity so as to meet our target goals for further reduction of patent examination pendency.

Q4. In addition to reducing the first action pendency [from the filing date to first action on the application], KIPO has also sought to enhance the quality of its examination service. What have the results been thus far?

We believe that this is the time for greater focus on improving our patent examination quality as well as shortening our first action pendency.

First of all, we plan to strengthen the capability of our examiners by optimising our application-to-examiner ratio. In other words, we are determined to lower the number of examinations being processed by each examiner. By incrementally expanding our examination budget and increasing the number of our staff, we plan to bring the ratio down to a more competitive level.

Through examination cooperation, we will enhance our examination service by improving the capabilities of prior art searchers, upgrading searching environments, and expanding the scope of searches. We also plan to relocate, in phases, the Korea Institute of Patent Information – which contributes a great portion of prior art searches for KIPO – to Daejeon, the city where KIPO’s main office is located.

In addition, KIPO is expanding its customised patent examination services by introducing a collective examination system in which multiple applications related to one product can be examined simultaneously. We also plan to earnestly push forward positive examination service, which helps the applicants acquire high-quality patents by boosting interactive communication with examiners regarding the proper scope of the inventions.

Q5. What is KIPO doing to protect the intellectual property rights of both domestic and foreign companies doing business in Korea?

In Korea, it currently remains very difficult for people to prove damages, and the amounts awarded in damages are generally too low. Therefore, KIPO will work to enhance Korean IP protection by establishing a more business-friendly legal system.

First, we will amend laws and regulations in order to increase the effectiveness of IPR protection by expanding the scope of damage compensation and obligating IP infringers to submit their own damage calculations. We also plan to amend the Patent Act so as to simplify the damage assessment process and increase the amount of monetary compensation awarded for IP infringement. At the same time, we are working to introduce closed court hearings and a revised set of laws to categorise instances of IP infringement in a way that will allow for more efficient protection of trade secrets.

In addition, we aim to develop and disseminate a standard model for ensuring the protection of ideas that get submitted in contests. This standard model will serve to clarify that ownership of a given idea belongs to the applicant, and that the host organisations needs to get the applicant’s consent in order to use the idea for any reason.

Furthermore, we will concentrate harder on cracking down on anyone who engages in the mass manufacturing, selling, or distribution of counterfeit goods. This will be accomplished via planned-investigations, as well as through the intensive scrutiny of all illegal acts perpetrated online. We will also strengthen the investigational capabilities of our special judicial police, build up close ties with related institutions, and establish a non-governmental committee to promote the voluntary extermination of counterfeit goods.

Lastly, we will embark on national campaigns to develop and disseminate educational materials on IP protection and promote IP protection networks in Korea.

Q6. Korea is rife with trademark applicants who file and sell trademarks in bad faith. What is KIPO’s policy to prevent this?

Recently, “bad faith” trademark applicants have filed applications for such famous Korean appellations as “Girls Generation” and “One Night, Two Days.” If successful, these applicants will then demand settlements from petty merchants who use those appellations as names for their shops or restaurants. However, until recently, there were no specific examination guidelines by which KIPO could reject these applications, unless an application’s classification was somehow related to broadcasting.

By amending current trademark laws, we have ensured that applicants can no longer use trademarks registered under the names of famous entertainers or the titles of famous broadcasts unless the applicant first receives proper consent from the trademark’s rightful holder. If not, the “bad faith” trademark would be cancelled.

< Cases of trademark applications using the names of famous entertainers or broadcasts >

Additionally, certain people with inside knowledge – for example, company employees or contest judges – often get the jump on filing trademark applications by stealing trademark secrets that are still in development. Thanks to the recent legal amendments we made, KIPO can now reject “bad faith” trademark applications filed for the sole purpose of preoccupancy, regardless of whether the trademark is known to the general public.

Q7. An IP5 meeting was held in Busan, Korea, in July 2014. What were the key outcomes, and what was your assessment of the meeting?

I believe this meeting was of special significance, since we were able to reach the largest number of agreements in IP5 history.

The most meaningful agreement reached was that of making it the responsibility of each patent office to provide the public with updates on the status of pending patent examinations. Included will be concrete information that will let applicants know when they can expect their examination to be completed, as well as what they need to do in order to successfully navigate the examination process.

One Portal Dossier (OPD) allows users to retrieve all necessary documents via a single internet portal, granting the public immediate access to information on their pending examinations. In the past, applicants wanting to know the status of their patent applications were forced to search the websites of each patent office for updates. Thanks to the new agreement, this inconvenience has now been resolved.

Furthermore, in the field of examination cooperation, the Patent Harmonization Expert Panel (PHEP), aimed at harmonizing the patent system among the IP5 Offices, has selected three future discussion topics – unity of invention, the citation of prior art, and written descriptions – and determined which office will lead the discussion on each topic.

Thanks to enhanced cooperation resulting from the agreement to disseminate patent examination results among the IP5 patent offices, examination outcomes are becoming more readily predictable, and overall examination quality is rapidly increasing.

More information can be found on the IP5’s official website: http://www.fiveipoffices.org.

