SODAM PATENT AND LAW FIRM

Patent application publication is made 18 months after the first filing date or the highest priority date. This publication ensures the applicant the right to issue a warning letter to all parties suspected of infringement.

Since publication of the patent, the warned party is obliged to compensate the patent owner in an amount equal to the typical profit derived from the use of the invention. Since this disclosure is a necessary prerequisite for a warning, the application can be published earlier than the specified 18-month period if requested.

Under the Patent Law, anyone who wishes to argue that a published patent should not be registered as a patent may submit a claim to KIPO together with evidentiary materials.

A patent application will be examined only if a request for examination is made, and if these requests for examination are not filed within three years from the filing date, the application will be considered withdrawn.

Amendments to a patent application may be made within the scope of the characteristics described in the specification or examples contained in the original application under the following circumstances:

a) at any time before the examiner’s first notice of comments is sent,

b) if a first notice of comments is issued, within the period allotted for a written reply to the first notice of comments,

c) if a rejection ground arises due to an amendment filed in response to the first notice of comments under paragraph b) and a final rejection ground is issued, within the period allotted for a written reply to the final rejection ground,

d) if an appeal is filed against the examiner’s final rejection decision, within 30 days from the date of receipt of the rejection decision report,

The term of a patent begins from the date of registration and ends 20 years after the first patent application, although other legal requirements may prevent a patent from being filed. For example, delays due to toxicity testing on pharmaceuticals may result in an extension of the term of up to 5 years.

The benefit of license registration is that the licensee can continue to use the invention even if he transfers the patent right to a third party within the limits of the license agreement. If the patent owner intends to provide the licensee with exclusive rights, including legal enforcement against infringers, he must have the licensee registered, otherwise such exclusive rights will not be granted to the licensee.

Court trials related to the acquisition and loss of patents or other intellectual property rights are initiated at the Board of Patent Trial and Appeal (KIPT), and lawsuits regarding the enforcement of rights are litigated in court.

Appeal against examiner’s refusal decision – If a patent applicant is dissatisfied with an examiner’s refusal decision, he may request an appeal at the KIPT at the latest within 30 days after receiving the notice.

Trial for correction of patent – ​​A patent owner may request a trial for correction of a patent issued by KIPT at any time for reasons such as limiting the scope of the patent claims, correcting errors, or clarifying unclear matters.

Trial for invalidation of patent (between parties) – An invalidation trial may be requested at any time if an interested party believes that a patent was granted in violation of the Patent Act. Once an invalidation decision is finalized, the patent is invalidated retroactively from the beginning, unlike a cancellation decision which only takes effect in the future.

Trial for confirmation of scope of rights (between parties) – If there is a dispute over whether the implementation act of one party infringes the patent, either party may request a trial for confirmation of the scope of the patent right, i.e., whether the inventive act falls within the scope of the patent right, from KIPT.

Korea became a member of the PCT Treaty in 1984 and began processing PCT international applications on August 10 of the same year. Both foreigners residing in Korea and Korean nationals have the option to file PCT international applications through the Korean Intellectual Property Office (KIPO) or the International Bureau of WIPO. PCT applications can enter the national phase within 31 months after the priority date and do not require prior review during this process.

The power of attorney may be in a separate form for each specific application or a general form to be used with all future applications for an individual’s IP authority.

Unlike patents, the subject of utility models under the Korean Utility Model Act is limited to innovations of technical concepts that utilize natural laws related to the shape, structure, or merging of objects, so process inventions and articles without concrete shapes are not protected.

The expedited utility model registration system, which only evaluated the form and basic criteria of major change applications, was abolished, and a post-examination system was introduced.

This system requires examiners to consider utility model registration after substantive examination, and all procedures of the expedited registration system, such as the basic requirement examination, post-examination technical evaluation system (TES), and correction request, have been abolished.

Examination procedures reflecting the patent system, such as requests for examination, formal notification of Office Action, and correction practice, have been implemented.

The Korean Intellectual Property Office announced that it will expand the number of items eligible for partial design (partial examination) applications from the existing three to seven categories from December 1, 2020.

Partial examination design (other terms, %22non-examination%22) is intended to increase the efficiency of design rights utilization by examining certain requirements for design applications of items that have short fashion cycles and are easy to imitate and granting rights quickly.

Specifically, the partial examination system, which was previously only applied to clothing, textile paper, and stationery-related design applications, has been expanded to food, packaging containers, jewelry, accessories, etc.

Fast track review will be applied to the expanded partial review application, and if there are no major problems with the application documents, registration can be obtained within 10 days from the application date.

If an individual believes that a registration has been unfairly granted under the Design Law without examination, he or she may file an opposition within three months of the announcement of the design registration, and if a panel of three opposition examiners concludes that the opposition is justified, the design registration will be cancelled.

This provision allows the registration of designs similar to a basic application or registration. It aims to encourage enhanced designs built on original concepts and to prevent imitation or counterfeiting of registered designs by others. Such similar design registrations are bound by the basic design registration, which means that the basic registration is invalid.

This refers to the ability to register a design for a combination of two or more items, such as a “set of office furniture”, as a single design.
Two or more items must be used simultaneously as a single item.
The design of a single item must be unified as a whole.
The design of a single item must be accompanied by a drawing showing the state in which the items are combined, along with a drawing showing each of the constituent items.
The design of one product as a whole gives rise to one design right.

A trademark can be registered without the actual use of the mark, and in the event of conflicting applications for the same mark under the %22first to file%22 rule, the first applicant will be granted registration unless there are valid grounds for refusal found by the examiner.

