Korean Patent Application Q&A

Can Korean patents cover any type of invention, including software, business methods, and medical methods?

• In South Korea, medical methods, treatments or diagnostic methods for human diseases are considered to lack industrial applicability and therefore do not meet the conditions for patent authorization. However, medical devices or drugs used for human medical surgery or disease diagnosis are considered to have industrial applicability and patentability and can be patented.
• Korean patent law does not clearly stipulate whether business methods or software can be patented. Therefore, as long as they meet the statutory requirements for patentability, namely: industrial applicability, novelty and creativity, business methods or software can also be patented.
• A business method or software is considered to meet the definition of an invention if it is an information processing of software implemented by hardware, i.e. the creation of a technical idea using the laws of nature. This information processing implementation should be defined in the claims to make it patentable. In particular, software inventions can be protected by claims for a computer program (or application) stored in a medium.
• Claims directed to program signals, data signals or computer program listings, as well as claims involving human behavior, economic rules, manual decisions, mathematical algorithms or human psychological processes, are not allowed to obtain patent protection.
  

Who owns patents for inventions by company employees, independent contractors, multiple inventors, or joint ventures? How is patent ownership formally recorded and transferred?

• According to the Korean Invention Promotion Act, employees who complete inventions during their employment are entitled to patents for their inventions. When an employee obtains a patent, the employer who employs the employee is entitled to a non-exclusive license to the patent for his or her contribution to the employee's invention.
• An employer may require an employee to transfer the rights to obtain a patent or other invention in advance, or, if there is a contractual agreement or employment regulations, may require the employee to grant an exclusive license to the invention. In addition, if an employee agrees to transfer the rights to his or her invention to the employer or grant an exclusive license to the employer pursuant to a contractual agreement or employment regulations, the employee will be entitled to fair compensation.
• If two or more people jointly complete an invention, they jointly enjoy the patent right.
• If the independent contractor is the inventor, the patent rights belong to the independent contractor, unless there are other contractual obligations.
• If a joint venture has a patent ownership agreement with the company that establishes the joint venture, the ownership of the patent shall be determined in accordance with the agreement.
• If the conditions prescribed by law are met, the patent right will automatically take effect if it is transferred through inheritance or other general succession methods, and no separate transfer registration is required. However, the transfer of patent ownership by transfer will only take effect after it is registered with the Korean Intellectual Property Office.
• If a patent is invalidated, the person entitled to the patent right may file a corresponding patent application within 30 days from the date of finalization of the invalidation decision, which shall be deemed to have been filed on the date when the person without the right filed the application. In addition, if the application filed by the person without the right is granted a patent, the person entitled to the patent may request the court to transfer the patent.

How long does it take on average to get an invention patent granted in Korea, and how much does it usually cost ?

• Considering the current examination speed of the Korean Intellectual Property Office (KIPO) , it takes about 24 months from submitting a request for substantive examination to receiving the examination results. Therefore, the average authorization time for Korean patents is about 32 months from submitting a new application to obtaining a patent certificate.
• Generally, the cost of preparing and filing a patent application for a foreign applicant to apply for a patent in Korea is usually between $ 2,500 and $ 7,000 , depending on the size of the translated text; in domestic cases, legal fees range from $ 2,000 to $ 5,000 , depending on the complexity of the invention. When filing a patent application with KIPO , official fees must be paid, including an application fee of $ 46 and an official fee of $ 18 for each priority claim. At the same time, when submitting a request for substantive examination, official fees must be paid, including a basic fee of $ 166 and an official fee of $ 51 for each claim.
• At the grant stage, the applicant must pay the annual fees for the first three years in one lump sum after receiving the grant notice, including a basic fee of US$ 39 and an official fee of US$ 36 for each claim.
• If KIPO issues an official notice, the applicant will need to respond to the official notice. In this case, corresponding official fees and service fees will also be incurred.

Is there any accelerated procedure for invention patent application in Korea?

• In Korea, the following patent applications may be requested for accelerated examination simultaneously with or after the request for substantive examination:
  • The invention has been commercialized by a third party after the invention application was published;
  • Applications that require expedited examination according to regulations, where the parties who wish to request expedited examination submit prior art search reports to the Intellectual Property Office, for example, invention applications related to the Fourth Industrial Revolution, including artificial intelligence, the Internet of Things, self-driving cars, big data, 3D printing, cloud computing, and cognitive robots;
  • Invention applications involving cutting-edge technologies such as semiconductors; and
  • Under the Patent Prosecution Highway (PPH) program between KIPO and corresponding foreign patent offices, the Korean Intellectual Property Office currently has PPH programs with 38 countries and organizations.

What are the basic requirements for patent applications in Korea?

