FAQ: Patents in Korea

Veröffentlicht am: 3. January, 2017

If you are interested in filing a patent in Korea you need to check out the following FAQ. We will answer questions about required documents, costs, online filing and much more.

What information and documents are required to file a patent application in Korea?

  1. Name and address of an applicant (if incorporated, its address and representative’s name)
  2. Name(s) and address(es) of the inventor(s)
  3. Title of invention, specification, claims, Abstract, and drawings (if any)
  4. If the right of priority is claimed, the priority document which is a certified copy of the priority application
  5. If claiming grace period in inventiveness, a written statement of that intention and a document proving the relevant facts and
  6. Power of Attorney (POA) or a General Power of Attorney (GPOA), if necessary

All documents must be translated into Korean before filing – no other languages are acceptable. The priority document may be supplemented after the filing, with payment of prescribed fees.

 

For a PCT application, what is the procedure for entry into the Korean national phase?

To gain entry into the Korean national phase, the applicant must file a national application with the Korean Intellectual Property Office within 31 months from the earliest priority date. The documents required are the same as those for a conventional national application (see answer to question No.1). If any amendments or name change have been made during the international stage, a copy and a translation of relevant documents are also required.

 

What are the criteria on the novelty of an invention in Korea?

Under the Korean Patent Act, an invention lacks novelty where:

korean flag

  1. The invention was known or worked publicly in Korea before the filing date (or the priority date if claimed)
  2. The invention was described in publication distributed in Korea or in a foreign country before the filing date (or the priority date if claimed)
  3. The invention was available by the public before the filing date (or the priority date if claimed) through an electrical communication network including an internet server maintained by a governmental office, public university, or public laboratory or
  4. The invention was disclosed in a Korean patent or utility model application having an earlier filing date (or priority date if claimed).

The requirement 4. Above is applicable only when the earlier application is laid-open or published by the KIPO.

 

What are the costs for a patent application in Korea?

Government official fees and attorney fees are the main costs. Usually, the attorney fees follow the fee tariff set by the Korean Patent Attorneys Association; however, fees can be negotiated with your attorney. The reality is that Korean translations are not inexpensive. The more pages there are, the more costly it is. Further, costs, including official fees of request for examination and annuity depend on the number of claims. In order to reduce the costs, the proper number of claims is recommended.

 

What about filing online in Korea?

The online system is available since 1999. A computer file containing the invention can be sent to the computer network at the KIPO. Applications for new utility models or trademarks can also be submitted online.

The government official fees for online applications are lower than for paper applications. As of August 2001, electronic applications account for over 90% of the filed applications; most Korean patent attorneys use the online system. However, as the image resolution may be low in certain type of pictures, the conventional paper application is recommended in such cases.

 

When applying in Korea, what sort of issues should you be aware of?

Korea is a member of the PCT, Paris Convention, and WTO. The Korean Patent Act follows the international standard for the formal and substantive examination of a patent application. In most cases, a foreign application can be directly translated into Korean to be submitted as a Korean patent application. Under the Korean Patent Act, a multiple dependent claim which refers to another multiple dependent claim is not acceptable. That is, any claim referring to two or more claims shall not serve as a basis of any other multiple dependent claims. Also, an omnibus claim and a use claim are not accepted.

 

What is the significance of the utility model system in Korea?

korean temple

Majority of entities that take advantage of the utility model system is small and medium businesses and the rest are large corporations and individual inventors. They filed way less utility models than patents were filed in the same time.

The protection afforded under the utility model system is fundamentally identical to that of the patent system and, in fact, petition for a provisional injunction in infringement cases, complaints filed for damages, and criminal lawsuits in infringement cases are frequently done in utility model cases.

However, in infringement cases, the scope of doctrine of equivalents to be applied under the utility model system may be interpreted to be narrower than that of the patent system.

 

During what period can a patent application be converted to a utility model application?

Any time after the filing of a patent application and before an examiner’s decision of refusal is issued, a patent application may be converted to a utility model application. Further, within 30 days from the date a refusal is received, one can convert the patent application into a utility model application.

In case where one has to decide whether to appeal against a final notice of reasons for refusal, converting the application to a utility model application can be a possibility in order to increase the chances of registration, especially if the application is considered to be lacking inventiveness.

 

When can a patent application be amended?

As long as there is no Office Action from KIPO, a patent application may be amended before the grant of patent. However, once a Notice of reasons for Refusal is issued, a patent application can be amended only within the following time limits:

  1. Within the time limit designated for submission of an argument in response to a notice of reasons for refusal.
  2. Within 30 days from the filing date of an appeal against a decision of final notice of reasons for refusal

 

Are you interested in applying a patent in Korea?

Some of our attorneys are specified in Asian patent law and can help you with your application and all further challenging tasks. Don’t hesitate to contact us – the first counseling by phone is free.

 

Sources: “FAQs regarding Patents and Trademarks in Korea”, Hanyang | Stocksnap.io | freeimages.com |

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