Korean IP System Map

A patent application shall be laid open in the Patent Gazette eighteen months after the filing date or first priority date. Once the application is laid open, the applicant is entitled to issue a warning letter to a suspected infringer. Then, after issue of the patent, the party who had been so warned has to pay compensation to the patentee for an amount equivalent to what would have normally been generated from working of the invention. Because the laying open is a pre-condition for the warning, the application may be laid open earlier than the aforementioned eighteen-month period, when requested. Any person who believes that a patent should not be granted to the laid open invention pursuant to the patent law, may provide such information to the KIPO with evidence.

A patent application shall be examined only upon request, and in the absence of request for examination within three years after filing, the application shall be deemed to have been withdrawn.

An amendment to a patent application can be made to the extent of the features disclosed in the specification or drawing originally attached to the application, on any of the following occasions:

a) anytime before the examiner issues an initial Office Action, b) where an initial Office Action is issued, within the time provided for written opinion against the initial Office Action, c) where a final Office Action is issued to the amendment made in response to the initial Office Action under b) above, within the time provided for written opinion against the final Office Action, and d) where an appeal is brought against the examiner's final rejection decision, within thirty days after arrival of the report of reject decision.

When the examiner finds no grounds for refusal, the examiner issues a decision to grant and KIPO publishes the registration notice in the Patent Registration Gazette. Under the current Patent Act (§132-2, effective October 2017), any person may file a revocation request within six months of the publication date. The former three-month opposition system (§69) was abolished by the 2017 amendment.

The duration of a patent term runs from the date when it is registered and expires on the date when twenty (20) years has lapsed after the patent application is filed. However, there are exceptions when a patent could not have been practiced due to the requirements of other laws, e.g., for a toxicological test in case of pharmaceutical product, the term may be extended for a period not exceeding five (5) years.

The effect of recording a license is to enable the licensee to continue practicing the invention even after the patent right is transferred to a third party, within the terms of the license. If, however, the owner wishes to give the licensee an exclusive right including enforcement of the right against an infringer the license must be recorded, otherwise such an exclusive right is not granted accrue to the licensee.

A deed of assignment for a patent must be recorded in the KIPO in order to be recognized as valid between the parties, against third parties, in administrative agencies, such as KIPO and in the courts. The effective date of an assignment is the date of recording which is the date when the deed of assignment is submitted for recording, not any other date agreed between the parties as giving rise to the effect.

Trials related to the acquisition and loss of a patent or other IP rights would be initiated at the Korean Intellectual Property Tribunal (KIPT) in the KIPO, while litigations related to the enforcement of a right would be contested at the courts.

- Trial against the examiner s decision for refusal (ex parte) When an applicant for a patent is dissatisfied with the examiner's decision for refusal, they may demand a trial against the decision to the KIPT not later than 30 days after receipt of the notice.

- Trial against the cancellation of a patent (ex parte) When a patentee is dissatisfied with the decision for cancellation of a patent as a result of an opposition proceeding, he may demand a trial against the decision to the KIPT not later than 30 days after receipt of the notice.

- Trial for the correction of a patent (ex parte) A patentee may demand a trial for correction of an issued patent anytime to the extent that; 1) it restricts the scope of the claims, 2) rectifies errors, and 3) clarifies unclear matters.

- Trial for the invalidation of a patent (inter partes) When an interested party believes that a patent should not have been granted as it was contrary to the patent law, he may demand a trial anytime for its invalidation. When a decision for invalidation becomes final and conclusive, the patent becomes void retroactively from the beginning, unlike a decision for cancellation which takes effect only prospectively.

- Trial for the confirmation of the scope of a right (inter partes) When there is a dispute as to whether a party's pratice of an invention interferes with another's issued patent, either party may petition to the KIPT a trial for the confirmation of scope of the patent, i.e., whether or not the practice of the invention falls within the scope of the patent right.

- Other trials at the KIPT There are other trials, e.g., for the invalidation of correction, for the request of grant of a non-exclusive license and so forth.

- Appeal before the Patent Court If dissatisfied with the decision in any of the trials discussed above at the KIPT, the dissatisfied party may bring an appeal before the Patent Court and further on to the Supreme Court.

Korea has participated the PCT Treaty since 1984 and started accepting PCT international applications on August 10, 1984. Foreign residents of Korea as well as Korean Nationals may file PCT international applications through Korea Intellectual Property Office (KIPO) or International Bureau of WIPO. A PCT application may enter the national phase in Korea within thirty-one (31) months after the priority date, without preliminary examination.

A power of attorney may be either a separate form for each particular application or a general form for use with all of the future applications for IP rights of a person.

Under Korea law, unlike patents, the subject of utility model is limited to the creation of a technical idea using the rules of nature regarding the shape, structure, or combination of subjects. As such, invention of method, goods without specific shape are not subject to protection.

