OVERVIEW OF KOREAN PATENT SYSTEM

(1) Subject matter of the patent

A patent provides for a system to protect inventions. Here, "inventions" refer to the highly advanced creation of a technical idea utilizing the laws of nature. An invention requires a high level of creativity and thus technological creations which do not reach this high level cannot be protected under the Patent Act; nevertheless, they could be protected as a ‘device’ under the Utility Model Act.

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(2) Requirements for patent registration (also known as "Patentability")

For an invention to be registered as a patent, all three requirements listed below must be met. Mostly, it is the novelty and non-obviousness requirements that prove to be more problematic and therefore are the most important factors.

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a. Industrial Utility

The invention must be one that can be utilized in the industry. e.x) An invention related to a medical methodology: not usable in the industry

b. Novelty

The invention must not be identical to another technology that was publicly known domestically or overseas (prior art) prior to patent prosecution.

c. Non-obviousness

Even if different from prior art, the invention must not be one that can be easily created from a prior art by a technician with ordinary knowledge in the field.

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(3) Patent prosecution process for patent registration

To register an invention as a patent, it is necessary to go through the patent prosecution process. The prosecution process is often assisted by a patent attorney (or patent agent). When choosing a patent attorney to apply for a patent, it is important to check that the patent attorney has sufficient expertise and knowledge in the field of the invention.

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• Application documents

The basic documents submitted during a patent application are as follows. The contents of these documents must be written clearly and comprehensively; therefore, it is customary to seek a patent attorney to prepare the documents.

1. Application form: Information about the patent applicant, representative, inventor, name of invention etc. are listed here.

2. Specification: Detailed description of the invention, claims etc. are listed here.

3. Abstract: A summary of the invention is listed here.

4. Drawings: Drawings may be attached if necessary to accurately describe the composition of the technology.

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• Examination process following patent application

When patent application forms are submitted to Korea Intellectual Property Office (the "KIPO"), the office will conduct an examination. The examination processes can be broadly categorized as (i) Formality Examination (which examines procedural requirements such as compliance to filing dates and fee payments) and (ii) Substantive Examination (which examines if above 'Patentability' requirements are satisfied).

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Substantive Examination takes place only if the applicant separately makes a request for an examination, and if an examination request is not made within three (3) years of the patent application, the patent application is deemed withdrawn. In such a case, the technology at issue becomes prior art which can be used by anyone, and will no longer be patentable.

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When both Formality Examination and Substantive Examination are passed, the registration decision is finally made. At this time the applicant may either choose to pay the registration fee and register the patent or may abandon registration by not paying the fee.

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The patent prosecution period from the application to registration may take as short as one (1) year and as long as three (3) years. The period depends on the difficulty of the technology, the existence of prior art and how well the difficulties can be overcome.

As a general rule, examinations for patent applications are performed in the order of examination requests. However, applications which satisfy certain conditions (for example, in case where a third party is currently infringing the claimed invention) can be eligible for an ‘Accelerated Examination' request, which asks for an expedited examination over other applications.

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When going through a patent application process with the help of a patent attorney, the costs are generally presumed to be between KRW 2 - 5 million, including KIPO administrative fees. However, depending on the specifics of the technology, the costs may vary.

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• International application: To obtain patent rights from outside the country, a separate international application is necessary.

1. Individual International Application: Patent applications are filed individually in each country where the patent is to be obtained.

2. PCT International Prosecution: Most international applications nowadays take place through the PCT (Patent Cooperation Treaty) process, rather than using the above individual international application method. PCT International Application means that a single PCT application can be filed at the Korean Patent Office, and by selecting the countries where a patent is sought, within the period set by each country (usually thirty to thirty-one (30-31) months), it will have the same effect of having filed patent applications in those countries. Using the PCT International Application can be advantageous, because application in the various member countries are made possible through a single application.

(4) Enforceability of patent rights

Once the patent is registered by the above registration process, patent rights come into effect.

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• Rights of a patent holder

A patentee has an exclusive right to practice his patented invention and may grant a license to a third party. The types of licenses include Exclusive Licenses and Non-Exclusive Licenses. Any decision to grant an exclusive license to a third party must be made carefully, because then the patentee himself will also be unable to practice his own patented invention.

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The scope of protection is determined by what is written in the "Claims" section. If the claims are written too broadly, chances become higher for denial of registration because of prior inventions. However, if written too narrowly, the scope of protection becomes narrower and easily avoidable for third parties even if registration was successful. Therefore, how the claims are drafted during the application stage can later become the most important factor in exercising patent rights and when defending oneself from an invalidation trial initiated by a third party.

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• Territorial principle

Patent rights are only recognized in the country where it was registered. Therefore, to gain protection of a technology overseas, separate patents have to be obtained from that country. In this case, it may be useful to make use of PCT international prosecution system as explained above.

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• Term

The term begins on the registration date of the patent right and lasts for twenty (20) years from the filing date of the patent application.