An amendment to the Korean Patent Act (KPA) that stipulates an act of “offering a process or method for use” as a statutory mode of practicing a patent covering the process or method went into effect on March 11, 2020. Under this revision, therefore, an unauthorized act of transmitting software online has now become actionable if the transmitted software is covered in a patent.

▶Background of KPA Revision 

Since software is normally regarded to consist of a series of instructions, it is essentially protected as a method invention under the KPA. However, legal protection accorded under the (pre-revision) KPA against an unauthorized act of selling or distributing software has been hitherto insufficient because, unlike substance/product inventions, the KPA used to define the act of using the method as the sole mode of practicing the method invention. 

To compensate or ameliorate the deficiency, the KIPO has tried to provide software patents with protection equivalent to the protection given to product inventions by allowing software claims to be written in the form of a computer-readable medium having a computer program or data recorded thereon, or a computer program stored on a storage medium.  

In reality, however, software is primarily being disseminated through online transmission rather than circulated in the form of a storage medium such as CD or USB; therefore, the KIPO’s storage medium approach has been considered inadequate or ineffective. Further, suggestions have been made that, --without much success--, in order to complement the inadequacy, an act of practicing a software invention should be expansively interpreted to encompass an act of transmitting software online. These have buttressed the need to legislate the statutory amendment. 

Not everyone has been in favor of the enlargement of software patent protection, however. Some software developers have voiced their concern against the expansion of patent protection to cover an act of transmitting software online, for the reason that such expansion may adversely affect the current practice of actively disclosing or sharing, e.g., source codes online among the developers, owing to the fear of patent infringement claims, thereby impeding innovation and development activities in the software industry.

▶Revision to KPA 

The amendment to the KPA expands the meaning of “practicing” a method invention to expressly include an act of offering a method or process for use. 

Specifically, Article 2(iii) has been revised so that the term “practicing” shall, inter alia, mean: 

(b) in case of a method invention, an act of using the method or an act of offering the method for use.

Further, in response to the concern that such expanded protection of software may rather hamper the innovation activities involving software, discussed above, the extension of patent rights through this amendment is limited by imposing an intent requirement, as follows: 

Article 94(ii)  

If working a patented invention is an act of offering a method for use under Article 2(iii)(b), the patent right shall be effective or enforceable only when the act of offering the method for use is intentionally made with the knowledge that the use of the method infringes the patent right or an exclusive license thereof.

▶Outlook

Under the revised KPA, it has now become clear that an act of online transmission of software, the use thereof falling within the scope of a patent directed to the software, may be held to infringe the method patent. As a result, it is expected that the number of software patents will increase in light of the heightened enforceability.  

Further, since the intent requirement, newly instituted in the revision, has to be met in a patent enforcement action against online transmission of software covered in a patent, a software patent holder may be well advised to send a cease-and-desist letter prior to initiating the patent enforcement action.