Although it is not possible to detail the Korean IP practice and procedures, we hope the foregoing brief explanation about the application procedures of Patents, Utility Models, Trademarks and Designs will provide helpful and essential guidance to anyone facing the complexities of registering intellectual property rights in Korea. Should you have any questions, please feel free to contact us.
Overview
After a patent application is filed with the KIPO, a patent right is granted through various steps. The Korean system is characterized by:
( i ) First-to-File Rule;
( ii ) Laying-Open of the Application;
( iii ) Request for Examination; and
- Fees for the Request for Examination, for Registration of the Patent Right, and for post-grant annuities are all based upon the number of claims.
- Patents filed on and after July 1, 1996 have a term of 20 years from their filing date, subject to payment of necessary annuities.
Filing an Application
- (1) Filing Requirements
- i ) Applicant
- Either the inventor of an invention or his/her assignee can file a patent application for the invention. The applicant may be either a natural person or a juristic person.
- Name, address and nationality of applicant(s) and inventor(s) must be specified.
- ii ) Documents Required
- All documents must be in the Korean language (translation required).
- Application must include a Specification, Claim(s), Abstract and Drawing(s) (if any).
- Power of Attorney must be submitted (may be late-filed at extra cost).
- iii ) Claim of Priority
- Foreign priority benefit can be claimed when filing and the claim(s) of priority benefit can be amended or added within 16 months from earliest priority date; priority document must be submitted except in PCT national phase applications. However If a priority document is a Japanese, European, US, or Australian patent application, the certified copy of the priority document need not to be submitted with Korean Patent Office.
KIPO has electronically exchanged priority document with the JPO, EPO, USPTO, and the Australia patent office, so applicants who wish to claim priority between KIPO and one of the above Patent Offices can simply write the application number for priority on a designated form.
- (2) Patent Prosecution Procedure
- i ) Laying-Open of the Application
Applications are laid-open for public inspection upon the elapsing of 18 months from their filing/priority date, or may be laid-open earlier upon request by the applicant.
Laying-open of the application confers upon the applicant the right to serve a written warning notifying the pendency of the patent right and the scope of the invention applied-for upon any party who is commercially working (embodying) the applied-for invention, and also confers upon the applicant the right to demand compensation from any party who has been served such a warning notice or who has otherwise become aware of the pendency of the patent right and who thereafter commercially works the applied-for invention. However, the right to receive such compensation may only be exercised after the examined application has been allowed and registered as a patent.
- ii ) Substantive Examination
Requesting of Examination is Required
Substantive examination of a patent application proceeds only upon filing of a formal Request for Examination accompanied by the required fee therefor. A Request for Examination may be made by any person within three (3) years - if an application filed before March 1, 2017 and is not subject to the revised law: five (5) years-from the date on which the application was filed in Korea (in the case of a PCT national phase application, three years from the International Application filing date). Once made, the Request for Examination may not be withdrawn. If the Request for Examination is not filed within the prescribed time limit, the application will be deemed irrevocably withdrawn.
Results of Examination
In case the claimed invention is deemed unpatentable or a formal deficiency is found, the Examiner will issue a Notice of Rejection (preliminary rejection) advising the applicant of the grounds of rejection, and giving the applicant a certain period of time in which to file a written response before the rejection is made final. The applicant's response must be submitted within the time designated by the Examiner. The initial response period designated is 2 months from the date of the Notice of Rejection, which may be extended only for up to four(4) months on a monthly basis,
or more than two(2) months in one lump upon request and payment of an official extension fees. If the Examiner considers that the applicant's response does not overcome the initial rejection, or if the applicant fails to submit a timely response, then a Decision of Rejection (final rejection) will be issued.
Request for Re-Examinations
If the Examiner issues a Decision of Rejection (final rejection), the applicant may file a request to re-examine his/her patent application after amending the specification or drawings of the patent application within 30 days from the date of receipt of the notice of final rejection. In such a case the Examiner will re-examine the application on the basis of the thus amended claims, after which the Examiner may either allows the application as amended or issues a Decision of Rejection (re-examination final rejection). Request for re-examination shall not apply where a decision to reject the patent application has already been made after re-examination or an appeal for final rejection has been filed. If a request for re-examination is filed under paragraph (1), the previous decision to reject the patent application shall be deemed revoked.
Appeal of Final Rejection
If the Examiner issues a Decision of Rejection (final rejection or re-examination final rejection), the applicant may lodge a demand for appeal trial before the Korean Industrial Property Tribunal (KIPT) of the KIPO within 30 days from the date of receipt of the notice of final rejection without amending the claim(s). The applicant may devide the application within 30 days from the date of receipt of the notice of final rejection as well, if necessary.
