Software inventions have traditionally been a hot topic in many jurisdictions, with some fundamental questions frequently raised and debated (eg, the eligibility of these inventions). South Korea is no exception. In particular, there have been various academic and judicial discussions regarding the scope of patentable subject matter and protection for such inventions (particularly regarding the online transmission of computer programs used in working software inventions).
In recent years, there has been substantial interest in changing existing law and practice in order to expand the protection for computer program inventions. The Korean Intellectual Property Office (KIPO) sought to enact such a change by officially releasing its revised Examination Guidelines for Computer-Related Inventions on July 1 2014. Three months later, an amendment bill to the Patent Act was submitted to the National Assembly, which attempted to broaden the scope of protection for computer-related inventions (eg, by opening up the possibility of patentees bringing infringement claims against online sellers of an allegedly infringing computer program, something which would not be subject to infringement liability under the guidelines). The National Assembly seemed to recognise that the proposed amendments could have profound effects on the software industry and thus rejected them, noting that more opinions from the industry were needed to gain a consensus on this issue.
This update provides a general overview of the existing South Korean law and practice with regard to the protection of software inventions as patents, together with practical tips for seeking patent protection for software inventions in South Korea based on the guidelines.
Generally speaking, software inventions and business method inventions (collectively referred to as 'computer-implemented inventions') are treated the same as other inventions under the Patent Act – that is, the Patent Act contains no provisions that specifically govern computer-related inventions, and applications for computer-implemented inventions are subject to the same statutory patentability requirements that apply to patent applications in general (eg, novelty, inventiveness and description requirements).
Notwithstanding the absence of specific provisions in the Patent Act, the most instructive resource for practitioners, litigators and applicants is within the guidelines, which are used as the prevailing standard for KIPO examiners in relation to computer-implemented inventions. The guidelines were initially released in November 1984 and have been revised several times, most recently in July 2014. Among other things, the guidelines set out the following (which are generally the result of adopting case precedents):
- requirements for allowable subject matter;
- drafting rules for claims; and
- standards for inventiveness.
Statutory subject matter
Unlike in the United States (and many other jurisdictions), South Korea explicitly provides a definition of what constitutes an 'invention' – specifically, under Article 2 of the Patent Act, an 'invention' is defined as a "highly advanced creation of technical ideas utilizing the law of nature". This definition applies equally to computer-implemented inventions.
According to Section 2.2 of the guidelines, the creation of technical ideas using the laws of nature is generally understood to implement a concrete means involving a combination of software and hardware (or device implementation) to achieve a specific purpose. That is, in the context of computer-implemented inventions, information processing realised through cooperation between software and hardware (ie, where the information processing is concretely realised by using hardware) is deemed to be a creation of technical ideas using the laws of nature. This requirement essentially reflects the Supreme Court decision in Case 2001-Hu-3149, dated May 16 2003.
Notably, while the US landmark case Alice Corp v CLS Bank International significantly changed the statutory standard for software inventions, no other comparable or relevant South Korean Supreme Court decisions have further changed or clarified the statutory definition of 'invention' as it applies to computer programs. Thus, the law in South Korea has remained relatively unchanged since 2003 and there has been no notable change in KIPO examination practice to shift towards a more stringent review of computer-implemented inventions.
In view of this eligibility standard, there are some points that deserve careful consideration in drafting software inventions claims in South Korea, as discussed below.
KIPO examiners often reject claims directed to computer-implemented inventions for lacking a concrete means to implement the claimed computer processing. As noted above, for computer-implemented inventions, a concrete means usually involves a combination of software and hardware (or device implementation). A pure method or process claim that does not recite a concrete means will generally be rejected as unpatentable subject matter.
Thus, it is recommended to associate claimed elements with hardware-type components (eg, a memory, server, database, means of performing a specific function or the Internet) to the extent possible so that software and hardware are cooperative in implementing a concrete means of processing information.
Exclude steps executed by humans
Even when combined with concrete steps, method claims involving steps executed by a human are often rejected as illegible subject matter. The reasoning being that when a step is executed based on an artificial decision or the mental activity of a human, and the hardware or software components are simply recited as an instrument for human mental activity (and not as a specific means for realising the invention), the invention is not deemed to be concretely realised through a cooperation of hardware and software.
