Requirements and Procedures when a foreign applicant claims 12-months Grace Period in Korea

Based on 12 months grace period under the Korean patent law, an inventor or his assignee may obtain a patent through filing an application for any already disclosed invention within 12 months from the date of novelty destroying event. The disclosure of an invention as novelty destroying event might be done by an inventor, his assignee or a 3rd party. In order obtain such benefit of grace period under the Korean patent law, a foreign applicant must meet substantive and procedural requirements as follows:

1. Priority claim under the Paris Convention or PCT may not apply beyond 12 months from the first disclosure.

For example, an inventor disclosed his invention on October 1, 2013 and filed a patent application with claiming benefit of grace period on December 1, 2013 at USPTO. Later, the applicant filed a Korean patent application based on the US patent application with priority claim under the Paris Convention on December 1, 2014. The applicant may not obtain a patent in Korea because the disclosure of the invention on October 1, 2013 shall destroy the novelty of the invention filed at KIPO. Because an applicant did not file the application within 12 months from the first event of invention disclosure, he may not claim benefit of 12 months grace period. Accordingly the priority claim under the Paris Convention cannot save the lost of novelty.

Therefore, a foreign applicant must file a Korean patent application at KIPO with 12 months from the first disclosure event regardless of claiming priority under the Paris Convention or PCT. Otherwise, a foreign applicant will lose an chance to obtain a patent in Korea under 12 months grace period.

2. An applicant must disclose all and each event of invention disclosures when files a patent application at KIPO

When an inventor had disclosed his invention several times before he has filed a patent application before KIPO, the applicant must disclose all of them and request benefits of 12 months grace period for all and each events of invention disclosures. Otherwise, the unreported event may be a basis to deny the novelty of the filed invention.

For example, (1) an inventor disclosed an abstract about his invention in a brochure of a conference on October 1, 2013 and (2) gave a detailed presentation about his invention before audience in the conference on October 10, 2013 and then (3) published his article about the invention on November 1, 2013 and further (4) the organizer of the conference uploaded the inventor's presentation at an official website of the conference on November 10, 2013.

In order to be safe based on benefits of grace period under the Korean patent law, an inventor must disclose all of the above 4 events and claims benefits of 12 months grace period for all of them when he files a patent application at KIPO within October 1, 2014. For example, if an applicant did not report No. 4 event of posting his presentation at the conference website, it may be a basis for denying novelty of the invention. However, in my view, it may be possible to argue that the inventor could not know the event and did not have any intent to deceive KIPO. Accordingly an applicant may probably overcome such a hurdle but it is better to check all possible events of disclosures and report all and each of them to KIPO. On the other hand, in case an applicant did not disclose No. 2 event or No. 3 event, he cannot save his application from loss of novelty by his disclosing the invention before the filing date.

Steady Increase of Patent Applications to KIPO from Foreign Applicants

The number of patent applications in Korea has steadily increased in 5 recent years. According to statistics from KIPO, the number of patent applications in 2013 was 204,589 that was 8.6% increase compared to that of 2012. 44,894 new patent applications among them were filed by foreign applicants. It has increased by 11.7% compared with the numbers during the same period in 2012. We could observe the steady increases in the numbers of patent applications from foreign applicants by in recent 5 years that ranges from 5.8% to 11.7%.

Considering the background of such steady increases, we could observe that many Korean companies became key players in the world's major manufacturers and sellers of smartphones, semiconductors, display panels, TVs, etc. Accordingly manufacturers of parts and raw materials have critical interests in Korean market, too. Naturally they need IP protection about their businesses in Korea and have filed more patent applications in Korea.

Amendments to the Korean Patent Act from January 1, 2015

1. An applicant may file an English specification without the Korean translation

An applicant may file a provisional application in English without the Korean translation in order to obtain a patent filing number and date in Korea. The description of an invention in English does not have to be a formal patent specification. A simple literature about an invention should be sufficient if it describe all elements of an invention clearly. Under the current law, an applicant may file a provisional application in Korean without claims. Furthermore, an applicant may file a formal application in English without the Korean translation in order to obtain a patent filing number and date in Korea. Within 14 months from the earliest priority date, an applicant must file the Korean translation and claims.

2. 32 months deadline for submitting the Korean translation for national entry of PCT application

Under the current Korean law, a PCT applicant must enter a Korean national phase of a PCT application through filing documents for entering a Korean national phase of a PCT application that includes the Korean translation of a PCT specification. However, under the new law, a PCT applicant may request a one-month extension of time for submitting the Korean translation and thus may submit the Korean translation within 32 months from the earliest priority date. But, an applicant may not extend the 31 months deadline for national entry of a PCT application in Korea.

