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특허법인 남앤남 * THE FIRM * At a Glance * Philosophy * Inside NAM IP * Social Responsibility * Contact Us * SERVICES * Prosecution * Litigation · Dispute * Search · Consulting * PROFESSIONALS * Partners * Electronics · IT * Mechanical · Materials * Chemical · Bio · Pharm * Trademark · Design * Foreign Specialists * IP MATERIALS * Laws · Regulations * Procedures · Official Fees * Practice Notes * Comparative Law * FAQ * Law Firm * English * Korean * 日本語 * 中文 THE NAME BEHIND YOUR NAME SINCE 1952 We, NAM IP Group is here to dream your dream and ready to pave the way for the client's success -------------------------------------------------------------------------------- EXPLORE NAM IP GROUP NAM IP Group has a long history of working experiences with global clients. 2024 With a proud history as Korea's oldest IP law firm, we commit to continue to provide the best service for your success as we have always done for 70 years. * 0 180 + Professionals Our professionals are selected based on practice areas and specific technologies and are trained with the specific needs of global clients in mind. 1 1 PROFESSIONALS YOUNG-JOO YOUN Sr. Patent Attorney YOUNG-JUN CHOI Sr. Patent Attorney YOUNG-MIN KIM Partner BEN (BEYONG-HO) YUU Managing Partner BYUNG-KYU KIM Partner CHANG-HAK SHIN Sr. Patent Attorney JENNY BYUN Regional Expert (English) LENA SPAFFORD Regional Expert (English) JAE-HWAN SIM Partner JEONG-SEOK LEE Sr. Patent Attorney JI-WOONG KIM Partner JONATHAN MASTERS Trademark Attorney (AU) KWEI-RYE HA Partner MIN-KYEONG SHIN Sr. Patent Attorney BO-RA KIM Patent Attorney JAE-WOO BYEON Sr. Patent Attorney KWAN-JU PARK Sr. Patent Attorney SEO-WU LEE Patent Attorney SEON-YOUNG KIM Sr. Patent Attorney NA-RA YI Patent Attorney JUSTIN HWANG Sr. Patent Attorney HAI-HUA ZHANG Regional Expert (Chinese) REIKO TOMONAGA Regional Expert (Japanese) SANG-HUN JUNG Sr. Patent Attorney SEO-YOUNG LEE Partner SEUNG-WHAN KIM Group Lead / Patent Attorney SI-JUNG LEE Partner SI-YONG LEE Partner SUNG-WOOK KIM Partner WOO-HYUN NAM Partner YONG-KYUN KIM Sr. Patent Attorney YOUNG-JOO YOUN Sr. Patent Attorney YOUNG-JUN CHOI Sr. Patent Attorney YOUNG-MIN KIM Partner BEN (BEYONG-HO) YUU Managing Partner BYUNG-KYU KIM Partner CHANG-HAK SHIN Sr. Patent Attorney JENNY BYUN Regional Expert (English) LENA SPAFFORD Regional Expert (English) JAE-HWAN SIM Partner JEONG-SEOK LEE Sr. Patent Attorney JI-WOONG KIM Partner JONATHAN MASTERS Trademark Attorney (AU) KWEI-RYE HA Partner MIN-KYEONG SHIN Sr. Patent Attorney BO-RA KIM Patent Attorney JAE-WOO BYEON Sr. Patent Attorney KWAN-JU PARK Sr. Patent Attorney SEO-WU LEE Patent Attorney SEON-YOUNG KIM Sr. Patent Attorney NA-RA YI Patent Attorney JUSTIN HWANG Sr. Patent Attorney HAI-HUA ZHANG Regional Expert (Chinese) REIKO TOMONAGA Regional Expert (Japanese) SANG-HUN JUNG Sr. Patent Attorney SEO-YOUNG LEE Partner SEUNG-WHAN KIM Group Lead / Patent Attorney SI-JUNG LEE Partner SI-YONG LEE Partner SUNG-WOOK KIM Partner WOO-HYUN NAM Partner YONG-KYUN KIM Sr. Patent Attorney YOUNG-JOO YOUN Sr. Patent Attorney YOUNG-JUN CHOI Sr. Patent Attorney YOUNG-MIN KIM Partner LATEST UPDATES Practice Notes STATISTICS ON PATENT APPLICATIONS IN KOREA RELATED TO FOURTH INDUSTRIAL REVOLUTION INVENTIONS The Korean Intellectual Property Office (hereinafter, KIPO) has released statistical data on the trends of patent applications in Korea related to inventions associated with the Fourth Industrial Revolution (hereinafter, 4IR), such as artificial intelligence. This data was prepared by the Artificial Intelligence & Big Data Examination Division of KIPO and was last updated on 23 May 2024 ▒ Fourth Industrial Revolution related Inventions The KIPO classifies the 4IR related inventions into eight major technology fields: Artificial Intelligence (AI), Big Data, Internet of Things (IoT), Digital Health Care, Bio Markers, Intelligent Robots, Autonomous Driving, and 3D Printing. Patent applications filed in the 8 major technologies fields have continuously increased (7,057 appl. in 2013 → 24,341 appl. in 2022). Especially, patent applications filed in the AI field have accounted for the largest (36.8%) among the ones filed in the 4IR technologies fields in 2022. The patent applications filed in the AI field sharply increased