13 years ago

On March 15, 2012, the Korean Patent Act revisions implementing the Korea-US Free Trade Agreement (KORUS FTA) take effect.

The changes include a repeal of the prior law enabling cancellation of a Korean patent if the patented invention has not been practiced for a period of two or more years.

Under the new Patent Act provisions, the six months grace period for filing a Korean application after making an invention public is increased to twelve months. In addition, obligations of confidentiality are imposed on litigants and their counsel who receive confidential information in the course of patent infringement litigation.

Finally, the new law implements a patent term adjustment for Korean patents analogous to that accorded by the USPTO.  If a Korean patent is issued more than three years after filing the request for examination of the corresponding application in the Korean Intellectual Property Office (KIPO) or more than four years after filing of the patent application, then the patent term is extended to compensate for the delay after excluding the period of delay attributable to the patent applicant.

Concurrently, the Korean Pharmaceutical Affairs Act (“KPAA”) has been revised to provide an “Orange Book”-type listing of approved patented drugs, and to require notification of a patent holder within 7 days of application by a generic drug manufacturer for market approval of a patented drug.  The patented drug listing will specify the patent term, and all patents for drug compounds, compositions, formulations and medical uses must be listed.

Notice to the patent owner is not required when the patent has expired, when the generic product will only be sold after thee patent expires, when there is a marketing agreement between the patent owner and the generic manufacturer, when there is prior judicial determination of patent invalidity or non-infringement of the patent by the generic product, or when there is a Ministry of Health and Welfare decree of one of the foregoing exceptions.

Further revisions of the KPAA are contemplated to implement an automatic stay of generic product approval when the patent owner has brought suit against the generic drug manufacturer.

Steven J. Hultquist