1. Procedures for Granting a Patent

(1) Overview

After a patent application is filed with the KIPO, a patent right is granted through various steps. The Korean Patent system is characterized by:

(ァ) First-to-File Rule;

(ア) Publication of Unexamined Application;

(ア) Request for Examination; and

(ィ) Post-grant Opposition System

The procedures for registering a utility model is same as that of patent except for some notification periods.

(2) Filing an Application

(ァ) Applicant

Either the inventor of an invention or his assignee can file a patent application for the invention with KIPO. The applicant may be either a natural person or a juristic person.

(ア) Documents Required

A person who desires to obtain a patent must submit to the Commissioner of KIPO the following documents:

(a) an application stating the name and address of the inventor and the applicant (including the name of a representative,if applicable, the date of submission, the title of the invention, and priority data (if the right of priority is claimed);

(b) a specification setting forth the following matters: the title of the invention; a brief description of drawings (if any); a detailed description of the invention; and claim(s);

(c) drawing(s), if any;

(d) an abstract;

(e) the priority document which is a certified copy of the priority application together with its Korean translation if the right of priority is claimed; and

(f) a power of attorney, if necessary.

(ィ) Claim of Priority

In order to enjoy the priority right, an application should be filed in the KIPO within 1 year from the filing date of the priority application(priority date). The priority document above mentioned may be submitted within one year and four months from the priority date. If the priority document is not submitted within that period of time, the claim of priority will be considered not to have been claimed.

(3) Formality Examination

When a patent application is submitted to KIPO, it is checked to ensure that all requirements necessary to accord the application a filing date have been satisfied. Under the Article 11(1) of the Enforcement Regulation of the Patent Act, Falling in any of the following instances the application will be returned to the submitter without any application number being assigned thereto and will be treated as if it had not been submitted:

(ァ) where the kind of the application is not clear;

(ア) where the name or address of a person (or juristic person) who is initiating the application procedure (i.e. the applicant) is not described;

(ィ) where the application is not written in Korean;

(イ) where the application is not accompanied by the specification/claims or drawings (only for inventions directed to articles); or

(ゥ) where the application is submitted, by a person who has no address or place of business in the Republic of Korea, without using an agent in the Republic of Korea.

Once the application has been satisfied with the requirements, KIPO assigns an application number and examines as to whether or not other formality requirements under the Patent Act have been met. If KIPO discovers that a document or information is missing, such as power of attorney or the name of the representative of the juristic person, it will issue a notice of amendment requesting the applicant to supplement the missing data, within the specified time limit. The applicant may request an extension of the designated time period.

If the applicant does not comply with such a request until the time limit, the patent application will be considered not to have been filed.

(4) Publication of the Application

Applications that have not yet been published will be automatically laid-open in the official gazette called "Patent Laid-open Gazette" after 18 months from the filing date in the Republic of Korea or, if the right of priority is claimed from an earlier foreign filing, from the priority date.

The laid-open publication may be made, upon the request of the applicant, prior to the eighteen month period. This will provide an earlier protection to a patent application which is being infringed.

Once a patent application has been laid-open, any documents relating to the application are made available for public inspection. Furthermore, any person may submit to the Commissioner of KIPO information relevant to the patentability of the invention concerned together with any supporting evidence.

The Patent Act offers a special legal effect upon a laid-open patent application: under Article 65(1), if the applicant sends a warning letter to an alleged infringer after his application has been laid-open, any subsequent computation of a reasonable amount of compensation will be reckoned from the date when the infringer receives the warning letter. The compensation, however, can be collected only upon the publication (for opposition after the substantive examination) of the patent application.

(5) Substantial Examination

(ァ) Request for Examination

A patent application will be taken up for examination only if a request for examination is made either by the applicant or by any interested party within 5 years from the filing date of the application. If no request for examination is made within this five-year period, the patent application is deemed to have been withdrawn. Once a request for examination has been duly filed, it cannot be withdrawn. A patent application is taken up for examination in the order of filing the request for examination therefore.

(ア) Requirement for Registration

For a patent to be registered under the Patent Law, it should meet the following requirements;

(a) It should fall under the definition of invention under the Patent Law

(b) It should have Novelty, Industrial Applicability, and Inventive Step

(c) It should not fall into any of the categories of unregistrable patent prescribed in Article 38 of Patent Act.

(6) Rejection

If a examiner finds a ground for rejection of a patent application, a notice of preliminary rejection will be issued; and the applicant will be given an opportunity to submit a response to the preliminary rejection within the time limit designated by the examiner. Such time limit is extendable to the request for an extension by the applicant.

In responding to the preliminary rejection, the applicant may file an argument with or without an amendment to the specification and/or claims. If the examiner determines that the argument is without merit and the ground for rejection has not been overcome, he will issue a notice of final rejection of the patent application.



(7) Registration

When a patent applicant receives a notice of decision to grant a patent he should pay, as a registration fee, the first 3 years' annuities within 3 months from the date of receipt of such notice.