by 39.6 % on annual average basis (444 appl. in 2013 → 8,960 appl. 2022). ▒ Korean Patent Applications Trend in the Digital Convergence Field The KIPO considers inventions that combine two of the eight major technology fields related to the 4IR as belonging to the Digital Convergence Field. Specifically, combinations such as Artificial Intelligence (AI) + Digital Health Care, AI + Big Data, Internet of Things (IoT) + Big Data, Digital Health Care + IoT, AI + IoT, AI + Autonomous Driving, Digital Health Care + Intelligent Robot, Digital Health Care + Big Data, AI + Intelligent Robot, Autonomous Driving + Intelligent Robot, and IoT + Autonomous Driving are categorized under the Digital Convergence Field. Patent applications filed in the digital convergence field increased by twentyfold between 2013 and 2022 (128 appl. in 2013 → 2,294 appl. in 2022). In particular, the trend of AI technology converging with other technologies has become especially pronounced. Among the 11 convergence technologies, those combined with AI have all shown an average annual growth rate of over 40%. Over the past 10 years, patent applications involving AI convergence have grown by a factor of 41. 2024-10-31 READ MORE Practice Notes KIPO ANNOUNCES 2025 BUDGET: AI-BASED EXAMINATION SUPPORT SERVICE ON THE HORIZON The Korean Intellectual Property Office (KIPO) has announced its proposed budget for 2025, revealing the office’s key investment priorities for the coming year. Among other objectives, the budget proposal highlights KIPO’s continuing efforts to effectively integrate artificial intelligence (AI) into its work processes. ▒ Key Focus Areas for 2025 The total budget of KRW 705.8 billion (approx. USD 511 million) represents a 0.6% increase from the previous year, and is set to be finalized by the National Assembly in December. Through the proposed budget, KIPO outlines four key focus areas for 2025: Leveraging patent big data: Expanding the use of global patent big data to better support national R&D planning, advance the development of emerging technologies, and prevent technology leaks. IP financing for startups and SMEs: Increasing support for IP-based financing options to help small and medium-sized enterprises (SMEs) and startups leverage their IP for growth. Strengthening export companies’ IP dispute resolution: Enhancing the capacity of Korean export companies to prevent and resolve IP disputes in other countries, and expanding efforts to curb the distribution of counterfeit goods online by harnessing AI. Developing a high-quality, AI-based examination support service: Building on KIPO’s partnership with LG AI Research to develop improved AI-based search capabilities for providing faster and more efficient examination services. The latter AI project is in keeping with KIPO’s ’23-’27 roadmap for AI technology implementation, adopted in early 2023, which maps out the office’s ambition of “building the world’s best AI-based examination and trial system”. ▒ Partnership with LG AI Research KIPO initially partnered with LG AI Research in 2023, with the goal of developing a ‘patent expert AI’ for use in prior art searches, classification, and summarization of patent documents. This lead to the development later that year of what is, according to KIPO, the world’s first hyperscale AI language model tailored specifically for patent administration. The model was trained with 1.78 terabytes of patent-related data provided by KIPO—including patent gazette publications, office actions, machine-translated documents, CPC classifications, machine reading comprehension information, and collections of consultation case studies—based on LG AI Research’s hyperscale multimodal AI, EXAONE. Designed with 8.8 billion parameters, tailored to the environment and usage needs of KIPO, the model has already been successful in handling tasks such as patent document summarization, translation, and classification. ▒ Applying the new model 2025 will see the beginning in earnest of the next phase of the model’s development and application: building KIPO’s AI-based examination support system, through which the office ultimately plans to introduce new AI-based prior art search and trademark/design image search capabilities into its examination processes. Given the increasing volume and