OVERVIEW

An invention is protected upon the grant of a patent pursuant to the Patent Law. The invention must satisfy the basic criteria of industrial applicability, novelty and inventiveness. And the invention must be "a high level creation of a technical idea utilizing the law of nature".

After a patent application is filed with the KIPO, a patent right is granted through various steps. The Korean system is characterized by:

■ First-to-File Rule;

■ Publication of Unexamined Application;

■ Request for Examination; and

■ Post-grant Opposition System

FILING AN APPLICATION

1. Applicant

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.

2. Documents Required

A person who desires to obtain a patent must submit to the Commissioner of KIPO the following documents:

■ 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);

■ 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);

■ drawing(s), if any;

■ an abstract;

■ 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

■ a power of attorney, if necessary.

3. 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.

4. 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 Regulation 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 submitted:

5. 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.

SUBSTANTIAL EXAMINATION

1. 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.

■ Expedited Examination

According to Article 61 of the Patent Act, the Commissioner of KIPO may have a particular category of patent application 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:

- 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; and

- in case an application has been laid-open and

it relates to goods for defense industry and processes for the preparation thereof, as defined in the Special Measures Act Relating to Defense Industry.

it relates to facilities for the prevention of environmental pollution or a process thereof

it is directly involved in the promotion of export as evidenced by export records, a letter of credit and a request from the buyer of exported goods to show a patent right therefor, or

it is made by an employee of the central government, a local government, or a research institute sponsored by central or local government.

2. Requirement for Registration

For a patent to be registered under the Patent Law, it should meet the following requirements;

■ It should fall under the definition of invention under the Patent Act

■ It should have Novelty, Industrial Applicability, and Inventive Step

■ It should not fall into any of the categories of unregistrable patent prescribed in Article 38 of Patent Act.

3. 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.

4. Registration

When there is no reasons for rejection in a patent application or the reasons for rejection are overcome, a notice for ruling of grant of a patent shall be issued.

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. When a patent right is registered with payment of the patent fee, a Certificate of Patent Registration shall be issued.

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.

Term of patent right is to twenty (20) years from the date of filing the patent application (or international application)

5. 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 patent within 3 months from the publication date.

6. 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.