SME Development in Emerging Asia: Integration to the Global Value Chain

Legal Protection of SMBs Technology

Emma (Kyoung-Joo) Park
Attorney-at-Law & Patent Attorney
kjpark@leeinternational.com

The views expressed in this presentation are the views of the author and do not necessarily reflect the views or policies of the Asian Development
Bank Institute (ADBI), the Asian Development Bank (ADB), its Board of Directors, or the governments they represent. ADBI does not guarantee
the accuracy of the data included in this paper and accepts no responsibility for any consequences of their use. Terminology used may not
necessarily be consistent with ADB official terms.

Restricted Lee International 2016 All rights reserved.

CONTENTS

I.

Patent War?

II.

Creative Economy Town 7 step Support System

III.

Relevant Laws

IV.

Information & Education for SMB IP Protection

V.

Important IPs

VI.

Employee Invention Promotion

VII. Protection if SMBs Technology IPRs?

VIII. Abuse of Market Dominance Status through IPRs
IX.

Examination Guide of Unfair Exertion of IPR (KFTC)

X.

Protection of MSB in Enforcement of IPR.

I.

Patent War?

Know-How

Patent
Kodaks patent
portfolio sold to
Consortium at the
price of 5 billion
US dollars?

Maker

Maker

NPE

Maker

Apple
vs
Samsung

IV
vs
Samsung

DuPont
vs
Kolon

http://online.wsj.com/articles/apple
-samsung-call-patent-truce-outsideu-s-1407291456

http://www.pwc.com/en_us/us/for
ensicservices/publications/assets/2013patent-litigation-study.pdf

http://www.bloomberg.com/news/
2014-04-03/dupont-s-919-millionverdict-in-kolon-kevlar-casetossed.html

N/A

N/A

http://en.wikipedia.org/wiki/Apple_I
nc._v._Samsung_Electronics_Co.,_Lt
d.

NPE

Patent Pool
http://www.i-discovery.com

II. Creative Economy Town 7 Step Customized

Support System according to Idea Development (1/2)
Support

Developing Idea into

Intellectual Property
(IP)

Prototype
Manufacture

Idea Development
Stage

Not yet applied

for IP Registration

Application Pending
or Registration
Completed

Related Businesses run by Government Agencies

KIPSI (Korea IP Strategy Institute)
Provide Prior Art Investigation Report for Ideas
Provide funds for Registration of IPs after Evaluation and
Selection of Ideas
KWIA (Korea Women Inventors Association)
Provide funds for Registration of IPs after Evaluation and
Selection of Ideas for Women Inventors
Prototype Manufacture Facility in SMBA (SMB Agency)
Main Cities in Korea
Start-Up
Workshop
at
ETRI
(Electronics
and
Telecommunications Research Institute) and KRISS (Korea
Research Institute for Standard Science)
Unlimited Imagination Room run by MSIP (Ministry of
Science, ICT and Future Planning)

Marketing Strategy
Consulting

Prototype

GTP (Gyounggi Techno Park)

StartUp, Marketing Consulting
PR Support such as Fair and Display: GTP related Education,
Online PR, Help Entering into Shopping Mall

II. Creative Economy Town 7 Step Customized

Support System according to Idea Development (2/2)
Support

Business Plan Revision

& Supplementation

Start-Up Incubation,
R&D Funds
Investment of
Operation Funds, Mass
Manufacture Funds
Matching Demands
and Businesses

Idea Stage

Marketing using
Prototype

Business Plan
Completion

Related Businesses run by Government Agencies

Start-Up Check Up Program run by MSIP (Ministry of
Science, ICT and Future Planning), INNOPOLIS Foundation,
Hannam University Innocam
MOTIE (Ministry of Trade, Industry and Energy) BI related
Institution type Business (TechnoPark etc.)
Cooperation with 65 businesses run by 13 government
agencies including SMBA (SMB Agency), KIPO (Korea
Intellectual Property Office), MOTIE (Ministry of Trade,
Industry and Energy)
KODIT (Korea Credit Guarantee Fund)

Start-Up

Technology Transfer
& Revenue Producing

KIBO (Korea Technology Guarantee Fund)

Support for Matching Demands and

Technology Transfer, Investor Introduction

Businesses,

III. Relevant Laws

SMB Related Laws:

SMB Framework Act

Act on the Promotion of Technology Innovation of SMB
Special Act on Support for Human Resources of SMB
Act on Facilitation of Purchase of SMB Manufactured Products & Support for
Development of Markets
Act on Special Measures for the Promotion of Venture Businesses
Act on Industrial Education Enhancement and IndustryAcademiaResearch
Cooperation Promotion

IP Related Laws:

Patent Act
Utility Model Act
Design Act
Trademark Act
Unfair Competition Prevention & Trade Secret Protection Act
Fair Trade Act

