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(1) Overview
(2) Filing an Application
(3) Laying open of Publication for Public Inspection
(4) Substantial Examination
(5) Rejection
(6) Registration
(7) Appeal and Trial |
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(1) Filing of International Application in the Republic of Korea
(2) Entry into the National Phase for the Republic of Korea (KR) |
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| (1) Overview |
After a patent application is filed with the KIPO, a patent right is granted through various steps.
The Korean 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. |
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| (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 the applicant is a juristic person), 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) 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
(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 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. |
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| (3) 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, 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. |
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| (4) 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 thereof.
(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 Act
(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. |
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| (5) Rejection |
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.
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| (6) 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.
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| (7) 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.
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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. |
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| (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.
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| (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 31 months 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, text matter of drawings 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.
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