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| What are the main characteristics of the Korean patent system? |
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(1) First-to-File Rule
(2) Publication of Unexamined Application
(3) Request for Examination |
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| What is the first-to-file rule? |
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Under this rule, regardless of who first invented an invention, a patent for the invention is granted to the person who first files a patent application with the KIPO (Korean Intellectual Property Office). |
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| When is an unexamined application laid open? |
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A patent application is laid open in the official patent gazette after 18 months from the filing of the application (or from the priority date, if relevant).
However, if the applicant requests, the application may be laid open earlier before the passing of 18 months. |
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| Is a request for examination essential to receive an examination of a patent application? |
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Yes. A patent application is examined only when a request for examination has been filed.
Anyone, not only the applicant, may request examination within 5 years from the filing date of the application. If no request for examination is made within the 5-year period, the application is deemed to have been withdrawn. Once a request for examination is filed, it cannot be withdrawn. |
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| How long is the term of a patent? |
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The term of a patent commences upon the registration of the patent and ends 20 years after the filing date of the patent application. |
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| What are the differences between a patent and a utility model? |
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A utility model is similar to a patent in that a utility model registration protects a created technical idea as a patent does.
Both a product and a method can be the subject matter of a patent; however, a utility model registration is allowed only for a product, not a method.
The term of a patent ends 20 years from the date on which the application for the patent was filed, whereas the term of a utility model registration ends 10 years from the date on which the application for the utility model registration was filed.
The deadline for requesting an examination of a patent application is 5 years from the filing of the patent application, while that of a utility model is 3 years from the filing of the utility model application. |
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| In relation to intellectual property, what are the international agreements and treaties to which Korea is a party? |
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(1) Korea joined the World Intellectual Property Organization (WIPO) in 1979.
(2) Korea joined the Paris Convention for the Protection of Industrial Property in 1980.
(3) Korea joined the Patent Cooperation Treaty in 1984.
(4) Korea joined the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs) in 1995.
(5) Korea joined the Trademark Law Treaty in 2003.
(6) Korea joined the Madrid Protocol in 2003. |
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| What is the History of the Korean Intellectual Property system? |
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(1) Korea joined the World Intellectual Property Organization (WIPO) in 1979.
(2) Korea joined the Paris Convention for the protection of Industrial property in 1980.
(3) Korea joined the Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), which was formed as a part of the final agreement of the Uruguay Round of the GATT, in 1995.
(4)Korea joined the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks in 1998
(5) Korea joined the Trademark Law Treaty in 2003.
(6) Korea joined the Madrid Protocol in 2003.
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| What documents are required for filing a non-PCT patent application or entering the Korean national phase under the PCT? |
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(1) Non-PCT applications
We need the following documents from the applicant:
1. a specification including claims;
2. drawings (if any);
3. an abstract; and
4. a power of attorney (general or Special)
(2) PCT applications
We do not need the specification from the applicant, because we can prepare and submit a Korean translation based on the international publication of the PCT application. However, we need a Special or general power of attorney.
(3) an amendment (if desired) |
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| When is the due date for filing a Korean translation of a PCT application? |
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31 months from the PCT filing date (or priority date, if relevant) |
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| What are the requirements for claiming priority? Must a certified copy of the priority documents be submitted to the KIPO? |
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In order to claim priority based on a basic foreign application(basis application), a Korean application should be filed within one year from the filing date of the basis application.
The applicant should specify the basis application, the name of the country in which the basis application was filed, and the filing date of the basis application, at the time of filing the Korean application.
Further, in the case of a patent or a utility model application, the applicant should submit certified copies of the priority documents within one year and four months from the date on which the basis application was filed in a foreign country. However, the obligation to submit certified copies is exempted in the following cases:
(1) Where the basis application was filed with the EPO or JPO; or
(2) Where the basis application was filed with the USPTO and if one of the following conditions is met: i) the application has already been published in the U.S.A. or ii) “Authorization to Permit Access to Application by Participating Offices”(Form PTO/SB/39) has already been submitted to the USPTO.
For a trademark or design application, the applicant should submit copies of priority documents within three(3) months from the date on which the application is filed in Korea. |
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| Should I conduct a search for similar trademarks before filing an application? |
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It is advisable to conduct a search before filing your application. (Our firm has a long established and experienced trademark availability search team that can conduct diverse searches at competitive rate) |
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| Who may file an application? |
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Anyone who uses or intends to use a trademark in the Republic of Korea is entitled to apply for trademark registration. |
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| When can the applicant file a divisional application? |
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A divisional application may be filed within the time period allowed to amend the specification/claims of the original (parent) application.
