KOREAN PATENT SYSTEM A BRIEF INTRODUCTION

Korean Patent Law was enacted in 1961 in Law No. 950 of December 13, 1961. Since then, it has been amended many times in response to the changing conditions in industry and intellectual property, both domestic and international. The most recent amendments, which are effective as July 1, 1996, were made to harmonize the Korean intellectual property laws with the Trade-Related Aspects of Intellectual Property Rights (TRIPs) Agreement. Of particular note, is the provision of a twenty year patent term. Upcoming amendments include changes to the opposition procedure, effective July 1, 1997, and changes to the trial system, effective March 1, 1998.

Korean Patent Procedure

A. Application Requirements

The following required in a patent application:

Power of Attorney - Signed by the applicant (notarization not required).
Name, Address and Nationality of the applicant(s) and/or inventor(s)
Specification, Claims and Abstract
Drawings, if present. The drawings should be on plain A4 sized paper and include all reference numerals. (If necessary, we are able to reproduce the drawings to confirm to provisions set by Korean Patent Law)
Priority Documents and translation thereof, if there is a priority claim. The priority document and translation may be submitted either at the time of filing or within 16 months from the priority date.
Other Documents - Assignment Certificate and Corporation Nationality Certificate, only if requested by KIPO. Normally, an Assignment Certificate is not required as applicants and inventors have separate status under Korean Patent Law. In addition Information Disclosure statement is not required.

B. First-to-File Rule

The First-to-File Rule states:

If two or more patent applications for the same invention are filed on different days, only the first applicant may obtain the patent for the invention.

In cases, however, where two or more patent applications are filed on the same day, only one applicant designated by agreements of all applicants may obtain the patent for the invention.

C. Formality Examination, Service of Official Filing Receipt

The examiner (Application Division) first examines the application with respect to its compliance with matter of form, the list of requirements outlined above under heading A. If all requirements are in hand, the Official Filing Receipt is issued, the issue taking approximately one week.

D. Early Publication

All patent applications shall be laid open to prevent other from the same research and application at the expiration of one year and six months from the priority date of the application. A provisional right to enforce a patent arises upon laying open a patent application. An amendment to the Korean Patent Law, provides a mechanism for requesting expedited publication prior to the normal laying-open date to allow patent applicants to take advantage of the provisional protection at an earlier date (effective as of July 1, 1996). Therefore, no Statutory Invention Registration is required under the Korean Patent Law.

E. Request for Substantive Examination

The examiner examines a patent application in the order of the examination requests received. Under the old system, if the examiner finds no reason for refusal, he or she shall decide to publish the patent application in the Patent Gazette. Within the two months following the publication, any person can object to the grant of patent for the published invention.

As of July 1, 1997, under the Korean patent system, if the examiner finds no reason for refusal, the application will be granted a patent, and opposition process will take place after the registered patent has been published. If no opposition is raised, the patent will move on directly to the maintenance phase after payment of the registration fee.

F. Opposition Procedure (effective July 1, 1997)

I. Time allowed for filing notice of opposition

Within three months from the date of publication of the registered patent, any person may give notice of opposition to KIPO.

II. Grounds for Opposition

Opposition to a registered patent can only be filed on the grounds based on the following articles of the Korean Patent Law:

Article 25 Capacity of Foreigners

In the case of a patent having a foreign proprietor, opposition may be based on the grounds that the country of the foreign proprietor does not allow Korean nationals equivalent patent rights.

Article 29 Requirements for Patent and Patent Applications

Under this article, grounds for opposition may be based on the fact that the patent does not satisfy the requirements for patents such as novelty or inventive step.

Article 31 Patent for Plant Inventions

In the case for a plant invention, any person who invents a new and distinct variety of plant which reproduces itself asexually may obtain a plant patent therefor. If these requirements are not met, opposition may be raised.

Article 32 Unpatentable Inventions

Opposition may be based on the grounds that the patented invention is liable to contravene public order, morality or injure public health.

Articles 33 Persons Entitled to Obtain Patent

This article states that employees of the Korean Industrial Property Office (KIPO) are not entitled to obtain patents during their employment at KIPO except in the case of inheritance or bequest.

