PATENT LAW

◎ This is a summary of the revision effective as from July 1, 2001.

1. Subject Matters of Patent

An invention means the highly advanced creation of technical ideas utilizing the rules of nature, and all such inventions are entitled to patent. However, inventions liable to contravene public order or morality, or to injure public health shall be excluded from the patentable subject matters (Patent Law, Article 2, 32).

2. Patent Administrator for Nonresidents

A person who has neither a domicile nor a place of business in the Republic of Korea (hereinafter referred to as a “nonresident”) may not, except in cases where he or she (a representative thereof in case of a corporation) is staying in the Republic of Korea, may not initiate any procedure relating to a patent, nor appeal against any decision taken by an administrative agency in accordance with this law or any decree thereunder, unless he or she is represented by an agent with respect to his patent, who has an address or a place of business in the Republic of Korea (hereinafter referred to as "patent administrator"). (Patent Law, Article 5(1) as revised effective as from July 1, 2001).

3. Requirements for Patents

(1) Industrial applicability : Inventions which are industrially applicable may be patentable. (Patent Law, Article 29(1))

(2) Novelty : An invention may be patentable unless it falls under any of the following subparagraphs:

1) The invention was publicly known or worked in the Republic of Korea prior to the filing of the patent application; or,
2) The invention was described in a publication distributed in the Republic of Korea or in a foreign country prior to the filing of the patent application, or the invention which was available for use by the public by way of electrical communication lines prior to the filing of the patent application. (Patent Law, Article 29(1)(i) and (ii) as revised effective as from July 1, 2001)

(3) Inventive step : Where an invention could easily have been made, prior to the filing of the patent application, by a person having ordinary skill in the art to which the invention pertains, on the basis of an invention referred to in each subparagraph of paragraph (1), a patent shall not be granted for such an invention. (Patent Law, Article 29(2))

4. First-to-file Rule

(1) Applications filed on different dates : Where two or more applications relating to the same invention are filed on different dates, only the applicant filing the application having the earlier filing date may obtain a patent for the invention. (Patent Law, Article 36(1))

(2) Applications filed on the same date : Where two or more applications relating to the same invention are filed on the same date, only the person agreed upon by all the applicants after consultation may obtain a patent for the invention and, if no agreement is reached or no consultation is possible, none of the applicants shall obtain a patent for the invention. (Patent Law, Article 36(2))

5. Principles of One Application per Invention, and One Application per One group of Inventions

In principle, a patent application shall relate to one invention only. However, a group of inventions so linked as to form a single general inventive concept may be the subject matter of a patent application. (Patent Law, Article 45(1))

6. Amendment and Invalidation of Procedure

When a person who has been notified to make an amendment fails to do so within the designated time limit, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may invalidate the procedure relating to the patent (except for cases of natural disaster and other inevitable causes). (Patent Law, Articles 16, Article 46)

7. Amendment of Application

(1) Scope of amendment : An applicant may make an amendment within the scope of the descriptions of the specification or drawings originally attached to the application. The amendments to the claims are limited to the following cases of : (Patent Law, Article 47(2) as revised, new clause of (3) effective as from July 1, 2001)

1. Reducing the scope of a claim;
2. Amending an incorrect description; or
3. Clarifying an unclear description

(2) Period for amendment : An amendment can be made to the specification or drawings originally attached to the application at any time prior to the transmittal of a certified copy of the decision to grant a patent. However, in the following cases, an amendment can be made only within a period as respectively described therein: (Patent Law, Article 47(1) and (2), as revised effective as from July 1, 2001)

1. In case of receiving a notice of ruling of refusal for the first time, or receiving a notice of ruling of refusal, other than a ruling of refusal from an amendment, within the time limit designated for the submission of an argument in accordance with said notice of ruling of refusal;
2. In case of receiving a notice of a ruling of refusal with respect to the amendments to the first notice of ruling of refusal, within the time limit designated for the submission of an argument in accordance with said notice of ruling of refusal; or
3. In case of demanding for trial against ruling of final refusal, within thirty (30) days from said date of demand for trial.

8. Division of Application

Division of application : An applicant who has filed a patent application comprising of two or more inventions may divide the application into two or more applications only at the time or within the time limit by which the specification or drawings attached to the patent application may be amended. (Patent Law, Article 52(1))

9. Double Application for Patent and Utility Model and Selection of The Rights

An applicant for a utility model registration may file an application for patent (double application) with respect to the same technical subject matter, within one year of the registration of the utility model. (Patent Law, Article 53(1)). However, in cases where both rights are allowed to be registered, the patent can be registered only if the utility model right is abandoned. (Patent Law, Article 87(2)).

