특허법인 남앤남

金荣敏

合伙人

金荣敏

合伙人

  • 02-6714-1197
  • ymkim@nampat.co.kr
  • 韩语 / 英语

ADMISSIONS / AFFILIATIONS

  • 辨理士(2006, 第43届）
  • 大韩辨理士会(KPAA）
EDUCATIONAL BACKGROUND
  • 汉阳大学 机械工程系 学士(2007）
  • 汉阳大学 电气电子工程系 学士(2007）

CONTACT

  • 02-6714-1197
  • ymkim@nampat.co.kr
Technical Expertise
  • 通用机械，汽车零部件，发动机，控制装置，电子烟等
  • 半导体及LCD，半导体制造设备等
Professional Expertise
  • ●主要工作：
  • 韩国以及国外半导体及LCD 电路/工艺/仪器领域的专利案件处理（说明书，审查意见答复及审判）
  • 通用机械/汽车零部件/发动机领域专利案件的处理（审判及诉讼）
  • 测量/控制/半导体制造设备领域专利案件的处理（审判及诉讼）
  • 船舶公司消耗品相关的专利侵权和无效案件处理
  • 电子烟公司的专利侵权和无效意见答复， 审判及诉讼

Related Contents

INSIDE NAM IP

Let’s meet at KINPA Conference 2024!

  We are pleased to announce that NAM IP Group will be attending the KINPA Conference 2024 as a “Silver Sponsor”. As the lanyard sponsor we will be with you at all times, and with five NAM IP attorneys in attendance, you should not have trouble finding us. We look forward to meeting and getting to know as many attendees as possible. 

2024-10-15
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IP新闻

Double Jeopardy II – Trial decisions to which double jeopardy applies

Introduction: Prohibition of double jeopardy (ne bis in idem) in Korea In accordance with the prohibition of double jeopardy, in Korea, once a patent trial decision on the merits is rendered and becomes final and conclusive, no person may demand a subsequent trial based on the same facts and evidence with the Intellectual Property Trial & Appeal Board (IPTAB). For more details, you may refer to my earlier article, “Timing of Double Jeopardy Judgement in Patent Trials”. Application of double jeopardy The prohibition of double jeopardy has the following pros and cons. Pros Cons Prevents conflicting trial decisions relating to the same matter. Prevents the burden of a respondent having to respond to the same case more than once. The IPTAB only need hear a case once, thus reducing the administrative burden placed on government institutions. The inherent interests of parties seeking a decision via trial could potentially be infringed. Taking an invalidation action as an example, if there are a number of parties who each have their own interests in seeking the invalidation of the same patent, each should have the freedom to bring an invalidation action, but this may not be possible. The pros described above can be generally understood as pertaining to the preservation of patent stability and promotion of judicial economy. While achieving these aims, the prohibition of double jeopardy applies only to cases where the facts and evidence are identical, so as to not infringe the inherent interests of any party wishing to have their case heard via trial. Such prohibition, however, does not apply to decisions to dismiss trial requests for being unlawful, meaning that other parties can still request a trial on the same grounds, regardless of the original dismissal decision. Recent precedent of the Supreme Court The prohibition of double jeopardy in relation to dismissal decisions was recently contested at the Supreme Court (Case 2021HU100777; 3 June 2021). In the earlier instance Patent Court trial, it was ruled that even if there is a decision to dismiss a trial request for being unlawful, as there is substantive judgement regarding lack of inventiveness when a trial is dismissed after judging the identity of evidence, the prohibition of double jeopardy should still be applied. However, faithful to the provisions stipulated in the Patent Act, the Supreme Court held that the prohibition of double jeopardy shall not apply to dismissal decisions, as such judgements could impact third parties’ rights to request a trial. As a result, it may be concluded that the prohibition of double jeopardy does not apply to any dismissal decisions, regardless of whether substantive judgement was carried out in reaching the decision.     Written by Young-min KIM

2021-08-25
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IP新闻

Korea Patent Court takes issue with ex officio examination of trial request validity

