As readers of this blog know, the Korean Intellectual Property Office (KIPO) offers a “super speed” fast track program for patent applications directed to green technology inventions.
However, to qualify for this program the invention must have received funding orÂ a green certificationÂ from the Korean government, and only Korean corporations are eligible to petition for the certification.Â
In other words, if anÂ applicant from the U.S. or any other country wishes to receive the benefits of the one-month fast track program and has not received Korean government funding,Â the applicantÂ would have to register as a business entity in Korea to petition for the certification.
Since a patent applicant is required to submit the green technology certificate to apply for the one-month fast track program, aÂ non-Korean patent applicant who cannot petition for the certificate before registering as a Korean business entity is, in effect, forbidden from applying for the one-month fast track program.
ThisÂ different treatment of non-Korean applicants may be a violation of certain international treaties relating to trade and intellectual property, particularly Trade-Related Aspects of Intellectual Property (TRIPS) and the General Agreement on Tariffs and Trade (GATT).
Members of the World Trade Organization (WTO) such as Korea are bound byÂ TRIPS and other multilateral treaties, e.g., GATT, which constitute an integral part of WTO agreements.Â
Under Article 3.1 of TRIPS,Â the national treatment obligation, a memberÂ â€œshall accord to nationals of the other Members treatment no less favorable than it accords to its own national with regards to the protection and enjoyment of intellectual property.â€
Article III:4 of GATT lays out a similar national treatment obligation.Â According to the jurisprudence of GATT Art. III:4, if there is a detrimental effect on an imported product resulting from a procedure implemented by a member state, and that detrimental effect is not explained by factors or circumstances unrelated to the foreign origin of the product, the procedure implies less favorable treatment to imports.
Although patent applications and IP rights are not “goods” the basic principles of GATT are applicable to TRIPS.Â Furthermore, since the national treatment obligation has long been a cornerstone of the WTO and a fundamental principle underlying GATT, the jurisprudence on GATT Art. III:4 is useful in constructing the national treatment obligation of TRIPS Art. 3.1.
The recently signed U.S.-Korea Free Trade Agreement (UKFTA) may also be relevant here as it mimics the language of TRIPS Art. 3.1 in UKFTA Art. 18.6 (â€œIn respect of all categories of intellectual property â€¦ each Party shall accord to nationals of the other Party treatment no less favorable than it accords to its own nationals with regards to the protection and enjoyment of such intellectual propertyâ€¦â€).Â Â Â
Here, applicants for the KIPOâ€™s one-month fast track program who are foreign nationals must go through the additional hurdle of registering with the Korean government as business entities (e.g., individual business owner, or corporation) to petition for green technology certification.Â
Arguably, KIPOâ€™s implementation of the one-month fast track program constitutes less favorable treatmentÂ toÂ non-Korean applicants, since they cannot apply for the program due to their status as foreign nationals, while Korean business entities can apply for the program and receive the benefits of early patent grants.Â
KIPOâ€™s practice of subjecting foreign applicants to the additional procedure of registering as a Korean business entity before theyÂ can receive the benefits of the one-month program may constitute â€œless favourable treatmentâ€ accorded to foreign nationals.Â
Accordingly, current KIPO practice of requiring a green technology certificate in order to apply for the one-month fast track programÂ may be a violation of TRIPS Art. 3.1 and UKFTA.
*Ji Young Park is a J.D. candidate at Notre Dame Law School, Senior Article Editor for Notre Dame Journal of Legislation, and a Korean patent attorney.