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NAM IP Group is a Korean law firm specializing in intellectual property, serving global clients.

2025
Nam IP Group is a law firm dedicated exclusively to intellectual property.
Built on trust, we are committed to delivering consistent client satisfaction and the highest quality services.
180 +
Professionals
Our professionals are selected based on practice areas
and specific technologies and are trained with the specific
needs of global clients in mind.
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Practice Notes

Enhancing Patent Stability in South Korea: Proposed Reforms to Invalidation Trial Proceedings

The Korean Intellectual Property Office's (KIPO) Intellectual Property Trial and Appeal Board (IPTAB) has announced a set of proposed reforms to its patent invalidation trial procedures, aimed at strengthening the reliability and enforceability of granted rights. Released on April 21, 2025, the proposal seeks to enhance procedural fairness for both patentees and challengers—and arrives at a time when Korea’s high invalidation rate has become a focus of policy attention. This concern is underscored by data, as highlighted at the recent 2025 IP Policy Forum in Seoul: in 2023, the invalidation rate stood at 44.4%—significantly higher than the 11.5% reported in Japan and 31.3% in the United States. Much of this has been attributed to the frequency of challenges based on lack of inventive step. The proposed reforms aim to address these procedural vulnerabilities while broader discussions continue around improving inventive step standards and judicial specialization. ▒  Key Procedural Reforms The core of the proposed reforms centers on three key areas: 1. Advance Notice of Invalidation Decision If the IPTAB finds an invalidation petition persuasive, it will issue a preliminary notice to that effect before formally rendering a decision. This would give the patentee an opportunity to amend claims through a correction request, potentially preserving the patent in a narrowed but valid form. The measure is designed to reduce unnecessary invalidations and provide greater predictability to right holders. The concept appears to share some surface similarity with the EPO’s preliminary opinion in opposition proceedings, though KIPO’s version would occur much later in the process and serve as a formal opportunity to amend before invalidation becomes final. 2. Stricter Evidentiary and Procedural Standards for Petitioners The IPTAB plans to enforce tighter evidentiary requirements on petitioners, including: More concrete and detailed supporting evidence. Strict adherence to submission deadlines under a "timely submission" principle. Early identification of disputed issues to streamline oral proceedings. 3. Strengthened Claim Construction Practices Petitioners will be encouraged to present their claim construction positions at an early stage. Where disagreements arise, both parties may be allowed additional opportunities to submit arguments and supporting materials. This is intended to reduce interpretive ambiguity and enhance procedural consistency. ▒  Practical Implications These proposed reforms reflect a maturing patent litigation environment in Korea: For patentees, the reforms offer an additional procedural safeguard before invalidation becomes final, encouraging the strategic use of post-grant amendments. For challengers, the raised evidentiary threshold promotes more diligent and substantiated invalidation filings. For international practitioners, the reforms support a more transparent and balanced process—an encouraging signal for those considering patent protection or enforcement in Korea. These proposed developments are expected to contribute to a more predictable and rights-secure patent system—one that aligns with global trends favoring opportunities for post-grant amendment over outright invalidation. They also reflect an ongoing shift in South Korea toward strengthening patent enforcement and supporting patentees across both legislative and procedural fronts, signaling a continued institutional focus on patent quality and legal certainty.     Written by Simon Voget and Gao Xun  

2025-04-25
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Practice Notes

Mass Registration Programs and Trademark Liability: South Korean Court Highlights Growing Risks in E-Commerce

