‌Patent and Utility Model


Overview

 
  1. First-to-file Rule;
  2. Laying-Open of unexamined application(after 16 months from the priority adte);
  3. Request for Examination (withih 5 years from the application date);
  4. No Opposition System;
  5. Registration (In case of Patent : 20 years from the application date. extensible up to 5 years / In case of Utility Model : 10 years from the registration date);

  6. PCT; national phase withih 31 months from the prior date under PCT chapter I, II inextensible date;

Prosecution for the Patent application

Patent 

  1. Procedures for Granting a Parent and Utility Model(the Utility Model under Utility Model Act which is entered into force from October 1,2006)

A. Filing an application

(i) 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.

(ii) Documents Required 

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

  1. an application stating the name and address of the inventor and the applicant the title of the invention, and priority data (if the right of priority is claimed);
  2. 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);
  3. drawing(s), if any;
  4. an abstract;
  5. if the right of priority is claimed, the priority document which is a certified copy of the priority application together with its Korean translation(whenever an applicant is requested to submit a        Korean translation of priority document) ; and
  6. a power of attorney, if necessary.

(iii) Claim of Priority 

In order to enjoy the priority right, an application should be filed in the Republic of Korea within 1 year from the filing date of the priority application.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 become null and void.

B. 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, 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 never been submitted:

  1. where the kind of the application is not clear;
  2. where the name or address of a person (or juristic person) who is initiating the application procedure (i.e. the applicant) is not described;
  3. where the application is not written in Korean;
  4. where the application is not accompanied by the specification (including detailed description of the invention) or drawings (only for utility applications); or
  5. 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 satisfied 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 a time limit. The applicant may obtain an extension of the designated time period.

If the applicant does not comply with such a request within the designated or any extended period, the patent application will be nullified and then considered as having never been filed.

C. Laying open of Publication for Public Inspection 

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,

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. Any person may submit to the Commissioner of KIPO information relevant to the patentability of the invention concerned together with any supporting evidence. (Information can be provided before a patent application is laid-open)

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.T he right to claim compensation cannot be exercised before the relevant patent right is registered.

D. Substantial Examination 

(i) 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 (3 years in case of an utility model application) from the filing date of the application. If no request for examination is made within this five-year period (3 year in case of an utility model application), 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 thereof.

(ii) Requirement for Registration 

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

  1. It should fall under the definition of invention under the Patent Act
  2. It should have Novelty, Industrial Applicability, and Inventive Step
  3. It should not fall into any of the categories of unregistrable patent prescribed in Article 32 of Patent Act.

E. Decision as to grant a patent right 

If the 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 a time limit designated by the examiner. Such time limit is extendable upon 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.

If no grounds are found for rejecting a patent application.the examiner shall grant a patent right.

F. 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.

G. Publication 

Where the examiner 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 a patent between the date on which the patent is registered and the date that marks a lapse of three months since the publication date

H. 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.

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:

A. 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

B. in case the application is one of the kinds of appications stipulated in the Presidential decree and regarded as urgent and


  1. it relates to goods for defense industry and processes for the preparation thereof, as defined in the Special Measures Act Relating to Defense Industry.
  2. it relates to facilities for the prevention of environmental pollution or a process thereof
  3. it is directly involved in the promotion of export as evidenced by export records, a letter of credit and a request from the buyer of exported goods to show a patent right therefore, or
  4. it is made by an employee of the central government, a local government, or a research institute sponsored by central or local government.
  5. patent applications that the KIPO Commissioner and the heads of patent offices in other countries agreed to examine on a priority basis

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.

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.

A. 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.

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

An 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 31 months, from the priority date.

  1. 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):
  2. a Korean translation of the description, claims, text matter of drawings and abstract of the international application as filed;
  3. drawing(s), if they contain translated text matter, and
  4. 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 national fees have been paid, a translation of the application has been submitted and the relevant date (31 months from prior date or the date of the request for an examination, whichever occurs first.) has passed.

Utility Models

Procedure of Granting Utiity Model

A. Filing an application

(i) Applicant

Either the deviser of an device or his or her assignee can file a utility model application for the device with KIPO. The applicant may be either a natural person or a juristic person.

(ii) Documents Required

A person who desires to obtain a utility model must submit to the commissioner of KIPO the following documents:

  1. an application stating the name and address of the deviser and the applicant(including the name of a representative, if the applicant is a juristic person), the date of submission, the title of          the device, and priority date(if the right of priority is claimed): 2.a specification setting forth the following matters: the title of the device: a brief description of drawings(if any): a detailed            description of the device: and claim(s):
  2. drawing(s). if any:
  3. an abstract:
  4. if the right of priority is claimed, the priority document which is a certified copy of the priority application together with its Korean translation: and
  5. a power of attorney, if necessary

(iii) Claim of priority

In order to enjoy the priority right.anoapplication should be filed with KIPO within 1 year from the earliest filing date of the priority application. The prioty 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 become null and void.