Article 36 First-to-File Rule

Grounds for opposition may be based on the fact that a patent violates the First-to-File Rules as stated earlier.

Article 44 Joint Applications

Opposition may be raised if all the owners (inventors and/or assignees) of the patent did not jointly apply for the patent application.

III. Form and Content of the Notice of Opposition

The notice of opposition must be filed in a written reasoned statement within the time allowed of three months from the date of publication of the registered patent.

G. Decision Process Regarding Opposition

As soon as KIPO receives the notice of opposition, the Examination Board shall transmit a copy of the notice of opposition to the proprietor of the patent and give the proprietor an opportunity to submit a written answer within a designated time limit.

If the Examination Board concludes that the grounds for opposition prejudice the maintenance of the patent, it will revoke the patent. If it concludes that the grounds for opposition do not prejudice the maintenance of the patent as granted, it will reject the opposition

H. Time Period from Examination to Registration

Under the Korean Patent Law's deferred examination provision, it is possible to delay requesting examination for as much as five years. After the request for examination, it usually takes 2-2.5 years for an application to proceed to registration after the request for examination has been filed.

I. Patent Holder's Rights

I. Permanent Provision

a. Korean patents

Korean patents will be granted patent protection which expires after 20 years from the filing date in Korea. The patent right is enforced after the registration of the patent. Accordingly, the level of protection for the 20 years, however, varies according to the following.

From the filing date of the application, all other applications determined to have the same content are disregarded.

Under Article 65 of the Korean Patent Law, from the laid-open date, the applicant may warn a person, who has commercially or industrially worked the filed invention, with a document indicating that the patent application of the invention has been filed. In addition, the applicant may demand a person, who has been warned or worked the filed invention knowing that the invention has been laid open, to pay compensation in an amount equivalent to what he would normally receive for the working of the invention during the period from the warning or the time when the person knows the fact that the patent application of the invention has been filed to the time of the publication of the filed invention. The right to demand compensation, however, can only be exercised only after the publication of the filed application.

From the date of the publication, the applicant enjoys the right as recognized under article 68 (1) wherein the application shall have an exclusive right to commercially and industrially work the invention claimed in the patent application. A patent right, however, shall come into force upon registration of its establishment (article 81 (1)), the patent right being stated under article 94 of the Korean Patent Law.

Thus, it is beneficial to receive the patent registration as soon as possible. Accordingly, the opposition procedure, effective July 1, 1997, as discussed, has been amended to speed up the time from filing to registration wherein the third party opposition is only permitted after the registered patent has been published. After July 1, 1997, however, in accordance with the change in opposition procedure wherein the registration precedes the publication, there will be an amendment to the above stated rights.

Under Article 65, compensation can be demand from the warning or the time the infringing person knew of the laying open of the invention to the publication of the filed invention. After July 1, 1997, it will no longer be "to the publication of the filed invention", but to the registration of the patent regarding the filed invention.

The right to demand compensation can be exercised after the patent registration of the filed invention, and not after the publication date, because Article 68(1) is made obsolete as registration precedes the publication of the patent.

b. International patents

International patent applications such as national phases of PCT applications, will be granted patent protection which expires after 20 years from the filing the original PCT filing date, and not from the entrance date of the National Phase in Korea.

II. Transitional Provision

Any Korean patents still active or pending as of July 1, 1996 are to expire after 20 years from the filing date.

For all patents having a period of protection ending before July 1, 1996 are to expire according to the old law.

J. Amendment Procedure (As of July 1, 1997)

I. Time for Amendments

An applicant may amend any specification or drawings to the extent that it does not change the gist of the specification or drawings as originally filed within one year and three months from its actual filing date in Korea (or from the earliest priority date, if priority is claimed).

After the expiration of one year and three months from its actual filing date in Korea (or from the earliest priority date, if priority is claimed), but before the registration of the patent, an applicant may amend the specification or drawings only in any of the following cases:

At the same time as a request for examination.
Within the time limit designated for submission of the response
Within 30 days from the filing date of a request for trial against final rejection.

