In an exclusive guest post, the new commissioner of the Korean Intellectual Property Office (KIPO), Kim Yong-Rae, reveals the agency’s innovative non-core tools and services for trademark users – and those planned for the future.
Over the past few years, WTR has ranked the leading 50 IP offices across the world by the non-core tools and services that they offer. Since the beginning, KIPO has consistently ranked as one of the highest offices in Asia for its approach to innovation – with local users praising its digital tools and forward-thinking approach to public awareness of trademarks.
Today, KIPO Commissioner Kim Yong-Rae writes exclusively for WTR on the innovative services that the agency offers. Officially appointed to the role in August 2020, Yong-Rae has pledged to “lead the office into a complex new era” by establishing “a virtuous cycle of IP creation, protection, and utilization”. Below, he shares insights into how KIPO’s digital tools and services assist in that ambitious goal and reveals some innovations on the horizon.
Innovation insights from the KIPO:
IT and digital tools
Has the office made any significant changes to its website to improve functionality and user experience in the past 12 months?
KIPO runs an online filing website (Patent-ro) for user convenience and the upgraded version of it has been available for public use since 16 March 2020. This improved website now enables our visitors to gather their favourite or most used gadgets on the first page of the website, and provides a simpler user authentication process that is based on a government-issued authentication certificate or digital one-pass.
The number of forms available on the new website has also been increased from 89 to 100, meaning our users can now use a wider range of services from filing to receiving examiner’s notice, paying fees, viewing examination progress and issuing registration certificates on their computer, tablet or smartphone.
As for patent and utility model filing, we have made it possible (as of 30 March 2020) for applicants to submit untypical documents, such as original research papers or research notes, as part of their patent or utility model application. The file formats that are acceptable include ‘.pdf’, Microsoft Word (‘.doc’, ‘.docx’), Microsoft PowerPoint (‘.ppt., ‘.pptx’), Hangul Office (‘.hwp’) and image files (‘.jpg’, ‘.tif’). This way, we help our applicants secure the filing date as early as possible. Before such change, we only accepted applications written and submitted in a set format.
Currently, we are working to develop a mobile version of e-filing services that will empower users to easily file their patent, utility model and design applications, access all forms and pay fees on their mobile devices, with the target of completing it by the end of 2020.
Does the registry offer online filing of trademarks?
Yes, KIPO has offered e-filing services for trademark applicants since 1999 – and the percentage of electronically filed trademark applications was 97.2% as of 2019. In March 2020 we launched a mobile version of the e-filing service through which applicants are able to file their trademark application on their smartphone in just five minutes.
Does the registry offer a searchable database of trademark applications/registrations on its own web platform?
KIPO runs a website (KIPRIS) where our users or the public can search IP data and information including trademarks, free of charge. The website can be accessed through personal computers or smartphones. Furthermore, the trademarks filed or registered in South Korea can also be searched on the EUIPO’s TMview platform.
Beyond trademark filings and search, are there other services that can be managed and completed on the registry’s web platform?
Visitors to our e-filing website can check examination progress on their applications and deadlines for applicant actions in response to office actions, and request and be issued the certificates that they need.
Does the office have an application programming interface (API) to allow third-party software providers to access trademark application/registration data?
Third-party software providers are guided to visit a separate website to access IP data including filed/registered trademarks through OPEN API. Among the data available on the website, some are accessible for free and some are not. KIPO’s e-filing website also offers an API for users to view trademark examination progress.
Has the office introduced any online services that use AI?
As for trademarks, there are no AI-aided online services currently available for the general public. In 2019 KIPO developed an AI-embedded image search test tool which has been made available for use by examiners on our internal trademark search system on a trial basis. This year, we are working hard to further develop the tool for official launch. A customer chatbot service is also currently under development.
Has the office introduced any online or internal services that use cryptocurrency or blockchain technology?
KIPO has established a blockchain-based application intermediate server that distributes and shares filing data to provide 24/7 online application filing services. Currently, we do not have any services that use cryptocurrency.
Does the office offer trademark dispute mediation services?
Yes, we have operated the Industrial Property Right Mediation Committee since 1995, which covers disputes that arise over IP rights (patents, utility model, industrial designs and trademarks), employee inventions, trade secrets and unfair competition activities.
The Committee consists of members with special knowledge or expertise that typically include IP lawyers or patent attorneys in specific fields, professors and KIPO examiners. The Committee does its best to appoint the most appropriate and befitting members as mediators for each mediation case so as to best resolve the dispute.
