Patents of Invention

– Patent Law, as revised and amended several times since December 29, 1982, last amended on January 8, 2019 (effective from July 9, 2019), on December 10, 2019 (partly effective from December 10, 2019, wholly effective from March 11, 2020), on June 9, 2020 (effective from December 10, 2020), on October 20, 2020 (effective from October 20, 2020), on December 22, 2020 (effective from June 23, 2021), on April 20, 2021 (effective from October 21, 2021), on August 17, 2021 (partly effective from November 18, 2021, wholly effective from February 18, 2022), on October 19, 2021 (effective from April 20, 2022), on October 18, 2022 (effective from October 18, 2022), and on September 14, 2023 (effective from March 15, 2024).

Membership in International Conventions

– Convention Establishing the World Intellectual Property Organization (WIPO), since March 1, 1979.
– Paris Convention for the Protection of Industrial Property, Stockholm Act, since May 4, 1980.
– Patent Cooperation Treaty (PCT), since August 10, 1984.
– Budapest Treaty (Deposit of Microorganisms), since March 28, 1988.
– WTO’s TRIPS Agreement, since January 1, 1995.
– Strasbourg Agreement Concerning the International Patent Classification, since October 8, 1999.
– The Hague Convention Abolishing the Requirement of Legalization for Foreign Public Documents (Apostille), since July 14, 2007.

Filing

Applicant: the applicant can be either the inventor(s) or his assignee(s), whether an individual or a corporate body.

Foreigners and nationals not living in the country: must appoint an agent living in Korea.

Protection of foreigners: the following persons are entitled to protection: (1) a foreigner domiciled or residing in Korea; (2) a foreigner who is a national of any country which is a member State of the Paris Convention; (3) a foreigner whose country has a treaty or an agreement with Korea.

Naming of inventor(s): the inventor(s) must be named in the application.

Assignment: possible before application, while a patent application is pending or after registration of a patent.

Secret patents: in case an invention is necessary for national defense, the government may order that the invention be kept secret.

Priorities: priorities under the Paris Convention can be claimed. Multiple priorities can be claimed on the basis of two or more original patent applications. Domestic priority based on a domestic application can be claimed within a twelve-month period. The later domestic application is considered as replacing the older domestic application which is regarded as withdrawn. Reciprocal treaty for recognizing priority with India, Thailand and Taiwan.

Notion of invention: the highly advanced creation of technical ideas utilizing laws of nature.

Patentable subject matter: any invention which is industrially applicable and which is novel and involves inventive step.

Novelty: an invention is considered novel if it was neither: (1) publicly known or worked in the Republic of Korea or in a foreign country prior to the filing of the patent application; (2) described in a publication distributed in the Republic of Korea or in a foreign country or made available to the public through electric telecommunication lines prior to the filing of the patent application.

Exception to lack of novelty: an invention is considered not to have lost novelty if a patent application for the invention is filed in Korea within twelve months from the date that a person having the right to obtain a patent: (1) caused his invention to lack novelty (except where the invention is caused to be laid open for public inspection or publication of registration in the Republic of Korea or in a foreign country under a treaty or law); (2) unintentionally caused his invention to lose novelty. Claiming exception to lack of novelty is allowable at the time of filing an application. For applications filed on or after July 29, 2015, also allowable within the time limit allowed for filing amendments, and within three months after the transmittal of a certified copy of the decision for grant of application, but before the registration of a patent.

Inventive step: an invention lacks inventive step where it could have been easily made, prior to the filing of the patent application, by a person having ordinary skill in the art to which the invention pertains.

Exceptions to protection (unpatentable inventions): inventions contrary to public order, good morals or public health.

Inventions of microorganisms per se: inventions of microorganisms including animals and plant varieties as well as inventions utilizing microorganisms can be patented.

Inventions of plants: inventions of plants reproducing asexually or sexually may be patented.

Computer software-related inventions: computer software-related inventions are patentable if the invention comprises a technical idea providing a concrete means of achieving industrial utility. Computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter. 