With the shortening of the pendency period for patent applications, the merits of the quick utility model registration system (registration before examination) are also diminishing, while the weaknesses of the system are standing out. These weakness include the abuse of obtaining registration without examination, the difficulty of a complicated examination procedure for applicants, and the decline of examination efficiency. To resolve these problems, the utility model system has been replaced by a system of registration-after-examination.

After the repeal of the quick registration system of the utility model, which examined only the formalities and basic requirements of the application, the registration-after-examination system was introduced so that examiners would consider the registration of the quick registration system such as the basic requirements examination, the TES (Technology Evaluation System) after examination, and the request for correction system were all repealed. An examination procedure is now similar to the patent system including requests for examination, official notifications of reasons for rejection, and amendment practice was introduced.

Utility model (Based on Act 766, December 11, 2002)

Patent (Based on Act 6768, December 11, 2002)

Registration

Subject of protection

A creation of a technical idea using the rules of nature regarding the shape, structure or combination of subjects (Utility model ×2, 5)

A highly advanced creation of a technical idea using the rules of nature (Patent ×2)

Requirements for registration

Basic requirements (Utility model ×12,35)

Substantive requirements such as novelty and inventive step (Patent ×62, 66)

Period of amendment (specifications etc.)

Within two months after application (Utility model code ×9)

Within one month after the order for correction (Utility model code ×14)

An applicant can amend before the examiner issues a certified copy of a decision to grant a patent or before the applicant initially receives the notification of reasons for rejection (Patent ×47)

Within the period of submitting a written opinion for the notice of refusal / Within 30 days of requesting an appeal of examiner's decision of refusal

Decisions

Registration for establishment of rights or decision to decline

Decision for registration of patent or decision for refusal of registration

Enforcement of right

Term of rights

10 years

20 years

Condition of enforcement

After submitting and giving notice of the certificate copy of the decision to maintain rights (Utility mode ×44)

Registration for establishment of rights

Responsibility for enforcement

When the right is revoked or cancelled after enforcement, the owner of the right can give compensation for related damage

Exemption is given when the enforcement is based on the decision to maintain rights (Utility model ×45)

Presumption of negligence

After the decision to maintain rights (Utility model ×46)

After registration for establishment of right (Patent ×130)

Revocation /

Cancellation

Opposition

Any person can request opposition within three months of the publication of registration (Utility model ×47)

From the date of registration, any person can file a revocation request within six months of the publication of registration (Patent §132-2, effective October 2017; former 3-month opposition under §69 abolished)

Request for examination

After registration, any person can request

Withdrawal is not available (Utility model ×21)

Within 3 years from the date of application, any person can request

Withdrawal is not available (Patent ×59)

Trial for invalidation

After the registration for establishment of rights, the interested party or the examiner can request (Utility model ×49)

After the registration for establishment of rights, the interested party or the examiner can request (Patent ×133)

Others

Accelerated examination system

none

Available (Patent ×61)

Inventive step

Whether the device can be easily derivable from prior art (Utility model ×5)

Whether the invention can be easily derivable from prior art (Patent ×29)

Procedures for correction

Request for opposition, trial for invalidation, trial for correction, trial for invalidation of correction, request for TES

Request for opposition, trial for invalidation, trial for correction, trial for invalidation of correction

Designs which are similar to national flags, national emblems, indications of international organizations, medals of honor, etc.

- Designs which are liable to contravene morality or public order. - Designs which are liable to cause confusion with the articles related to the business of others - Designs which are dictated solely by the function of the article to be protected

Designs for the below indicated goods shall be granted free of substantive examination.

- Processed foods. Items of preference - Clothing - Accessories (clothing) - Accessories (ornaments) - Bags - Parts of clothing or ornamental accessories - Shoes - Healthcare goods for home use - Wedding or funeral products - Small home organization goods - Teaching goods - Office supplies - Advertisement goods - Electric calculators - Bedding goods, floorings, curtains, etc. - Papers for stationery, printed matters, etc. - Packing materials, packing containers, etc. - Woven fabrics, knitted fabrics, synthetic fiber fabrics

For those examination free goods, one application may cover several designs of different goods not exceeding twenty items, unlike other goods for which one application may cover only one design and which must be examined before grant.

Any person who believes that the registration for an examination free design should not have been granted pursuant to the design law may file an opposition thereto within three (3) months after it is advertised in a design gazette and where a panel of three (3) opposition examiners determines that the opposition is sustained, the registration shall be cancelled.

In order to encourage creation of improved designs based on a basic design and also to prevent imitation or counterfeit of a registered design of a person, applications for registration of similar designs with respect to their own basic application or registration would be allowed. The similar design registrations shall be assigned together with the basic design registration and they shall lapse when the basic registration lapses.