Scenario: Party A files a scope confirmation trial, seeking a determination on whether Party B’s working of an invention (hereafter the “invention subject to confirmation”) falls within the scope of Party A’s patent. However, if the invention subject to confirmation is identical to a later-registered patent belonging to Party B (filed and registered later than Party A’s patent), Party A’s trial request is considered improper, as this could effectively result in the validity of Party B’s later-registered patent being denied without it being subject to an invalidity trial. Whether requests for scope confirmation trials are improper in this manner are examined ex officio by the IP Trial & Appeal Board (IPTAB) regardless of the assertions of the involved parties (i.e. Parties A and B in our example). However, a recent Patent Court decision (Case 2019Heo8932 dated September 25, 2020) has stated that if the IPTAB ex officio dismisses a scope confirmation trial after judging it to be improper for the reasons described above but does not give the involved parties an opportunity to submit an opinion, such IPTAB trial decision itself is in violation of procedure. Patent Court Case 2019Heo8932 In this case, the original respondent (hereafter “Party B” as per our general example above) confirmed that the invention subject to confirmation and their later-registered patent were not the same, and so they did not intend to argue that their opponent (“Party A”)’s trial request was improper. In other words, there was no dispute between the parties on the point that Party B’s invention subject to confirmation and later-registered patent were different. Regardless of this agreement, the IPTAB did not allow Parties A and B an opportunity to submit opinions on the identity of Party B’s invention subject to confirmation and later-registered patent. The Patent Court stated that if such an opportunity had been given, Party A could have amended the invention subject to confirmation or argued that Party B’s later-registered patent was different, and the IPTAB’s rendering of an ex officio decision without affording such an opportunity to the involved parties was a procedural violation. Comment Under Korean practice, the party who files a scope confirmation trial is permitted to amend the invention subject to confirmation, but the identity of the invention must be maintained before and after such amendments[1]. Therefore,  even if Party A had been afforded an opportunity to amend the invention subject to confirmation, after amendment it would still have been identical to Party B’s later-registered patent and the IPTAB would have rendered the same decision, meaning that not giving such opportunity does not make the trial decision improper. However, Party A could still have argued the differences between the invention subject to confirmation and Party B’s later-registered patent if they had been able to submit an opinion. Moreover, as neither party contested the point that the inventions were different, if they knew that the IPTAB intended to deny this point, Parties A and B could have negotiated and agreed to a withdrawal of the trial. Therefore, in addition to the Patent Court’s judgement that the IPTAB’s trial decision was a procedural invalidation, I believe it could also be seen as infringing on the disposition rights of the involved parties. Notes: [1]A Patent Act revision dated January 3, 2017 permits amendment of the invention subject to confirmation to conform to the invention that the opposing party actually works when the opposing party argues that the invention subject to confirmation is different from the invention that the opposing party actually works. However, this does apply to the case discussed herein.     Written by Young-min KIM