Introduction   A recent ruling by the Korean IP High Court underscores an important shift in how courts assess trademark infringement risks in online marketplaces. At first glance, the case appears to be a standard counterfeit product dispute, but a closer analysis reveals a deeper issue.   The ruling highlights how the use of mass product registration tools — which allow sellers to list thousands of items on sales platforms automatically — can lead to uncontrollable trademark violations, exposing sellers to significant legal liability.   With automated bulk listing tools becoming increasingly popular among cross-border e-commerce sellers, this case serves as a stark warning: Sellers who prioritize speed and volume over control may face serious trademark infringement consequences.   Case Background   In IP High Court Case No. 2024Na10942 (Jan 23, 2025), the defendant, an online purchasing agency, used a mass product registration program to list thousands of products from Chinese e-commerce platforms on their own website. The system automatically imported product details, images, and prices — including, unintentionally, counterfeit goods.   The plaintiff, a trademark owner of well-known footwear brands, sued for trademark infringement, arguing that the defendant had displayed and sold counterfeit products using trademarks identical to their registered marks.   Defendant's Arguments   The defendant contended that: They had no direct involvement in selecting counterfeit products. The mass registration tool was merely a neutral listing mechanism and not intended for trademark infringement. It was impossible to manually verify each product, given the scale of automated listings. However, the Court dismissed these defenses, holding the seller liable for trademark infringement.   Key Findings of the Court   1.    Mass Registration Tools Do Not Exempt Sellers from Liability The court rejected the argument that a seller can avoid liability simply because a tool, rather than manual selection, was used to list the products. The defendant chose to use a system that inherently carried the risk of importing counterfeit listings at scale, and therefore, bore responsibility for the consequences. 2.    The Burden of Risk Falls on the Seller The court reaffirmed that ignorance of the infringement is not a valid defense. Even if the seller did not intend to list counterfeit goods, the act of using a high-volume, automated listing tool meant that they knowingly accepted the risk of IP violations occurring. 3.    Platform-Level Responsibility May Become a Legal Focus The ruling reflects growing judicial recognition that unchecked mass registration tools can enable widespread trademark violations. Courts may begin holding platforms accountable if they fail to impose reasonable controls on mass listings. These findings align with a 2013 Supreme Court decision (2013Da21666), which placed strict liability on businesses engaging in sales activities where they could have reasonably been aware of potential trademark conflicts.   The Bigger Issue: Mass Registration and the Breakdown of Seller Control   While this case technically deals with counterfeit product registration, the real issue is the systemic risk posed by mass product registration tools.   1. How Mass Registration Leads to IP Infringement The widespread adoption of bulk listing tools — popular in Korea, China, and other major e-commerce markets — is driven by sellers seeking to maximize revenue. These tools allow thousands of product listings to be imported in minutes, but in doing so, sellers lose control over product authenticity checks, verification of trademark compliance, and listing accuracy.   As a result, infringement is no longer a deliberate act, but an unavoidable byproduct of automation. The defendant in this case is just one example of many sellers facing IP disputes they did not foresee or actively intend to commit.   2. The Rise of Mass Registration Tools and Legal Risks YouTube tutorials and online seller training programs actively promote the use of mass product registration tools. Many sellers blindly rely on automation, assuming platforms or software providers will filter out infringing items — which often does not happen. This case highlights how IP owners are increasingly taking legal action against sellers who use such tools without safeguards. 3. Should E-Commerce Platforms Restrict Mass Registration? Given the frequency of trademark disputes arising from mass product registration, there is a strong argument that e-commerce platforms should intervene to reduce legal exposure for sellers.   Potential regulatory solutions include (i) limiting the number of simultaneous product uploads per seller within a given timeframe; (ii) implementing AI-driven screening for trademarked products before listings go live; and (iii) requiring sellers to manually confirm product authenticity for bulk uploads.   These measures would not prohibit online sales but would create a balance between e-commerce efficiency and IP protection, preventing unnecessary litigation and financial penalties for sellers.   Conclusion   This IP High Court ruling is more than just another counterfeit case — it signals a legal shift in how courts view mass registration and seller liability.   For sellers using automated bulk listing tools, this case should serve as a wake-up call that: Speed and convenience do not override legal responsibility. If a tool increases infringement risks, the seller must account for them. Failure to manage product listings can lead to costly legal consequences. As e-commerce continues to evolve, online platforms, sellers, and regulatory bodies must find ways to prevent mass registration from becoming a loophole for widespread IP violations. Otherwise, IP litigation will only escalate, creating an unsustainable future for digital commerce.

2025-02-13
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INSIDE NAM IP

World Trademark Review (WTR) Korea’s Top Law Firms & Individual Rankings

NAM IP Group and Managing Partner Ben Yuu have been recognized as top-ranked in the Prosecution and Strategy category of the WTR 1000: The World’s Leading Trademark Professionals 2025.                                                                                                                                                                                                                                                                                                                                                                                                                                                  Updated annually, the WTR 1000 evaluates leading law firms and individuals, recognizing top experts in areas such as trademark prosecution and litigation.                                                                                                                                                                                                                                                                                            This recognition reflects NAM IP Group’s strong reputation as a premier trademark specialist on the international stage, and serves as a valuable reference point for companies seeking expert guidance on global brand protection strategies.

