Decision in Korean Intellectual Property Office regarding a Korean Design Patent
Nichia Corporation announced today that it confirmed that the Korean Intellectual Property Office had rendered a decision on December 6, 2006, to affirm Baron Tech Co., Ltd.'s request to cancel Nichia's Korean Design Patent No. 294490-2 ("Design Patent"). Prior to the decision, Nichia had already abandoned the Design Patent on December 1, 2006. Because the decision is based on the unique design patent system and procedural requirements in Korea, it will not have any impact on the validity of the foreign counterparts in the US, Taiwan, Japan or China.
In the prosecution history for the Design Patent, the KIPO examiner instructed Nichia to relate the Design Patent to another Nichia design patent in Korea, because the examiner viewed the two designs as similar to each other. Nichia elected to follow the examiner's instruction and designated the Design Patent as a so-called "Related Design."
Later, the cancellation action was filed against the Design Patent. The reason given for the cancellation action was that the Design Patent was incorrectly granted as a Related Design, which is supposed to be available only for similar designs, because the Design Patent actually is not similar to the other Nichia design patent in Korea. In other words, the cancellation action argued that Nichia should not have elected to follow the examiner's instruction. The KIPO decision affirmed the allegation and rendered the Design Patent invalid. Actually, this decision simply confirms that Nichia's original position was right-the position that the Design Patent is not similar to the other design patent and should have been registered as an independent design patent. In other words, the decision clearly shows that the Design Patent was not invalidated if it had been correctly registered as an independent design patent, as Nichia originally intended when filing the Design Patent.
However, after the cancellation action was filed, Nichia carefully examined the issues and concluded that maintaining the Design Patent would be difficult under the unique design patent system in Korea. Nichia thus decided to abandon the Design Patent before the decision is made.
Because the foregoing decision was based on a very particular and peculiar circumstance where the Design Patent was incorrectly legally related with the other, dissimilar design patent, the decision will not have any impact on the validity of the foreign counterparts in US, Taiwan, Japan or China where such circumstances do not exist. In fact, Nichia is suing Seoul Semiconductor Co. Ltd. in U.S. and is also suing two Taiwanese manufacturers in Taiwan with foreign counterparts to the Design Patent. These lawsuits are currently pending.
Other than the Design Patent that was abandoned, Nichia has numerous valid intellectual property rights in various countries including Korea. Nichia is vigorously acting against infringement on its intellectual property in any country.
Public Relations, Nichia Corporation