2021-01-13
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IP新闻

Doctrine of equivalents: recent developments

Shortcut to… Introduction / Supreme Court guidelines / Comment Introduction A patented invention is infringed when another invention (hereinafter the ‘accused invention’) comprises all elements of the patented invention and the relationship between the elements of the accused invention are the same as those in the patented claim (all elements rule). The all elements rule applies not only to literal infringement but also to equivalent infringement. Equivalent infringement is acknowledged when a specific modified element is evaluated as having equivalence to the corresponding element in the patented claim. According to the doctrine of equivalents, even when the accused invention includes a modified element in contrast with the elements in the patented claim, if they are practically equivalent, the accused invention infringes the patented invention. Supreme Court guidelines The Supreme Court has set the following guidelines for applying the doctrine of equivalents (Case 2017HU424, 31 January 2019): the accused invention and the patented invention must adopt the same problem-solving principle; the accused invention must exhibit substantially the same working effects as those of the patented invention (modifiability); a person with ordinary knowledge in the technical field to which the invention pertains (a person skilled in the art) must be able to obviously make such a modification (obvious modifiability); the accused invention should not represent art which was known at the time of filing the application of the claimed invention or art which could easily be conceived by a person skilled in the art from publicly known art (free-to-work technology defence); and the changed element of the accused invention should not represent that which was intentionally omitted from the claims of the claimed invention during the prosecution of the application of the claimed invention (file wrapper estoppel). In order to meet the infringement requirements based on the doctrine of equivalents, all of the above factors must be satisfied. If one of the negative conditions applies – namely, either the fourth or fifth factor, there is no infringement. The Supreme Court has specifically addressed the first factor as follows: When determining whether the accused invention and the patented invention adopt the same problem-solving principle, there should be substantial examination as to what the core of the technical idea forming the basis of the unique problem-solving principle of the patented invention is, in comparison with the prior art, taking into consideration the disclosures in the detailed description of the specification and known technologies at the time of filing of the patented invention. In particular, how broadly or narrowly to interpret the problem-solving principle of the patented invention should be determined according to the extent of the contribution made by the patented invention to the advancement of technology, in consideration of the prior art. According to this ruling, if the core of the technical idea was not already disclosed at the time of filing the patented invention, it must be determined whether the broadly interpreted problem-solving principle is implemented in the accused invention. If so, the first factor will be considered satisfied. Even if there are additional differences in the elements that are not directly related to the problem-solving principle, the first factor will still be considered satisfied. If this factor is satisfied in this way, the second factor will also be considered satisfied as long as the modified element has no significant difference in the working effects compared with those of the patented invention. In contrast, if the core of the technical idea was already disclosed at the time of filing the patented invention, since the problem-solving principle cannot be said to be unique to the patented invention, it must be determined whether the modified element has the same working effects in terms of individual functions or roles (Case 2018DA267252, 31 January 2019). Thus, in most cases, the second factor would be considered unsatisfied. Comment In accordance with these court rulings it is now possible for patents to be protected according to the real value of the invention, which is appraised in consideration of prior art. The problem is that judgments may vary with respect to what constitutes the core of the technical idea forming the basis of the unique problem-solving principle of the patented invention. As such, there is arguably increased uncertainty about the possibility for equivalent infringement.   Written by Young-min KIM

2020-12-15
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IP新闻

Considerations when establishing South Korean patent portfolios

Shortcut to… Technology Fields / Systems   In this article, we will compare the patent registration rates by technology field in Korea and the other IP5 jurisdictions, and also look at the systems which may be used in establishing a patent portfolio, comparing in particular with the US. Technology Fields According to the Korean Intellectual Property Office (KIPO), when comparing deviations in patent registration rates in IP5 jurisdictions by technology field (based on the 2010 to 2018 averages), compared with other fields of technology, it is apparent that: the United States ranks highly in the fields of communication, audio and video and computing; Europe ranks highly in the fields of machinery and automotives; China ranks highly in the fields of semiconductors and communications; and Japan ranks highly in the fields of chemistry and the materials and components industry. Both Europe and China rank poorly in the e-commerce field. From this, it can be said that the patent registration rate is high for particular fields in jurisdictions where there is strong competition in that sector. By contrast, South Korea does not display such distinct characteristics as the other IP5 members. Turning to the field of fourth industrial revolution technology, AI, autonomous vehicles, intelligent robots and digital healthcare have become hot topics in recent years. In the fields of AI, autonomous vehicles and intelligent robots, the registration rate in South Korea is average compared with that of the United States, Europe and Japan. In the digital healthcare field, the registration rate is higher in South Korea than in the United States and Europe and similar to that of Japan. However, unlike Japan, where the registration rate of domestic applicants is higher than that of foreign applicants, the registration rate of foreign applicants is higher in South Korea. Artificial Intelligence  Autonomous Vehicles  Digital Healthcare Intelligent Robots [Comparison of domestic vs. foreign applicant registration rates for 4th industrial revolution technology (2010-2017 average) | Source: KIPO] Systems In the United States (particularly after a notice of allowance has been issued), continuation applications may be used to obtain related patents and broaden the scope of rights protection. However, in South Korea only divisional applications are supported and there is no continuation filing system such as continuation or continuation-in-part applications. Further, in South Korea, it is impossible to file a divisional application after a final rejection has been appealed. Specifically, if an applicant files an appeal which ultimately ends up being rejected, there is no opportunity to file a divisional application thereafter. One particular point of caution is that even if only one rejection reason remains unresolved during the appeal (in other words, not all rejection reasons are resolved), the application is rejected in its entirety. This also applies even if the application contains an allowable invention. Therefore, when an appeal is to be filed against a final rejection, applicants should also consider filing a divisional application in order to secure the opportunity to further prosecute the patent application in case the appeal fails. In the United States, re-issued patents are actively used in particular by non-practicing entities. With re-registration, it is possible to expand the scope of rights under certain conditions; however, like other IP5 members, South Korea does not allow for change or expansion of the scope of rights after a patent right has been granted.     Written by Young-min KIM