Therefore, based on a parent application, the applicant may file a divisional application at any time before the issuance of an Office action; if an Office action is issued, within the time limit allowed to respond thereto; and if the application is rejected by the Examiner, within 30 days from lodging an appeal against the rejection. However, the applicant cannot file a divisional application once a decision of patent grant for its parent application has been issued. |
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| When is the due date to respond to an Office action? For how long and how many times can the deadline for responding to an Office action be extended? |
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When the KIPO issues a preliminary rejection of a patent application, it initially gives the applicant two(2) months to respond to the preliminary rejection.
The deadline to respond to the preliminary rejection can be extended in principle for up to Four(4) months, for one or more months at a time.
Further extensions exceeding the permitted four (4) months may be allowed only under some limited circumstances which justify the extensions. |
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| What is the patent reexamination system in Korea? |
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The current Korean Patent Act(KPA) adopts a pre-appeal reexamination system, under which if an applicant receives a final rejection, he or she can file a request for reexamination, along with an amendment of the application, with the KIPO within thirty (30) days from the receipt of the final rejection. That is, the applicant does not have to file an appeal to the Intellectual Property Tribunal (IPT) to dispute an Examiner‘s final rejection. Further, if the application is rejected again as a result of the reexamination, the applicant can file an appeal with the IPT to continue the prosecution. Under the old KPA, no other way was available to dispute an Examiner’s final rejection except instituting an appeal before the IPT.
Pre-appeal reexamination applies to patent applications filed on or after July 1, 2009. Since a Korean patent application usually takes about two years from the date of examination request to receive a final rejection, the new system is expected to be actively utilized from the middle of 2011. |
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| How is the Korean trial and appeal system organized? |
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Appeals against Examiners’ rejections of patent applications and patent invalidation trials are reviewed by the Intellectual Property Tribunal (IPT)(1st instance), then by the Patent Court(2nd instance), and finally by the Supreme Court(3rd instance).
In contrast, patent infringement cases are heard by district courts)(1st instance), then by High Courts(2nd instance), and finally by the Supreme Court(3rd instance). |
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| What types of trials does the KPL provide? |
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(1) Ex-parte Trials
Trial against an Examiner’s Final Rejection of a Patent Application (KPA Article 132ter)
Trial for Correction of a Patent (KPA Article 136)
(2) Inter-partes Trials
Patent Invalidation Trial (KPA Article 133)
Invalidation Trial of Patent Term Extension (KPA Article 134)
Trial to Confirm a Patent Scope (KPA Article 135)
Trial for Invalidation of Patent Correction (KPA Article 137)
Trial for Granting a Non-exclusive License (KPA Article 138) |
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| What is the due date for appealing an Examiner’s final rejection? |
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The applicant can file an appeal within 30 days from the date of receipt of the Notice of Final Rejection. The appeal due date can be extended for 2 months. |
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| What is a trial for patent correction? |
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A patentee may lodge a trial to correct the specification, claims and/or drawings of a patent.
A correction may be made only for one of the following purposes:
to narrow a claim;
to correct a clerical error; or
to clarify an ambiguous description
A correction which broadens the claim scope or alters the gist of a claim is not allowed. Further, a correction made under item i) or ii) above is not allowed unless the thus-corrected claims would have been patentable at the time of the filing of the patent application. |
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| Who can institute a patent invalidation trial? When to file a patent invalidation trial? |
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An invalidation trial may be initiated by either an interested party or an Examiner of the KIPO.
A patent invalidation trial can be requested at any time, even after the patent has expired. |
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| What is a trial to confirm a patent scope? |
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There are two types of scope confirmation trials:
Negative Scope Confirmation Trial: instituted by an interested party such as an accused infringer seeking a decision that his or her product/process falls outside the scope of a patent.
Positive Scope Confirmation Trial: instituted by the patentee seeking a decision that a 3rd party’s product/process falls within the scope of a patent.
Scope confirmation trials should be brought before the Intellectual Property Tribunal (IPT) of the KIPO. Further, a party dissatisfied with the decision of the IPT may appeal to the Patent Court, and thereafter to the Supreme Court. |
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| What is a trial for invalidation of correction? |
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An interested party or an Examiner may demand a trial for the invalidation of a correction of a patent if the correction has been granted in violation of the KPL. |
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| What is a trial for granting a non-exclusive license to a patent? |
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When a later patentee cannot work his patented invention without using an earlier patent of another person, the later patentee may request a trial to obtain a non-exclusive license to the earlier patent under certain circumstances. |
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| Where to find the Korean Patent Gazette? |
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The Korean Patent Gazette is available at the website of the Korea Intellectual Property Rights Information Service (KIPRIS), whose address is www.kipris.or.kr. |
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