II. Scope of Amendments
Before the decision to grant a patent, the amendment is permissible within the gist of the specification or drawings, as originally filed. After the decision to grant a patent, only the following types of amendments are permissible:

Reduction of the scope of the claims;
Correction of typographical or grammatical errors; or
Clarification of ambiguous descriptions.

K. Patent Litigation

As of March 1, 1998 a patent trial institute and a patent court will be established in Korea, changing the procedure of patent litigation.

In the current patent trial (litigation) system, for first instance trials, the examination or judgment is conducted by trial board of KIPO. Should an appeal be desired regarding the examination or judgment, the case is brought before the appellate trial board of KIPO, who conducts a subsequent examination or judgment of the case. If the person is not satisfied with the decision of appellate trial board, he may appeal to the Supreme court.

After March 1, 1998, the trial board and appellate trial board in KIPO will be merged into a newly established patent trial institute. Accordingly, the examination of the two stages in the trial board and an appellate board in KIPO will be done in the new patent trial institute which is independent from KIPO. An appeal from the decision of the examiner in the patent trial institute would become under the exclusive jurisdiction of the new established patents court (corresponding to the Court of Appeals for the Federal Circuit of USA), being totally independent from KIPO. Should a decision from the patents court be dissatisfactory, the case may be brought before the Supreme Court.

PCT, Utility Models, Trademark and Design Application Requirements

A. PCT Application (National Phase in Korea)

For Entrance into the National Phase in Korea, the following is required:

A copy of the PCT request form (PCT/RO/101 form) including international filing date, and information about applicant and inventor(s).
Korean Translation of the Specification, Claims and Drawings - For entering the national stage in Korea, the above must be submitted within: (1) 30 months of the earliest priority date if an international preliminary examination has been requested; or (2) 20 months of the earliest priority date if no international preliminary examination has been requested.
Priority Document and Translation thereof - The translation should be submitted within two months of the date on which the KIPO announces its receipt in Korea of the certified copies of the priority documents. We, however, can prepare the translation from the copies of the priority documents borrowed from KIPO, once the receipt thereof has been announced.
Request for examination should be made within 5 years from the International Filing date.

B. The Utility Model

If an invention is not sufficiently creative or inventive to obtain a patent, protection may be available under the Utility Model Law. A utility model registration is quite similar to a patent. The basic differences between a patent and utility model, in brief, are that the subjects of a utility model are the shape or the construction of an article, or combinations thereof, and that the duration of protection of a utility model is 15 years from its filing date, which is five years shorter than that of a patent. A process or method cannot be protected under the Utility Model Law. However, there is no substantial difference in terms of procedure or legal protection. A utility model application may be converted to a patent or design application, or vice versa.

C. Trademarks

Any person who desires to have a trademark registered shall submit to the Commissioner of the KIPO an application for trademark registration, stating the following matters.

Power of Attorney - Signed by the applicant (notarization not required). Late filing is permissible up to two months with late filling fees being applicable.
Name, Address and Nationality of the applicant(s)
Specimens of the trademark - 10 copies, 7cm x 7cm in size or smaller
A detailed list of goods to covered under the mark - If the total number of goods exceeds 10 items, and additional official surcharge for each additional item.
Priority Documents and translation thereof, if priority is being claimed. Priority can be claimed within six months of the first filing date, and priority documents and the translation thereof should be filed within three months of the filing date in Korea.
No examination request required.

D. DESIGNS

Any person who desires to have a design registered shall submit to the Commissioner of the KIPO an application for design registration, stating the following matters.

Power of Attorney - Signed by the applicant (notarization not required). Late filing is permissible up to two months with late filling fees being applicable.
Name, Address and Nationality of the applicant(s) and/or creator(s)
Description of the article to which the design is applied.
Drawings. The drawings must show six views of the article: front elevational view; rear elevational view; left side elevational view; right side elevational view; top view; and bottom view. Photographs, a model, or a sample of the design may be submitted in substitution for the drawings.
Priority Documents and translation thereof, if priority is being claimed. Priority can be claimed within six months of the first filing date, and the priority documents and the translation thereof should be filed within three months of the filing date in Korea.
No examination request required.

Last updated on Martch 15, 2006 Designed by Yuil