Before granting registration, trademark applications are examined for substance, which includes not only a formality examination but also an evaluation of absolute and relative grounds for refusal. It is interesting to note that a previously expired or invalidated trademark registration can prevent another party from registering a mark filed within one year of the expiration or invalidation of the original trademark right.

A trademark application is published in the Trademark Gazette if there are no grounds for refusal, and if no opposition is filed within 60 days, the registration is granted, and if an opposition is filed and the examiner finds it valid, the registration is refused.

If the applicant is dissatisfied with the examiner’s refusal decision, he/she can request an appeal to the Korean Intellectual Property Trial and Appeal Board (KIPT) within 30 days from the date of receipt of the decision.

Interested parties can request an invalidation trial for registration if they believe that the registration is in violation of the Trademark Act, but there are also cases where an appeal can be requested within five years of registration due to reasons. This is very rare, and most invalidation grounds can be considered to have no limitation period for filing.

If a registered trademark has not been used for three consecutive years after registration, interested parties can file a lawsuit to have KIPT cancel the non-use for products on which the mark is not used. The owner of a cancelled mark is prohibited from re-registering the same mark for three years, while the successful party in the case has a three-month time limit in which to file for a similar mark.

If any party is dissatisfied with a decision made during a KIPT trial, they have the right to appeal the decision to the Patent Court and then to the Supreme Court.

KIPO has implemented the international classification system since 1998, allowing applicants to obtain trademark registrations for various classes of goods with a single application, but in order to maintain consistency in examination, goods classified as conflicting under the old system are still considered conflicting under the new system even if they belong to a different class.

In order for an assignment deed to be valid and enforceable between the parties, against third parties, and before administrative agencies and courts, it must be recorded in KIPO. The effective date of an assignment is the date of its recording, not any other agreed date, but the date on which the deed is filed.

Registering a right to use allows the licensee to continue to use the mark even after ownership has been transferred to another party within the terms of the right to use. A right to use must be registered to give the licensee exclusive rights, including the ability to enforce against infringers.

Trademark registrations can be renewed every 10 years by submitting a renewal application within one year before expiration, and if the renewal deadline is missed, a six-month grace period can be set aside for renewal with the payment of a surcharge. No proof of use is required for renewal, but the application is subject to examination.

Trademark registrations can be renewed every 10 years by submitting a renewal application within one year before expiration, and if the renewal deadline is missed, a six-month grace period can be set aside for renewal with the payment of a surcharge. No proof of use is required for renewal, but the application is subject to examination.

Korea adhered to the Madrid Protocol on April 10, 2003, and members of member states can apply for international registration of a trademark designating Korea based on a domestic application or registration.

If an applicant receives a refusal or cancellation decision from the examiner, he/she has the right to appeal within 30 days from the date of receiving a certified copy of the examiner’s decision, and in exceptional cases, if the applicant lives far away or in an area where access is impossible, the deadline can be extended by up to two months upon request to the Director of the Patent Trial and Appeal Board.

For patent applications filed after July 1, 2009, the applicant may request a reexamination or a trial due to a refusal decision, but not both (Article 67-2, Patent Act). If a patent application is reexamined at the applicant’s request and the examiner still makes a refusal decision, the applicant may appeal this decision by filing a request for trial.

Under the pre-trial reexamination system, if the applicant submits an amended specification within 30 days after the request for trial, the patent application must be reexamined, and the reexamination system also allows the applicant to submit amendments to the specification and drawings for the examiner’s reexamination even without a request for trial.

When an applicant receives a decision to refuse amendment, they have the right to appeal within 30 days from the date of receiving a certified copy of the decision.

The 2001 revised Patent Law abolished appeals against examiner’s decision to refuse amendment and only allowed appeals against refusal decisions, but such a change was aimed at speeding up the examination and trial procedures (Article 51, paragraph 3, revised Patent Law, effective from July 1, 2001).

An interested person or examiner has the right to request a trial against invalidation of correction if the specification or drawings of a patented invention are corrected in violation of Article 136.

If the decision to invalidate the boat race becomes final and conclusive, the boat race will be considered as if it had never been conducted.

If a patent is wrongly granted due to an error by an examiner or a prosecuting examiner, an interested person or examiner may request a trial against invalidation of the patent. Each claim of a patent containing two or more claims may be subject to a separate invalidation trial.

The grounds for invalidating a patent are generally similar to those for rejecting a patent application.

A patent invalidation trial may be filed even after the patent right has expired. When a trial decision invalidating a patent is finalized, the patent right is deemed not to exist. However, if a patent is invalidated due to an event that occurred after the patent was granted, the patent right is deemed not to have existed from the time that event occurred.

A patentee or an interested party may request a trial to confirm the scope of a patent right, and if a patent contains two or more claims, confirmation shall be applied to each claim.

The district court has the authority to determine the validity of a patent and to resolve infringement cases.

However, in many infringement cases, the defendant may initiate an invalidation trial against the patent right, and the plaintiff may file a trial to confirm the scope of the patent right.

Handling multiple trials and litigation simultaneously in the first instance may cause delays in the overall process.
To solve this, we are designating a Patent Court (2nd instance) to consolidate all relevant intellectual property (IP) cases. This allows the Patent Court to consider invalidation cases appealed from the Patent Board (IPTAB) and infringement cases appealed from civil courts in parallel, if certain conditions are met (such as participation of the same patent, parties, attorneys of record, etc.).

As a result of this consolidation, district courts (1st instance) no longer need to maintain infringement cases, which will increase the efficiency of patent litigation.