2025-02-13
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Practice Notes

Revised Patent Term Extension System in Korea: Implications for the Pharmaceutical Industry

Background Unlike patent systems in other countries, under the previous Korean Patent Act, there was no time limit from the marketing approval date for patent term extensions for pharmaceutical patents, and there were no restrictions on the number of patents that could be extended for a single regulatory approval, thereby allowing extensions of multiple patents — such as compound, use, formulation, and dosage regimen patents — based on a single drug approval.  The domestic pharmaceutical industry has expressed concerns that Korea’s patent term extension system has led to prolonged monopolies by foreign drug developers in the Korean pharmaceutical market, which, in turn, delayed the introduction of cheaper generic drugs, and as a result, disproportionately favors those patent holders when compared to systems in other countries, including the United States and Europe. Critics argue that the delayed market entry of Korean local generics limits public access to affordable medications and could strain health insurance finances. Amended Patent Act On December 27, 2024, in response to these concerns, the National Assembly of Korea passed a revision to the Patent Act with the following key provisions: (i) the patent term cannot exceed 14 years from the date of marketing approval, and (ii) only one patent per approval is eligible for extension. The revised Patent Act is expected to be promulgated as early as January 2025 and will come into effect six months after its promulgation, likely in July 2025. This revision will apply to patent term extension applications filed after its effective date. Lawmakers explained that the purpose of the revision was to address the lack of a cap on patent terms and the absence of limits on the number of patents eligible for extension, aiming to prevent delays in the release of generic drugs, and ensure early public access to medications, as well as to align Korea’s system with international standards, particularly those in the United States and Europe. Under the revised Patent Act, there is no change to the provision allowing for a maximum five-year extension, but a new additional cap has been introduced, limiting the total extension to 14 years from the date of approval, in line with US practice. Implications While the full impact of the revised patent term extension system is still uncertain, initial analyses suggest that it may lead to shorter patent terms for original drugs. Only for the purpose of explanation, there may be extreme cases where the impact of the new cap could be significant. For instance, when marketing approval is granted within six years from the international filing date, and the patent term is extended for about three years in Korea, the revised 14-year cap could result in only about four months of extension, despite a prior three-year extension (please refer to the following diagram).  Furthermore, for monopoly drugs where the revenue during the extended patent term exceeds the revenue during the original term, the consequences could be considerable. However, 2023 data on the status of effective patent terms for pharmaceuticals from 1999 to 2021 issued by the Korean Ministry of Food and Drug Safety (MFDS) shows that about 82% of pharmaceutical patents have an effective patent term of under 14 years, suggesting that extensions expire within 14 years from the approval date. As such, the new 14-year cap may have limited impact in many cases.  As a test, we applied the 14-year cap to 15 randomly-selected historic PTE cases handled by our office, and all resulted in extensions within the 14-year limit.  Perhaps the most significant change introduced by the revised Patent Act may be the limitation on the number of patents eligible for extension per product approval. Previously, multiple patents could be extended based on a single drug approval, for example, the above-mentioned data from MFDS also shows that the number of patent registrations exceeds the number of approvals by a factor of 1.7, which indicates that multiple patents may have been registered for a single product. Now, only one patent may be selected for extension. This is likely to have a notable impact on the strategies of original drug companies, as they may now need to focus on extending only one patent (substance patent or a secondary patent) to maximize their patent term. In contrast, generic companies will more easily be able to anticipate when the one extended patent of the original drug expires and this simplification may reduce the complexity of their market entry strategies. Additionally, the revised Patent Act clarifies the starting point for patent term extensions, specifying that the extended period due to delayed registration (Patent Term Adjustment, PTA) will be clearly defined. This ensures greater transparency and consistency in calculating patent term extensions based on regulatory approvals. The revised Patent Act also introduces provisions for rejecting applications for extension that exceed the 14-year cap, as well as allowing for invalidation petitions. If multiple patents are submitted for extension based on a single approval, none will be granted an extension.  Given these changes, patentees should be mindful of these new provisions when filing patent term extension applications after July 2025 in Korea.

2025-01-03
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