• A Korean patent application must be accompanied by a description, claims, drawings and an abstract.
• In the specification, a claimed invention should be described clearly and fully so that the invention can be easily practiced by anyone having ordinary skills in the field.
• The background technology of the invention must be described in the specification. Failure to meet these requirements can be used as a basis for the rejection of a patent application, but cannot be used as a basis for invalidation.
• The applicant may file claims within 14 months from the earliest priority date. If no priority is claimed, claims may be filed 14 months after the patent application date.
• In order to ensure the effective filing date of a Korean patent application, the applicant may submit an English description, claims and drawings when filing a Korean patent application. However, the corresponding Korean translation must be submitted within 14 months from the earliest priority date.
• Patent applications can be filed by simply submitting a provisional specification, such as a scientific publication or research note in a Korean or foreign journal, without having to comply with the complex formal application requirements, but provisional applications are not suitable for substantive examination. For an invention to be examined, the applicant must submit:
  • a new standard application claiming priority within 12 months from the date of filing of the provisional specification, with the filing date of the provisional specification as the earliest filing date; or
  • Within 14 months from the date of filing of the provisional instructions, a formal standard instruction manual shall be submitted in the prescribed format.

Is it necessary to disclose prior art to the examiner of the Korean Patent Office when applying for an invention patent ?

• The background technology of the invention must be described in the specification. The background technology of the invention refers to the conventional technology that may help understand the claimed invention and help conduct prior art search or examination. Unlike the information disclosure statement system in the United States, this requirement does not require the applicant to disclose all the information known to the individual related to the filing and examination of the patent application.

Can a patent applicant file one or more subsequent applications to pursue additional claims to inventions disclosed in its previously filed applications? If so, what are the applicable requirements or limitations?

• For the invention disclosed in the patent application, additional claims may be filed in a divisional application, which will be deemed to have the same effective filing date as the parent application. The filing deadlines for divisional applications are:
  • At any time before receipt of the first office action;
  • within the time limit for responding to the administrative agency's action or final dismissal, if any; and
  • Within 3 months from the date of receipt of the authorization notice and before payment of the authorization fee.
• The patent term of a divisional application is 20 years from the filing date of the parent application.
  

Can an adverse decision of the Patent Office be appealed to the courts?

• The Intellectual Property High Court (IPHC) has exclusive jurisdiction over all appeals from decisions of the Intellectual Property Trial and Appeal Board (IPTAB) of the Korean Intellectual Property Office (KIPO).
• If the appellant or the respondent loses the case in the IPHC, he or she may appeal to the Supreme Court for final instance.

Does the Patent Office provide a mechanism for opposing the granting of a patent?

• Anyone can submit prior art that has not been cited during the examination to IPTAB within 6 months from the grant date to the grant publication date to request the revocation of a granted patent. Since the revocation procedure is a unilateral procedure between the patent owner and IPTAB, once a third party makes a request, all procedures will be based on written arguments. Only the patent owner can appeal the revocation decision to the International Intellectual Property Committee and subsequently to the Supreme Court.
• Any other interested party or examiner may file an invalidation lawsuit to challenge the validity of the patent.

Does the Patent Office provide any mechanism to resolve priority disputes between different applicants for the same invention? What factors determine who has priority?

• The patent system in South Korea is based on first-to-file. If two or more patent applications are filed for the same invention, only the application with the earliest priority date or effective filing date is eligible for a patent for that invention.
• Regardless of whether the applications are filed by the same applicant or not, the first-to-file rule applies. If two or more applications with the same priority date or effective filing date involve the same invention, only one application selected by the applicants through negotiation or by the applicants will be eligible for the invention patent. If the applicant does not select an application, none of the applications will be granted a patent.

Does the Korean Patent Office provide for procedures for amending, reviewing, or revoking a patent? Can the court amend patent claims during litigation?

• After a patent is granted, the patentee may request amendments to the specification, claims and drawings at any time. During the pendency of litigation involving the patent, a request for correction of the patent may also be made. In such cases, the court may, at its discretion, suspend the litigation until the correction procedure is concluded.
• If a patent invalidation lawsuit is being conducted before IPTAB, a separate request for patent correction procedure may not be made, but a request to correct the description, claims or drawings may be made within the time limit specified in the invalidation procedure.
• The request for correction of a patent allows narrowing the scope of protection of the claims, correcting clerical errors and clarifying unclear descriptions, but the scope of protection of the claims cannot be substantially modified or changed. The subject matter required for protection in the claims shall be deemed patentable when the application is filed after the modification.

How is the patent protection period determined in Korea?

• The patent protection period for inventions in South Korea is 20 years from the date of patent application. The patent term can be extended to compensate for a period of time when the patented invention cannot be implemented due to regulatory approval or registration, or a period of time when the examination of the patent application is delayed by the KIPO.