28 Oct
2021

South Korea

How do you get a patent in your jurisdiction?

Q: What types of patent are granted in your jurisdiction, and what rights do they confer on owners?

In Korea, there are three types of patent that are granted:

  • inventions;
  • utility models; and
  • designs.

Patent owners may exploit their rights exclusively in relation to:

  • manufacturing, using, assigning, leasing, importing or offering for assigning or leasing a patented product;
  • using a patented process; and
  • using, assigning, leasing, importing or offering for assigning or leasing a product manufactured by a patented process.

Further, patent owners may take civil actions including requests to cease and desist, monetary damages, refund of unfair profits, destruction of the infringed articles, removal of facilities used for infringement or other measures necessary to prevent infringement. In addition, owners may seek criminal action to be taken, including a request for punishment for offences of infringement, divulging confidential information, perjury and fraud, among others.

Q: What inventions are eligible for patent protection in your jurisdiction?

Inventions that are eligible for patent protection in Korea are products, processes and products by processes. Although a product may cover a broad range of subject matter (including articles, apparatuses, devices and systems, among other things), it should be a tangible entity. Plants and microorganisms are also eligible subject matter for patent protection. In order to obtain patent rights for all three types of patent, the three requirements that must be met are novelty, inventive step and industrial applicability.

Q: Are there any specific exemptions to patent eligibility?

Exemptions from patent eligibility in Korea include a subject matter of use or usage and computer program languages, computer programs or a simple provision of information such as a computer program list. Also, exempt are laws of nature, simple discoveries, inventions that violate the laws of nature, functions (eg, a playing method for instruments), aesthetic creations, a human being or a medical activity, among others.

Q: Are there technology-specific eligibility issues that applicants must navigate (eg, in software, business methods, AI, medical diagnostics, pharmaceuticals, medical procedures, etc)?

For software and computer program-related inventions, the claims for the patent should be drafted so that the relevant software or computer program is associated with some hardware, such as a computer that performs a specific function or process. If an invention is related to a medicine, it should be drafted as a form of a product or article. A drug, medicine or treatment agent cannot be patented without specifying a medical use of the product, which should be expressed as the pharmaceutical efficacy in relation to the diagnosis, curing, treatment or prevention of a disease.

Q: What are the time and costs involved in securing a granted patent? Is expedited examination available? Are reduced fees available for certain applicants?

It usually takes about one year from the start of examination for a patent to be granted, although it may take up to approximately 18 months. An application for the patent should first be made to the Korea Intellectual Property Office (KIPO) and a request for examination filed on or before three years from the filing date. The result of the examination will be released in 10 to 12 months from the request for examination. If the first examination result is a rejection, the applicant can file a response and a final result can be expected about four to six months later. If the patent is again not granted, the examiner will issue a final office action. In response to the final office action, the applicant should respond within 30 days, extendible to 60 days.

The official fees are:

  • $46 for filing a patent application;
  • $143 for requesting examination (plus $44 for each claim); and
  • $45 for registration (plus $45 for each claim).

Professional fees will vary depending on the number of claims, work required and fees for translating the documents into Korean.

An expedited examination is available by filing a request based on a self-search result of prior art or a request for conducting a prior art search by an authorised professional search institute. An expedited examination can also be made under the patent prosecution highway. After filing the request, an examination result will be released around four to eight months from the request date.

Q: What are any specific requirements that a patent specification must meet in your jurisdiction?

In general, the applicant must describe the ‘background art’ in the description of the specification. Information should also be provided to meet the workability requirement that the description should be clear and specific so that a person in the art can easily work the relevant invention. Some particular requirements for inventions in various sectors include:

  • bioengineering-related inventions – a peculiar, specific and reliable effectiveness should be described clearly in the description, especially for an invention relating to a gene or proteins encoded by the gene;
  • food-related inventions – functional properties or effects of food (eg, taste, smell, appearance and texture) may vary depending on human senses; therefore, evidence for these should be provided that is supported by a chemical or mechanical analysis or experiment; and
  • organic or inorganic composition-related invention – composition-related inventions should describe experimental data and a manufacturing method of the composition.

Q: What rules govern the filing of provisional applications, continuations or continuations-in-part, divisionals or any other special type of application?

Continuation applications or continuations-in-part are not available in Korea.

A provisional filing can be filed by submitting a free-format specification such as an article, a research note or technical data. A formal specification should be filed by filing an amendment within 14 months of the filing date of the provisional application. However, no new matter is permitted to enter the formal specification. If new matter arises, the applicant may include it by filing a new patent application claiming a priority right based on the provisional application within 12 months of filing.

A divisional application is usually chosen as a response to a first office action or a final office action, and a request for examination for the divisional application should be made within three years of the filing date of the original patent application or 30 days of the filing date of the divisional application.

Q: What do applicants need to know about office actions and patent examiner interviews?