As an exception to the general rule that one application may cover only one article, a set of articles that are customarily sold or used together as a set may be covered in one application/registration, provided that the set of articles constitutes a coordinated whole, e.g., a smokers set; a coffee set comprising cups, spoons, plates and pots; a set of audio equipment's, etc.

Purported to the protection of a design from being imitated when a design registration is advertised in the official gazette, an applicant for a design registration may request that the design be kept secret for a period not exceeding three (3) years after the design is registered. However, the KIPO shall allow persons to have access to the design kept secret, in cases:

- where the request is made by a person who obtained the design owners consent - where the request is made by a party or intervenor in the examination, trial or litigation related to the design registration - where the request is made by a person who has been warned that he infringed the design registration - where the request is made by a court

The provisions of the patent law shall apply mutatis mutandis to the procedures for design registrations, e.g., for the trial against the examiner's decision for refusal, trial for the invalidation of a design registration, trial to confirm the scope of a design registration, trial against the cancellation decision of a design registration, etc.

The duration of a design registration runs from the date of registration and expires on the date after fifteen (15) years has lapsed after registration. However, in case of a similar design, its duration terminates when the basic design registration expires.

Use of a trademark is not required for obtaining its registration. The registration would be granted to the person who first files an application where there are two or more conflicting applications, unless the examiner finds reasons to refuse its registration.

To determine registrability of a trademark, substantive examination will be carried out including absolute and relative grounds of rejection, as well as formality examination. One of the characteristic features is that even a trademark registration which already lapsed or was invalidated can effectively bar another party's registration of a conflicting mark which was applied for registrationwithin 1 year from the lapse or invalidation of the trademark right.

The trademark application is made public in the trademark gazette when no reason for refusal is found, and registration is granted if no opposition is filed within a period of 60 days. When an opposition is filed by any person, and if the examiner finds the opposition to have a sufficient ground, the examiner renders a decision to refuse the registration.

Trial against the examiners decision of refusal

- When the applicant is dissatisfied with the examiner's decision of refusal, the examiner may demand a trial against it to the Korean Intellectual Property Tribunal within 30 days after receipt of the decision.

Trial for the invalidation of a trademark registration

- When an interested party believes that a registration should not have been granted because it was contrary to the trademark law, the interested party may demand a trial for the invalidation of the registration to the KIPT. Depending upon the reasons for the invalidation, for certain cases the trial may only be demanded within five (5) years after the registration.

Trial for the cancellation of a registration for non-use

- When a registered trademark has not been used for three consecutive years, it may be cancelled with respect to those goods on which the mark has not been used, upon complaint of an interested party at the KIPT. One of the characteristic features of the system is that when a registered trademark has been cancelled for non-use, its owner is precluded from filing an application for its re-registration for three years, while to the party who prevailed in the proceeding would be given a period of three months in which only the prevailing party is allowed to file an application for a trademark which is identical with or confusingly similar to the cancelled one.

Other trials at the KIPT

- There are other trials, e.g., for the invalidation of the renewal registration of the term, for the cancellation of registration for improper use of the mark, etc.

Appeal before the Patent Court

- If dissatisfied with the decision in any of the trials at KIPT, the dissatisfied party may bring an appeal before the Patent Court and further on to the Supreme Court.

KIPO adopted the International Classification system in 1998 and now the applicants can obtain a trademark registration for multiple classes of goods by a single application. However, in order to maintain consistency in the examination, the examiners continue to regard goods which have been classified as conflicting under the old classification system to be also conflicting under the new classification system, though they may fall in different classes.

A deed of assignment for a registered trademark must be recorded in the KIPO in order to be recognized as valid and enforceable between the parties, against third parties, in administrative agencies, such as KIPO and in the courts. The effective date of an assignment is the date for its recorded, which is the date when the deed of assignment is submitted for recording, not any other date agreed between the parties as giving rise to the effect.

The effect of recording a license is to enable a licensee to continue using the trademark even after the trademark ownership is transferred to another party, within the terms of the license. If the owner wishes to give the licensee an exclusive right including enforcement of the trademark right against an infringer the license must be recorded, otherwise the license agreement does not give rise to an exclusive right to the licensee.

The registration can be renewed every ten (10) years by filing a renewal application within one year preceding the expiration. Even in the event that the owner missed the renewal deadline it can still be renewed by filing the renewal application within the grace period of six (6) months, with payment of a surcharge. No evidence of use is required for the renewal. Unlike in many countries, in Korea the renewal of a registered trademark would not be completed simply by filing the renewal application with payment of official fee. A renewal application would be examined as in the case of a new application, though the renewal would rarely be refused.

A three-dimensional trademark may be registered, if it is distinctive enough and is not dictated solely by the function of the goods.

Korean adherence to Madrid Protocol took effect as of April 10, 2003 and residents in member states may file the application for international registration of marks designating Korea, based on a home application as well as home registration.