2020-10-28
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IP新闻

Patentee protection strengthened in series of revisions to Korean patent law

In Korea, the low amount of damages awarded by courts in patent infringement cases has long been criticized. To address this, a treble damages system (implemented in July 2019) and an improved method for calculating the amount of damages (to be implemented on December 10, 2020) have been introduced. We will look at these in a little more detail, as well as a proposed law revision to improve evidence collection. Treble Damages The treble damages system allows the courts to multiply the proven amount of damages up to threefold in cases of ‘intentional’ infringement. Historically, under-compensation was common in patent infringement cases where the true amount of damage incurred was difficult to prove. The courts’ ability to now multiply the amount of proven damages alleviates this problem and allows for more effective compensation. The criterion by which infringement is deemed to be ‘intentional’ or not will become more apparent as relevant case law emerges, though the multiplier is determined based on a number of factors specified in law: Whether the infringer is in a position of superiority The degree of intent or the extent to which the infringer was aware of the potential damage The amount of damage suffered by the patent holder / exclusive licensee due to the infringement The economic benefits gained by the infringer The period and frequency of the infringement The fine for infringement The economic status of the infringer The degree of effort made by the infringer to alleviate damage While the intention of the Administration appears to be punitive compensation, from the perspective that the Korean civil law compensation system is based on compensatory damages, rather than being punitive, in my opinion, it is likely that the new system instead simply makes it more likely that patent owners are able to effectively obtain compensation sufficient to make up for the damage they have suffered. Damage Calculation The improved method for calculating damages will allow for a reasonable license fee for infringement in excess of the patentee’s own production capacity. Under the current law, damages are calculated up to the limit of the patentee’s own production capacity, even if the infringer exceeds this limit. (By way of a simple example, if an infringer sold 200 items while it is regarded that the patentee could only have produced 100 items in the same timeframe due to production constraints etc., the ‘excess’ 100 items are not included in the calculation of damages.) However, the revised law will allow for a reasonable licensee fee to be awarded in such cases, based on the following formula. Damages = [Patentee’s production capacity x Per-item profit] + [Excess x Reasonable license fee] Improved Evidence Collection To better protect patentees, further to the amendments already discussed above, the evidence collection system itself must be revised to better facilitate the securing of evidence relating to infringement and damages. A revision to the Patent Act relating to the so-called ‘K-Discovery’ system is currently under review. This is closely linked to the collection of evidence to prove infringement is ‘intentional’, a requirement of the treble damages system. The revision would allow courts in patent infringement litigation to nominate an expert who, either at the court’s ex officio direction or at the request of a party, would have authority to conduct an investigation at the site where infringement takes place (e.g. production facility) to obtain relevant evidence and submit the findings to the court. This may be considered similar to the inspection system available in Germany. While limited in scope when compared to the discovery system of evidence collection in the United States, these proposed changes to allow evidence to be collected at the court’s discretion should enable faster resolution of disputes while still keeping litigation costs relatively low. If the K-Discovery system becomes law, the protection available to patent holders could be strengthened to a much greater degree.     Written by Young-min KIM

