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Practice Notes

Practice Notes

Is Fertilizer Eligible for Patent Term Extension in Korea?

Background   Patent Term Extension (PTE) systems worldwide aim to compensate patent holders for the time lost during regulatory approval processes for certain products. In Korea, the Patent Act allows for patent term extensions for inventions that require regulatory approval before commercialization. However, the scope of eligible products is specifically defined and limited by the Patent Act Enforcement Decree.   The question of whether fertilizers registered under Korea's Fertilizer Control Act qualify for PTE has gained attention as the agrochemical industry seeks clarity on patent protection strategies. This issue becomes particularly relevant when considering that internationally, the term "agrochemicals" encompasses both pesticides and fertilizers, leading to potential confusion about the scope of patent term extensions.   Understanding the answer requires examining the specific legal framework governing PTE eligibility and the policy rationale behind limiting coverage to certain categories of agricultural products.   Current Legal Framework   Under the current Korean Patent Act Enforcement Decree, PTE eligibility is explicitly defined. The Decree specifies that patent term extensions are available for inventions implementing patented technology where agricultural chemicals have been registered under the Pesticide Control Act pursuant to Articles 8(1), 16(1), or 17(1) of that Act. Importantly, this applies only to agricultural chemicals or active ingredients containing new substances as active ingredients and registered for the first time.   The Korean Pesticide Control Act defines "pesticides" as including: (i) fungicides, insecticides, and herbicides used to control pests that harm crops; (ii) agents used to promote or inhibit the physiological functions of crops; and (iii) other agents prescribed by Ordinance of the Ministry of Agriculture, Food and Rural Affairs.   Notably absent from this framework is any mention of the Fertilizer Control Act. The Enforcement Decree does not include product approvals under the Fertilizer Control Act as qualifying for PTE applications, creating a clear regulatory distinction between pesticides and fertilizers for patent term extension purposes.   Regulatory Separation: Pesticides vs. Fertilizers   Korea maintains separate regulatory frameworks for pesticides and fertilizers, reflecting different safety and efficacy concerns. The Pesticide Control Act, administered by the Rural Development Administration, governs substances designed to control pests or regulate plant physiological functions. In contrast, the Fertilizer Control Act regulates substances primarily intended to provide plant nutrition or improve soil conditions.   This regulatory separation has important implications for patent term extensions. While some substances might theoretically fall within the boundary between pesticide and fertilizer regulations—such as plant growth regulators, microbial soil conditioners, or trace element complexes with physiological effects—the PTE framework specifically requires registration under the Pesticide Control Act.   The distinction becomes clearer when considering that fertilizer registration with local authorities (city-/county-/district-level) follows a different pathway than pesticide registration, which requires national-level approval and extensive safety and efficacy testing similar to pharmaceutical products.   Policy Rationale and International Practice   The limitation of patent term extensions to pesticides rather than fertilizers reflects a consistent international approach. Similar to other major jurisdictions, including the European Union's Supplementary Protection Certificate (SPC) system, patent term extensions are typically reserved for products requiring extensive regulatory testing and approval processes comparable to pharmaceuticals.   This policy choice recognizes that pesticides, like medicines, must undergo rigorous safety and efficacy evaluations that can significantly delay market entry, thereby eroding the effective patent protection period. Fertilizers, while subject to registration requirements, generally follow different approval pathways that do not involve the same level of extensive testing.   Boundary Areas and Complexity   Some substances present classification challenges that highlight the complexity of the regulatory landscape. Plant growth regulators, for instance, may be regulated as pesticides under the Pesticide Control Act when used for specific physiological effects (such as flowering promotion or fruit drop prevention), while similar substances might be classified as fertilizers when used primarily for nutritional purposes.   Despite these boundary areas, the legal framework for PTE remains clear: registration under the Fertilizer Control Act alone does not qualify a product for patent term extension, regardless of the substance's potential dual regulatory pathways or its classification in international contexts.   Implications   The answer to whether fertilizers are eligible for PTE in Korea is definitively no. Products registered solely under the Fertilizer Control Act do not qualify for patent term extension under the current legal framework.   This limitation reflects a consistent international approach and has several important implications for the agrochemical industry. Patent holders must carefully consider their regulatory strategy when seeking both patent protection and market approval for agricultural products in Korea. The choice of regulatory pathway may affect not only the approval timeline and requirements but also the availability of patent term extension.   The scope of Korea's PTE system, while limited to pesticides, aligns with international practice in focusing on products that require extensive regulatory testing similar to pharmaceuticals. This approach provides clarity and administrative efficiency while ensuring that patent term extensions are available where the regulatory approval process most significantly impacts the effective patent protection period.   For substances that might qualify for registration under both pesticide and fertilizer regulations, the regulatory pathway chosen could determine PTE eligibility. However, such choices must be made based on the substance's actual intended use and regulatory requirements, not solely for patent term extension purposes.   Understanding these limitations is crucial for patent practitioners and agrochemical companies operating in Korea, as it affects both patent prosecution strategies and commercial planning for agricultural innovations. While the exclusion of fertilizers from PTE eligibility may initially appear restrictive, it reflects a well-established international approach that balances the need for innovation incentives with clear regulatory boundaries.