If an examiner issues a first office action along with inviting an applicant’s response within a two-month deadline period, the applicant may consider requesting an examiner interview. The applicant should prepare and submit a proposed amended set of claims along with a request for the examiner interview within one month of the issuance date of the first office action. The examiner then determines whether to review the proposed claims within a week after the one-month period has expired. If the examiner determines to review the proposed claims, the examiner interview may then be conducted between two and three weeks after the one-month period has expired. At the interview, the examiner usually has a discussion with the applicant and may accept the proposed claims or ask for changes. If the examiner and the applicant reach an agreement on the proposed claims, the amendment should be submitted based on the agreed claims within the two-month deadline period.

Q: Are there any recent examination trends that patent applicants need to be aware of?

The KIPO has adopted new examination guidelines in terms of inventive-step requirements for five categories of invention:

  • the Internet of Things;
  • advanced robotics;
  • AI;
  • big data; and
  • 3D printing.

Under the new examination guidelines, it is possible for a patent application related to an invention within the five technology categories to be allowed if the invention accomplishes a ‘better’ effect over cited references, rather than a ‘distinguishable’ effect over the cited references as in the old examination guidelines.

Q: Is there anything else about the patent filing process that applicants should know?

If the applicant is a non-Korean (individual or corporate) and wishes to file a patent application in Korea via a Paris Convention or Patent Cooperation Treaty route, it is difficult to meet the due date for filing the patent application because of the time limit, especially in terms of the Korean translation of the specification. In this regard, it is useful to file the patent application without a Korean translation along with a request for its delayed submission, which can be extended by two months for the Paris Convention route or by one month for the Patent Cooperation Treaty route from the due date.

Q: Is utility model or petty patent protection or an equivalent available in your jurisdiction? If so, how does the system work and under what circumstances would you advise using it?

Utility model patent protection is available in Korea. The subject matter of a utility model application should be directed to a tangible product or an article having a shape. Therefore, a process, method or chemical composition, among others, cannot be the subject matter of a utility model. The protection period is 10 years from the filing date following registration, which is short compared to the 20-year protection period of the patent invention. It is usually recommended to file a utility model application when the utility model invention is sensitive to fashion or trends, has a short lifetime or is a product or article with small or medium-level advancement over prior art.

What are the major administrative procedures in your jurisdiction?

Q: How can applicants appeal patent office decision?

An applicant may file an appeal with the Patent Trial Board against a rejection decision (after the first final office action or a second final office action rendered as a result of re-examination) within 30 days of the rejection. The period for filing the appeal is extendable up to 60 days. 

Q: Are oppositions available pre-grant or post-grant? What rules govern standing to oppose a patent and the opposition process?

Opposition is unavailable under the Korean Patent Act.

Q: What are the processes for re-examination of a patent?

Re-examination of a patent is unavailable under the Korean Patent Act.

Q: What is the process for invalidation or revocation of a patent? Who has standing to request invalidation? How long do inter partes invalidation cases take?

A person, usually an alleged infringer of a patent, may file an invalidation trial against the patent before the Patent Trial Board by filing an appeal brief, as well as necessary evidence such as prior art. The Patent Trial Board allocates a three-examiner reviewing board (trial board). The trial board then sends the appeal brief and the evidence to the patentee to invite the patentee to file a counter-argument. The trial board may request that both parties attend an oral hearing, although it is not mandatory. When the appeal case has reached the time to render a decision, the trial board announces the close of the invalidation trial case and renders a decision within one or two weeks. 

Only a party that has any interest in the patent is qualified to have legal standing to request invalidation. In addition, an examiner also has legal standing to request invalidation for public purposes.

It usually takes six to 12 months to receive a decision for inter partes invalidation cases.

Q: How can opposition, re-examination or invalidation decisions be appealed?

A losing party (either an interested party or a patentee) can appeal against an invalidation decision before the Patent Court (High Court), which has exclusive jurisdiction over any appeal cases that have originated from the Patent Trial Board.

Q: Is administrative enforcement of patents possible?

Administrative enforcement of patents is possible in Korea. Specifically, the KIPO is staffed with an individual organisation known as the Special Investigation Police (SIP). The SIP has the authority to investigate and enforce any patent infringed product or item and to bring criminal charges against the infringers.

Q: Does your jurisdiction grant patent-term extensions?

It is possible to grant a patent-term extension. Specifically, when the registration of establishment of a patent right is delayed for four years from the date of a patent application or three years from a request for examination of the patent application, whichever is the later, the term of the relevant patent right may be extended as much as the delayed period, up to a maximum of five years. Such patent-term extensions have usually been applied to patents relating to medicine, medical supplies, drugs and agricultural chemicals, among others, that generally require substantial time to process and to obtain approval, admission or registration from a relevant authority.

Q: Is there anything else about patent administrative procedures that patent owners and challengers should know?

The KIPO has adopted a patent cancellation system, rather than the abolished opposition. In particular, anyone can file a request for cancellation of a patent by providing cancellation grounds against the registered patent from registration to six months from a public notice of registration. Three or five trial board examiners will then re-review the registered patent and may cancel if the registered patent has a flaw, such as lack of novelty or inventive step or a violation of the first-to-file requirement based only on patent prior art and publications. However, a request for cancellation of a patent is unavailable if it is based only on prior art cited during office actions.