Patent disputes and case study 2

  Today, we will learn about intellectual property rights, especially “methods of redress in case of patent disputes, case study 2 and cases of success and failure”

 

1. Case study

  A and B were in competition, and A was selling the product after completing a patent application and registration for a pump (Invention a). B improved A's product, applied for patent b, and started selling the product after registration. a and b competed in the same market, but the market was monopolized by B due to the improvement in the product b. In response, A sent a warning letter to B, and B sent a response letter, leading to A filing a criminal complaint against B. A asserted the scope of rights to B, and B also asserted the scope of his patent rights. In the criminal trial, a decision was made to suspend the prosecution against B (B was selling their patented products without infringement intention to A). Then, A claimed that B obtained a patent for a product that should not be patented, and filed a trial for invalidating B's patent. In this process, B's patent was actually invalidated. Later, the Supreme Court also ruled that B's product infringed on A's patent. Then, this time B filed a patent invalidation trial stating that A's patent was invalid, and ultimately, patent A was also invalidated.

  Who will benefit in this case? Neither A nor B benefited but a third party in the same technology market. What left to A and B wereonly economic and social damage. As such, patent disputes do not know what the outcome will be, so before a dispute arises, it is necessary to defend one's position well through sufficient data research on one's own and the other's patents.

 

2. Five examples of success and failure of invention

  1) Case of giving up business because it was his/her own invention but did not apply for a patent: In 1995, C invented an invention of attaching a cooling device to a military cap using a solar cell, but did not file a patent application. When he tried to export his products, he discovered a patent issued by a Japanese in 1997. He considered a patent invalidation lawsuit, but failed to collect sufficient evidence that he had invented and used it since 1995, so he could not even request a patent invalidation trial. In the end, C gave up on exporting his products.

  2) Cases of manufacturing and selling products without securing patent rights, resulting in huge losses: In 1948, Polaroid invented the instant camera, and in 1976, Kodak began to sell their instant camera. At this time, Kodak decided that Polaroid's patent would be outdated and invalid, so it would not be an obstacle to the production and sales of their products. Of course Polaroid filed a patent infringement suit against Kodak, and in the end, the US Supreme Court ruled that Polaroid's patent was not invalid, causing enormous economic and social damage to Kodak. A similar case occurred in Korea, too. American Kimberly Clark company issued a patent for baby diapers in Korea (1993). And in 1995, the Korean Yuhan-Kimberly Company was granted the right to conduct due diligence exclusively for patent rights. Yuhan-Kimberly's baby diapers almost dominated the Korean market, and as a result, rivals Ssangyong Paper and LG Household & Health Care took advantage of Yuhan-Kimberly's technology. Ssangyong also filed a trial to invalidate Kimberley's patent, but lost. In the end, it left huge economic damage to both Ssangyong Paper and LG Household & Health Care.

  3) Case of abandonment of overseas export due to negligence of overseas patent application: Company D, an automobile parts company, applied for a patent related to an exhaust pipe connector in Korea in 1993 and also applied for a patent in the United States, Mexico, and Germany. Afterwards, it began export consultations with GM in the US. And in 1995, GM applied for a PCT international application for a patent similar to that of Company D. Due to GM's entry into Europe, Company D was unable to advance into other European countries except Germany.  

  4) Case of failure to exercise the right because the specification was not written properly at the time of patent registration: E developed a safe glass door protector that does not get hurt even if ones’ fingers are caught between the glass doors, and secured the patent right in 1998. However, in the market, similar products made by other companies dominated the market, and E's business almost failed. In response, E filed a lawsuit to prohibit infringement of the patent, but the specification at the time of filing was wrong (the elements of the claim were too limited) and it was impossible to take legal action against the infringing product.

  5) Successful case by securing competitiveness in patent application: Rentro developed an optical cable multi-channel duct and filed an international application in 105 countries through PCT system. Later, it grants due diligence rights exclusively for patent rights to local companies and raises profits by receiving royalties.

 

  Today, we discussed intellectual property rights, in particular, “methods of redress in case of patent disputes, case study 2, and cases of success and failure”. Next, we will talk about “patent information and patent publications (Korea, US)”.

 

 

*I am a student learning IP, not an IP expert. Translation is also by Google translator and my own, insufficient English skills. I wanted to deliver the IP related contents in the perspectives of a student. I hope my blog helps people like me.

 

*The above is what I learned from Professor Moon's intellectual property lecture, which can be viewed through K-mooc. Here is the link to the lecture (you may not be able to view it without logging in).

kmooc.kr/courses/course-v1:YeungnamUnivK+YU21900+2021_01/course