The KIPO guidelines provide Claim 1 (below) as an example of a non-patentable claim, as the claimed steps may be interpreted as being performed by human operations (and components such as the Internet, customer list storing means and email are used simply as instruments for the human mental activity):
"Claim 1 (example of 'non-patentable' subject matter)
A service method for awarding points based on a purchase amount for a product from an Internet shopping mall, the method comprising:
- notifying a point amount to be donated and a name of a point recipient via the Internet;
- obtaining an e-mail address of the point recipient stored in a means for storing a customer list based on the recipient's name;
- adding the point amount to the recipient's points stored in the means for storing the customer list; and
- notifying the recipient of the service point having been donated, via e-mail by using the recipient's e-mail address."
The guidelines indicate that the same invention becomes statutorily patentable when the claim clarifies that each step is performed by a server, as shown in Claim 2:
"Claim 2 (example of 'patentable' subject matter)
A service method for awarding points based on a purchase amount for a product from an Internet shopping mall, the method comprising:
- entering a point amount to be donated and a name of a point recipient into a server through the Internet;
- obtaining, at the server, an e-mail address of the point recipient stored in a means for storing a customer list based on the recipient's name;
- adding, at the server, the point amount to the recipient's points stored in the means for storing the customer list; and
- notifying, at the server, the recipient of the service point having been donated via e-mail by using the recipient's e-mail address."
While not explicitly indicated in the guidelines, it may also be acceptable to define the method as being "executed on the server" in the preamble instead of adding "at the server" for each step of the method.
Thus, it is advisable to ensure that no human activity is involved in the elements being claimed by, for example, clarifying the subject of each step to ensure that it is executed by hardware (eg, computer and server) and not a human.
In short, the eligibility test in South Korea is considered lenient, as it focuses on the formality aspects of the claims (ie, whether the claims describe specific hardware-type components that account for computer processing and the interaction between them). The creativity of an idea beyond conventional thinking is assessed under the inventiveness test, which may be in stark contrast to the US standard suggested in Alice.
Claim categories for computer-implemented inventions
Under the existing guidelines, computer-implemented inventions can be claimed in one of the following forms:
- apparatus (device);
- process (method);
- computer-readable medium (eg, a floppy disk or compact disc); or
- computer program stored on a medium (added on July 1 2014).
The following are formats for exemplary permissible claims (including computer-readable medium claims and computer program claims) as provided in the guidelines:
- a computer-readable recording medium which has recorded a program that causes a computer to execute Steps A, B and C;
- a computer-readable recording medium which has recorded a program that enables (or makes) a computer serve as Means A, B and C;
- a computer-readable recording medium which has recorded a program to implement Functions A, B and C in a computer;
- a computer-readable recording medium which has recorded data as Structures A, B and C; and
- a computer program stored on a medium in order to execute Steps A, B and C in a computing device (added on July 1 2014).
Other than in these claim formats, claims directed towards the following are not permitted:
- a computer program per se (not stored on a computer-readable medium);
- a program signal or a series of program signals;
- a program product; and
- program output.
Specifically, KIPO has been rejecting claims directed to a computer program per se on the grounds that it is unclear whether the category of claimed invention is a method or product. As indicated above, when the guidelines were revised, the acceptable forms for claiming computer-implemented inventions were revised to allow computer program claims not recited as a computer-readable medium, provided that they are claimed as stored on a medium such that the program is used in combination with hardware (ie, computer program stored on a medium). While the phrase "computer program stored on a medium" does not require the words 'computer readable' before the term 'medium', this is not an attempt to broaden the meaning of 'medium' to include non-computer readable mediums. Rather, the practical application of this new claim format is that it is essentially treated the same as a computer-readable medium claim, and is generally perceived by practitioners as an attempt by KIPO to relax the formalities for claiming computer-implemented inventions. While applicants can now benefit from using this claim format, no case law or further guidance has been issued by KIPO or the courts on how it differs from a computer-readable medium claim in terms of claim scope (if any) when assessing infringement.
Meanwhile, KIPO examiners often reject claims directed to a specific element or component as being unclear where the detailed description suggests that the element or component may be implemented in software. In particular, KIPO examiners are likely to reject the following claims on the grounds that the subject matter is unclear:
- a (graphical) user interface;
- tools; or
- engines (described as being implemented in software in the detailed description).
Thus, it is safer to draft claims to recite a computer-readable recording medium – for example, "a computer-readable recording medium storing a computer program for implementing in a computer a user interface/schema/tool/engine" or "a user interface/schema/tool/engine implemented by a computer program stored on a medium".
Even if a computer-implemented invention qualifies as patentable statutory subject matter, it must still meet the novelty and inventiveness requirements under Articles 29(1) and 29(2) of the Patent Act. The inventiveness of a computer-implemented invention is considered in light of both known technologies in the field and common sense in the field of computers, and the South Korean courts generally require a higher level of inventiveness for software inventions than other art.