Conversion of the Application
The applicant of a patent application may convert the patent application into a utility model, but such conversion is possible from the filing date to within thirty (30) days after receipt of a Decision of Rejection on the original patent application.
When such conversion is carried out, the date of filing the converted application is accorded as the new filing date; however any priority benefit claimed in the original application remains valid for purposes of the "first first-to-file" rule. After conversion, the original application is deemed withdrawn.
- iii ) Grant and Registration of Patent
The patent right comes into force only upon registration of its establishment. Upon receipt of the Allowance of Patent, the applicant must pay to the KIPO within a prescribed period, typically three (3) months, the fees required for the first 3 years' annuities in a lump sum as the registration fee. If the registration fee is not timely paid within this period, the applicant still has the opportunity to secure registration of the patent right by paying the required registration plus a late surcharge within a grace period of six (6) months from the expiration of the prescribed three (3) month period. But if the required fees are not timely paid even within the grace period, the application will be deemed irretrievably abandoned.
Upon payment of the required fee, the KIPO registers the establishment of the patent right, and publicly notifies the fact of registration of the patent by publication for Opposition purposes.
Notable PCT points
- (1) Designation of the Republic of Korea (South Korea)
- he WIPO Code for Republic of Korea is KR. 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.
- (2) Entry into the National Phase for the Republic of Korea (KR)
- Time Limits for Korean National Phase Entry under PCT
For an International Application proceeding under PCT(KR designated on the Request) to enter the Korean national phase, the requirements for national phase entry must be satisfied within 31 months from the earliest (priority) application date.
Applications must be filed in Korean language
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 the time limits.
( i ) 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):
( ii ) a Korean translation of the description, claims, text matter of drawings and abstract of the international application as filed;
( iii ) drawing(s), if they contain translated text matter, and
( iv ) a power of attorney, if necessary.
If an applicant has submitted a document to request the extension of the period for submitting the Korean translation, during the period commencing one month before the expiration of the period for submitting domestic documents until the expiration of the period, the Korean translation may be submitted by not later than one month from the expiration of the period for submitting domestic documents.
All applications, including PCT International Applications entering the Korean national phase, are required to be filed in Korean language. If the application is in a different language, it will be necessary to first translate the application into the Korean language before it can be filed in Korea.
If any amendment of the claims of the International Application was made under PCT Article 19 or PCT Article 34, a Korean translation of the International Application with the amended claims should be submitted when entering the Korean national phase.
Expedited Examination
According to Article 61 of the Patent Act, the Commissioner of KIPO may have a particular category of patent applications 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; or
(2) in case it is considered that urgent processing of the patent application is
necessary and
the patent application for an invention:
1. related to the defense industry;
2. related directly to green technology (referring to such technology that minimizes emissions of greenhouse gases and pollutants by saving energy and resources and making use of them efficiently throughout the whole process of social and economic activities, such as technology related to reducing greenhouse gases, raising the efficiency of energy utilization, pollution-free production, clean energy, recycling resources, and eco-friendliness (including related convergence technology) or such);
2-2. using technologies related to the Fourth Industrial Revolution, such as artificial intelligence or Internet of Things;
3. related directly to the promotion of exports;
4. made by an employee of the central or a local government of Korea (including any patent application concerning the duties of the national and public schools provided for in the Higher Education Act, which is filed by the organization in charge of the technology transfer and industrialization established within the national and public schools pursuant to Article 11(1) of the Technology Transfer and Commercialization Promotion Act);
5. of which the applicant is a venture company certified under Article 25 of the Korean Act on Special Measures for Fostering Start-up Companies;
5-2. of which the applicant is an enterprise selected as a technology-innovative small and medium enterprise under Article 15 of the Technical Renovation of Small and Medium Enterprises Act;
5-3. of which the applicant is an enterprise selected as an exemplary company in terms of the employee invention compensation system under Article 11-2 of the Invention Promotion Act;
5-4. of which the applicant is a small or medium enterprise with the certification of management of intellectual property under Article 24-2 of the Invention Promotion Act;
6. related to a product of the State's project to support the development of new technology or quality certification;
7. which would be basis for claiming a priority right under treaties (only if the patent application is the basis for claiming a priority right of which patent related procedures are pending in a foreign Patent Office);
7-2. an international patent application for which the Korean Intellectual Property Office performed international searches as an international search authority under the "patent cooperation treaty" pursuant to Article 198-2 of the Patent Act.
