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There have been many researches to determine the conditions in which subject matters are patent eligible as we confront new subject matters while science and technology develops. But many of those researches have limits having confusion among concepts regarding patent eligible subject matter such as ‘invention’, ‘abstract idea’, ‘technological idea’ or ‘application of law of nature’, and lacking of trying to establish international standard for patent subject matter eligibility, which is one of reasons for increasing disputes of patents all around the world. Republic of Korea and Japan have the patent law identifying ‘invention’, which are regarded as patent eligible subject matter. It should qualify ‘application of law of nature’ and ‘technological concept’ simultaneously in order to be a patent eligible subject matter. But the condition of ‘application of law of nature’ alone is enough to determine patent eligibility for ‘technological concept’ is relatively undeterminable concept and also duplicating meaning to ‘application of law of nature’. European country such as germany or the ones which are members of European Patent Convention require ‘technological’ condition for patent eligibility. These countries also can use the ‘application of law of nature’ for determining patent eligibility rather than ‘technological’ conditions for the same reasons mentioned above. United States seem to require ‘use of law of nature’ as the least condition for patent eligibility even though there have been no explicit requirement for the patent eligibility in act nor in decisions of U. S. Supreme Courts. For the method claim which contain abstract idea, U.S. supreme court require the claim having something which could ‘transform’ the claim more than abstract idea itself. Although the condition of ‘transforming’ comprises element of ‘application of law of nature’, it does not mean merely limiting application to a certain field so as to claim ‘law of nature’ itself or abstract idea itself but require it limit the idea meaningfully and be major part of the claim. Requiring ‘application of law of nature’ does not conflict the decision of U.S. courts. Furthermore it has a ‘limiting effect’ which prevent courts from excessively granting patent for new subject matter and ‘effect of consideration of usefulness in real world’ and it has merit to make us determine patent eligibility objectively. For ‘invention’ and ‘patent eligibility’ is the basic concept in patent system and it reveals the intent of establish this system, we need to facilitate clear and predictable criterion of patent eligibility in order to prevent increasing dispute regarding patent eligibility.

Selection inventions deal with the selection of individual elements, sub-sets, or sub-ranges, which have not been explicitly mentioned, within a larger known set or range. In determining the novelty of a selection, it has to be decided, whether the selected elements are disclosed in an individualised (concrete) form in the prior art. A selection from a single list of specifically disclosed elements does not confer novelty. However, if a selection from two or more lists of a certain length has to be made in order to arrive at a specific combination of features then the resulting combination of features, not specifically disclosed in the prior art, confers novelty (the “two-lists principle”). A sub-range selected from a broader numerical range of the prior art is considered novel, if each of the following three criteria is satisfied: the selected sub-range is narrow compared to the known range, the selected sub-range is sufficiently far removed from any specific examples disclosed in the prior art and from the end-points of the known range, the selected range is not an arbitrary specimen of the prior art, i.e. not a mere embodiment of the prior art, but another invention (purposive selection, new technical teaching). In the case of overlapping ranges (e.g. numerical ranges, chemical formulae) of claimed subject-matter and the prior art the same principles apply for the assessment of novelty as in other cases, e.g. selection inventions.

This paper reviews 656 cases on patent infringement decided by Trial Courts of the Republic of Korea from Jan. 1st, 2009 to Dec. 31, 2013. All the cases are analyzed from the aspect of overall success rate of the plaintiffs, main rationale for the failed cases, overall success rates in terms of the types of the parties. Further, overall cases with damages awarded to the plaintiffs by the Courts are analyzed in the respect of the success rates in the meaning of the ratio of awarded monetary damages to the claimed amount of damages, types of the parties, types of the right i.e. patent and utility model, main legal basis for the estimation of the awarded damages, and the results are compared with those of the U.S. and Japan. The overall success rate is 30.6% which is comparable to 26.6% of Japan, and 33% of the U.S. The legal cause of the plaintiff's failure can be mainly attributed to the non-infringement(53.0%), invalid patent(33.2%), and public domain art(5.5%). The damages awarded by the Courts ranges from 120,000 won(approx. $110) to 14.5 billion won(approx. $13.2 million); overall average value of the awarded damages is 519.6 million won and median value of them is 58.9 million won. The success rate in terms of the monetary value is 54.4%, while the value in Japan is 40.7%. In 54 percent of the cases, the damages are estimated based on the Section 128, Paragraph 1 of the Korean Patent Code which allows discretion of the Court during appraisal of the damages. The portion of the damages based on the reasonable royalty is 13.4%, which is much smaller than the value of 81% of the U.S. and 35.2% of Japan. This is seemed to be mainly caused by the lower royalty rate approved by the Courts compared to 13.1% of the U.S. and 4.2% of Japan.

