• Guide to Patent

    © Copyright 1996 HANS

    Last revised October 10, 1996.


    Application

    1. Filing

    To apply for a patent in Korea, one must file application documents as prescribed by the patent law. However, persons having neither domicile nor residence in Korea, must file an application through a patent administrator(e.g. patent attorney) having a domicile or residence in Korea. This is to facilitate communication between the applicant and the Korean Patent Office.

    Where the specification has to be translated into Korean, the request for filing an application in Korea to a patent administrator close to the time of expiration of a priority period possibly leads to the filing of an unsatisfactory translation of the specification and then reasons for refusal because of deficiencies in the description of the specification will be notified to the applicant.

    Therefore, a foreign applicant is recommended to decide at an earlier stage of the priority period whether or not filing of an application in Korea should be made.

    2. Procedures for claiming priority

    A. Priority under the Paris Convention

    Persons wishing to claim priority by the Provision 4(D) of the Paris Convention must take the following procedure

    (i) To file, simultaneously with the application, a document specifying the name of a country party to the Paris Convention in which the application was first filed, and the date of filing of the application in that country

    (ii) Documents such as a certificate of priority claim issued by the original filing country must be presented to the Korean Patent Office within one year and 4 months from the priority date.

    B. Internal priority

    There is a system of claiming internal priority in Korea. An application claiming an internal priority is similar to a CIP application in U.S.A.

    Under the internal priority system, a later filed application may claim priority for matters already disclosed in an earlier application by the same applicant, filed within 12 months prior to the filing of the later application, by indicating on the request of the later application, the earlier application and that priority is being claimed.

    When priority is claimed, the earlier application will be deemed withdrawn after 15 months have elapsed from its filing date

    If the improvement in the invention claimed in the later application over the invention claimed in the earlier application may be obvious and the two inventions may be substantially identical, it would be advisable for the applicant to claim internal priority when filing the later application in order to avoid refusal.

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    Examination of Formalities

    Allocation of application number

    An application filed with the Application Division, is allocated an application serial number after being recorded into a file, and the number is notified to the applicant later.

    Formality check

    A formality check is made to see whether the application meets the prescribed formality requirements. If any defects are found, a notification is sent to the applicant, and the applicant can make amendments. If the defects are not rectified, the application may be invalidated.

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    Assigning of classification (IPC)

    When an application is found satisfactory as to formalities, it is assigned its International Patent Classification (IPC)

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    Laying-Open to public inspection

    All patent applications are laid open, after the expiration of 18 months from the filing date whether a request for examination has been filed or nor, in the patent gazette describing the content of the application.

    However, as regards priority claiming applications, the term of 18 months is counted from the original filing date, and for applications with more than one priority claims, it is counted form the earliest priority date.

    Under Article 64(1) of the revised Patent Law, which is effective on Julu 1, 1996, a patent application can be laid-open before the normally required time of 18 months has not been passed from the filing date if the applicant so desires.

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    Effects ofLaying-Open Application

    After an application is laid open, the applicant may warn a person, who has commercially or industrially worked the filed invention, with a document indicating that the patent application of the invention has been filed.

    The applicant may demand a person, who has been warned, to pay compensation in an amount equivalent to what he would normally receive for the working of the invention during the period from the warning or the time when he/she knows the fact that the patent application of the invention has been filed to the time of the publication of the filed invention.

    The right to demand compensation may be excercised only after the publication of

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    Request for examination

    In Korea, examination is carried out only on applications for which request for examination has been filed. This system enables the applicant to review whether examination is necessary and also to choose the timing to file such a request. Examination becomes unnecessary on those for which no such request if filed and, as a result, the system contributes to the acceleration of examination work.

    For an application to be examined, a request for examination is required. The period in which such a request may be filed is limited to 5 years from the filing date. If no such request is filed within the prescribed period, the application is deemed to be withdrawn.

    An application for which a request for examination has been filed is forwarded to a division in the Examination Department in accordance with the International Patent Classification (IPC) assigned to that application, and subsequently, to the examiner in charge. The examiner assigned to the IPC which was given that application becomes the examiner in charge for that application.

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    Preferential Examination

    When the Commissioner of the Korean Patent 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 but before the grant of the patent, or with respect to a patent application which he deems it necessary to settle urgently and which is prescribed by the Presidential Decree, may direct the examiner to examine the application in preference to other patent applications.

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    Examination

    1. Requirements concerning description of the specification for obtaining patents

    The aim of the patent system is to allow useful inventions to be utilized by the society in general by making such inventions public, thereby promoting development of industry. On the other hand, as a compensation for disclosing his invention, a monopoly called patent is granted to the inventor.

    A specification serves both as a technical document in which the content of the invention is completely disclosed, and as a document defining the technical scope of the right.

    Consequently, a specification must be written so that a person having ordinary skill in the art to which the invention pertains is able to understand and carry out the invention.

    As a document for defining the scope of patent right, the claims must recite all necessary technical means for achieving the purpose of the invention for which a patent is sought i.e., all the elements indispensable in the constitution of the invention for which a patent is sought.

    Thus, the specification has an important role in maintaining the patent system, and insufficient description in the specification therefore becomes a reason for refusal.

