Co(rona) Rush

30 June 2020

Co(rona) Rush

Similar to IP offices worldwide, the Korean Intellectual Property Office has been extending due dates because of the pandemic. What has happened to the local IP scene in the past few months? Johnny Chan reports.

The novel coronavirus Covid-19 has brought about so many changes to our daily lives, that it seems natural that such changes would spill over to, say, domestic and foreign patent and trademark filings. The reality is that the pandemic situation does not appear to have had a significant immediate impact on those filings, at least in South Korea.

“According to KIPO statistics for this year so far, there has been a slight increase in those filings for the time period from January to May – i.e., an increase of 0.2 percent (for patents) and 5.2 percent (for trademarks), compared to the same period last year,” says Ho Yeon Lee, a patent attorney at Kim & Chang in Seoul. For reference, the number of patent and trademark applications filed through May of this year was 80,900 for patents and 98,194 for trademarks.

“We have yet to find any particularly meaningful statistics that clearly indicate which industries have been directly impacted by the pandemic. But, it appears that there is a sharp increase in the number of patent filings related to Covid-19 diagnostic technologies or biohealth care technologies,” Lee said.

In particular, according to KIPO, 40 patent applications covering Covid-19 diagnostic technologies were filed in the first four months of this year since the first patent application was filed in February, Lee said. Trademark filings for over-the-top (OTT) media services significantly increased by 54.6 percent, and applications for sanitary goods such as masks, hand sanitizers and detergents increased. 

“The number of applications for masks filed between January and March this year is about 260 percent of the number of applications filed last year during the same time period,” Lee says.

 

Even prior to the pandemic, trademark applications for OTT services had been increasing, by 21 percent every year between 2015 and 2019, he says. “Applications for vaccines and cures had been increasing as well within the past four years – over 90 percent of these applications were filed by Korean companies.”

 

Covid-19 drugs and vaccines are coming soon

As one of the most advanced economies in the world, South Korea is apparently competing with time to save the world.

The first of the many of the patent applications covering Covid-19 diagnostic technologies was filed in February by South Korea’s Armed Forces Command; KIPO examined the application on an expedited basis and granted it on April 20, 2020, just about two months after the filing date. “This first patented Covid-19 diagnostic technology uses a reverse transcription loop isothermal amplification method to reduce the diagnosis time to less than an hour,” says Sung-Nam Kim, a patent attorney at Kim & Chang. “As global demand for Korean diagnostic kits increases amid the pandemic, KIPO announced that it would continually monitor patent applications related to the diagnosis of Covid-19 to review them promptly and accurately considering that rapid diagnosis is important to prevent the spread of infection. Thus, it is expected that more patents relating to Covid-19 diagnostic technology will be granted sooner or later.”
 

Also, a number of South Korean companies and government/research institutes appear to be making efforts to develop drugs or vaccines against Covid-19 while pursuing related patent filings. “According to a government press release, as of June 3, 2020, a total of 10 drugs have been approved by the Ministry of Food and Drug Safety for clinical trials, and three of them are anticipated to complete clinical trials this year. Moreover, SK Bioscience, Jinwon Life Science, Genexine, etc., are in the pre-clinical animal testing stage of their vaccines, with an aim of starting clinical trials this year and producing them in the second half of next year,” Kim says. “Some government/research institutes (including the National Health Research Institute and Chemical Research Institute) are presently at the stage of verifying the efficacy of candidate vaccines under development.”

 

Are Covid-19 drugs and vaccines liable to compulsory licensing?

If the subheading occurs, the pandemic can be taken care of but the bottom line of the developers might not be.

Similar to many other countries, compulsory licensing for patents is available in Korea under certain circumstances, says Cyril Chan, an attorney at Kim & Chang. “Specifically, if a patented invention needs to be practiced for the sake of public interest, a non-exclusive license may be granted to a third party by an administrative disposition or a trial decision rendered by KIPO, irrespective of the patentee’s opinion.”

In particular, Chan says, Article 107 of the Korean Patent Act enumerates several situations where such a compulsory license may be granted, including the following, among others: (i) where the working of the patented invention is especially necessary for the public interest; and (ii) where the working of the patented invention is necessary for the export of a drug to a country that intends to import the medicine in order to treat diseases that threaten the health of the majority of its citizens. 

 

“Further, Article 106-2 of the Patent Act states that compulsory licenses may be granted to the government (or a third party designated by the government) where non-commercial working is necessary due to a national emergency or for the public interest,” says Chan.

However, there have been very few compulsory license cases in South Korea. “In the pharmaceutical industry, KIPO has rejected petitions for compulsory licenses to drug products for public interest on the grounds that lack of access due to high drug prices or pending drug pricing negotiations with the government did not support a compulsory license,” he says. “Covid-19 appears to affect this landscape. For instance, KIPO launched on March 19 a Patent Information Navigation System web resource [at the KIPO website] offering patent screening and updates on Covid-19 related drugs, diagnostic methods and treatment tools. On this website, KIPO states that this system can be used to review potentially useful patents which may be subject to compulsory licensing. KIPO and the Korean Centers for Disease Control and Prevention are also reportedly conducting a preliminary review of forced enforcement of patents in the event of emergency situations where it is difficult to supply essential medicines and vaccines in Korea. Thus, we believe that the current pandemic will likely support a compulsory license in Korea, especially where the related drug is deemed essential and its local supply is limited.”

Yung Joon Kwon, managing partner at Kwon & Kim Patent & Trademark Attorneys in Seoul, agrees with Chan. “Once the Covid-19 drugs or vaccines are developed, where the patentee sets the price unreasonably high or manufactures very limited doses only in Korea, such compulsory licensing is possibly granted theoretically, although I have never heard or seen such compulsory licensing taking place in Korea previously. Yet, it was only requested once before.”

 

Corona rush

On the trademark side, media coverage around the world has reported on companies filing for trademarks related to the word corona. A few companies in South Korea have similarly tried to take advantage of the coronavirus in the same manner. 

“KIPO announced that 19 such marks were filed from January 20 to March 26. The number reaches over 30 if marks bearing ‘virus’ or other Covid-related terms are included,” says Chan, who believes that KIPO is likely to reject those marks based on non-distinctiveness.

“In fact, it is not uncommon for people to apply for buzzwords, so this news is not surprising and we have not seen any specific public reaction to it,” he says. “The number of filings in connection with ‘corona’ is not strikingly high either.”

Kwon says that the number applications is smaller than what he expected.

“In my view, the words do not really bring positivity to the public, and people are not interested in occupying the registrations for such ‘unfriendly’ words,” he says. “Twelve of the applications that were filed on or after December 1, 2019, were for Class 5 (pharmaceutical drugs), and most of them who filed for Class 5 are seemingly local Korean companies or natural persons.”


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