The Korean Patent Act (KPA) was first enacted on December 31, 1961 as Law No. 950, and has undergone nineteen revisions since then. The current version of the KPA, which took effect on July 1, 2002 as Law No. 6626, is composed of 12 Chapters and 232 Articles. Korea has adopted the "First to file" rule and the"Request for examination" system, including the"laying-open" system, for the protection of inventions. Under these systems, a party who first files a patent application with the Korean Intellectual Property Office (KIPO) will obtain patent rights. Korea is a member of the World Trade Organization, the Paris Convention, the Patent Cooperation Treaty, and the Budapest Treaty of the International Recognition of the Deposit of Microorganisms. Therefore, the filing of applications based on those treaties is fully recognized in Korea.
To apply for a patent in Korea, one must file application documents as prescribed by the patent legislation. However, persons having neither domicile nor residence in Korea (or a business establishment in the case of a legal entity) must file an application through a patent administrator (representative in Korea, e.g. patent attorney) having a domicile or residence in Korea (Art. 5). This is to facilitate communication between the applicant and the Patent Office.
1. First-to-File rule
If a plurality of applications claiming the same invention are filed, only the earliest filed application has the right to be patented, regardless whether the inventors or applicants are identical or not (Art.36). The First-to-file rule also applies when comparing inventions of a patent application vs. a Utility Model (U.M.) application, except in the case of a dual patent/UM application.
2. Application with Priority under Paris Convention
Persons wishing to claim priority under Article 4D (1) of the Paris Convention must take the following action (Art. 54), except in the case of entering the national phase under the PCT.
Simultaneously with the application, a document must be filed specifying the name of the country party to the Paris Convention in which the application was first filed, and the date of filing of the application in that country.
Documents including a copy of the application certified as correct issued by the original filing country must be presented to the KIPO within one year and 4 months from the earliest priority date.
3. Application with Priority Based on Patent Application, etc. (Domestic Priority)
There is a system of domestic priority in Korea. This system has been effective as from September 1, 1990 (Art. 55).
Under the domestic priority system, a later filed application may claim priority for matters already disclosed in an earlier application which was filed within 12 months prior to the filing of the later application by the same applicant. The applicant of the later application must indicate the earlier application and the effect that priority is being claimed. When priority is claimed, the earlier application will be deemed withdrawn after 15 months have elapsed from its filing date.
If an improvement claimed in the later invention is obvious from the invention claimed in the earlier application, and the two inventions are substantially identical, it would be advisable for the applicant to claim domestic priority when filing the later application in order to avoid rejection.
4. PCT Application
Where an applicant furnishes the request, etc. of an international application to the receiving office or International Bureau and designates any Contracting state (the designated State) of the Patent Cooperation Treaty for protection of inventions, the international application is accorded an international filing date by the receiving Office and has the effect of a regular national application in each designated state as of the international filing date, which date is considered to be the actual filing date in each designated state (Art. 11) of the PCT. An international application can contain priority claim(s) under the Paris Convention.
Therefore, if an international application is filed in one of the languages admitted by the receiving office, it is not necessary to file separately in the Patent Office of each Contracting State and region or to translate the description at the time of filing the international application.
5. Divisional Application
A divisional application is allowed where a patent application covers two or more inventions. If the divisional application satisfies the requirements below, it is deemed to have been filed at the time of filing of the original application.
A divisional application may be filed during the same period when amendment is allowed. The period when divisional application can be filed is also extendible to the same extent that the opportunity to amend is extendible.
Formality requirements
Division of an application must be made at the prescribed time or within the prescribed period. The prescribed time or the prescribed period is the same as that allowed for amending the specification or drawings of the original application.
Division of the application must be made by the applicant of the original application.
Substantive requirements
The claimed inventions of a divisional application may not comprise all the inventions disclosed in the original specification or drawings of the original application at the time of division. In almost all cases, two or more inventions are disclosed in the original specification or drawings and this requirement is satisfied.
The claimed inventions of the divisional application may not contain matters which are not within the scope of the features disclosed in the specification or drawings of the original application at the time of filing.
6. Requirements for filing Patent Application
The following documents and information are required for filing patent in Korea.
The name, address and nationality of the applicant and inventor If the applicant is a corporation, the name of a representative of that corporation is also required.