B. Formality Examination

When utility model application is submitted to KIPO, it is checked that all requirements necessary to accord the application a filing date have been satisfied. Under the Article 7(1) of the Enforcement Regulation of Utility Model Law, in any of the following instances the application will be returned to the submitter without any application number being assigned there to and will be treated as if it had never been submitted.

  ● Where the kind of the application is not clear;
  ● Where the name or address of a person(or juristic person) who is initiating the procedure is not described;
  ● Where the application is not written in Korean;
  ● Where the application is not accompanied by the specification/claims or drawings
  ● 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 satisfied the requirements. KIPO assigns an application number and examines as to whether or not other formality requirements under Utility Model Law have been met, if KIPO discovers that a document or information is missing, such as a power of attorney or the name of the representative of a 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 obtain an extension of the designated time period.

If the applicant does not comply with such a request within the designated or any extended period, application will be nullified and then considered as having never been filled

C. Basic Requirements Examination

Because there is no substantive examination concerning novelty, inventive step and industrial applicability under the non-examination system, there will be examination of the basic requirements to avoid and eliminate minimum irrational elements in the application before registration.

At the stage of examination of basic requirements the following items are examined

  1. Where the device is related to the shape or structure of an article or a combination of articles
  2. Unregistrable Devices
      -  Devices which are identical or similar to the notional flay or decorations
       -  Devices liable to contravene public order or morality or to injure the public health
  3. Drafting of claims
  4. Unity of utility model application
  5. Whether the essential parts of the description or drawings has been included in the application or whether the description is evidently unclear

Basic Requirements Examination is done in each procedural step

D. Registration

The examiner shall request registration of the utility model application promptly of no lacks concerning the basic requirements can be found, but not before two month from the filing date. The reason for that is the same as in the case for the invalidation procedure.

E. Technical Evaluation

Technical evaluation is different from the substantive examination in patent. Because the subject matter is already registered in the system before technical evaluation, technical evaluation can be requested for each claim while request of the substantive examination should be requested for all claims.

Therefore the examiner shall only make registration maintenance decision or registration revocation decision for those claims which are requested.

If technical evaluation is requested not for all claims and there are reasons of revocation for a part of claims, only those claims are revoked. And for those claims where there is no reason of revocation, registration maintenance decision is made by the examiner. Each claim which is requested must technically evaluated, in case of registration revocation decision the reasons shall be written as for the case of ruling of refusal.

Technical evaluation can be requested by the applicant, owner, exclusive licensee, non-exclusive licensee, interested party and examiner f the KIPO.

Technical evaluation can be requested at filing or at any time after the filing date. Even if the term of utility model right has expired, technical evaluation can be requested when a interest of request exists.

Requested for registration maintenance decision.

For a utility model to be received maintenance decision of registration. It should not fall into any of the categories prescribed in Article 25(1) of the utility model law

Registration revocation decision

If the Examiner finds a ground for revocation of a registration utility model, a notice of preliminary revocation shall be issued; and the applicant will be given an opportunity to submit a response to the preliminary revocation with a time limit designated by the examiner, Such time limit is extendable upon the request for an extension by the applicant.

In responding to the preliminary revocation the applicant may file an argument with an correction to the specification and/or claims. If the examiner determines that the argument is without merit and the ground for revocation has not been overcome, he or she will issue a notice of revocation of registration utility model

F. A dual application

The applicant who has first filed a patent application has the opportunity to file for the same technical feature an utility model application and establish a right for it without abandoning the patent application. On the other hand, the applicant who has first filed utility model application and wishes to prolong the term of duration of right has the opportunity to file a patent application and at the same execute his right based on the utiliy model.

The applicant must be the same as the applicant of the original application. The decision whether the both applicants are identical follows the usual procedure for similar cases.

Dual application can be filed at the following dates. First, it can be filed at the filing date of the patent application. Second, after the patent application and before the reception of decision to grant a patent or within 30 days from the date of reception of ruling of refusal. And finally, within 1 year from the date of registration of the utility model application dual application can be filed.

But if the original application is an international patent application, the following special provisions will be applied to the application.

  1. Dual application is possible if fees prescribed in article 82(1) of patent law is paid and the translation prescribed in article 201(1) of patent law is submitted.

  2. Dual application is possible after the decision that the international patent application has turned to be a patent application prescribed in article 214 of patent law.

Non-admittance of Double patenting

It shall be noted that double patenting of patent and utility model is not allowed under the dual application system. Therefore when the utility model is firstly registered(after about 3 months) and then the patent is granted, the applicant must abandon the utility model in order to register the patent or abandon the patent and maintain the registered utility model.

Double patenting is a reason for opposition procedure or trial of invalidation but not for registration cancellation decision by technical evaluation. This is because the reason for registration cancellation decision by technical evaluation is restricted to the reasons for registration requirement at filing(with the exception of matters concerning right capacity).