IP & Art

Once, the new policy of the administration in the United States is ‘Make Patent Great Again’. Translated into Korean, it means “strengthening the patent right again.” This policy direction can be applied to Korea as it is. Korea is the world's 5th largest patent country. In order to lead the digital era and the fourth industrial revolution era, the importance of intellectual property such as patents and related industries cannot be overemphasized.

First, activation of computer-related patents such as software and business methods is the most urgent task. China is already focusing on revitalizing these patents by quickly revising patent examination standards and easing computer-related patent eligibility such as software and business method patents. On the other hand, some critics are alleging that the US strictly requires computer-related patent eligibility according to the previous 'Ellis Judgment', causing a negative impact in these industries.

Rebutals are also possible. In any case, it seems clear that the number of invalidity trials for computer-related patents is increasing due to the influence of the ‘Ellis decision’ in the USA.

Anyhow, for a patent to become a 'strong patent', it is necessary to mass-produce standard patents, and for this, the concentration of government-wide capabilities is required. As with the Chinese government, it is necessary to alleviate the patent eligibility criteria for business model patents and software patents.

Unfortunately, the patent invalidation trial rate in Korea is quite high compared to other countries. The main reason for the invalidation trial is deeply related to the issue of novelty and nonobviousness. This problem can be found in the fact that the current work of examiners at the Korean Intellectual Property Office is overloaded. Since the workload per examiner is too heavy compared to other countries, it may be insufficient to determine patent eligibility at the examination stage. In other words, in the case of novelty judgment, searching for patents or non-patent information is important, but there may be a limit to searching within a limited time due to heavy work.

In the case of nonobviousness, patent examination should be conducted with expertise accumulated. Therefore, fundamental measures to improve the quality of patent examination through various methods such as the expansion of non-standing examiners at the project level should be prepared as soon as possible.

And what cannot be overlooked is thorough preparation for future patent disputes at the patent application stage. In this regard, it is important to prepare a patent specification, and it is also necessary to increase patent experts. For this, the law school system needs to be overhauled. In other words, it is necessary to revamp the law school system so that the law school is not just an educational institution that prepares for the bar exam, but it should be served for better understanding of intellectual property in general, professional knowledge, and even basic practice. It is also important to change the corporate perception of patent specifications. Unfortunately, when I visited the United States a few years ago to check the current status of intellectual property, an American lawyer pointed out that "the incompleteness of the description in the process of writing a patent specification in Korea is quite serious."

He also emphasized, “The high invalidation trial rate is not just a translation problem, but there are a lot of sloppy writing in the specification itself, such as unclear expressions in the preparation of the patent specification.”

Due to the relatively low fee arrangement for the legal assistance related to patent applications under current domestic conditions, there will be considerable difficulties in improving the level of patent specification preparation. However, in consideration of the high invalidity trial rate, thorough preparation is required from the stage of writing the patent specification.

As seen in the recent judgment of the US Patent Appeals Court, the advantages of the invention compared to the existing technology are specified in detail in the patent specification. The legal interpretation of software patents is conducted so that they can be sufficiently included in the patent subject.

Therefore, it is necessary to provide basic patent knowledge education for inventors or potential inventors, and in particular, social education at the national level to promote a basic understanding of specification in the patent application. Furthermore, proper preparation and supplementation of patent specifications through close communication and cooperation or collaboration between inventors and patent legal experts will be also a shortcut to becoming a ‘strong patent’. To this end, active interest and policy support at the pan-government level are needed so that the relevant social support infrastructure can be quickly created and built.