A Power of Attorney (POA) form, signed (or sealed) by the applicant From January 1, 1999, a General Power of Attorney as well as a separate POA is acceptable by KIPO for the filing and registration of patents, utility models, designs and trademarks. Neither notarization nor legalization of the Power of Attorney is required. The name and title (if the applicant is a corporation) of the person whose signature (or seal) appears on the Power of Attorney must be typed. If a General Power of Attorney is filed at KIPO, the applicant need not file a POA again as long as the applicant's name and address thereon remain unchanged for all future applications. The Power of Attorney should be submitted to the KIPO within one month from the date of the mailing of the invitation from KIPO notifying of the missing document.
A notarized Certificate of Corporation/Individual Nationality KIPO may request that this document be submitted when the applicant's address and nationality do not correspond, or when the applicant is a juridical person, but no indication of the juridical status (e.g. Inc., Ltd., etc.) is included in the applicant's name.
Specifications, claims, abstract, and formal drawings The specification, including claims, abstracts, and IPC codes are required. Patent applications may be filed either on-line, by a floppy disk or a paper copy. Specifications written in English, Japanese, Chinese, German or French is acceptable in our firm, and specifications written in languages other these five should be accompanied by an English translation. Formal drawings must also be filed at the time of filing the application.
Priority Documents Basic filing particulars of any foreign applications (including the application number, filing date and the name of the country) on which a claim of priority is based are required, along with a certified copy of the priority document. A convention patent or utility model application must be filed in Korea within one year from the filing date of the basic foreign application. A certified copy of the priority document must be submitted to the KIPO within sixteen months from the priority date.
Legislative revisions effective from July 1, 2001, mean that submission of the priority document will not be necessary when the earlier application has been filed in a country recognized by the KIPO Commissioner. Up to now, Japan has agreed with Korea to exchange priority documents on behalf of their applicants, and additional patent offices in other countries are expected to agree to exchange priority documents with Korea. Also from July 1, 2001, applicants may rectify the information related to the earlier applications provided or add one or more priority claim(s) within 16 months from the earliest priority date. The same safeguard is provided under the Patent Cooperation Treaty.
1. Laying-open to Public Inspection
An amendment may be made at any time before the patent applicant receives a certified copy of a decision to grant the patent or a notice of rejection. If a notice of rejection is received, an amendment may be made only within time limits designated for submission of a response.
2. Notification of Reasons for Rejection
If any reason for rejection is found in the process of examination by an examiner, that examiner formulates a notification of rejection for rejection and sends it to the applicant (where the applicant has appointed a patent administrator (e.g. patent attorney), the notification is sent to the patent administrator) (Art. 62 & 63). On receipt of a notification of reasons for rejection, the applicant may present a written argument and/or an amendment (if necessary) within the designated due date (2 months from the date on which the notification is issued, but three extensions of one month can be obtained by request) in order to resolve the reasons for refusal.
For applications filed before July 1, 2001
Amendment may be made at any time until expiration of fifteen months from the filing date (for applications claiming priority, fifteen months from the earliest priority date). Subsequently, amendments may be made only when responding to an office action, when requesting an examination, or within thirty days from the demanding date of a trial against a final rejection.
Prior to the transmittal of a certified copy of the decision to grant a patent, an amendment to the specification or drawing(s) is permitted within the scope of the features disclosed in the specification or drawing(s) originally attached to an application request.
If an amendment is submitted in violation of the above, the examiner rejects the amendment by a ruling. The applicant may appeal to the Intellectual Property Tribunal (IPT) of the KIPO against the ruling to reject an amendment. Where, after registration of the establishment of the patent right, it is found that an amendment has changed the subject matter of the application, the application is deemed to have been filed at the time when the amendment was made.
For applications filed on or after July 1, 2001
An amendment may be made at any time before the patent applicant receives a certified copy of a decision to grant the patent or a notice of rejection. If a notice of rejection is received, an amendment may be made only within time limits designated for submission of a response.
3. Decision of Rejection
A decision of rejection is made if the reason(s) for rejection found by the examiner in charge are not resolved by written argument or amendment presented by the applicant (or no response is made by the applicant) (Art. 62).
