(1) Patent: An invention is protected only on the final grant of a patent registration, pursuant to the Patent Law. An invention must satisfy the three basic criteria of industrial applicability, novelty and inventiveness. Also, an invention must be a high-level creation of a technical idea utilizing the laws of nature. The applicant for a patent may enjoy monopoly rights in regard to the patented invention only after the patent is registered. The basic term for registered patent rights commences upon the registration date and it expires twenty (20) years from the filing date of the ROK patent application.
(2) Utility Model: A device related to the shape, structure or assembly of an article can be protected upon the registration of a utility model, pursuant to the Utility Model Law. The device must also duly satisfy the same basic three criteria of invention as are noted above, and be a creation of a technical idea utilizing the laws of nature. The term of validity for a utility model registration is ten (10) years from the application filing date. Please refer to the following Note, for further information.
(3) Design: A design able to be protected by the Design Law is defined as “the shape, pattern, color (or any combination thereof) in an article”, which produces an impression on the sense of sight. The term “article” is generally considered as a tangible, movable and independent thing. The basic term for a registered design right is fifteen (15) years from the date of registration in Korea.
A utility model is similar to a patent in that a utility model registration protects a created technical idea as a patent does.
Both a product and a method can be the subject matter of a patent; however, a utility model registration is allowed only for a product, not a method.
The term of a patent ends 20 years from the date on which the application for the patent was filed, whereas the term of a utility model registration ends 10 years from the date on which the application for the utility model registration was filed.
The deadline for requesting an examination of a patent application is 5 years from the filing of the patent application, while that of a utility model is 3 years from the filing of the utility model application.
In this regard, please note that a patent application may relate to one invention only, but that a group of inventions, however, might also be the subject of one patent application on the condition that the inventions are so linked as to form a single inventive concept.
Also, a group of inventions duly allowed to be filed within one patent application must be a group as described below:
(1) One independent claim for any materials (apparatuses) or processes (methods);
(2) When one independent claim for materials is claimed, then the claims below can be either collectively or selectively retained, in the same application:
A. One independent claim relating to a method of manufacturing the materials;
B. One independent claim relating to a method of using the materials;
C. One independent claim relating to a method of handling the materials;
D. One independent claim relating to any machines, devices or apparatuses duly for the manufacture of the materials;
E. One independent claim relating to any article utilizing a specific characteristic only
F. of the materials; or
G. One independent claim relating to an article for handling the materials.
(3) When one independent claim for processes is claimed, one independent claim relating to machines which are directly used for embodying the process.
If any above-noted one independent claim for each invention is not proper for an inclusion in the invention as a whole, then one is permitted to use two (2) or more independent claims for each occasion, only in the event these belong to a group of inventions as is indicated above.
Even if some inventions do not appear to belong to any of the above-exemplified groups of inventions, such inventions might also be classified as belonging to a permissible group of inventions when there is a “technical relationship” amongst the claimed inventions involving one or more of the same (or any corresponding) “special technical features”.
Since the on-line filing system, each applicant shall be allotted and given an Applicant Code Number by KIPO, before any relevant filings and prosecutions of patent, utility model, design or trademark applications take place at KIPO. This is done by simply providing in written form the name and the address of a specific legal entity (either a natural person, or a legal person), namely signed Power of Attorney to KIPO. When assigned an Applicant Code Number, the applicant is no longer required (or even allowed) to state the address of the applicant, in the application. Instead, the Applicant Code Number and the registered name (as officially registered under that Applicant Code Number) of that applicant, only, shall appear on the application. Once an applicant has been granted an Applicant Code Number, the name of the applicant must comply with and conform to the name of the applicant which is stored in the database banks of KIPO. No matter which Korean agents represent the same applicant before KIPO, in connection with any of various pending or future applications, the same Applicant Code Number of that applicant must be used, consistently.
When there occurs any change to the particulars of an applicant, such as a change of its legal address, legal name, etc., the applicant shall duly submit to KIPO a Petition for Address or Name Change of that applicant, in order to change all of KIPO database records applicable with respect to the particular Applicant Code Number concerned (and with respect to all pending patent, utility model, design and trademark applications as filed by that same applicant, using that same Applicant Code Number), so as for those records to reflect that the new name or address of that same applicant (in relation to all its pending and future applications). The Applicant Code Number, however, shall not be reflected on the Official Register, after an application has been granted and been registered at KIPO (only the officially-recorded name and address are then registered). It is simply a matter of establishing an identifying Code Number to be used for all then-pending and future-pending applications of a particular applicant, only.