English language application: as from January 1, 2015, it is possible to file an English application with KIPO. Still, however, a Korean translation thereof must be submitted within fourteen months from the priority date; if not, the application is deemed to have been withdrawn. The basis for later amendments will be the English application as originally filed with KIPO, and the Korean translation may be corrected on the basis of the English application within the time limits as prescribed under the Korean Patent Law. Once the Korean specification is granted, mistranslations, if any, may be amended within a scope that does not substantially change the scope of a claim.

Amendment of application: amendments are permitted within strict time limits (see “4. Examination” – Time limitation on filing amendments). No new matter may be added through amendments.

Multiple claim system: multiple claim system allows varying scope definitions so long as application is for one invention only or a group of inventions so linked as to form a single generic inventive concept: (1) technical relationships between each invention must exist; (2) technical characteristics between each invention must be identical or correspond to each other.

Territory covered: the whole territory of the Republic of Korea.

Filing requirements for an application (to be sent to resident agent):
1. Specification with claims and abstract;
2. Power of attorney (no legalization) if agent has not been granted general power of attorney;
3. Drawings (if any), (297 by 210 mm);
4. Name(s) and address(es) of the inventor(s);
5. Certified copy of the priority application(s), if priority is claimed.
Note: for applications claiming priority from a patent application filed in a country which has joined the WIPO Digital Access Service (DAS) and notified publicly by KIPO or Taiwanese patent application (as from January 1, 2016), it is not necessary to submit a certified copy of the priority documents. But the name of the country in which the application was filed, the application number, the filing date and WIPO access code need to be specified. Korea joined the WIPO Digital Access Service (DAS) for priority documents on July 1, 2009.

Description requirement: in the detailed description of the invention, the invention must be described clearly and in detail in the form including technical field, technical problem and technical solution, etc. to the extent that any person having ordinary skill in the art to which the invention pertains can easily carry out the invention (background art of the invention should also be described here).

Filing without one or more requirements: a Convention priority document may be filed within sixteen months of the priority date. A power of attorney must be filed within a term fixed by the Korea Intellectual Property Office (KIPO) (usually one month, extendible).

Application without claims: an applicant can file a patent application without claims at the time of filing. An applicant must file an amendment adding claims within one year and two months from the priority date.

Provisional specification: as from March 30, 2020, an applicant may file a patent application with the provisional specification which does not conform to the formal requirements of the specification (for example, an article or a lab notebook as it is); however, the applicant should file an amendment to satisfy the formal requirements within one year and two months from the priority date, or may file another application claiming the domestic priority based thereon within a twelve-month period.

Electronic filing: available (reduced filing fees).

Inventions in the microbiological field: when filing a patent application for an invention utilizing a microorganism (for the first time), it is required that the microorganism be deposited with either an international depositary or a depositary designated by the Commissioner of KIPO; applicant must identify the deposit number in the specification and submit documents certifying the fact thereof (a copy of Receipt) to KIPO at the time of filing the application; however, submission of the certifying documents may be omitted if the depositary is located in Korea.

PCT application: the time limit for entering the national phase is 31 months from the priority date (one month extendible as from the filing date of January 1, 2015).

Examination

Provisional publication (laying open): applications are kept secret until provisional publication (laying open) of an application, which is made when a period of eighteen months from the date of application (priority date) has elapsed (or after entry into the national phase in case of a PCT application). Earlier laying open of a patent application may be made on request.

Request for examination: examination as to patentability, directed to such questions as novelty and inventive step (non-obviousness), is made on examination request only. The applicant or any third party may file a request for examination at any time within a period of five years from the date of filing (Korean filing date or International filing date). If examination has not been requested within five years, the application is deemed to have been withdrawn. For applications filed on or after March 1, 2017, a request for examination should be made within three years from the date of filing.

Order of application examination: applications are examined based on the order in which the request for examination is made. As from October 1, 2008, an applicant may choose one of priority examination, normal examination, or delayed examination. In case of the request for priority examination, the examination will be made within three to five months (see below “Priority examination”). Normal examination will be made within twelve months. For a delayed examination, an applicant may choose the time for the beginning of examination between two years (from the date of request for examination) to five years (from the filing date of an application) and the examination will be made within three months from the desired time.

