A. The Patent and the Utility Model
1. Procedures for Granting a Patent
+-------------+
| Application |
+------+------+
+------------+------------+ no
| Examination on |---------------------------+
| Filing and Formalities | |
+------------+------------+ +----------------------------+
+--------------------------+ Order to Correct or Amend |
yes | +-------------+--------------+ |
| +-------------+--------------+
+--------------------------+ Correction |
| yes | or Amendment |
| +-------------+--------------+ no |
+------------+------------+ +-------------+--------------+
| Laying Open | | Nullification |
| of Application | +----------------------------+
+------------+------------+
|
+-------------------------+
| Request for Examination |
| of Patent Application |
+------------+------------+
|
+------------+------------+ no
| Substantive +-----------------+
| Examination | |
+---------------+---------+ +------------+--------------+
| | Notification of |
yes | | Reseon for Rejection |
| +------------+--------------+
| |
| +------------+--------------+
| yes | Correction |
+----------------+ or Amendment |
+---------------------+------+ +------------+--------------+
| Publication of Application | no |
| for Public Inspection | +--------------------+
+-------------+--------------+ |
+-------------+--------------+ |
| Opposition to the +------------------------+ yes |
| Grant of the Patent | | |
+-------------+--------------+ +-------------+-----------+ |
no +-------------------------+ Rulling on Opposition | |
+-------------+--------------+ +-------------+-----------+ |
| Grant of the Patent | | |
+------------+---------------+ | |
+------------+---------------+ Sustained | |
no +----+ Payment of Patent Fee | | |
| +-------------------------+--+ | |
+-+-------------+ +--------+------+ +------+---------+ |
| Nullification | | Registration | | Rejection +--------+
+---------------+ +---------------+ +--------+-------+ |
+--------+--------+
| Appellate Trial |
+-----------------+
2. Filing an Application
To apply for a patent in Korea, one must file application documents as prescribed by law. However, persons having neither a domicile nor residence in Korea(or in the case of a legal entity, a business establishment) must file the application through a patent attorney (patent administrator) having a domicile or residence in Korea (Patent Law, Art. 5). This is to facilitate communication between the applicant and KIPO.
Emphasis should be given to the difference between Korean and foreign legislations and also in the languages used. To avoid unnecessary complications, a foreign applicant is advised to consult his/her patent attorney in Korea, and respect his/her opinions as that of a professional.
a. Documents to be Filed with KIPO
2) The patent application shall be accompanied by a specification, a drawing (if necessary), and an abstract mentioning the following (Patent Law Art.42 (2) )
b. Procedures for Claiming Priority
(ii ) Present documents such as a Certificate of Priority Claim issued by the original filing country to the Korean Industrial Property Office within 16months from the filing date of the first application.
3. Requisites for Obtaining Patents
a. Requisites Concerning Invention
Apart from the requisites concerning the writing of a specification, the. invention must meet the conditions mentioned below in order to he patented:
1) Patentability
( ii ) Novelty
(iii ) Inventive step
The invention must be potentially useful in industry.
An invention of which the indispensable elements are partially or totally lacking is considered incomplete and will be subject to rejection.
Inventions of substances produced by nuclear transformation and inventions violating public order or morale cannot be patented regardless of whether requisites under "1)" are met.
However, KIPO is considering the deletion of the invention of substances produced by nuclear transformation from the Conditions for Unpatentablity.
3) It must be the earliest application: First-to File rule
If more than one applicant files a patent application for an identical invention, the patent will be granted to the earliest filed application, regardless of whether the inventors or applications are identical or not.
4) The invention should not have been disclosed in specification or drawing(s) of an earlier published application, either unexamined or examined
If the invention which divas filed for a patent is identical to an invention mentioned in the specification or the drawing(s) of an application which was filed earlier, it cannot be patented even if the later application was filed prior to the publication (either unexamined or examined) of the earlier application, or if the applicant of the later application is identical to that of the earlier application when filed.
Therefore, a person desiring the application of the provision to his)her invention is advised to consult with his/her patent attorney.
b. Requisites Concerning Specification
The aim of the patent system is to allow useful inventions to be utilized by society in general by making such inventions public, thereby promoting development of industry. A "patent" granted to the inventor provides compensation to the inventor for disclosing his/her invention.
A Specification serves both as a document in which the technical content of the invention is completely disclosed and as a document claiming the technical scope of that right.