8. that the applicant has been practicing (working) or has been making preparations for practicing (working);
9. deleted <2019. 7. 9.>
10. on which the Commissioner of the Korean Intellectual Property Office has agreed with the commissioner of any foreign intellectual property office to preferentially examine it;
or
11. for which a person who intends to file an application for prior examination retained a specialized institution under Article 58(1) of the Act to search prior arts with respect to the invention for which the patent application is pending, and requested the specialized institution to notify the results of the search to the Commissioner of the Korean Intellectual Property Office.
12. of which the applicant is any of the following persons:
(a) A person aged 65 years or older;
(b) A person whose health problem is likely to incapacitate him/her from following the procedure concerning a patent until a decision to grant a patent or to reject a patent application is rendered unless he/she undergoes an expedited examination.
* The above only specifies broad categories applicable for Preferential Examination. Please contact us or other Korean counsel for more detailed information.*
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 such.
Overview
- i ) Inventions of relatively low technical level can be protected as a utility model. Inventive step requirements are less strict than for patents.
- ii ) Duration of a Utility Model Right
- as of July 1, 1999: 10 years from the Korean filing date.
- iii ) Filing requirements: same as for Patents.
- iv ) Substantive Examination: The request for Examination must be filed within 3 years from filing date of the application in Korea.
Filing an Application
The formal requirements for utility model applications are basically the same as for patent applications, including the title of the device, specification, claim(s), abstract, drawing(mandatory), priority document(if priority benefit is claimed), and submission of a Power of Attorney for non-resident applicants.
Conversion of the Application
The applicant of a patent application may convert the patent application into a utility model, and similarly the applicant of a utility model may convert the application into a patent application, provided that such conversion is possible from the filing date to within 30 days after the receipt of a Decision of Rejection on the original patent or utility model applications. The converted application will retain the filing date and any perfected priority benefit of the original application for purposes of the "first-to-file" rule and for determining noverty and inventive step.
Overview
Trademarks and Service marks (referred to as "Trademark(s)" hereinafter) may be protected in the Republic of Korea under the Korean Trademark Act; and for such protection, marks should be registered with the Korean Intellectual Property Office ("KIPO"). The use of a trademark is not a prerequisite for filing an application for the registration of a trademark. Unregistered marks are not protected under the Trademark Act, although the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark. There is no course of action against infringement of a well-known or famous unregistered trademark under the Trademark Act, but an action may be brought under the Unfair Competition Prevention Act.
The Korean Trademark Law is characterized by :
i ) First-to-File Rule
ii ) Substantial Examination
iii ) Pre-grant Opposition
Filing an Application
- i ) Applicant
- Any person may file an application for the registration of a trademark. Although the Korean Trademark Act adopts a registration system, not a use system, the applicant of a trademark application should have a bona fide intent to use his trademark in the Republic of Korea. Nonetheless, trademarks that will not actually be used are also registered. Such trademarks, however, will be subject to cancellation if they remain unused for three or more consecutive years after their registration.
- ii ) Documents Required
- For a trademark application, the following documents should be submitted to KIPO:
(a) an application stating the following: the name and address of the applicant (including the name of an executive officer, if the applicant is a juristic person); the trademark; the designated goods and class thereof; the date of submission; and the country and filing date of the priority application, if the right of priority is claimed;
(b) 1 specimens of the trademark (8cm x 8cm or smaller in size);
(c) if the right of priority is claimed, the priority document, if necessary; and
(d) a power of attorney, if necessary.
If the applicant fails to submit specimens of the trademark or a power of attorney at the time of filing the trademark application, KIPO will issue a notice of amendment requesting the applicant to submit them, designating a time limit therefor. The priority document must be submitted within 3 months from the filing date in the Republic of Korea of the trademark application. This time limit cannot be extended
- iii ) Designation of Goods/Services: NICE Classification
- A person who desires to file a trademark application for registration must designate goods/services on which the trademark is to be used in accordance with the NICE Classification of Goods and Services ("Korean Version") for the Purpose of Registration of Marks.
The Korean Version contains the same class headings as those of the NICE Classification in description through all the classes. However some goods and services listed in the NICE Classification were omitted for the Korean Version
- iv ) Claim of Priority
- The right of priority can be claimed in a trademark application for an applicant whose country of origin is a party to the Paris Convention or under a bilateral agreement between two relevant governments or on a reciprocal basis. In order to enjoy the priority right, an application should be filed in the Republic of Korea within six months from the filing date of the priority application. The priority document should be submitted to KIPO within three months from the filing date of his/her application.