In case he fails to pay the registration fee within the three-month period the registration can still be made by paying twice the usual fee within 6 months after the expiration of the three-month period. Therefore, if the registration fee is not paid within 9 months from the date of receipt of a notice of decision to grant a patent, the patent application will be deemed to have been abandoned.

(8) Publication and Post-grant Opposition

In order to ensure the prompt granting of a right, the Pre-grant Opposition System was abolished and the Post-grant Opposition System has been implemented since July 1, 1997.

Where the examiners finds no grounds for refusal of a patent application, KIPO publishes the patent registration after the patent applicant pays the registration fee. Once a patent has been published in the Patent Registration Gazette, any person may file an opposition against the registration of the patent within 3 months from the publication date.

(9) Appeal and Trial

The applicant may lodge an appeal against the examiner's final rejection within 30 days from the date of receipt of the notice of final rejection. Any party which doubts the validity of a right may request a trial for invalidation of patent.

Such appeal and trial procedure are conducted in the Industrial Property Tribunal which was established by merging the former Trial Board and Appeal Board as of March 1, 1998 in KIPO.

The Industrial Property Tribunal's decision may be appealed to the Patent Court which was also established as an appellate level court and has been operating from March 1, 1998.

An appeal against the Patent Court's decision may be reviewed by the Supreme Court.

2. Expedited Examination

According to Article 61 of the Patent Act, the Commissioner of KIPO may have a particular category of patent application examined ahead of other patent applications.

KIPO's Regulation Concerning the Procedure for Handling Requests for Expedited Examination provides that applications eligible for such expedited examination are limited to the following categories:

(1) in case it is considered that an invention has been commercially worked by a person who is not the applicant, after his application has been laid-open; and

(2) in case

(ァ) it relates to goods for defense industry and processes for the preparation thereof, as defined in the Special Measures Act Relating to Defense Industry.

(ア) it relates to facilities for the prevention of environmental pollution or a process therefore

(ィ) it is directly involved in the promotion of export as evidenced by export records, a letter of credit or a request from the buyer of exported goods to show a patent right therefor, or

イ) it is made by an employee of the central Government, a local Government, or a research institute sponsored by central or local Government.

A person who desires an expedited examination of his application must submit a written request together with a statement explaining the necessity thereof in detail and any evidence supporting the statement.

3. International Application under the Patent Cooperation Treaty

The Republic of Korea Joined the Patent Cooperation Treaty ("PCT"), Chapter I in 1984 and Chapter II in 1990. Therefore, an international application under the PCT can be filed directly with KIPO or the International Bureau of WIPO.

In designating the Republic of Korea, special attention needs to be paid to avoid an unintended designation of KP (Democratic People's Republic of Korea, or North Korea), or vice versa.

Although confirmation of precautionary designations may be made within 15 months from the priority date (pursuant to Rule 4.9(b) of the PCT Regulations), such erroneous designation occurs and is found too late to be corrected, as such discovery is often made when the national phase is about to be entered in the Republic of Korea. This is a very serious problem given that there is no recourse to file the patent application again in the Republic of Korea as a national application, since the application would have already been published by WIPO, destroying the novelty of the invention.

(1) Filing of International Application in the Republic of Korea

An international application can be filed with KIPO by a national of the Republic of Korea or a foreigner having an address or a place of business in the Republic of Korea. The applicant must submit to the Commissioner of KIPO a request form, description, claims, drawings (if any) and abstract which are to be prepared in Korean or English or Japanese . In the request form, the countries in which the patent protection for the invention is sought must be designated.

(2) Entry into the National Phase for the Republic of Korea (KR)

In order for an international application filed under the PCT designating the Republic of Korea ("KR") to enter into the national phase, the following documents must be submitted to KIPO within 20 months (under PCT Chapter I), or 30 months (under Chapter II), from the priority date.

(ァ) an application stating the name and address of the inventor and the applicant, the date of submission, the title of the invention and priority data (if the right of priority is claimed):

(ア) a Korean translation of the description, claims, and abstract of the international application as filed;

(ィ) drawing(s), if they contain translated text matter, and

(イ) a power of attorney, if necessary.

If any amendment to the international application has been added with the International Bureau of WIPO or with the International Preliminary Examining Authority during the international phase, a Korean translation of the amendment should also be submitted at the time of entering into the national phase in the Republic of Korea.

According to patent practice in the Republic of Korea, the national phase must be entered with an exact Korean translation of the original international application as initially filed. Therefore, an amendment which has not been formally effected during the international phase cannot be filed at the time of entering into the national phase. It can, however, be submitted at a later time, after the national phase has commenced, e.g., after the official filing certificate has been received from KIPO.

If the right of priority is claimed in an international application, a Korean translation of the priority application should be submitted to KIPO within two months after KIPO has notified the applicant of receipt of a copy of the priority application forwarded from the International Bureau.