- When an applicant has received a decision of rejection or revocation from an examiner, that person may demand an appeal within 30 days of the date of receipt of the certified copy of the examiner's decision. A provision for exception is established in cases where a person resides in an area that is remote or difficult to access. The President of the Intellectual Property Trial and Appeal Board may extend the time limit to 2 months for the benefit of a person in this situation.With respect to a patent application filed on or after July 1, 2009, the applicant may make a request for reexamination or trial, selectively, following a decision of rejection; however, the applicant is not allowed to make a request for reexamination once a request for trial has been submitted (Article 67-2 of the Patent Act).When a patent application has been reexamined at the request of the applicant and a decision of rejection is made by the examiner, the applicant may appeal against such decision of rejection by filing a request for trial.

- Under the reexamination before trial system, a patent application must be reexamined upon submission of amended specifications within 30 days after the filing of a request for trial. However, as a request for reexamination system has been introduced, even if there has not been a request for trial, a patent application with the attached amendments to specifications or drawings may be reexamined by the examiner upon request of the applicant.

- When an applicant receives a decision of rejection on the basis of his/her amendments, he/she may demand an appeal within 30 days from the date of receipt of the certified copy of the decision.

- The 2001 Revised Patent Law provides that the then existing appeal against the examiner's decision to reject the amendment be repealed and only an appeal against a decision of rejection be allowed; this is in order to expedite the proceedings of examination and hearing (Article 51 of the Revised Patent Law, Clause 3, 2001, 7. 1).

- A patent holder may demand a trial for corrections to specifications or drawings for the following reasons only: (1) to narrow a claim; (2) to correct a clerical error; or (3) to clarify an ambiguous description.

- However, this provision shall not apply where an opposition to the patent is pending.

- This trial is intended to protect an invention by providing the opportunity for a patentee to make corrections on the condition that there are not any unexpected losses or damages incurred upon any third parties.

- When a trial decision stating that the corrected specifications or drawings of a patented invention become final and conclusive, the patent application, the laying-open of the decision and the registration of the establishment of the patent right shall be deemed to have been made on the basis of such corrected specifications or drawings.

- Under the present provision, a trial for invalidation can be requested independently of a trial for correction.

- When a decision that a correction of the specifications or drawings is to be invalidated becomes final and conclusive, the correction shall be deemed never to have been made.

- An interested party or examiner may demand a trial for the invalidation of a correction, where the specifications or drawings of a patented invention has been corrected in violation of Article 136.

- When a decision that a correction of the specifications or drawings is to be invalidated becomes final and conclusive, the correction shall be deemed never to have been made.

- Due to a mistake of an examiner or appeal examiner, some patents which should not have been granted may exist. In such cases, an interested party or examiner may demand a trial to invalidate the patent. For a patent containing two or more claims, a demand for a trial of invalidation may be made for each claim.

- The reasons for invalidation of the patent are generally the same as reasons for the rejection of a patent application.

- A trial for invalidation of a patent may be demanded even after the expiration of the patent right. When a trial decision invalidating a patent has become final and conclusive, the patent right shall be deemed never to have existed; however, where a patent is invalidated by any reason that arose after the granting of a patent, the patent right is deemed not to have existed from the time when such a reason originated.

A patentee or an interested person may demand a trial to confirm the scope of a patent right. When a trial is demanded to confirm the scope of a patent right, the confirmation shall apply to each claim if the patent contains two or more claims. Invalidation Trial of Registration for Extension of Term of Patent Right (Patent Law Article 134) Refers to the quasi-judicial administrative procedure to invalidate the registration for extension of the term of a patent right due to any defect in the registration measure.

- When a patentee requires the use of the patent right of a prior patentee to operate his/her patented invention, or when the prior patentee refuses to grant permission to use the patent right without justifiable reasons, the later patentee may request a trial for the granting of a non-exclusive license. To make such a request, it is required that the patented invention of the later patentee should constitute a substantial technical advance in comparison with the patented invention or registered utility model of the prior patentee.

The District Court can make a determination on the validity of patent as well as the infringement. However, in most infringement cases, a dependant files an invalidation trial against the corresponding patent right, and the plaintiff files for a Trial to Confirm the Scope of a Patent Right.

The fact that multiple trials and litigations undergoing 1st instance simultaneously may result in delay of the entire process. Therefore, Patent Court (2nd instance) has been designated to consolidate all correlated IP cases, so that Patent Court may review both invalidation action appealed from the Patent Board (IPTAB) and Infringement Action appealed from the civil court in parallel if some conditions are satisfied(i.e. same patent, parties, attorneys-of-record and etc.). Therefore, the District Court (1st instance) does not have to stay the infringement trial, thus the efficiency of Patent Lawsuit increases.