Requisites for Claims
( i ) Independent claims (indispensable constituent features)
( ii ) Dependent claims
A patent application is examined only upon request for examination. When a patent application has been filed, any person may make a request for examination within five years (three years for utility models) from the filing date thereof. If a request for examination has not been made within time limits prescribed, the patent application shall be deemed to have been withdrawn.
5. Laying Open of Application
After one year and six months from the filing date of an application for a patent, the Commissioner of KIPO shall publish the patent application in the Patent Gazette.
6. Notification of Reasons for Rejection
If any reasons for rejection are found in the process of examination by an examiner, that examiner should notify the applicant of the reason and provide the applicant with an opportunity to submit a written statement of his arguments, designating a time limit for such submission.
7. Publication of Application for Public Inspection
When an examiner finds there are no reasons for rejecting the patent application, he shall render a decision that the application is to be published. After publication of the application, the applicant for that patent shall have the exclusive right to commercially and industrially work the invention claimed in the patent application.
8. Opposition to the Grant of the Patent
Within two months from the date of publication of the application, any person may file an opposition to the grant of the patent with the Commissioner of KIPO.
If the examiner decides that there is valid reason for opposition, he then makes a decision to reject the application. On the other hand, if he finds no reason to sustain the opposition, he makes a decision to grant the patent
9. The Patent Right
a. Term of the Patent Right
Furthermore, KIPO is planning to lengthen the duration of the patent right to
20 years from the filing date of an application to cope with the UR/TRIPs
Agreement.
b. Rights Conferred by the Patent
The patentee shall have the exclusive right to work the patented invention
commercially and industrially.
The patent right may be assigned. And a patentee may grant an exclusive
license on the patent right. An exclusive licensee may not transfer the
license without the consent of the patentee, except where it is transferred
together with the business of the licensee or in the case of inheritance or
other general succession.
The patentee may grant to others a nonexclusive license on his/her patent
right.
A nonexclusive license may be transferred only together with the business in
which it is worked or by way of inheritance or other general succession.
10. The Trial and the Appellate Trial
The patent trial is a procedure for resolving patent disputes. The applicant
is given a period for response upon receipt of the certified copy of the
decision of refusal. If no reply is received within the time span provided,
the decision becomes final and conclusive.
If the applicant is dissatisfied with the decision of rejection or the
trial's decision, the applicant may request an Appellate Trial within 30
days from the date of the receipt of the certified copy of rejection or the
decision of the trial.
If the applicant decides to appeal the examiner's decision to reject, an
Appellate Trial is held. If there are any amendments made to the
specification or drawings attached to the application under appeal within
30 days after the request, the examiner in charge of examining the appealed
application is assigned to reexamine the application prior to the Appellate
Trial.
2. Filing an Application
Any person who desires to have a trademark registered should file an
application,with the Commissioner of KIPO. However, a person having neither a
domicile or residence (or in the case of a legal entity, a business
establishment) in Korea, must file the application through a patent
attorney (trademark administrator), having a domicile or residence in Korea.
3. Requisites for Registering Your Trademark
Indicated in the application form should be: the goods or services connected
with the trademark seeking registration, the full names and addresses of the
applicants, and in the case of a legal entity, the name of the officer
entitled to represent the applicant.
The applicant cannot designate goods or services belonging to more than one
class in a single application. Hence, several separate applications must be
filed for each class of goods or services classified into 65 classes under the
Korean Classification of Goods and Services. However, the Korean
Classification of Goods and Services differs from that of the International
classification of the Nice Agreement.
4. Notification of Reasons for Rejection
If there should be any reason for rejection during the process of examination
by an examiner, the examiner shall notify the applicant of the reasons for
rejection.
An examiner shall, when intending to reject an application for the
registration of a trademark, notify the applicant of the reasons for rejection
and provide the applicant with an opportunity to submit a written statement of
his/her arguments, designating a time limit for such submission.
5. Publication of Application for Public Inspection
When the examiner concludes there is no reason for rejecting the application to be
registered as a trademark, the examiner shall render the decision to
publish the application.
The Commissioner of KIPO shall make the documents of the application for
registration of a trademark and other related documents available for
public inspection at KIPO for a period of 30 days following the date of
publication of the application.
6. Opposition to the Registering of the Trademark
Any person may formally file a notice of opposition to the registration with the
Commissioner of KIPO within 30 days from the date of publication of the
application for the registration of that trademark.