Priority examination: priority examination of a patent application with fees may be requested for: (1) an application where a person other than the applicant is commercially or industrially working the invention claimed after the laying open of the application; (2) an application in the field of the defense industry; (3) an application useful for prevention of environment pollution; (4) an application directed to promote exports; (5) an application of the national government or a local autonomous entity; (6) an application of a venture business or a small or medium sized entity with technical innovation; (7) an application on results of a R&D project of the national government; (8) an application that is the basis of a priority claim under the Paris Convention; (9) an application worked or ready to be worked; (10) a PCT application for which KIPO performed an international search; (11) an application for which the Commissioner of the Korean Intellectual Property Office agrees with the commissioner of a foreign Intellectual Property Office to preferential examination (Patent Prosecution Highway (PPH) with 35 countries such as Japan, U.S.A., Denmark, U.K., Canada, Russia, Finland, Germany, Spain, China, Mexico, Singapore, Hungary, Austria, EPO, Australia, Iceland, Israel, Sweden, Norway, Portugal etc.). PCT-PPH with 33 countries such as U.S.A., China, Japan, Austria, Spain, Israel, NPI, Russia, EPO, Canada, Finland, Australia, Sweden etc. KIPO pilots GPPH (Global PPH) in January 2014; (12) an application pertaining to project for development of local area; (13) an application for an invention utilizing the technology of the Fourth Industrial Revolution such as artificial intelligence or the Internet of Things; (14) an application directed to advanced technologies such as semiconductor or display; (15) an application necessary for disaster prevention, response and recovery.

Extent of examination: a patent application is examined to ensure that the invention satisfies all the requirements for a patent. 

Examiner’s rejection: period of two months (extendible with fee) to respond to Examiner’s action. Examiner’s second rejection may be made final.

Reexamination and appeal against Examiner’s final rejection (or re-rejection): for applications filed before July 1, 2009, an appeal against the Examiner’s final rejection must be filed within thirty days (extendible with fee) from the date of receipt of the Notice of Final Rejection. When an appeal is made against the final rejection of an application and an amendment to the specification is submitted within thirty days from the date of appeal, the Examiner must reexamine the application and decide whether to maintain the rejection or to revoke the final rejection and grant a patent. When the final rejection is maintained after reexamination, the Examiner must transmit it to the Intellectual Property Tribunal. For applications filed on or after July 1, 2009, a person who receives a final rejection must file an appeal or an amendment and request for reexamination within thirty days from the date of receipt of a certified copy of the decision of rejection (extendible with fee). If a request for reexamination is made, the Examiner will reexamine the application and decide whether to maintain or revoke the rejection. Appeal against rejection can be filed within thirty days (extendible with fee) from the date of receipt of the Notice of Re-rejection after a reexamination. As from April 20, 2022, time limit on filing an appeal against rejection (or re-rejection) or a request for reexamination with an amendment is extended from thirty days to three months. Furthermore, even if a decision to grant a patent is made, a request for reexamination with an amendment may be filed until before patent registration.

Division: if a patent application includes two or more inventions, it can be divided by the applicant into one or more new patent applications within the time limitation on filing amendments (see below: “Time limitation on filing amendments”) or within thirty days from the date of receipt of a certified copy of a decision of final rejection (or re-rejection) of an application (as from April 20, 2022, within three months therefrom). For applications granted on or after July 29, 2015, filing a divisional application is also allowable within three months after the transmittal of a certified copy of the decision for grant of application, but before the registration of a patent. 

Separation: besides the filing of a divisional application above, for a patent application on which an appeal against the final rejection is filed on or after April 20, 2022, a separate application may be filed with allowable claims thereof within thirty days from the date of receipt of a copy of the trial decision of confirming the final rejection.

Conversion: as of October 1, 2006, a patent application can be converted into a utility model application or vice versa within thirty days from the date of receipt of notice of an Examiner’s first decision of rejection. As from April 20, 2022, time limit on filing a conversion application is extended from thirty days to three months. When converted, the application before conversion is deemed to have been withdrawn.

