South Korea: changes to the rules for the online transmission of software

A major amendment to the Korean Patent Act to broaden the scope of method patents to cover online transmission of software was passed by the National Assembly in November 2019.

The amendment adds the act of “offering a process for use” to the acts that are considered to practise a method patent. If the act of offering such a process for use is made with knowledge that the process infringes the method patent, the patentee may enforce the patent against the acts, including acts of online transmission of a program from abroad.

Under the existing Patent Act, software inventions are patentable subject matter only if the claims of the software invention are directed to certain statutory categories of invention, which are limited to a “method”, “apparatus”, “computer-readable medium (having computer program or data recorded thereon)”, and “computer program stored on a storage medium”.

Further, the claims must recite involvement of concrete hardware means and interaction with software.

With the advent of the internet and mobile devices, most software products are no longer recorded on computer media and sold to consumers. Instead, software is typically made available for users to download over the internet onto their computers or mobile devices.

Traditional statutory invention categories have been seen as inadequate to protect modern software inventions, particularly where the software distributor is in a foreign country beyond the reach of the South Korean courts.

However, court cases have been divided as to whether the online transmission of a program constitutes the practice of a patented method under the existing Patent Act.

Offering a process

The amended Patent Act adds provisions that extend the meaning of “practising” a patented invention to expressly cover the act of offering a process for use (amendments underlined):

Article 2, paragraph (iii): “Practice” means the following acts:

(a) (omitted)

(b) In the case of a process invention: an act of using the process or an act of offering the process for use

Article 94 (effect of patent right)

(1) (omitted)

(2) If practising a patented invention is an act of offering a process for use according to article 2(iii)(b), the patent right shall affect only the act of offering the process for use with knowledge that the use of the process infringes the patent right or an exclusive licence.

The amendments in article 2, paragraph (iii) and article 94, paragraph (2) clarify that a process invention can be infringed both by using the process and by “offering the process for use”.

Article 94 paragraph (2), however, adds a subjective “knowledge” requirement to acts of offering a process for use in order to find infringement of the patent right or an exclusive licence. In other words, the patent would be enforceable against such acts only if the actor knows that the use of the process would violate a patent or exclusive licence.

The new provisions resemble the patent law in the UK, where the English High Court, Patents Court, has held that “an offer of a computer program may be an offer of a process for use” (Research In Motion UK v Inpro Licensing [2006]).