A person who intends to file a notice of opposition to a trademark shall
submit the notice of opposition, the reasons thereof and the necessary
evidence to the Commissioner of KIPO.
A decision to register the trademark is made if no reason for refusal is
found or if a decision of dismissal of the opposition is made.
A decision to reject is made when the reason for rejection found by the
examiner is not overcome with a substantial written argument or amendment
presented by the applicant or, if no such response is made by the applicant
within the specified time limit.
7. Rights Conferred by the Trademark
When a decision to register the trademark is made, a certified copy of the
decision is sent to the applicant.
Upon payment of the registration fee, the trademark is then registered to
the Trademark Register.
Once the trademark is registered, the owner of the registered trademark is
given an exclusive right to use the trademark in connection with the designated goods or
services and may grant an exclusive right or non-exclusive right to
use the registered trademark to third parties. The term of the trademark right
shall be ten years starting from the date of registration of its establishment
and it may be renewed every ten years.
8. The Trial and the Appellate Trial
Applicants dissatisfied with the decision of refusal may request a trial to
the Commissioner of KIPO swithin 30 clays from the date of the receipt of the
certified copy of the decision.
Any person who objects to an examiner's decision or trial decision to reject
the application may request an appellate trial within 30 days from the date of
receipt of the certified copy of rejection.
1. Procedures for Registering an Industrial Design
2. Filing an Application
In order to have a design registered in Korea an application for design
registration must be made with respect to the design as prescribed under the law.
Each application is checked as to its formalities. If any defects are found, a notice is
sent to the applicant inviting amendments to be made.
If an applicant does not have his domicile or residence (or in the case of
a legal entity, does not have a place of business) in Korea, an application
must be made through a patent attorney who has a domicile or residence in
Korea.
3. Requisites for Registering Your Industrial Design
a. Essential Points in Preparing an Application Form and Its Drawings
A person interested in registering a design is required to submit an
application and its drawings (which may, under certain circumstances, be
substituted by photographs, models or samples). The scope of the design is
determined by drawings, etc. Accordingly, if the name of an article with a
design, which is written in the application, is abstract and only conceptual,
it could constitute a reason for rejection of an application on the grounds
that the article under the design is not a concrete one.
b. Can Y our Design be Registered ?
A design needs to be in the form of an article,which creates an aesthetic
feeling through the sense of sight. Under the Design Law, a "design" is
defined as the shape, pattern or color of an article or a combination thereof
which creates an aesthetic feeling through the sense of sight.
Accordingly,an application of a design which does not conform to the above
definition is rejected on the grounds that the applied-for design does not
constitute a design.
2) Novelty
A registerable design is required to have novelty. Accordingly, an application
of a design which is identical with or similar to the designs falling under the category
mentioned below may be refused on the grounds that the applied-for
design has no or almost no novelty:
3) Creativity
When a design could easily have been created, prior to the filing of a design
application, by a person with ordinary skills in the arts to which the design
pertains, on the basis of shape, pattern or color or a combination thereofs
widely known in Korea, a design registration is not granted for such a design.
4) Industrial applicability
In the case of a design of an article which has been created as a single piece
of work, such as an artistic work, or which is unfit for repeated mass
production an application thereof may be refused on the grounds that it is not
intended for industrial use or that it is unable to be industrially used. Also
in cases where the figures in the drawings are inconsistent with each other or
there are contradictory points in the relations between the explanation of an
article and the drawing the application for a design registration is refused
on the grounds thatit does not enable one to recognize any specific and
concrete design and hence cannot be industrially used.
5) Unregisterable design
A design liable to contravene public order or morality and a design liable to
give rise to confusion with respect to articles connected with any other
person's business may not be allowed for registration.
Identical or similar designs concerning state emblems, official hallmarks, and
emblems of inter-governmental organizations are also not allowed to register.
6) First-to-file rule
When two or more design applications relating to the same or a similar design
are filed on different dates, only the first applicant is entitled to obtain a
design registration. Accordingly, there are many cases where a design had been
created at an earlier date, and that application was rejected for the reason
that there exists another person, who previously applied with an identical or
similar design.
4. Notification of Reasons for Rejection
When an applicant has received a notification of reason for rejection, he/she
may try to overcome the reason for rejection by submitting an argument or an
amendment, if necessary, within the prescribed period.