KIPO has electronically exchanged priority document with the JPO, EPO, USPTO, and the Australia patent office, so applications who wish to claim priority between KIPO and one of the above Patent Offices can simply write the application number for priority on a designated form, without submitting the certified copy of the priority document to KIPO
Examination Procedures
- i ) Initiation of Examination
- Unlike patent or utility model applications, trademark applications are automatically examined in order of their filing date. No request for examination is needed for the initiation of substantial examination.
- ii ) Substantial Examination
- The KIPO examines whether the application satisfies the criteria of registrability; namely, for distinctiveness of the applied-for trademark and similarity of the applied-for mark to any prior-registered or prior-applied-for trademarks designating the same category of goods, and whether the goods/services have been specified sufficiently.
If the Examiner finds any reason for rejecting the application, the Examiner issues a Notice of Rejection stating such reasons and instructing the applicant to submit a response, if any, against the rejection reasons within a specified time, usually 2 months, which is extendable upon request and payment of an official fee.
Publication Opposition
If the trademark application satisfies the requirements for registration, the Examiner will issue a Decision for Publication notifying the applicant that the application will be published ("publicly notified") for opposition purposes, and the application will then be published in the Official Trademark Gazette. Once the trademark application has been published, any person may file an opposition against the application within two(2) months of the publication date. No extension of the opposition filing period is available. The grounds and evidences relating to the opposition may be submitted or amended within 30 days after the Opposition filing period expires.
Once the application has been published, the applicant may give written warning to anyone who is using or has used an identical or similar mark for the same or similar goods/services, and may claim compensation. However, compensation may not be recovered until the mark has been registered.
Opposition Procedure
If an Opposition is brought against the published trademark application, the Opposition Examiner will conduct the Opposition, and will render a decision based upon the evidence and arguments submitted by the opposer and applicant. If the opposition is decided as not being well-grounded, the Examiner will dismiss the opposition and issue a Decision for Registration, but if the Opposition is well-grounded the Examiner will accept the opposition and will issue a Decision of Rejection (final rejection) against the application. No appeal is available against an opposition decision, although the applicant may lodge an appeal against a final rejection of the application, and an unsuccessful opposer may lodge an invalidation or cancellation trial against the trademark registration.
Grant and Registration
If the published trademark application encounters no opposition, or if the opposition proceeding is decided in favor of the applicant, the Examiner will issue a Decision for Registration allowing the application for registration. The applicant must then pay the necessary registration fee to the KIPO within two (2) months (extendable by 30 days at extra cost). It is possible, when paying the registration fee, to delete designated goods/services (typically done to reduce costs). Upon payment of the registration fee, the mark is registered by the KIPO to establish the trademark or service mark right and a Certificate of Trademark (Service mark) Registration is issued to the registrant.
Others
The duration of the protection of a trademark right is 10 years from the date of registration of the trademark, which may be renewed every 10 years. For the renewal of a trademark registration, an application for the renewal should be filed with KIPO. Once a renewal application has been duly filed, the trademark registration is deemed to have been renewed on the expiration date of the original registration.
Overview
Currently, the Design Protection System in the Republic of Korea has Substantive Examination System (SES) and Non-Substantive Examination System (NSES).
To expediate the procedure for the registration of designs, the KIPO revised the Design Law as of March 1, 1998, introducing the Non-Substantial Examination System (NSES) for some short-term life-cycle products. Under the NSES, applicants may get a design registration within 2 or 3 months from the filing date and enjoy procedures such as Post-Grant Opposition.
Even though the applications under the NSES are not examined substantially, the requirements for the registration and the effects of rights are same with those of under the Substantive Examination System (SES). The registrations under the NSES, which do not fulfill the requirements, will be invalidated through the Post-Grant Opposition or Trial.
Substantial Examination Syatem (SES)
- (1) Filing an Application
- i ) Documents required
A person who desires to obtain a design registration must submit to the Commissioner of KIPO the following documents:
(a) an application stating the name and address of the creator and the applicant, the date of submission, the name of the article on which the design is embodied, the claim and the priority data (if the right of priority is claimed);
(b) drawings of the design;
(c) 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
(d) a power of attorney, if necessary.
Documents (a) and (b) above must be submitted at the time of filing the design application. The priority document and power of attorney can be later submitted after the filing of the application.
- ii ) Claim of Priority
In order to claim priority benefit to an earlier-filed foreign application, the design application claiming such priority benefit must be filed within six (6) months from the Claimed priority date. Priority benefit of the earlier-filed foreign application must be claimed at the time of filing the design application in the KIPO, and a certified copy of the priority application must be submitted to the KIPO within three (3) months of filing the design application in Korea, in order to perfect the claim for priority.