Q8. KIPO continues to have high market share in PCT international searches. How do you maintain this?

Since 2009, KIPO has maintained a global third-place ranking regarding the number of international search reports being issued.

Furthermore, the number of international search reports requested by foreign companies totalled 18,103 – nearly 60% of all international search reports issued by KIPO.

We believe this increase in international search requests by foreign enterprises is mostly due to the outstanding quality of KIPO’s international search reports, the linguistic diversity of our search services (which cover English, Japanese, and Chinese prior art documents) and the strengthening of our PCT support services for foreign applicants.

As was pointed out in WIPO’s PCT Yearly Review for 2014, our timeliness has markedly improved over the last few years. In 2012, the ratio of search reports issued within sixteen months from the priority date was only 23.7%, but, in 2013, it almost tripled to 68.0%.

We are continuously doing our utmost to further improve the quality of our international searches. Every international search report is first reviewed by an examination supervisor before delivery. We also run an Examination Quality Assurance Division, which is dedicated to quality, reviewing the work of our examiners and providing feedback to them and their supervisors.

Thanks to these efforts, the ratio of international search reports, which cite prior art considered relevant for determining the novelty and inventive step of the invention as claimed, increased to about 70%, according to KIPO’s internal statistics.

We plan to continue doing our utmost to provide the most timely and highest quality PCT international search services we possibly can.

Q9. What kind of programmes does KIPO operate for helping less developed countries?

KIPO supports less developed countries by operating an international IP sharing project and providing Korea’s IP administration system as a model for less developed countries.

KIPO’s “International IP Sharing” project uses patent information to implement the customized development of appropriate technology[2], thereby enhancing the quality of life for people living within those less developed counties that receive the benefits of that technology.

To date, we have developed charcoal manufacturing technology for Chad, a simple water purifier for Cambodia, bamboo housing technology for Nepal, and an aromatic oil extractor for the Philippines. APEC has acknowledged the validity of what we are doing, resulting in a successful APEC-KIPO Appropriate Technology Conference held in Seoul in July 2014.

In addition to appropriate technology, we support the branding of specialty, high-quality agricultural products from less developed countries, thereby helping them sell their products at a more competitive price.

Furthermore, we have offered our IP administration system as a model to help less developed countries by cooperating with relevant corporations like the Korea International Cooperation Agency and the Export-Import Bank of Korea. We completed the establishment of an IP administration system for Mongolia in 2011 and for Azerbaijan in 2013, and we are currently working on enhancing the African Regional Intellectual Property Organization’s (ARIPO) IP administration system.

Q10. We were informed that starting this year, KIPO will deploy its patent examination services to the United Arab Emirates. What is the current status of this project, and what do you envision for it in the future?

During the 4th Korea-UAE joint economic committee on May 30th, 2014, Korea and the United Arab Emirates (UAE) signed a contract for dispatching five Korean patent examiners to the UAE in order to execute patent examinations starting in June. Patent examiners in Korea also remotely examine patent applications filed in the UAE.

It is said that, so far, economic cooperation with the UAE has been focused on nuclear power generation, resource development, and construction. The export of patent examination services, which is an intangible resource, means a paradigm shift in the way we export to the UAE. In addition, it marks the first time for highly qualified Korean patent examiners from the science and engineering fields to examine patents filed in a foreign office.

As part of our enhanced cooperation with the UAE, we plan to assist them in building an IP support system that will include an IT system, strategies for human resource development, and policies on IP rights. Since we are already undergoing negotiations with the UAE, we expect that the exportation of Korea’s IP administration system to the UAE will happen sometime in the near future.

Q11. In light of this week’s WIPO General Assembly, what plans does KIPO have for future cooperation with WIPO?

As one of the leading countries in the IP field, Korea will continuously cooperate with WIPO in terms of establishing international standards and assisting less developed countries.

In addition to our June signing of the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Printed-Disabled, we also signed in March, 2014, the Geneva Act of the Hague Agreement for the International Registration of Industrial Designs, and it went into effect in July 2014. It is expected that, by joining the Hague Agreement, Korea, which is a member of IP5, might encourage other countries to join as well. This will contribute to the timely settlement of the Hague Convention and allow applicants to finally acquire global design rights.

Korea has extended the Korea Funds-in-Trust (Korea FIT) at WIPO to help close the gap between developed and less-developed countries in the area of IP. Since beginning the Korea FIT in 2004, Korea has donated approximately 8.1 million CHF toward the overseas expansion of IP policies and informatization, thereby laying the groundwork for protecting intellectual property rights, as well as for enhancing global IPR awareness.

We plan to operate programmes that will do even more to strengthen the capability of IP administration systems and increase IP awareness within less developed countries. Of special interest is next year’s KIPO-WIPO grand conference on appropriate technology, which will give member states a platform for sharing their strategies on IP development and application.

[1]Examiners communicate interactively with prior art searchers via face-to-face meetings. During these meetings, searchers report the prior art search results, including technological information, search strategies being used, and specific contents of cited references.

[2]Appropriate technology (AT) refers to technology that makes best use of locally available resources and ensures an adequate supply of the basic necessities of life, such as clean water, food, and energy.