Dual application: under the prior law, the owner of a patent application claiming a device, filed on or after July 1, 1999 and before October 1, 2006, may, before the date of the transmittal of a certified copy of the Examiner’s decision that a patent is to be granted, file a dual application for a utility model within the scope of the claims originally attached to the patent application. However, dual registration of both a patent right and utility model right for the same invention is not permitted; a person who obtains both rights for the same invention may maintain only one of the rights. As of October 1, 2006 dual application system is abolished for applications which are filed after October 1, 2006. 

Decision for grant: after examination, if no reason for rejection exists, the Examiner makes a decision for grant. 

Ex officio reexamination after a decision for grant: for an application for which the decision for grant is made on or after March 1, 2017, when the Examiner finds obvious grounds for rejection after the decision for grant and before registration of grant of the patent, he or she can cancel the decision for grant ex officio and resume examination.  

Ex officio amendment: on or after March 1, 2017, the Examiner can correct ex officio obvious deficiency in the description as well as clerical errors in the specification when he or she renders a decision for grant. When the applicant does not accept the ex officio amendment, the decision for grant for the application is deemed to be cancelled and examination for the application is resumed. When the ex officio amendment includes a new matter or is made with respect to no obvious deficiency, it is deemed to have never been made.

Dispute about ownership: anyone can dispute the ownership of the right to obtain a patent on an invention through trial. If a patent application is filed by a person other than the inventor or his successor, it should, according to the law, be rejected.

Time limitation on filing amendments: for applications filed before July 1, 2001: (1) at any time until the period of fifteen months from the date of application (or priority date) has elapsed, but before the transmittal of a certified copy of the decision for grant of the application; (2) after fifteen months from the date of application but before the service of a copy of the decision for grant: (a) at the same time as the filing of a request for examination, (b) within three months from the day on which the applicant receives a notice of the filing of a request for examination by a third party, (c) within the period designated by the Examiner to reply against an Office action, (d) within thirty days from the date of appeal against a final rejection; (3) after grant: (a) within the period designated by the Examiner to reply against an opposition (Note: opposition was abolished as from July 1, 2007), (b) by way of a Correction Trial (see “6. Modification of protection” – Amendment of issued patent). For applications filed on or after July 1, 2001: (1) prior to substantive examination: anytime; (2) during substantive examination: (a) if no Office action is issued, anytime before receipt of a certified copy of the decision to grant a patent, (b) if Office action is issued, within time limit for response to Office action (preliminary rejection), (c) within thirty days from filing of appeal against final rejection (for cases filed before July 1, 2009), or at the time of request for reexamination within thirty days from date of final rejection (for cases filed on or after July 1, 2009); (3) after grant: (a) within the period designated by the Examiner to reply against an opposition (Note: opposition was abolished as from July 1, 2007), (b) by way of a correction trial (see “6. Modification of protection” – Amendment of issued patent).

Granting, Protection

Granting: where no grounds for rejecting a patent application are established, the Examiner renders a decision that a patent is to be granted.

Registration: a patent right is obtained only through registration. The registration fees for at least the first three years or more must be paid in a lump sum. The failure to pay these annuity fees results in the abandonment of a patent application.

Delivery of document: KIPO issues Letters Patent in both paper and electronic format. When paying the registration fees, the applicant may choose which format, with no additional fees in case of paper format.

Beginning of protection: from the date of registration of patent (the date of receipt of payment of registration fee).

Duration – extension: for patents granted on applications filed on or after July 1, 1987 and before September 1, 1990, the longer of twenty years from filing date or fifteen years from date of publication for opposition (if applicable) or date or registration; for all other patents, twenty years from the filing date. For patents covering drugs or agricultural chemicals, extension of duration for up to five years is possible if they satisfy certain requirements. For patents granted on applications filed on or after March 15, 2012 where an application is registered belatedly after the later date of four years from the filing date or three years from the request date for examination, extension of duration for the delay is possible. However, a delay caused by the applicant is excluded from the extension of duration.

Annuities: the 1st to 3rd year annuities must be paid in a lump sum before registration of a patent, the 4th year annuity before the last day of the 3rd year (counted from the date of payment of registration fee) and so on. The amount is determined depending on the number of allowed claims.