complexity of patent applications, prior art search in particular is an area that stands to benefit greatly from the use of AI tools. As the first such tool based on an AI language model tailored for patent administration tasks, and boosted by the new investment, the model developed by KIPO and LG AI Research promises a step forward in this regard. Although 2025 is only the beginning of the next phase, patent applicants in Korea, as well as PCT applicants using KIPO as International Searching Authority, can look forward to more efficient, speedier, and more reliable services in the near future. Written by Simon Voget 2024-10-28 READ MORE INSIDE NAM IP NAM IP GROUP ATTORNEYS HAVE BEEN NAMED AS RISING STAR IN IP STARS! NAM IP Group attorneys have been named as Rising Star in IP STARS! Congratulations once again to those selected. We have high expectations for your future achievements and offer our full support and encouragement 2024-10-25 READ MORE Practice Notes TACKLING THE INCREASING DELAY IN KOREAN TRADEMARK EXAMINATION As anyone with recent experience of filing trademarks in Korea will already be painfully aware, the examination timeframe has been increasing significantly. In a recent paper published by the Korean Intellectual Property Office (KIPO) and Korea Institute of Intellectual Property (KIIP) (“상표심사처리기간 지연의 경제적 피해액 추정”, August 2024), this topic is discussed in relation to the economic impact caused by trademark examination delays. The majority of data in this article is taken from said paper. For business owners, delays in achieving trademark registration can have severe implications. With Korea being a first-to-file jurisdiction with rights largely based on registered trademarks, there is an inherent risk in using a trademark prior to registration. However, delaying product launches while waiting for examination results leads to lost potential sale opportunities, and if a trademark has to be changed due to a conflict this can also result in costs wasted on product development, marketing etc. Aside from these direct impacts, there are also knock-on effects such as job losses and reduced production while companies delay launching projects, as well as a more general reluctance to innovate and invest in new ventures due to brand uncertainty. ▒ Causes for the increasing delay The annual number of trademark applications filed and average examination time (i.e. time between filing and examination result) over the last decade is shown in the below table, with the year-on-year percentage difference in brackets: (* Figures for 2024/2025 are estimates) While the number of trademark applications has steadily grown, the increase in examination time is disproportionate. Comparing the 2014 figures with estimated 2024 figures, the number of applications is expected to increase by 69.39% over the 10-year period, while the examination speed is projected to be 200% slower. The increasing delay is primarily attributable to two factors: (1) Lack of manpower The increase in the number of trademark applications was not matched by a corresponding increase in examiners, resulting in a larger caseload per examiner and bottlenecks in examination. The number of trademark examiners increased from 146 in 2019 (~1,500 cases per examiner), to 149 in 2021 (~1,900 cases per examiner), to 175 in 2024 (~1,550 cases per examiner). (Source: Seoul Economic Daily) While the number of examiners has increased, there is still a significant backlog of cases awaiting examination. (2) Increase in requests for accelerated examination A surge in accelerated examination requests diverted resources from general examination. The number of requests grew astronomically from 6,186 in 2018 to 46,744 in 2023 — a more than seven-fold increase over a five-year period. This is mainly attributable to requests for accelerated examination being accepted based on a senior trademark search report prepared by a KIPO-designated agency starting from July 2019. This greatly reduced the burden in requesting accelerated examination and made it easier for applicants to get their applications examined quickly, even if they had no clear intention to start using the mark. ▒ What can be done? The paper proposes a number of measures aimed at improving the situation: (1) Increasing the number of examiners (2) Utilizing AI to strengthen pre-examination This could include easing examiner burden by implementing an AI-powered similar trademark search engine for use during examination, and improving applicant confidence by developing a pre-filing screening tool that can estimate the chances of a trademark achieving registration. (3) Improving applicant communication This includes increasing awareness of the designated goods/services list that is updated annually (applications only covering pre-approved goods/services are afforded lower official fees and are not likely to be refused based on vague/broad descriptions or misclassification), and alerting applicants of the estimated timeframe for examination. (4) Restricting accelerated examination In response to the surge in requests, KIPO has already stopped accepting accelerated examination requests based on trademark search reports as of January 2024. In order to request accelerated examination, applicants must now rely on other grounds such as (i) they are already using the mark or have evidence showing imminent use is planned; (ii) another party is already using the mark for identical/similar goods; (iii) the applicant received a warning letter concerning their application from another party with senior rights, etc. (5) Shortening the opposition period Even if an application passes examination (i.e. the examiner finds no grounds to provisionally refuse the application), it is still subject to a two-month “publication period” during which any party can file an opposition with the intention of preventing the application from achieving registration. It has been suggested that this period be reduced to 30 days, which would allow non-opposed applications to be registered faster. (In return, opponents may be afforded longer time extensions for preparing their opposition.) ▒ Final thoughts As discussed, increasing delays in trademark examination can have significant economic impacts, hindering business growth and innovation. With KIPO intimately aware of this situation, we are hopeful that changes will be forthcoming to improve efficiency and bring about a return to a more predictable and business-friendly trademark examination system. Written by Jonathan MASTERS 2024-10-18 READ MORE 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 READ MORE Practice Notes PROPOSED LAW REVISION TO TACKLE IMPORTATION OF ‘PERSONAL USE’ COUNTERFEIT GOODS A proposed amendment to the Korean Trademark Act has been announced which would address the issue of counterfeit goods being shipped into the country by foreign sellers. Currently, there is ambiguity in determining whether such shipments constitute trademark infringement, making it difficult for Customs authorities to block them under the provisions of the Customs Act dealing with intellectual property violations. ▒ What is changing? The revision introduces a new clause that defines the act of a foreign seller shipping goods marked with a trademark into Korea as a form of "trademark use". In doing so, "supply" by foreign sellers will be separated from the act of "import", typically carried out by domestic buyers, and this distinction will allow authorities to treat such imports as trademark infringement, even if the seller is overseas and the item is for personal use. ▒ What is the expected effect? With Customs authorities having a clear legal basis to seize and block counterfeit goods from entering the country, even if they are intended for personal use, border enforcement is expected to be considerably strengthened with enhanced protection for domestic trademark holders against overseas counterfeiters. At the same time, individual consumers importing goods for personal, non-commercial use will not be punished. ▒ What is the timeline? The public have been invited to submit opinions on the proposed changes by 14 October. In the absence of any unexpected developments, the amendments are expected to be promulgated before the end of the year and would take effect immediately. Written by Jonathan MASTERS and Sang-eun SHIN 2024-09-12 READ MORE × 특허법인 남앤남 * * * SUBSCRIBE NOW! SEND If you are interested in getting the latest NAM IP Group news and Korean IP materials, please enter your email address and subscribe now! 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