Procedures
for Granting a Patent
¡á
Overview
After a patent application is
filed with the KIPO, a patent
right is granted through various
steps. The Korean system is characterized
by:
¢¹ First-to-File Rule;
¢¹ Publication of Unexamined Application;
¢¹ Request for Examination; and
¢¹ Post-grant Opposition System
The procedures for registering
a utility model is same as that
of patent except for some
notification periods.
¡á
Filing
an Application
¢º
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.
¢º
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.
¢º
Claim
of Priority
In order to enjoy
the priority right, an application
should be filed in the Republic
of Korea within 1 year
fro
m the filing date of the priority
application. The priority document
above mentioned may be submitted
wit
hin one year and four months from
the priority date. If the priority
document is not submitted within
that pe
riod of time, the claim of priority
will become null and void.
¡á
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
Reg
ulation 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 submit
ted:
¢¹ where the kind of the application
is not clear;
| ¢¹ |
where the
name or address of a person
(or juristic person) who is
initiating the application
procedure (i.e. the applicant)
is not described;
|
¢¹ where the application is not written
in Korean;
| ¢¹
|
where the
application is not accompanied
by the specification/claims
or drawings (only for inventions
directed to articles); or
|
| ¢¹ |
where the
application is submitted,
by a person who has no address
or place of business in theRepublic
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 extensi on 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.
¡á 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.
¡á Substantial
Examination
¢º
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.
¢º
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
¢¹ It should have
Novelty, Industrial
Applicability, and
Inventive
Step
¢¹ It should not fall into any of the
categories of
unregistrable patent
prescribed in Article 38 of
¡á 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.
¡á 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 abando
ned.
¡á Publication
and Post-grant Opposition
In order to ensure the
prompt granting of a right, the Pre-grant
Opposition System was abolished and
the Post-grant Opposition System has
been implemented since July 1, 1997.
Where the examiners 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 the pat
ent
within 3 months from the
publication date.
¡á 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
requ
est a trial for invalidation of patent.
Such appeal and trial procedure are
conducted in the
Industrial Property
Tribunal which was establish ed
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.