The mediation services that the Committee provides are free of charge and, if successful, the mediation process is usually concluded within three months. Many individual stakeholders and SMEs find this speedy and economical mediation service effective and useful. Once concluded, the Committee makes a report on the mediation case which provides the same effect as the court’s conciliation order.
KIPO has endeavoured to strengthen cooperation with related organisations including the Public Prosecutor’s Office to promote the use of the Committee’s mediation services. In this regard, we carry out various promotional outreach activities through diverse media such as subway station advertisements, radio and YouTube videos.
Does the registry offer brand/trademark-based financing, or any services involving brand valuation and/or financing?
Yes, KIPO offers financial services that capitalise on intellectual property as intangible intellectual assets. IP-based guarantees, IP-secured loans and IP-driven investments are a few of the most representative IP financing services, and they all are based on IP value assessment. This service is only available for patents at present; however, we have plans to expand IP-driven investment services into industrial designs in consideration of future market demand.
Does the office host IP legal advice information/workshops for SMEs?
Yes, we offer pro bono consultations to SMEs through our assistant centre consisting of 12 patent attorneys about basic IP legal information and how to write and file applications and written opinions in response to examiner’s notice. In dispute cases, the attorneys may provide legal aid, representing the beneficiary businesses during the dispute resolution process.
Does the office partner with enforcement agencies or directly help companies/law firms enforce against counterfeit goods?
KIPO has a team of Special Judicial Police (SJP), which is dedicated to protecting IP rights and enforcement against counterfeiting. Once a counterfeiting case is reported to or recognised by SJP officers, the SJP starts investigating the case and collecting evidence, and conducts on-the-spot clampdowns to seize counterfeit goods. When the counterfeiting involves imported or exported goods, we cooperate with the Korea Customs Service. The SJP also works with local governments or police if necessary depending on the scale of a counterfeiting case.
The SJP also monitors online transactions of counterfeit products. Once it discovers such transactions taking place on online marketplaces, social networking services or portals, the SJP proceeds to work with those online marketplace operators/vendors to suspend sales, delete posts or close the websites (in this case, with the help of the Korea Communications Standards Commission). In terms of the fight against the online distribution of counterfeits, close cooperation with online vendors and marketplace operators is key to success.
Does the office host any trademark education/awareness events aimed at the general public?
KIPO hosts educational and awareness-raising events on trademarks for the general public and shares videos on key trademarks issues through its YouTube channel. We publish a trademark filing guidebook for applicants wishing to file their applications in Korea or overseas, and make the guidebook available online.
Does the IP office use social media to spread IP awareness?
We use Facebook, Instagram and Twitter to communicate with the public about the filing and registration of trademarks, designs and patents. The graphics that highlight the importance of obtaining and properly using IP rights provide users and the public with an easy-to-understand overview of essential IP information. We also post intriguing topics in question format on these accounts to engage with our users in a more interesting way.
Does the office conduct and publicly release research/studies about trademarks or brands?
Yes, we conduct research or studies about trademarks on an as-needed basis, and therefore specific subjects of the studies can vary. Once completed, the study results are made available to the public, except under special circumstances.
Does the office attend non-IP specific events in an effort to spread IP awareness to non-legal audiences?
We seldomly host non-IP specific events; but when attendance is requested by other hosts or organisers, we do our best to give it positive consideration.
Does the registry collaborate with other national IP offices on the development of innovative tools/services?
Yes, KIPO places a high value on collaboration with other national IP offices and has carried out such cooperation in the area of trademarks in a bilateral and multilateral format. KIPO, as a member of the TM5 cooperation forum, works with other partner offices to conduct a comparative study on respective trademark systems or to discuss the latest trademark-related issues. More recently, KIPO cooperated with our TM5 partner offices on adopting new technology-aided examination systems, such as AI-based image search.
Finally, are there any other significant developments planned at the office over the next 12 months?
KIPO continues to operate the TM5 website, together with the other partner offices, in order to provide users with as much useful information as possible about the latest trademark issues or news, including ongoing TM5 projects and annual meeting outcomes. The TM5 offices endeavour to share as much information as possible and are soon going to upgrade the website for better usability and user experience. Furthermore, KIPO will also revise its trademark examination guidelines as part of efforts to accommodate home and overseas user opinion and feedback, as well as the changing trademark landscape.
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