Annuity grace period: a six-month grace period for payment of the annuity is granted upon payment of a surcharge; the surcharge varies based on the date the annuities are actually paid. A person who is ordered to remedy underpayment of patent fees by the Commissioner of KIPO may pay supplementarily the missing patent fee within one month from the date of order. If a person who desires to obtain registration of the granted patent right or a patentee fails to observe the six-month time limit for late payment or one-month time limit for supplementary payment of patent fees due to justifiable reasons, he may pay the patent fee supplementarily within two months from the day on which the reasons for not meeting the late payment ceased to exist but only within one year from the later of either the time limit for late payment or the time limit for supplementing the lacking patent fees. When a patent expires due to non-payment of annuities, the patentee is able to restore the expired right by paying annuities two times higher than normal within three months after the expiration date of the six-month grace period.

Marking of patented goods: not compulsory, but desirable.

Text of marking: after registration, “Patent” or “Method Patent” with the patent number.

Patent right: a patentee is granted the exclusive right to commercially work the patented invention.

Working: working of a patented invention is not compulsory, but non-working or insufficient working may lead to the grant of a compulsory license (see below “6. Modification of protection” – Compulsory licenses). “Working” means: (1) in the case of an invention of a product, acts of manufacturing, using, assigning, leasing, importing, or offering for assignment or lease (including displaying for the purpose of assignment or lease) the product; (2) in the case of an invention of a process, acts of using the process, or offering the process for use; (3) in the case of an invention of a process of manufacturing a product, acts of using, assigning, leasing, importing, or offering for assignment or lease (including displaying for the purpose of assignment or lease) the product manufactured by the process, in addition to the acts stated in item (2).

Limits of patent right: the effects of a patent right do not extend to: (1) use of a patented invention for the purpose of research or experimentation (including research or experimentation for authorization for drugs or registration for agrochemicals); (2) vessels, aircraft, or vehicles merely passing through the Republic of Korea or machinery, instruments, etc. used therein; (3) identical products existing in the Republic of Korea at the time a patent application was filed; (4) acts of preparing medicines in accordance with the Pharmaceutical Act or a medicine prepared by such acts for the invention of a medicine to be prepared by compounding two or more medicines.

License required for exploitation: where a patented invention would utilize another person’s earlier filed patented invention, registered utility model, or registered design, the patentee or licensee of the later filed invention may not commercially or industrially work their invention without a license from the owner of the right to work the earlier filed invention. However, if the owner of the earlier filed invention refuses without just cause to permit the working of the later filed invention, or it is impossible for the owner of the later filed invention to obtain a license, the patentee or licensee of the later filed invention may request a trial for grant of a non-exclusive license.

Right of prior user: a person who, without being aware of the contents of an invention disclosed in a patent application, was commercially or industrially working the invention or making preparations therefore in the Republic of Korea, shall have a right to a non-exclusive license on the patented invention, such license being limited in scope to the extent of the person’s working or preparation for working at the time of the patent application.

Infringement: unauthorized working of a patented invention constitutes infringement. Meanwhile, offering the process for use will be regarded as an act of working of a patented invention as of March 11, 2020, which means that transferring computer software online may correspond to an act of working of a patented invention; however, the act constitutes infringement only when working while knowing infringement of the patented invention. The following acts are also deemed to be infringement: (1) in the case of a patent for an invention of a product, unauthorized commercial or industrial acts of manufacturing, assigning, leasing, importing, or offering for assignment or lease (including displaying for the purpose of assignment or lease) any article to be used exclusively for the manufacture of the product; (2) in the case of a patent for an invention of a process, unauthorized commercial or industrial acts of manufacturing, assigning, leasing, importing, offering for assignment or lease (including displaying for the purpose of assignment or lease) any article to be used exclusively for the working of the process.