No. However, because the costs not only for filing of a Request for Examination of the application, but also later for paying the Patent Annuities on a Korean patent to be granted after the examination occurs, will increase in proportion to the number of the Claims retained in any application (regardless of their independence, or dependence), the applicant might probably need to re-think and reduce the arrangement of the Claims again and again, in order to reduce all related costs of the corresponding Korean patent prosecution. An applicant duly has the option to reduce in number some of the Claims of a pertinent application, when the said applicant files its Request for Examination of the application at the Korean Intellectual Property Office (“KIPO”).
The patent application shall be published in the Patent Gazette, regardless of its examination status, after a term of eighteen (18) months have passed from the original filing date of the home application. In the case of PCT applications, the term is thirty one(31) months.
Such disclosure, known as the “laying open” of an application, is meant to assist domestic industry so that repetitive research directed to the same invention can be avoided; same may otherwise not be disclosed when the application is not requested for its examination. Once an application is so published (or “laid open”), any person can furnish KIPO with information/evidence supporting the un-patentability of the invention (claims) in question, under the regulations related to a lack of novelty or “inventive step”.
After the application is published (laid open) as explained above, meanwhile, an applicant may warn any person that has commercially or industrially worked the filed invention, in writing, indicating a patent application (for that invention) has been filed. The applicant may demand any person having commercially or industrially worked such filed invention, after being warned or knowing that the invention has been laid open, should be required to pay compensation in an amount equivalent to what shall have normally been received for the working of the invention from the date of warning or the time when he/she knew that the patent application of the invention had been laid open to the time of registration of the patent rights. The right to demand such compensation, however, should be duly exercised only after the establishment of the corresponding patent rights. Publication must occur in the Korean language.
Yes. A patent application is examined only when a request for examination has been filed.
Anyone, not only the applicant, may request examination within 5 years from the filing date of the application. If no request for examination is made within the 5-year period, the application is deemed to have been withdrawn. Once a request for examination is filed, it cannot be withdrawn.
An expedited examination system exists, whereby examinations shall be duly effectuated in an expedited fashion (e.g. within 3 to 5 months or so of the date that such an expedited examination is requested), so as for the applicant to receive the first Office Action within that timeframe (instead of the usual timeframe of around 10 to 12 months from the filing date of a Request for Examination of a patent application). Indeed, expedited examination can only be requested for any patent or Utility Model application for which an ordinary Request for Examination has already been placed (or along with a simultaneous filing of a Request for Examination).
The filing of a Request for Examination must take place within five (5) years of the effective filing date (Korean filing date - or international filing date, in the case of a PCT application), in order to have the application undergo the substantive examination required to obtain a patent for the invention applied for. According to Korean patent practice, expedited examinations are restricted to the following particular categories of patent applications, so that such patent applications are examined ahead of any other patent applications:
(1) In the event that there are grounds to believe that such invention has been commercially worked, by a person who is not the applicant, after the subject application has been laid-open;
(2) In the event that the application
A. directly relates to electronic transactions;
B. relates to goods or to services duly for the defense industry;
C.relates to facilities for the prevention of environmental pollution (or processes thereof);
D. relates to inventions that is commercially worked in Korea by the applicant
Any person who desires an expedited examination of his application must submit his written request, together with a statement duly explaining the necessity thereof in detail and any evidence supporting the statement.
When the KIPO issues a preliminary rejection of a patent application, it initially gives the applicant two (2) months to respond to the preliminary rejection.
The deadline to respond to the preliminary rejection can be extended in principle for up to four (4) months, for one or more months at a time.
Further extensions exceeding the permitted four (4) months may be allowed only under some limited circumstances which justify the extensions.
A divisional application may be filed within the time period allowed to amend the specification/claims of the original (parent) application.
Therefore, based on a parent application, the applicant may file a divisional application at any time before the issuance of an Office action; if an Office action is issued, within the time limit allowed to respond thereto; and if the application is rejected by the Examiner, within 30 days from lodging an appeal against the rejection. However, the applicant cannot file a divisional application once a decision of patent grant for its parent application has been issued.