Specifically, if an invention could have been easily conceived by a person of ordinary skill in the art based on prior art, well-known technologies in the field and common sense in the field of computers, the invention will not be deemed inventive.
The guidelines provide examples of inventions lacking inventiveness, including:
- the simple application of technological means used in a particular field to other fields;
- implementing a function by software that was conventionally done by a hardware circuit;
- systematisation or computerisation of a process that could be or had previously been manually conducted; and
- implementing a well-known idea on a computer or in cyberspace.
Unexpected advantageous effects can be important indications of inventiveness, while advantages of computerisation (eg, faster processing and massive data processing) will not be viewed as unexpected.
In light of the South Korean courts' tendency towards a higher standard for inventiveness, it is advisable to include a specific technical constitution which has original functions or instructions that make up the algorithm for solving the problem, which cannot easily be found in the prior art references.
Although court statistics are not publicly available in South Korea, the overall impression is that the success rate for patents relating to computer-implemented inventions does not particularly deviate from that of other types of patent. As explained above, there have been no changes in South Korean practice in response to Alice and when KIPO recently released guidelines on software patents in July 2014, it expressly indicated that there would be no change in the standard for determining validity and claim scope of patents for computer-implemented inventions.
In general, patents claiming computer-related inventions enjoy the full range of enforcement mechanisms. Civil infringement actions for injunctions or damages may be sought. In addition, administrative actions before the Intellectual Property Trial and Appeal Board are available. Although no particular difficulties relating to enforcing patents for computer-related inventions are anticipated, the enforcement value will depend in part on how well they stand up to validity challenges (based on the strength of the prior art asserted).
As stated above, proposed amendments to the Patent Act were introduced which would have made computer program claims (ie, computer programs per se) allowable even without reciting any medium (computer-readable medium or simply medium) storing the program. This would have created infringement liability for anyone selling or transmitting online a computer program that itself was alleged to infringe a computer invention-related patent. Under the existing law, although making, using or selling a computer program stored in a computer-readable medium may constitute infringement of a computer program claim, it is unclear whether an online transaction of a computer program per se (ie, online transmission of a computer program on the Internet, not in a computer-readable medium) would also infringe, since computer program claims in South Korea must specify that the program is stored on a medium. However, according to the proposed amendments, a substantially broader scope of protection would have been given to software inventions and resulted in software patents becoming enforceable against an online transmission of a computer program per se. Although the amendments failed to pass the National Assembly's review stage and were ultimately abandoned on November 23 2015, they sparked many debates regarding whether there is any real need to broaden the scope of protection for software inventions in the face of the reality that computer programs are being transmitted and used online. In some ways, it seems that this amendment was an attempt to update an outdated law that continues to refer to floppy disks and CD-ROMs. The negative response within the software community (eg, software merchants) was strong and thus the revision to the guidelines adding a newly acceptable claim format appears to be a concession made in lieu of passing this amendment.
As an increasing number of applications for computer-implemented inventions have been filed, it is expected that KIPO may take a more favourable position towards granting patent protection in this field and continue to make efforts to amend the law in order to broaden the scope of protection for software inventions.
Although it remains to be seen whether there will once again be another attempt to make similar amendments to the Patent Act and, in turn, how the industry will respond to such amendments (if any), it is at least clear that there is a need for further guidance on software patent protection and enforcement. Yet, with the number of patents for computer-related inventions continuing to rise, increased litigation in this area is also anticipated.
Starting around the early 2000s, the number of software patent applications and issued patents has risen dramatically in South Korea. South Korea, which boasts one of the highest penetration rates and most-developed infrastructure for high-speed internet access in the world, is undoubtedly one of the most attractive places to implement new technology such as cloud-based services. Recently, there has been a flurry of activity in the South Korean start-up scene, with the government making extra efforts to invigorate the economy and lower unemployment rates by providing funding for start-ups. Many of these start-ups are taking advantage of the country's infrastructure and developing software as a service and other services that are likely patentable. This trend is likely to cause the number of applications for computer-implemented inventions to increase significantly and thus patent laws and practices will need to be further reformed to cope with this trend.
For further information on this topic please contact Ho Yeon Lee or ?Stephen T Bang at Kim & Chang by telephone (+822 3703 1114) or email (firstname.lastname@example.org or email@example.com). The Kim & Chang website can be accessed at www.kimchang.com.
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