Introduction

With Digital advancement and the introduction of new technologies, the possibility of producing and disseminating copies has also increased. To solve this issue companies tend to file Patents, Copyright, and Trademarks; And one of the biggest markets for IP is in South Korea. South Korea Holds the 5th position across the globe in terms of patent registrations. South Korean IP Market accounts for nearly 12% of the global market.

The South Korea Intellectual Market is growing at an impressive rate which is anticipated to be 17.8% CAGR over the assessment period by the year 2032. The South Korean Intellectual Market’s value by the year 2022 was at US$ 906.9Mn which tend to grow and the project value of the South Korean Intellectual Market in 2032 is US$ 4657.2Mn. This makes it important for the Companies to understand the process of IP Filing in South Korea. This blog will help in understanding the process of filing IPR in South Korea.

Who can apply for a patent in Korea

The patent applicant in Korea can be filed by any person himself or by his agent. The applicant can be either a juristic person or a natural person.

What is Patentable in Korea?

The applicant can file an application for a Patent in South Korea for devices; methods; processes; and material inventions. In the case of the software related invention, a patent may be granted for the method of functioning of the hardware and the physical medium which stores the program. However, for software, the person can seek copyright protection under Korea’s Copyright Act.

Non-Patentable Items

• The Korean Patent Act does accept patent applications on:
• Discoveries of laws of nature or natural phenomena
• Ideas contrary to the laws of nature
• Law of nature
• Personal Skills obtainable by practice
• Mere presentation of information
• Aesthetic creations
• that conflicts with Public order, morality, or public health:
•  Methods for the medical treatment of humans, including surgical, therapeutic, and diagnostic methods:
• Computer programming language or computer programs, software, and business methods covering only abstract ideas or mental steps.

Prerequisites of Patentability

• Novelty - the subject matter must be unique and not known to the public before an application is submitted.
• Inventive steps - they must not be easily derivable from previously known inventions or methods, even though they differ from the prior art.
• Industrial applicability - It must have some application.
•  First to File - when the application is filled for the same subject matter on the different dates, then the application with the earliest filing date is patentable.
• Unity of Invention - The patent application can be filed for a single invention or for a group of inventions that share a common inventive feature.

Process of Filing Application for Patent

Relevant office: Korean Intellectual Property Office

Law/ Convention/ Treaty available :

Korea’s Patent Act: to file an application in Korea

Korea Contracting state of Patent Cooperation Treaty: to file an international application under PCT and subsequently enter into the Korean national phase within 31 months from the priority date. Paris Convention: Foreign application priority will be granted within 12 months from the foreign filing date.

Document requires to file patent Application:

• Name of company and Company location
• Name and domicile of the applicant
• Name and Domicile or business location of agent (if the applicant is represented by an agent)
• Power of attorney: Priority details and priority document, if applicable
• Title for the invention.
• Specification containing description,
• claims,
• drawings
• Abstract

Prosecution Process :

• Patent prosecution is a process where the applicants or their representatives interact with the patent office to get a grant for their patent application.
•  It is available for public inspection after 18 months from their filing/priority date, or sooner if the applicant requests it. After a request for examination is filed, the substantive examination begins.
•  The deadline to file an application for examination is up to 3 years after the filing date, for the application filed on or after 17 March 2017 and before 17 march 2017 the deadline is 5 years.
• The examination decision is usually issued in 10 to 13 months from the date of request.
• The applicant’s response must be submitted within 2 months of receiving notice of rejection, it may extend up to 4 months.

Term of Registration: In Korea, the term of Patent is 20 years from the date of filing of the patent application. The validity term of the utility model in Korea is 10 years from the date of filing, which is non-renewable.

Language

The official language for the registration of patents in Korea is Korean. The application can be filed in English; However, the applicant also needs to submit its translation into Korean within the following deadline:

• National Phase Application- within 31 months from the earliest priority date, the time period may extend by one month.
• Convention Application - within 14 months from the priority date.

Patent Examination & Prosecution

 If the Korean Intellectual Property Office (KIPO) receives a request before the application for examination is made open then the KIPO publishes the relevant facts in the Gazette when the application is made open. However, If a KIPO receives a request for examination after it is made then the KIPO shall publish the relevant facts in Gazette without delay.

If the KIPO receives an application for examination from any other person than the patent applicant, The KPIO shall notify the patent applicant of such facts.

If the KIPO does not receive any application for examination during the prescribed period then the patent application will consider to be withdrawn.

If upon examination any reason for refusal or deficiency is found then the examiner will issue notification of reasons for refusal. Then the applicant is required to respond within 2 months from the date of the notice, which may extend up to 4 months on a monthly basis or more than 2 months in a lump on payment of extension fees. If the examiner is of the opinion that the response is not able to justify the reasons in the notification or upon failure to submit the response, a final rejection will be issued.

The applicant can request a deferred examination within 9 months from the date of the examination requested. The applicant can also select the date of deferred examination which should be at least 2 years after the examination requested and within 5 years of the application date. The office will issue the first office action within 3 months of the deferred examination date.

Patent Grant & Renewal

A patent takes effect after the grant of patent is registered, when a patent is registered the KIPO issues a patent registration certificate to the patentee and gives public notice of registration in the Patent Gazette.

Patents are valid up to 20 years from the date of filing. The validity term of utility model in Korea is 10 years from the date of filing, which is non-renewable.

On issuance registration certificate annual registration fee needs to be paid for 1-3 years within 3 months from the date of notice of allowance. There is no annual fee for the period of pendency of application. For the 4th and subsequent years, the applicant is require to pay annual fee in advance before the anniversary of the date of registration. An extension of 6 months can be granted after the expiry of the initial period of payment. The applicant can also pay annuities in an accumulated manner.

Patent Opposition

The patent application can oppose by any person within 3 months from the date of publication of the applications in the official gazette or within 6 months from the date of publication of the grant in the official Gazette.

Request for termination of a registered patent can be filed by any person to the intellectual property trial and appeal board (IPTAB). proceedings will be conducted on the bases of written arguments. If IPTAB terminates the Patent registration, Patentee can appeal the decision in Patent court and subsequently in the Supreme court.

Author : Mudit Gupta, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References

1. https://www.futuremarketinsights.com/reports/south-korea-intellectual-property-market

2. https://techbullion.com/south-korea-intellectual-property-market-are-projected-to-increase-at-an-impressive-17-8-cagr-over-2022-2032/

3. https://www.epo.org/searching-for-patents/helpful-resources/asian/korea/faq.html

4. https://www.kipo.go.kr/en/HtmlApp?c=30300&catmenu=ek03_07_01#:~:text=The%20IPTAB%20is%20a%20quasi,is%20independently%20operated%20within%20KIPO.

5. https://ipwatchdog.com/2020/10/06/applying-patent-south-korea/id=125925/

6. https://www.ip-coster.com/IPGuides/patent-korea