2020-09-17
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IP新闻

Re-organization and pro-patent tendency of the Korean IP Trial & Appeal Board

In Korea, the Intellectual Property Trial & Appeal Board (IPTAB), the administrative tribunal of the Korean Intellectual Property Office (KIPO), handles appeals of final rejections from KIPO, as well as invalidation trials, cancellation (opposition) actions, etc. for patent, utility model, trademark and design rights. This article focuses on patents. The rate of patent invalidity in Korea is 40-50%, a relatively high figure compared to a rate of around 20% in the US and Japan. For this reason there has been somewhat of a lack of trust in patents, with difficulties in patent-based investment, technology finance, IP commercialization etc. being a knock-on effect. Recognizing these issues, the IPTAB has recently re-organized their trial boards, increasing the number from 11 to 36. The IPTAB president commented that this change is intended to reduce the rate of patent invalidity and subsequently promote a greater trust in patents. One particular limitation of the former 11-board system was a limited capacity to conduct oral hearings. In 2019, of a total 5,282 inter-partes trials, oral hearings were held for only 497 cases — 9% of the total. The increase to a 36-board system will mean more time available for review, allowing for the three trial judges to reach a reliable consensus, and for in-depth oral hearings to be held for inter-partes trials. Thus, in patent invalidation trials, judges will be better placed to construct logical reasons to exhaustively refute grounds or evidence presented to support a claim of invalidity, leading to an improvement (reduction) in the invalidity rate. KIPO has recently beefed up provisions to protect patent holders, such as allowing for up to treble damages in cases of intentional patent infringement, and for method of manufacture patents it has been made obligatory for alleged infringers to disclose their actual method of manufacture if a patent holder alleges a specific method is being used. However, if the rate of patent invalidity remains high, the practical effectiveness of such provisions will be limited, and so these efforts by the IPTAB to lower the patent invalidity rate are expected to be beneficial to patent holders.   Written by Young-min KIM

2020-07-24
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IP新闻

Timing of Double Jeopardy Judgement in Patent Trials

Article 163 of the Korean Patent Act (‘Non bis in idem’) relates to double jeopardy, and provides that no person may demand a re-trial based on the same facts and evidence once a trial ruling on the same becomes final and conclusive. In the case of an invalidation trial, for instance, “the same facts and evidence” may refer to the grounds for invalidation (e.g. inventive step) and evidence (e.g. prior art). Accordingly, once a decision on the merits of such a trial (hereafter the ‘earlier trial’) has become final and conclusive, a subsequent trial filed based on the same facts and evidence (the ‘later trial’) is not permissible. Invalidation trials in Korea are inter partes actions, but as a ruling on validity/invalidity has a general effect, the manner in which double jeopardy is applied is important. In particular, the point in time at which it is determined whether there is an earlier final and conclusive judgement on the merits in an earlier trial and the point in time at which it is determined whether “the same facts and evidence” exist with respect to a later trial can be problematic. Before, the existence of an earlier final and conclusive trial ruling was determined at the time of ruling in a later trial. However, this was changed according to a January 19, 2012 en banc Supreme Court decision (case 2009Hu2234), following which the timing of such determination was brought forward to when the later trial is filed. Based on this, if the ruling in an earlier trial only became final and conclusive after the later trial had been filed, the provisions relating to double jeopardy would not apply. On April 9, 2020 another Supreme Court decision relating to the timing for determining the existence of “the same facts and evidence” was handed down (case 2018Hu11360). This decision clarifies that for patent invalidation trials, the point in time at which it is determined whether the “same facts and evidence” exist in an earlier trial is when the trial decision is issued by the Intellectual Property Trial and Appeal Board (IPTAB) in the later trial. The history of this recent case is as follows: an invalidation action filed by Party C concerning Party B’s registered patent was dismissed (i.e. the patent was deemed to be valid) and such decision became final and conclusive; Party A subsequently filed an invalidation action based on the same facts and evidence, and the IPTAB dismissed the action based on double jeopardy; Party A then appealed this decision to the Korean Patent Court and raised a new ground for invalidation which was not dealt with in the earlier instance; the appeal was dismissed by the Patent Court, and Party A further appealed up to the Supreme Court. In dismissing Party A’s appeal, the Supreme Court ruled that “when determining if the provisions of double jeopardy apply, the IPTAB must consider all of the amended facts and evidence from the time the trial was filed until the time of ruling and, on the basis of the time of ruling, determine whether the filed trial is based on the same facts and evidence as an earlier final and conclusive ruling”, going on to conclude that “the trial-requesting party is not permitted to present new grounds for invalidation [in a Patent Court action] which were not dealt with during the trial”. In short, when making a determination on double jeopardy, the existence of an earlier final and conclusive trial ruling is determined at the time of filing of a later trial, and whether the case relates to the same facts and evidence is determined at the time of ruling in the later trial. Practically speaking this means that before a ruling in an earlier invalidation trial becomes final and conclusive, a third party may file a separate invalidation trial based on the same facts and evidence, and during the course of this separate trial may present new invalidation grounds or evidence (e.g. new prior art) in the knowledge that when the determination is made as to whether the facts and evidence in the two trials are the same — i.e. at the time of ruling of the later trial — if the facts and evidence have since become different, the matter will not be deemed to fall within the definition of double jeopardy.     Written by Young-min KIM