10. Priority Claim

(1) Period for claim to priority under treaty : A person intending to claim the right of priority based on the treaty shall file the patent application claiming the right of priority within one year from the filing date of the first application which is the basis for claiming the right of priority (Patent Law, Article 54(1) (2)), and a person intending to claim the right of priority shall specify such claim, the name of the country in which the first application was filed, and the filing date of such application in the patent application. (Patent Law, Article 54(3))

(2) Period for submitting priority claim documents : A person who has claimed the right of priority shall submit the priority claim documents (a written statement setting forth the filing date of the application, and the copy of the specification and drawings of the first application certified by the government of the country where the first application was filed) and the translations thereof , within one year and four months (16 months) from the earliest filing date. (Patent Law, Article 54(4) and (5), as revised effective as from July 1, 2001). Where a person who has claimed the right of priority fails to submit the priority documents within the required time limit, the claim to the right of priority shall lose its effect. (Patent Law, Article 54(6))

(3) Priority claim based on domestic patent application : A person intending to claim the right of priority based on domestic patent application shall, simultaneously with the patent application, make such a claim and identify the earlier application in the patent application and it shall be filed within one year from the prior application date. (Patent Law, Article 55(1), (2))

(4) Special provisions for priority claim based on PCT application : In the case of a PCT application with priority claim based on a prior domestic or PCT application, the period for claiming priority is the same as that of the priority claim based on domestic application. The gist of priority claim and an indication of the prior application must be filed by the relevant date--within one year and eight months (20 months) as in the case of the national time limit for submitting domestic documents; two years and six months (30 months) when an international preliminary examination was requested; or until the date of request for examination. (Patent Law, Article 202)

(5) Amendment of or addition to priority claim : A person claiming the right of priority based on the treaty or a patent application who has fulfilled the necessary requirements thereof may amend or add to priority claim within the period of one year and four months (16months) from the earliest date or from the date of the prior filing (the earliest filing date where two or more applications). (Patent Law, Articles 54(7) and 55(5), newly added effective as from July 1, 2001)

11. Request for Examination

A patent application shall be examined only upon request for examination. A request for examination can be made simultaneously by an applicant or at the time of filing of a patent application by anyone within five years from the filing date thereof. If a request for examination has not been made within the above time limit, the patent application shall be deemed to have been withdrawn. (Patent Law, Article 59(1), (2), (5)). Furthermore, the examination of patent applications proceeds in the order of requests for examination--not in the order of filing of applications. (Enforcement Regulation of the Patent Law, Article 39)

12. Preferential Examination and Subject Matter

When the Commissioner of the Korean Intellectual Property Office recognizes that a person, other than the applicant, is commercially and industrially working the invention claimed in a patent application after the laying-open of the application or with respect to a patent application which the commissioner deems it necessary to settle urgently and which is prescribed by Presidential Decree to be examined before the laying-open of the application, he may direct the examiner to examine the application in preference to other patent applications. (Patent Law, Article 61, as revised effective as from July 1, 2001)

13. Decision of Granting A Patent, and Notification of Reasons for Refusal

(1) Decision of granting a patent : Where an examiner does not find any grounds for refusing a patent application, he shall make a decision to grant a patent for the application. (Patent Law, Article 66)

(2) Notification of reasons for refusal : An examiner shall, when he intends to make a ruling of refusal, notify the applicant of the reasons and give the applicant an opportunity to submit a written statement of his arguments, designating a time limit for such submission. (Patent Law, Article 63) Nevertheless, this provision shall not apply to the case of a decision to reject an amendment which adds a new matter in response to the final notification of reasons for refusal. (Patent Law, Article 63, newly added effective as from July 1, 2001)

※ Notification of reasons for final refusal : The notification of reasons for refusal to the amendment submitted in response to the initial notification of reasons for refusal is referred to as a final notification of reasons for refusal (nonetheless, a notification relating to new and differential reasons for refusal is referred to as another initial notification of reasons for refusal. (Patent Law, Article 47(1)(i) and (ii), as revised effective as from July 1, 2001)

14. Laying - open of application

(1) Principle : All patent applications are laid open after one year and six months (18 months) from the initial filing date (the earliest date which is the basis of claiming priority) of an application for a patent. (Patent Law, Article 64(1), as revised effective as from July 1, 2001)

(2) Exceptions : Upon a request by the applicant, the application may be laid open earlier, even before one year and six months from the filing date of an application for a patent. (Patent Law, Article 64(1))

(3) Providing information for ruling of refusal of a patent: Any person may, while an application is laid open, furnish the Commissioner of the Korean Intellectual Property Office with information, together with evidence to the effect that the invention concerned is unpatentable by this law. (Patent Law, Article 64(2))

(4) Effects of laying open of application : After an application is laid open, the applicant is entitled to warn a person who has commercially or industrially worked the filed invention, with a document indicating that it is the invention for which a patent application has been filed. ( Patent Law, Article 65(1))

15. Opposition to Grant of A Patent

(1) Opposition to grant of a patent : From the date of the registration of establishment of a patent right up to three months after the publication of the registration of a patent, any person can file an opposition to the grant of the patent for the purpose of its revocation. (Patent Law, Article 69(1), as revised effective as from July 1, 2001)

(2) Grounds for opposition and submission of evidence : When filing an opposition, the opponent shall submit a written patent opposition documents containing the reasons therefor, together with necessary evidence as indicated, and he may amend the grounds and evidence set forth in the written opposition within 30 days from the expiration of the time limit for opposition. (Patent Law, Article 69(2) and 70(1))