    A. Requirements concerning description of the claims

    B. Requirements concering description of the detailed explanation of the invention

    The purpose, constitution and effects of every invention seeking a patent, of which indispensable constituent features are recited in each claim, must be described in the detailed explanation of the invention in correspondence to each claim and in such a manner that a person skilled in the art can correctly understand and carry out the invention easily.

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    2. Requirements for patentability

    Apart from the requirements concerning description of the specification, the invention must meet the requirements mentioned below in order to patented.

    A. Patentability

    B. Unpatentable inventions

    The invention must not fall within the category of unpatentable inventions.

    Inventions of substances to be produced by nuclear transformation and inventions liable to contravene public order, morality or public health cannot be patented regardless whether requirements of A. above are met.

    C First-to-file rule

    If a plurality of applications claiming the same invention are filed, the earliest filed application has the right to be patented, regardless whether the inventors or applicants are identical or not.

    D. Extended First-to-file rule

    Where the invention was described in the specification or drawings of another earlier filed application, a patent is not granted for the invention

    If the claimed invention is identical with an invention described in the specification or the drawings(s) of an earlier filed application, it cannot be patented even if the patent application for the claimed invention was filed prior to the publication of the earlier filed application. However, this provision does not apply if the inventor or the applicant of the later application is identical to those of the earlier application.

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    Notification of reasons for refusal

    1. Notification of reasons for refusal

    If any reason for refusal is found in the process of examination by an examiner, that examiner formulates a notification of reasons for refusal and sends it to the applicant.

    On receipt of a notification of reasons for refusal, the applicant may present a written argument and/or an amendment if necessary, within one month for applicants residing in Korea or two months for those residing in foreign countries, in order to resolve the reason for refusal.

    2. Responses to a notification of reasons for refusal

    3. Amendment of specification

    To amend the specification is the most effective way of resolving the reasons for refusal. But there are restrictions in timing and in content of amendments.

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    Publication of the application for opposition

    When the reasons for refusal are resolved by the response of the applicant or when no reason for refusal is found, the examiner makes a decision for publication of the application for opposition. Then the Commissioner of the Patent Office issues a Publication of examined patent application. This is to make public in the Official Gazette the content of the invention that the examiner, as a result of examination, deems worthy of granting a patent.

    This does not mean that a patent right is established at that stage. However, after the publication of the application for opposition, an exclusive right almost identical to a patent right is conferred. The application documents of the published application may be freely inspected at the Patent Office for two months from the date of publication.

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    Filing of opposition to granting of patent

    During the two months following the date of publication for opposition, any person may file an opposition to the granting of patent. Filing an opposition is carried out by filing a document stating the grounds of opposition.

    The grounds and evidence for opposition may be amended within 30 days from the expiration of the statutory period for filing opposition.

    When an opposition is filed, the examiner in charge will consider the arguments presented by both the applicant and the opponent and makes a decision concerning the opposition to granting of patent. The applicant may contest the credibility of the evidence used for opposition.

    If the examiner decides that there is reason in the opposition, he then makes a decision to refuse the application. On the other hand, if he/she finds no reason in the opposition, he/she makes a decision to grant a patent

    If no opposition is filed, the examiner normally makes a decision to grant a patent. The system of filing opposition contributes to the stability of the patent right. This may be seen from the low rate of the decision of invalidity in trials for invalidation after a patent right has been established.

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    Decision to grant a patent; Patent right

    After an application is published for opposition after examination and if no reason for refusal is found in the statutory period for filing an opposition, a decision to grant a patent is made.

    When a decision to grant a patent is made, a certified copy of the decision is sent to the applicant. The patent right takes effect when the applicant, on receipt of the copy, pays the prescribed fee within a prescribed period.

    The term of the patent right shall be 15 years from the date of publication of the patent application, however, this term shall not exceed 20 years from the filing date.

    The Patent right entitles its owner the exclusive right to exploit the invention for which patent is granted.

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    Decision of refusal

    A decision of refusal is made when the reason(s) for refusal found by the examiner in charge is not resolved by written argument or amendment presented by the applicant(or no response is made by the applicant).

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    Appeal (Against a decision of refusal)

    If the applicant is dissatisfied with the decision, he/she may appeal to the Department of Appeals and Trials within 30 days form the date of transmittal of the certified copy of the decision.

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    Assigning the former examiner in charge to reconsider an application prior to trial examination

    When an amendment is presented by the applicant at the time an appeal is filed against a decision of refusal, the examiner who was in charge of examination of the application concerned is assigned to reconsider the application .

    This method has been adopted as there are many instances where the reasons for refusal are resolved by amendment. As the former examiner is familiar with the content of the application and with the case history, the method contributes to the acceleration of trial procedures.

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    Trial examination: Trial decision

    At the Department of Appeals, 3 trial examiners form a collegial body for deliberation of the case and render a trial decision.

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    Appeal to supreme court

    If a person upon whom the decision of the appellate trial is given is dissatisfied with it, he may bring a final appeal in the Supreme Court within 30 days after he is served a copy of the trial decision only in case where the final appeal is brought by the reason that the decision on trial is in contravention of laws and regulations.

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