5. Decision to Reject
When the applicant fails to respond to the notification of reason for
rejection, which the examiner has ruled upon with respect to a design
application or when the reason for rejection is not eliminated by an argument
or an amendment submitted by the applicant, the examiner shall issue a
decision to reject the application.
If an applicant has received a rejection notice and does not take any action,
the decision to reject becomes final.
6. Rights Conferred by an Industrial Design
Once an applicant receives a certified copy of the decision to register the
design, the applicant is required to make a full payment on the first three
years registration fee within the prescribed period.
The registered industrial design gives the owner of the design the exclusive
right to undertake the working of the registered design and a design similar
thereof as a business, for a period of up to 10 years from the date of the
registration.
The working of a design means the acts of manufacturing, using, transferring,
leasing, exhibiting for transfer of lease, or importing an article under that
design.
7. The Trial and the Appellate Trial
When the applicant is dissatisfied with the decision to reject he/she may
request a trial. This request must be submitted within 30 days from the date
of receiving a copy of a decision of rejection.
A person who objects to an examiner's decision or trial decision to reject may
demand an Appellate Trial within 30 days from the date of receipt of the
certified copy of the decision or trial decision to reject.
B. The Trademark
1. Procedures for Registering a Trademark
+--------------+
| Application |
+-------+------+
+-------------+------------+
| Examination on |
| Filing and Formalities +--------------------+ no
+-------------+------------+ |
| +-------------+----------------+
yes | | Order to Correct or Amend |
| +-------------+----------------+
| +-------------+----------------+
| yes | Correction |
+-------------------+ or Amendment |
| +-------------+----------------+ no
| +-------------+----------------+
| | Nuiiification |
| +------------------------------+
|
+--------+--------+
| Substantive |
| Examination -+------------------------+ no
+--------+--------+ |
| +----------+-------------+
yes | | Notification of |
| | Reason for Rejection |
| +----------+-------------+
| +----------+------------+
| | Correction |
+----------------------+ or Amendment |
| +----------+------------+
+-------------+----------------+ |
| Publication of Application | |
| for Public Inspection | no +------------+
+-------------+----------------+ |
| |
+-------------+----------------+ |
| Opposition to the | |
| Grant of the Trademark +--------------+ yes |
+-------------+----------------+ | |
| +----------+------------+ |
+--------------------+ Ruling on Opposition | |
| +-----------+-----------+ |
+-------------+-------------+ | |
| Grant of the Trademark | | |
+-------------+-------------+ | |
| | |
| | |
| | |
+--------+--------+ | |
no +--------------+ Payment of Fee | | Sustained |
| +--------+--------+ | |
+-------+-------+ +--------+-------+ +--------+-------+ |
| Nullification | | Registeration | | Rejection |+----+
+---------------+ +----------------+ +--------+-------+
+--------+-------+
| Appellate Trial|
+----------------+
+---------------+
| Application |
+-------+-------+
+-------------+------------+
| Examination on |
| Filing and Formalities +--------------------+ no
+-------------+------------+ |
| +-------------+----------------+
yes | | Order to Correct or Amend |
| +-------------+----------------+
| +-------------+----------------+
| yes | Correction |
+-------------------+ or Amendment |
| +-------------+----------------+
| +-------------+----------------+
| | Nuiiification |
| +------------------------------+
+--------+--------+
| Substantive |
| Examination -+---------------------+ no
+--------+--------+ |
| +----------+-------------+
yes | | Notification of |
| | Reason for Rejection |
| +----------+-------------+
| +----------+------------+
| yes | Correction |
+-------------------+ or Amendment |
| +----------+------------+
+-------------+-------------------+ |
| Granr of the Industrial Design |
+-------------+-------------------+ |
+-------------+-------------------+
| Payment of Feee | |
+-------------+-------------------+
+-------------+-------------------+ |
| Grant of the Trademark | no
+-------------+-------------------+
+--------+--------+ |
no +---------------+ Payment of Fee |
| +--------+--------+ |
+------+--------+ +--------+--------+ +--------+--------+
| Nullification | | Registration | | Rejection |
+---------------+ +-----------------+ +--------+--------+
+--------+--------+
| Appellate Trial |
+-----------------+
1) Definition
( i ) A design, which prior to the filing of an application thereof, has been
publicly known in Korea or in any foreign country
(ii ) A design which was described in a publication distributed in Korea or
in foreign countries prior to the filing of an application.
(iii ) A design which is similar to those mentioned in the above #1 and #2.
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