4. Appeal against a Decision of Rejection
On receipt of a certified copy of a decision of rejection, letting it stand will mean that the decision for rejection will become final and conclusive. If the applicant is dissatisfied with the decision, he/she may appeal to the IPT of the KIPO within 30 days (extendible by 2 months for residents of foreign countries) from the date of receipt of the certified copy of the decision (Art. 132-3).
5. Reexamination of an Application Prior to Trial Examination
When an amendment is presented by the applicant at the time an appeal is filed against a decision of rejection, the examiner who was in charge of examination of the application concerned is assigned to reconsider the application (Art. 173).
6. Decision to Grant a Patent
If, during the patent examination, the Examiner finds no reason to reject the application, a Notice of Allowance is issued, wherein the applicant must then pay the required registration fee to the KIPO within a period of three months after receiving the Notice. The KIPO will publish the application in the Official Gazette to allow opportunity for opposition within three months from the publication date. The term of a patent right is twenty years from the filing date or international official filing date, and ten years for a utility model.
7. Post-grant Opposition System
In order to ensure the prompt granting of patent right, the pre-grant opposition system was abolished in favor of a post-grant opposition system as of July l, 1997. An outline of the post-grant opposition system is as follows:
Any party can raise an opposition.
The term allowed for the opposition is three (3) months after public notice of the granting of the patent, however, the grounds for opposition and evidence therefor may be amended within 30 days after expiration of the time limit for opposition.
Opposition can be raised on grounds including the following:
lack of novelty,
lack of inventive step,
insufficient description, etc.
Multiple oppositions, if raised, may be consolidated.
A patentee who suffers from revocation of his patent as a result of an opposition may appeal to the IPT of the KIPO.
During the opposition procedure, correction of the patent may be made. After the patent right is registered, a correction of the specification or drawing(s) of a patented invention may be made only to narrow the claim(s), correct clerical errors, or clarify an ambiguous description. In cases of correcting the specification or drawing(s), the claims may be neither extended nor modified substantially. In case of correcting the specification or drawing(s) to narrow the claim, the matters which are described in the claim after correction must have been patentable at the time of filing of the patent application.
Other matters
- The opposition may be raised claim by claim.
- The opposition examiners may examine, on their own initiative, other reasons for revocation.
Revisions to Korean Patent and Utility Model Acts have been passed to take effect from July 1, 2001.
1. Novelty
The revised laws have made it clear that disclosure on the internet before the priority date will lose the novelty of the invention. The revised Patent Act also recognizes that the grace period of six months, which was allowed for a patent application which was known by the applicant before the filing date in Korea, applies to both the inventive step provision as well as the novelty provision. In other words, the grace period applies to a patent application which is not the same as but improved from the invention known by the applicant.
2. Amendment to the Specification or Drawings of Pending Applications
The new Patent Act allows the patent applicant to amend their specification or drawings before receipt of the first office action. However, the scope of amendment has been narrowed to the text of whether a "new matter is introduced" from the current text which is whether "the gist of the invention" is changed by the proposed amendment.
3. Appeal to the Examiner's Decision of Unacceptable Amendment
Under the new law, the Examiner will reject the application itself when the proposed amendment is found as unacceptable. Then the applicant may argue the acceptance of the amendment as well as the patentability of the invention before the Patent Trial Tribunal.
4. Amendment to Patented Claim
The new law allows the patentee, whose claim(s) is contested during an invalidation proceeding, to request an amendment of the contested claim(s) before the Patent Trial Tribunal board which is hearing the invalidation trial, as a kind of a defense to the invalidation request. Under the Korean Patent Act, the Patent Trial Tribunal has an exclusive jurisdiction of invalidation of and/or amendment to patented claims as the first instance tribunal, and in the past, the trial for amendment and the invalidation trial were generally heard before different boards. The limitation on the forum for hearing the patentee's request for amendment to patented claims will expedite the procedures for patent invalidation and infringement disputes.
5. Enhanced Protection of Patentee
In Korea, patent infringing activity is punishable as a crime, and the new law raises the criminal penalty from five (5) years to seven (7) years imprisonment, and the criminal fine from 50 million Korean won to 100 million Korean won. In a damages suit based on patent infringement, the patentee is required to show the amount of damage caused by the infringing activities of the defendant. The new law ameliorates the patent owner's burden of showing damages by allowing the calculation of damages based on the number of unit products sold by the infringer and the patentee's cost accounting.
