Patent System in Korea
The Korean system is distinguished by the following features: (a) Implementation of the First-to-File Rule, (b) Practice of Publishing Unexamined Applications, and (c) Requirement for Substantive Examination upon request. The procedures for obtaining utility model registration are largely similar to those for patents, with some variations in notification periods.
Filing a Patent Application in Korea
(a) Applicant
In Korea, a patent application can be filed by either the inventor or the assignee of the invention. The applicant can be an individual or a legal entity.
(b) Required Documents
i) Application: Includes inventor and applicant details (including representative's name for legal entities), submission date, invention title, and priority data (if applicable).
ii) Specification: Provides a detailed description of the invention, including the invention title, brief description of drawings (if any), and claims.
iii) Drawings: If applicable, any accompanying drawings.
iv) Abstract: A concise summary of the invention.
v) Priority Document: If claiming priority, a certified copy of the priority application along with its Korean translation. This document must be submitted within one year and four months from the priority date. Failure to submit it within this timeframe will invalidate the claim of priority.
vi) Power of Attorney: If necessary, a power of attorney document.
(c) Priority Claim
To benefit from the priority right, the patent application must be filed in the Republic of Korea within one year from the filing date of the priority application. The priority document mentioned above should be submitted within one year and four months from the priority date. Failure to submit the priority document within this timeframe will render the claim of priority null and void.
Publication for Public Inspection
Applications that have not yet undergone examination will be automatically published in the official gazette known as the "Patent Laid-open Gazette" after 18 months from the filing date in the Republic of Korea. If the right of priority is claimed from an earlier foreign filing, the 18-month period starts from the priority date.
Upon the applicant's request, the laid-open publication can be made prior to the 18-month period. This allows for earlier protection of a patent application in cases of infringement.
Once a patent application has been laid-open, all related documents become accessible for public inspection. Additionally, any person can submit to the Commissioner of KIPO relevant information regarding the patentability of the invention, along with supporting evidence.
Under Article 65(1) of the Patent Act, a laid-open patent application holds a special legal effect. If the applicant sends a warning letter to an alleged infringer after the application has been laid-open, any subsequent calculation of reasonable compensation will begin from the date the infringer receives the warning letter. However, the collection of compensation is only possible upon the publication of the patent application after examination.
Substantive Examination
(a) Request for Substantive Examination
To initiate the substantive examination process, a request for examination must be submitted within 3 years from the filing date of the patent application. This request can be made by either the applicant or any interested party. Failure to file the request within this three-year period will result in the withdrawal of the patent application.
(b) Registration Requirements
To be registered under the Patent Law, a patent must fulfill the following criteria:
i) It must meet the definition of an invention as specified in the Patent Act.
ii) It must possess the qualities of novelty, industrial applicability, and inventive step.
iii) It must not fall into any of the categories of unregistrable patents outlined in Article 38 of the Patent Act.
Rejection
If the KIPO examiner identifies grounds for rejecting a patent application, a notice of preliminary rejection will be issued. The applicant will then have an opportunity to submit a response to address the preliminary rejection within a specified time limit set by the examiner. Upon the applicant's request, this time limit can be extended.
In their response to the preliminary rejection, the applicant can provide arguments along with optional amendments to the specification and/or claims. If the examiner determines that the arguments presented lack merit and the grounds for rejection remain unresolved, a notice of final rejection for the patent application will be issued.
Registration
To complete the registration process, the applicant is required to pay the registration fee and the annuities for the first 3 years within 3 months from the date of receiving the notice.
If the registration fee is not paid within this three-month period, registration can still be accomplished by paying twice the standard fee within 6 months after the initial three-month period has lapsed. However, if the registration fee is not paid within 9 months from the date of receiving the notice of the decision to grant a patent, the patent application will be considered abandoned.
Publication and Opposition
If no grounds for refusal are found by the examiners, KIPO proceeds with the publication of the patent registration once the applicant has paid the registration fee. After the patent has been published in the Patent Registration Gazette, there is a 3-month period during which any individual can file an opposition against the patent's registration. However, it is important to note that the opposition system was abolished as of July 1, 2007. Instead, interested parties now have the option to request a trial for invalidation of a patent after it has been published in the Gazette.
OUR SERVICES
Patent
We specialize in securing patents that provide tangible value for foreign companies entering the Korean market, and we provide comprehensive guidance on all aspects of your patent portfolio. Our dedicated patent team handles a wide range of services, including patentability assessments, drafting, filing, and prosecution of patent applications, Freedom-to-Operate analyses, infringement analyses, second opinions, oppositions, litigation support, and patent monitoring.
With some of Korea's most experienced and professional patent attorneys, our team covers various technology domains. We take pride in being one of Korean IP Law Firm with a high patent registration success rate.
At DAEILPAT, our primary focus is to secure patents that contribute real value to your business. To achieve this, we take the time to understand your company and the competitive landscape in which you operate. This enables us to develop a tailored protection strategy that aligns with your specific needs. In addition to our expertise in patents, our professionals are well-versed in Design Rights. If necessary, we can create a customized protection strategy using a combination of patents and designs to safeguard your intellectual property effectively.
Learn more about Patents Application and Protection in Korea
Strategic Advice
In addition to providing consultation services on specific patent rights, we offer strategic advice to foreign companies entering the Korean market regarding their patent portfolios. Our strategic advice encompasses a wide range of key issues, including:
Invention Scouting:
We assist in identifying valuable inventions within your organization that are worthy of protection, helping you prioritize and optimize your patent filing strategy.
Trade Secrets and Pitfall Avoidance:
We provide guidance on leveraging trade secrets effectively while avoiding potential pitfalls, ensuring that your valuable proprietary information remains protected.
International Protection:
Our experts devise comprehensive filing strategies, including strategic selection of geographical coverage, to secure international patent protection for your innovations in line with your business goals.
Infringement Identification and Enforcement:
We advise on how to identify instances of infringement and provide strategies for enforcing your intellectual property rights in Korea, ensuring effective protection against unauthorized use.
Competitor Patent Monitoring:
We help monitor your competitors' patent activities, enabling you to stay informed about their developments and secure freedom-to-operate, minimizing the risk of infringement.
Patent Portfolio Optimization:
We assist in pruning your patent portfolio to eliminate redundant or unnecessary patents, helping you save costs while maintaining a streamlined and valuable portfolio.
Patent Department Organization:
Our consultants provide guidance on organizing and structuring an efficient and effective in-house patent department, ensuring smooth operations and maximizing the value of your patent assets.
Outsourcing Patent-Related Tasks:
We offer advice on outsourcing certain patent-related tasks, enabling you to streamline processes, optimize resources, and focus on core business activities.
At DAEILPAT, we understand the unique challenges faced by foreign companies entering the Korean market, and our strategic advice aims to support your patent portfolio goals, enhance your competitive position, and maximize the value of your intellectual property assets.
If you have any questions or needs related to this, please feel free to contact us.
Read more:
- Utility Model System in Korea
- Copyright Protection in Korea for Works of Foreigners
- Protecting Trade Secrets in Korea
- Patent and Trademark Litigation in Korea
- Patent and Trademark Trial System in Korea