2025-06-20
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Practice Notes

Borderless Principle of Territoriality – Patent Law

Introduction   Patent law has long developed around the principle of territoriality. That is, a patent granted in one country has effect only within the borders of that country and cannot be enforced against acts occurring in another jurisdiction. Patent registration and enforcement are independently handled under each national legal system.   However, with the rise of the global digital economy and the proliferation of online platforms, it has become increasingly common for acts occurring in one country to directly target markets in another. In such cases, the limitations of traditional territoriality become apparent, and there is a growing need to reinterpret its boundaries. The principle of territoriality becomes blurred. A noteworthy case that reflects this issue is the decision rendered by the Korean IP High Court in Case No. 2023Na10693 (May 22, 2025). Case Overview   This case involves an Italian company (“A”) holding a patent for sock knitting machines, which filed a lawsuit against a Chinese company (“B”), claiming that B’s actions in China infringed its Korean patent rights. Plaintiff A alleged that Defendant B manufactured infringing products in China and either sold or advertised them for sale in Korea.   The court acknowledged that B did manufacture the products in China but found the evidence insufficient to prove actual sales in Korea. However, it was confirmed that B had advertised the products in Korean on Chinese e-commerce platforms and its own website (hosted on servers located in China), and had established a system enabling Korean consumers to make purchases. The decision focused on two key issues:   Issue 1: Jurisdiction of Korean Courts in International Cases   As this case involved a foreign plaintiff (Italian) suing another foreign defendant (Chinese) for alleged infringement of a Korean patent, a key issue was whether the Korean court had international jurisdiction.   The court relied on Article 2(1) of the Act on Private International Law which allows Korean courts to have international jurisdiction if the parties or the subject matter of the dispute has a substantial relationship with Korea.   The court evaluated the substantial relationship by focusing on (a) whether the result of the infringement occurred in Korea; and (b) whether the defendant’s advertising activities targeted Korean consumers.   It concluded that since the advertisement was clearly aimed at Korean consumers and the infringement effect took place within Korea, Korean courts had proper jurisdiction.   Furthermore, Article 39(1) of the same Act specifically provides that in IP infringement cases, a lawsuit may be brought in Korea if the result of the infringement occurred in Korea or the infringing act was directed toward Korea.   Issue 2: Whether Overseas Advertising Constitutes Patent Infringement in Korea   Under Korean patent law, an “offer for sale” is a form of patent infringement. The main question here was whether B’s advertising activities—carried out on Chinese platforms and websites—could be deemed an “offer for sale” in Korea.   The defendant had provided product information in Korean, allowed payment in Korean Won, enabled ordering and delivery within Korea, and provided customer support for Korean consumers. Accordingly, the court determined that these actions constituted a practical attempt to induce sales to Korean consumers and thus qualified as an “offer for sale” in Korea. Conclusion   The court ultimately recognized the jurisdiction of Korean courts and ruled that the defendant’s advertising activities constituted an infringement of Korean patent rights. A permanent injunction was issued.   This case demonstrates how the principle of territoriality is being expanded and reinterpreted in the digital age. The traditional border-based limitations of patent rights are increasingly being neutralized in the online environment, and courts in various jurisdictions are now focusing more on actual impact and targeted markets rather than formal geographical boundaries.   Japan’s Intellectual Property High Court has taken a similar approach. For example: In a 2022 ruling (July 20), it held that transmitting software from a foreign server to a device in Japan constituted “providing” the program invention. In a 2023 ruling (May 26), it found that transmitting system patent components from a foreign server to a device in Japan amounted to “manufacturing” and upheld infringement. In stark contrast to trade wars fought over rigid national borders, the expanding reach of patent rights across virtual borders is, to me, a personally fascinating development.

2025-06-13
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Practice Notes

Korean trademark opposition period reducing to 30 days from 22 July 2025

Previously reported amendments to the Korean Trademark Act, including a shorter opposition period and increased punitive damages for willful trademark infringement, will come into effect from 22 July 2025. Given the impact this could have on decision-making processes, brand owners and agents who deal with Korea as part of their practice are advised to take careful note. Further details below. ▒  SHORTER OPPOSITION PERIOD (2 months → 30 days) [Applies to applications published after the amendment comes into effect] The current deadline for filing an opposition is 2 months from the publication date of the application, but this will be reduced to just 30 days. The opposition deadline itself cannot be extended. However, per existing practice, it will still be possible to file a formal notice of opposition to meet the deadline, and substantiate the grounds for opposition via submission of a supplemental brief within a further 30 days. (The later submission deadline for the supplemental brief can usually be extended for up to 60 days for national applications, but not for Madrid applications.) The change is part of KIPO’s efforts to reduce the timeframe for trademark applications achieving registration.  While good news for applicants, who can expect their applications to register slightly quicker than before, any party who may wish to oppose the registration of a trademark application will have less time to make such a decision, so watch service notifications and the like will need to be reviewed and acted on more urgently.   ▒  INCREASED PUNITIVE DAMAGES (3x → 5x) [Applies to acts of infringement which occur after the amendment comes into effect] The current Trademark Act allows for up to 3x damages in cases of willful/intentional acts of infringement. This will increase to up to 5x punitive damages.  The increase to quintuple damages aims to further discourage willful/intentional violations of trademark rights through higher financial consequences, as well as offer more reasonable compensation for trademark owners who may have difficulty precisely quantifying the actual damages that have been incurred. 

2025-06-12
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