2020-05-26
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IP新闻

Admissibility of New Prior Art at the Korean Patent Court

Introduction Trial decisions rendered by the Intellectual Property Trial & Appeal Board (IPTAB) with respect to appeals against final rejections at the Korean IP Office (KIPO), as well as invalidation trials etc., may appealed at next instance to the Korean Patent Court. For ease of understanding, the order of escalation for appeals of KIPO decisions is KIPO > IPTAB (an administrative tribunal within KIPO) > Patent Court > Supreme Court. Below we will look at whether new prior art not submitted at the IPTAB trial stage may be submitted during the subsequent Patent Court proceedings, and what exceptions may exist. What may be submitted? At the outset, referring to court precedents we may say that the submission of new arguments and/or prior art is, in principle, permitted at the court stage. An exception to this rule applies in appeal procedures to cancel a final rejection (in which KIPO is respondent to the action), where KIPO may not present new rejection reasons as this would have the effect of depriving the applicant of a chance to present arguments/amendments to overcome the rejection reasons. Such new rejection reasons should instead have been presented via an office action to which the applicant could have responded appropriately. For this reason, even if listed as prior art in the detailed description of an applied-for invention, if the reference in question has not been used to deny inventive step then it may not be submitted at the court stage (Korean Supreme Court decision 2001Hu2757 [10 Oct 2003]). Further, unless the prior art listed in the detailed description of any reference cited at the IPTAB trial stage is described throughout the specification, or is a well-known or commonly-used art, its submission would be deemed to constitute a new rejection reason (Korean Patent Court decisions 2005Heo4713 [6 Sep 2006] & 2003Heo5569 [25 Jun 2004]). Conversely, KIPO would be permitted to submit new materials if KIPO had already argued at the IPTAB trial stage that the feature in question is a well-known or commonly-used art and such new materials are to support KIPO’s argument. Furthermore, KIPO may argue that it is improper to allow amendments at the Patent Court stage based on new refusal grounds not indicated in a dismissal of amendment or which had not been argued at the IPTAB trial stage (Korean Patent Court decision 2007Heo2681 [21 Nov 2007]). With regard to dismissals of amendment, there is no provision in the Korean Patent Act requiring KIPO to notify the applicant of its reasoning and allow submission of arguments/amendments before dismissing an amendment. Conclusion To sum up, in principle it is acceptable to submit new arguments and/or prior art at the court stage which were not previously submitted at the IPTAB trial stage. However, limitations apply when KIPO is respondent in a trial to cancel a final rejection, in cases where allowing new arguments and/or prior art could harm the applicant’s defense and procedural interests.     Written by Young-min KIM

2020-01-13
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