Remedies: a patentee or exclusive licensee may request a court to prohibit or prevent infringement, including the destruction of infringing articles or the removal of facilities provided for the act of infringement, and compensation for damages. For a lawsuit against patent infringement filed on or after June 30, 2016, when the court orders a party to submit evidential material the other party has requested to prove infringement or calculate the loss but the party ordered refuses without reasonable grounds, claims on the evidential material by the other party may recognized as truthful. For a lawsuit against patent infringement filed on or after July 9, 2019, a party denying the mode of infringing act asserted by the patentee or the exclusive licensee should present the specific mode of his act, and if not without reasonable grounds, the asserted mode of infringing act may be recognized as truthful. And for an infringement of a patent acted intentionally on or after July 9, 2019, treble damages may be imposed by the court. Additionally, if a criminal complaint is lodged, a fine of not more than one hundred million won or imprisonment of up to seven years may be imposed; however, as from October 20, 2020, the prosecution for an infringement may be initiated regardless of a criminal complaint as long as it is not against the right holder's explicit wish.

Modification of Protection after Registration

Opposition: for applications which were registered before July 1, 2007, an opposition could be filed from the date of registration to within three months after the publication of the patent in the Patent Gazette by submitting to KIPO a statement of opposition together with evidence; the statement of opposition and evidence may be amended only within thirty days of the expiration of the three-month time limit for opposition. If the opposition is accepted the granted patent will be revoked. A ruling for revocation of a patent is appealable by the patentee. Note: opposition was abolished as from July 1, 2007. 

Amendment of issued patent: a Correction Trial must be requested, in which only the following amendments are permitted so long as they do not substantially modify or extend the patent claims: (1) reduction of the scope of the claims of a patent; (2) correction of clerical errors; (3) clarification of an ambiguous description. An interested party can request a trial to invalidate any amendment which is allowed for an issued patent.

Licenses: two kinds of licenses are provided for: (1) exclusive license and (2) non-exclusive license. The granting of a license to use a patent and the conditions for licensing are agreed between the owner of the patent and the third party. An exclusive license does not take effect unless registered. A trial for cross-licensing may be requested by the patentee when he is directed to grant a non-exclusive license to a person who has a patented invention utilizing the patentee’s invention.  

Compulsory licenses: any person may endeavor to obtain a non-exclusive license from a patentee or exclusive licensee, and if no mutual agreement can be reached, the person requesting the license may request the arbitration of the Commissioner of KIPO. The Commissioner of KIPO may grant a compulsory license if: (1) a patented invention has not been worked (see above: “5. Granting” – Working) continuously for three years or more in the Republic of Korea except in the case of natural disaster, unavoidable circumstances, or other justifiable reasons; (2) a patented invention has not been continuously worked, without justification, in the Republic of Korea commercially or industrially and on a substantial scale during a period of three years or more, or if domestic demand has not been met without justification to an appropriate extent and under reasonable conditions; (3) the working of a patented invention is necessary for the public interest; (4) the working of a patented invention is necessary for the correction of unfair competition as judged by judicial or administrative procedures; (5) the working of a patented invention is necessary for exporting pharmaceutical products (including any active ingredients needed for the manufacture of the pharmaceutical product and any diagnostic kits needed for the use of the pharmaceutical product) for the purpose of treating disease threatening the health of the majority of the people in an importing country.

Cancellation for non-use: the cancellation system for non-use was abolished from March 15, 2012.

Expropriation: if a patented invention is required for national defense, the Korean government may expropriate the patent or work the invention.

Request for cancellation of patent: for a patent of which registration of grant is made on or after March 1, 2017, anybody can request cancellation of the patent on the ground of lack of novelty or inventive step, etc., within six months after patent publication. The documents cited during the examination may not be presented as the grounds for cancellation. When the decision of cancellation of the patent is rendered by the Trial Examiners, the patentee can appeal the decision against the Commissioner of KIPO to the Patent Court. 

Invalidation: anybody may demand an Invalidation Trial from the patent registration date to within three months after patent publication. After three months have passed from patent publication, only an interested party can demand an Invalidation Trial. For a patent of which registration of grant is made on or after March 1, 2017, only an interested party can demand an Invalidation Trial even if it is within three months from patent publication, along with introduction of the request for cancellation of the patent.

Validation of invalidated patents: restoration is possible by virtue of re-trial. A request for re-trial should be made within thirty days of the day on which the demandant became aware of a reason for re-trial. However, re-trial may not be requested once three years have elapsed from the day on which the judgment in trial became finally binding.

Scope determination: any interested party may request a Scope Trial to confirm the scope of a patent right.