[Question]

In case when a patentee plans to apply to own products a particular technology, which is patented in some countries other than Korea, and he would like to use it in its projects such as "EXCLUSIVE PATENTED XXXXX TECHNOLOGY" on a small part of the product:

Q1. Although the technology is not patented in South Korea, is it possible to use this wording even on products intended for these markets?

Q2. Would it be useful to add on the packaging a label containing general information relating to the technology and a link to a webpage containing all the details of the intellectual property, including the countries really covered by the patent, or at least putting the details in the label itself?

Q3. The issue is that the product in question is a pair of spectacles, and – as you know – there is not enough space to put all the IP details onto it. However, there is no possibility of producing spectacles with different details depending on the market they are intended for. Do you envisage any possible alternative to the first two questions?

[Answer]

The above inquiries are about the intellectual property rights marking system. It refers to the act of displaying intellectual property registration (application) on things for which intellectual property rights have not been registered (application) or making a mark that is easily confused with it (including the act of displaying on advertisements, signboards, etc.).

Administrative procedures for false marking of intellectual property rights are currently as follows. Intellectual Property False Marking Reporting Center provides information on violations and corrections by phone or e-mail. And if a correction is not made, it will be notified twice that administrative measures will be taken. However, if correction is not made, criminal charges will be filed with the prosecution, and it is stipulated that up to three years in prison or a fine of up to 30 million won will be imposed.

Relevant laws - In case of violation of Article 224 of the Patent Act., Article 44 of the Utility Model Act., Article 224 of the Trademark Act, and Article 215 of the Design Protection Act., punishment is possible by Article 228 of the Patent Act., Article 48 of the Utility Model Act., Article 233 of the Trademark Act., and Article 222 of the Design Protection Act, respectively.

The Korean Intellectual Property Office published the "Guidelines for Marking Intellectual Property Rights." The guidelines show the following types of false marking of intellectual property rights:

1. Marking an intellectual property rights registration (application) number that can not be applied to the product or marking a non-existent intellectual property registration (application) number.

2. Marking intellectual property rights on a product even though registration of the intellectual property rights has been rejected.

3. Marking intellectual property rights on a product even though the intellectual property rights have expired due to the expiration of the term of existence.

4. Marking a registration for intellectual property rights on a product of the pending application process.

5. Marking intellectual property rights based on the incorrect names of the intellectual property rights (e.g., in case of displaying a patent even though only a utility model has been registered).

6. Marking an application for intellectual property rights even though the application for intellectual property rights is not pending.

In veiw of the above:

A1. If "EXCLUSIVE PATENTED XXXXX TECHNOLOGY" is indicated on a product that uses technology that has received a foreign patent but is not patented in Korea, it may violate Article 224 of the Korena Patent Act and may be punished under Article 228 thereof.

A2.  If the information is true, it is not a problem to add on the packaging a label and a link to a webpage. However, this can not solve the problem of false marking of the intellectual property rights on the product.

A3. Incorporating a technology that links to the source of information, rather than directly writing the information on a small part of the glasses, could be a viable option.

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