We will require a further thorough preparation for the United States’ dominant role play to maximize the profits of its own domestic pharmaceutical companies by strong patent protection for the new drug through the FTA and TPP. Especially our domestic generic pharmaceutical companies suffer from severe revenues decline by the introduction of the patent linkage system with a permission of medical and the market power of the blockbuster companies is likely to be further strengthened owing to blockbuster pharmaceutical companies’ effort trying to seek the strategy to extend the patent term of their blockbuster drugs. Most importantly, we should strive to build pharmaceutical companies's robust business base that can compete with multinational pharmaceutical capital through patents and R&D capacity building and awareness of the importance of IP. In particular, many generic pharmaceutical manufacturers must establish a patent invalidation strategy of the global drug developer's pioneer patents, or develop improved drugs about to patent expire by joint research with the global manufacturer for new drugs and it is necessary to seek strategic alliances with the global manufacturer for entering the foreign market. Our data exclusivity requires a higher level of protection compared to the US data exclusivity and relevant regulations of the FTA. By equalizing data exclusivity period for new drugs and improved drugs, does not obtain the original purpose of the system of recognition of the value of research and development and vice versa, it is necessary to modify the system because a possibility of adverse willing to lower the innovative drug development. In future the implementation of patent linkage system with a permission of medical will strengthen patentee’s rights protection and patent dispute and litigation for generic manufacturers are to increase significantly. Conversely, our domestic pharmaceutical manufacturers’ patent challenge for patent acquisition seems to be accelerating. Only if the patent holder submit patent information list to upload by patent linkage system with permission, she is able to prevent latecomer from entering the medicine market. Accordingly, the patent holder is going to create a lot of secondary patents or to stop the approval process of generics, or to induce a reverse payment settlement to delay the entering to market. Because it affects to delay release of a relatively less expensive generic and is more likely to have an adverse effect on the finances of the national health insurance, the Pharmaceutical Affairs Law revision is to be required along with government measures to eliminate these habitual evils.

Descriptive trademarks cannot be registerable in general. However, according to Korea Trademark Law (KTL) article 6.2, they can be registered when they have acquired distinctiveness by use. On the other hand, the KTL article 51.1 stipulates that the scope of descriptive trademarks does not include descriptive marks. In 1987 the Korea Supreme Court (KSC) in 86 hu 4 decided that the scope of registered descriptive trademarks do not include descriptive marks and thus, the allegedly infringing mark does not constitute infringement. However, the KSC in 88 hu 974, 981, 998 in 1992 and many other cases decided that once descriptive trademarks have been registered by being recognized as having distinctiveness, they obtain exclusive rights and the scope of them includes marks stipulated at KTL article 51.1. The problem in these decisions is that they do not explain the reason why the scope of a registered descriptive trademark right includes marks stipulated at KTL article 51.1. These contradictive KTL articles (article 6.2 and article 51.1) and the KSC decisions make it uncertain whether the scope of a descriptive trademark right includes marks stipulated at KTL article 51.1. Even if whether the scope of the right of a registered descriptive trademark includes marks designated at KTL article 51.1 is a critical factor in solving cases related to descriptive trademarks, it is not clear yet. This article examines the relationship between the scope of a descriptive trademark right and KTL article 51.1 from the economic perspective. It enlightens the relationship between a right-holder of a registered descriptive trademark, competitors and consumers. Especially, because the right-holder has decided to submit to the risk of consumer confusion in order to enjoy the advantages in using a descriptive trademark that is not distinctive inherently, it is fair to regard competitors’ use of the descriptive trademark as a fair use even if it may cause consumer confusion. In conclusion, because competitors’ use of a descriptive trademark as its first meaning has more advantages than disadvantages.