※ Where the opponent fails to submit the grounds and evidence within the time limit for opposition, the opposition may be rejected by decision of the patent authorities. (Patent Law, Article 74)

16. Registration of Establishment of Patent Right and Scope of Protection

(1) Registration of establishment : A patent right shall come into force upon registration of its establishment. (Patent Law, Article 87(1))

(2) Scope of Protection of patent right : The scope of protection conferred by a patented invention shall be determined by the subject matters described in the claims. (Patent Law, Article 97)

17. Term of Patent Right and Extension thereof

(1) Term of patent right : The term of a patent right shall be twenty years from the filing date of the patent application, following the registration of establishment of the patent right. (Patent Law, Article 88(1))

(2) Extension of term of patent right : If a patented invention is a type of invention that requires an extended period of time to complete the test for activity, safety , etc., for its authorization or registration under provisions of other relevant laws or regulations, the term of the patent right may be extended by such period not exceeding five years, during which the patented invention could not be worked on account of such activities. (Patent Law, Article 89)

18. License of Patented Invention (Exclusive, Non-exclusive, and Statutory Licenses)

(1) Exclusive license : A patentee may grant an exclusive license on the patent right to another person, who shall have an exclusive right to work the patented invention commercially or industrially to the extent provided for in the license contract with the patentee. (Patent Law, Article 100)

(2) Non-exclusive license : A non-exclusive Licensee shall have the right to work the patented invention commercially or industrially to the extent provided for in this law in the license contract with the patentee or his exclusive licensee. (Patent Law, Article 102)

(3) Statutory license : These include the following non-exclusive licenses granted by operation of this law : non-exclusive license by prior use; non-exclusive license due to working prior to registration of request for invalidation trial; non-exclusive license after expiration of design right; non-exclusive license incidental to transfer of patent right by exercising of a pledge right; non-exclusive license for prior user of patent right restored by retrial; and non-exclusive license for person deprived of a non-exclusive license by retrial. (Patent Law, Articles 103, 104, 105, 122, 182, and 183)

19. Remedies against Patent Infringement

(1) Civil remedies : There are rights to demand injunction against infringement and claim compensation for damages and restoration of the reputation of the patentee, etc. (Patent Law, Articles 126, 128 and 131) ※ Where a patentee or exclusive licensee claims compensation for damages, the amount of damage shall be presumed to be the amount which is the product of the number of units sold by the infringer and the unit profit based on cost accounting by the patentee. (Patent Law, Article 128(1), newly added effective as from July 1, 2001)

(2) Criminal penalties : Any person who infringes a patent right or exclusive license shall be liable to imprisonment with labor for a period not exceeding seven (7) years and/or to a fine not exceeding one hundred million (100,000,000) won. (Patent Law, Article 225(1), as revised effective as from July 1, 2001). Patent infringement is an offense where a complaint has to be initiated by the victim. Thus, the offense is punishable only if there is a complaint by a patentee or exclusive licensee. (Patent Law, Article 225(2))

20. Types and Instances of Patent Trials

(1) Types of patent trials : Types of patent trials include the following: trial against ruling of refusal or decision of revocation; trial against decision to reject amendment; trial for invalidation of patent; trial for invalidation of registration for extension of term of patent right; trial to confirm the scope of patent right; trial for correction; trial for invalidation of correction; trial for granting non-exclusive license; trial for invalidation of registration for extension of term of patent right; request for retrial; request for retrial on account of collusion, etc. (Patent Law, Articles 132bis, 132quarter, 133, 134, 135, 136, 137, 138, 178 and 179)

(2) Instances of patent trial : The request for trial of the first instance is filed with the Intellectual Property Tribunal of the Korean Intellectual Property Office. An action against the decision of the Intellectual Property Tribunal can be instituted at the Patent Court (equivalent to the High Court), and an appeal against the judgment of the Patent Court is made to the Supreme Court. (Patent Law, Articles 132bis, and 186(1), (8))

21. Submission of The Translation of International Patent Application (PCT)

(1) In case an international preliminary examination has not been requested : An applicant for an international patent application in a foreign language shall submit a Korean translation of the description, claims, drawings and abstract filed on the international filing date within one year and eight months (20 months) from the priority date. (Patent Law, Article 201(1), (3))

(2) In case an international preliminary examination has been requested : The Korean translation must be submitted within two years and six months (30 months) from the priority date. (Patent Law, Article 201(1), (3))

(3) Effect of not submitting the translation : If the translation of the description and claims has not been submitted within the domestic time limit for submitting documents, the international patent application shall be deemed to have been withdrawn. (Patent Law, Article 201(2))

22. Status of the Korean Intellectual Property Office (KIPO)
( International Searching Authority and International Preliminary Examining Authority)

(1) KIPO as a Receiving Office of international applications : An international application based on the PCT can be filed with the KIPO, or a receiving office of the WIPO.

(2) Status of the KIPO : KIPO has been designated as an International Searching Authority, and International Preliminary Examining Authority under the PCT. Accordingly, as of December, 1999, KIPO started international search and preliminary examination work, and PCT international applications in Korean can be filed at the KIPO, too.

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