IV. Information & Education for IP Protection

Essential Standard Patent Center

IP-Buz/ IP-R&D Portal System
KIPRIS/ e-Patent : Patent Information Network/ Patent Analysis Report/
Patent Map/ Patent Strategy & Planning
IP-Market
Korea Intellectual Property Strategy Institute
International Intellectual Property Training Institute (IIPTI)
IP e-learning portal

V. Important IPs (1/3)

- Patent vs Utility Model
Patent

Utility Model

Relevant Law

Patent Act

Utility Model Act

Protected Invention

A highly advanced creation

of a technical idea

A creation of a technical idea

using the rules of nature
regarding the shape,
structure or combination of
subjects

Required Degree of
Inventive Step

High

Not so high

Protected Period

20 years

10 years

Fees (Application Fee/

Examination Fee)

100 %

60 %

V. Important IPs (2/3)

Patent vs Know-How (Trade Secret)

Patent

Trade Secret

Patent Act, Utility Patent Act, Design Protection Act

Unfair Competition Prevention & Trade Secret

Protection Act, Copyright Act

Prior Filing, Novelty, Inventive Step, Clarity

Not in the Public Domain, Economical Value, Kept in

Confidence with Considerable Efforts

Public Exclusivity (Registered Exclusivity)

Private Exclusivity (Obligations for Secrecy)

20 /10/20years

As Long as kept Confidential (or within 3 years for

new Prototype Desing)

Cost for Processing Filing & Registration, Annual

Fee, Patent Attorney Fee

Cost for Security Measures

Invalidity

Unwittingly belonging to the Public Domain

Reverse Engineering not Permitted

Reverse Engineering Permitted

Design Around Required

Design Around not Required

Patent Lists

NDA (NonDisclosure Agreement)

Susceptible to NPE

Not Susceptible to NPE

Employee Invention Protection

Unclear

V. Important IPs (3/3)

Trade Dress vs Design Patent
Trade Dress

Design Patent

Secondary Meaning (Source Indicator) of Color,

Shape, Overall Appearance)

Ornamental Designs for Articles of Manufacture

(Utilitarian Articles)

As long as it functions as Source Indicator

20 years

Protection before acquiring the Secondary

Meaning

Protection before acquiring the Secondary Meaning

Use & Registration

Registration

Strategy:

File for protection of your design by Design Patent!

Wait for your design acquires Secondary Meaning!
Do not worry even if the design patent protection expires!
Your design is still protected by Trade Dress!!!

VI. Employee Invention Promotion (Invention Promotion Act)

If There Is a Contract or
Employment Policy
Employer Is Entitled to Patent or
Exclusive License

Completion of Employee
invention
Employee:
1) Notice of Completion
of Employee Invention
in Writing
2) Confidentiality

Notice of Assignment
within 4 Months
Employer: Right to Patent or Exclusive
License of Employee Invention
Employee: Reasonable Remuneration

Notice of Intention to not Assign the

Invention
Employer: RoyaltyFree and Non
Exclusive License
Employee: Right to Employee Invention

No Notice of Assignment
within 4 Months
Employer: NonExclusive License under
Employees Consent
Employee: Right to Employee Invention

If There Is No Contract or
Employment Policy
Employee Is Entitled to Determine
Whether to Assign the Patent to
Employer

If Employee Has No
Intention of Assignment
Employer: RoyaltyFree and Non
Exclusive License
Employee: Right to Employee Invention

If Employee Has Intention of

Assignment
Employer: Right to Patent or Exclusive
License of Employee Invention
Employee: Reasonable Remuneration

VII. What are Unjust Exertions of IPRs?

Abuse of Market Dominance Status through IPRs

Violations of Restrictions of Corporate M&A
Unjust Joint Action
Unfair Transactions
Maintenance of Resale Prices

10

VIII.Abuse of Market Dominance Status through IPRs

Patent
Infringement
Litigation

Entry Barrier
for
Competitors

Patent
Invalidation
Action

Interference of
Judical
business activities of Procedures
other businesses
Administratives
Procedures

11

Abuse of Market Dominance

Status

IX. Examination Guide of Unfair Exertion of IPR (KFTC)

Patent
Ambush

Sham
Litigation

Dispute
Resolution

Patent
Pools

Dynamic
Effectiveness

Tie-in
License

12

Principle of
Rationality

Unfair
Discrimination

Unfair
Settlement

NonDispute

Royalty
Payment
After
Invalidation

Joint
Actions

Effect of
Increasing/Decreasing
the Competition

X. Protection of SMB in Enforcement of IPR

Korea Intellectual Property Protection Agency

International IP Dispute Support
Korea Intellectual Property Office/ SMB Corporation
Provision of Mediation Procedures for IP Disputes:
Quick & Cheap

13

THANK YOU
Lee International IP & Law Group
www.leeinternational.com

Emma (Kyoung-Joo) Park

Attorney-at-Law & Patent Attorney
kjpark@leeinternational.com