KIPO has electronically exchanged priority document with the JPO, EPO, USPTO, and the Australia patent office, so applications who wish to claim priority between KIPO and one of the above Patent Offices can simply write the application number for priority on a designated form, without submitting the certified copy of the priority
document to KIPO
- iii ) Drawings
Drawings appended to a design application should contain:
(a) the name of the article embodying the design; and
(b) a description of the design and the gist of the design.
In lieu of drawings, photographs, models or samples of the design may be submitted.
Drawings may contain a perspective view, a front view, a rear view, a right side view, a left side view, a top view, a bottom view and other views (e.g. a sectional view), if necessary or useful in describing the design. Only one drawing can be submitted for a design applicaiton, if the contents of the design and the entire shape to be registered are clearly specified in such single drawing.
The drawings may also be sumitted in three-dimensional image files, e.g., DWG, DWF, or 3DS file formats.
The procedure dealing with the formality examination of a design application is the same as that of a patent application.
- (2) Substantial Examination
- i ) Initiation of Examination
Unlike a patent or utility model application, an applicant is not required to request examination of the design application. Examination of design applications commences in turn in the order of the filing date thereof, unless preferential examination is requested and granted. It generally takes about one year or so to complete the examination from the filing date. A request for expedited examination may be made once the design application has been laid-open to public inspection upon the request of the applicant showing that it is presently being infringed.
- ii ) Requirement for Registration
To be registerable under the Design Act, a design should meet the following requirements;
(a) Under the Korean Design Law, a "Design" is defined as a shape, pattern, color or any combination thereof in an article, which creates a visually aesthetic impression. Thus, the subject matter of a design relates to the external appearance of an article. The term "article" is generally considered as a tangible, movable and independent thing.
(b) Industrial applicability ; the designs should be mass-produced in an industrial method.
(c) Novelty ; the designs should not be identical or similar to a design that was publicly known or worked or published within or outside the Republic of Korea before the application for design registration.
(d) Creativity ; the design should be a design which could not have been easily created, by a person having ordinary skill in the relevant field from the shape, pattern, color or a combination thereof which was widely known in the Republic of Korea.
(e) Furthermore, the design should not be any of the unregistrable designs provided in Article 6 of the Design Act, such as designs which disturb the public order or good morals and a design which is identical with or similar to the flag, emblem of nation or public organizations.
Even if a design was published or known or worked by the applicant himself prior to the filing date of the design application therefor, it is deemed to be novel provided that the design application is filed within 6 months after the disclosure was made.
Any person who desires to have his design be presumed novel must submit a written statement to that effect to KIPO at the time of filing the design application. Any document substantiating such statement should be also submitted within 30 days from the filing date.
- iii ) Rejection and Registration
If a design application falls under any of the grounds for rejection enumerated in the Design Act, the Examiner must issue a notice of preliminary rejection, stating the reasons for rejection, and give the applicant an opportunity to submit a written opinion within the specified time limit.
If the examiner finds no grounds for rejection or he is persuaded by the applicant's argument and/or amendment, he will render a decision to grant registration.
If the examiner considers that the applicant's argument is without merit and the ground for rejection has not been overcome, the examiner will issue a notice of final rejection of the design application. There is no publication for opposition of a design application under the SES after the substantive examination
Non-Substantial Examination System (NSES)
- (1) Formality Examination and Registration
- Under the NSES, examiners conduct a formality check and examination to determine whether the design will disturb the public order or good morals, and whether the
design can be created on the basis of shape, pattern, color or their combination which are already widely known in Korea.
If the examiner finds no flaw in the inspection of basic and perfunctory matters, will render a decision to grant registration without substantial examination.
- (2) Publication and Post-grant Opposition
- KIPO publishes a "design registration gazette under the NSES" after the design applicant pays the registration fee.
Once a design has been registered with the KIPO, any person may file an opposition against the registration of the design under the NSES within 3 months from the registration publication date.
The grounds of opposition are the same as those of requirement of registration under the NSES; novelty, creativity, industrial applicability, and other unregistrable designs.
- (3) Rights conferred to the design registration under the NSES
- The exclusive rights conferred to the design registration under the NSES are same as those of under the SES.
If the registration under the NSES is invalidated by opposition or trial, the right conferred to the registration under the NSES will retroactively lose effect.
Furthermore, if the alleged right holder injures a person by exercising his forged right, he has to compensate for the damages regardless of his design registration under the NSES.