3. An applicant may correct Korean translation errors based on an original foreign language specification

Under the current Korean law, any amendment beyond the scope of the Korean translation filed shall be regarded as new matter even though the amendment has been based in the original specification in foreign language. Accordingly it is critical once there is any translational error in the Korean translation. The revised new law allows that an applicant may correct any translational errors based on the original foreign language specification and the PCT specification in foreign language.

Statistics of KIPO - IP Applications Trend Over Three Years in Korea

Statistics of KIPO - IP Applications Trend Over Three Years in Korea

Statistics on New IP Applications Filed to KIPO in 2013

KIPO published the annual report of 2013 that includes statistics of filing numbers.

In 2013, KIPO received 204,589 new patent applications that is 8.3% increase to 2012 year; 10,968 new utility model applications that is 11.7% decrease to 2012; 66,940 new design applications that is 6.0% increase; and 147,667 new trademark applications that is 11.4% increase to 2012. 

In total, KIPO received 430,164 new applications with an 8.4% growth compared to the total number of 2012. 

Statistics re Korean Patent Applications from WIPO world IP indicators 2012

In 2011, KIPO received about 180,000 patent applications. Among them, 23%, 40,890 Korean patent applications were filed by foreign applicants. Korea was ranked the 5th in the world in the number of patent applications by foreign applicants.

Patent Office	Non-Resident Filing	Total Filing	Percentage
KR	40,890	178,924	23%
Japan	55,030	342,610	16%
China	110,583	526,422	21%
Germany	12,458	85,674	14%

<Data Source: WIPO, World IP Indicators, 2012> 

In addition, 12,139 Korean patent applications – accounting for approximately 25% of the 40,000 Korean patent applications by foreign companies – were filed by American applicants.

Origin	Office
	US	EP	CN	JP	KR
US	-	34,987	28,457	23,414	12,139
CN	10,545	2,548	-	1,401	752
JP	85,184	20,568	39,231	-	15,234
KR	27,289	4,889	8,129	5,007	-

As for PCT routes, KIPO is highly trusted internationally. Further, KIPO become one of the most important offices because KPO has been appointed as the PCT International Searching Authority for about 1/3 of the U.S. PCT applications.

Year	2007	2008	2009	2010	2011
PCT applications in  USA	54,042	51,642	45,627	45,008	48,596
PCT International Search by KIPO	2,735	11,371	13,356	13,319	15,168

For example, Major US companies who appointed KIPO as their PCT International Searches in 2012 include Intel, MS, HP, Google, 3M, Hughes, Applied Materials, Caterpillar, Kimberly-Clark.

Basics on Claims under Korean Patent Law

1. Description requirement

Article 42, paragraph 4 of the Patent Act stipulates: "claims shall be supported by the detailed description of the invention and shall define the invention clearly and concisely." Claims must be supported by the detailed description of the invention. That means that the scope of each claim must be identical or equivalent to the subject matter described in the detailed description. Thus, an applicant should draft a specification to include a wide variety of examples with respect to the claimed invention.

KIPO maintains a rather strict attitude towards the support requirement through its narrow interpretation of the scope to be supported. As a practical strategy, a divisional application rather than an amendment of claims may be used to secure the broader scope of the protection and avoid prosecution estoppel. But, because it is required that the scope of a divisional application be within the scope of the original specification, in order to secure a broad scope of protection the original specification should include sufficient examples and the descriptions of its equivalents to support the claimed subject matter.

2. Claim Interpretation

  All Elements Rule

The scope of a patent is defined by the elements of a claim. It is well settled that each element in a claim is deemed material to defining the scope of the patented invention. Therefore, only when every element defined in a claim is found in an accused product or process, the accused product or process literally infringes the patent right.

  Doctrine of Equivalents

It has been long time for the Patent Court and the Supreme Court to adopt the doctrine of equivalents as a part of Korean patent law for interpreting claims.

The rationales of the doctrine of equivalents in Korea are similar to those of the U.S. Thus, it is true that if the accused product or process performs substantially the same function in substantially the same way to obtain the substantially same result of the patented invention, the accused infringes the patent in Korea.

In particular, the Supreme Court held that the accused product or process infringes a patent where an element of the patented invention is substituted with another element and, if (i) the technical concepts or principle to solve the objective of the patented invention and the accused invention are the same or common; (ii) the substituted element in the accused invention performs substantially the same function in substantially the same way to obtain the substantially same result of the patented invention; (iii) such substitution is obvious to an ordinarily skilled person in the art. However, the doctrine of equivalents shall not be applicable to the circumstances that (iv) the accused substitution was already known to skilled persons in the art at the time of filing an application and (v) the accused element was excluded from the claimed invention during prosecution.

  Prosecution History Estoppel

Based on the doctrine of equivalents, a patentee cannot regain his rights to any elements that were abandoned through an amendment or a response during prosecution. For example, when an element is excluded through an amendment in order to secure novelty and non-obviousness in response to the examiner’s rejection, an invention with an equivalent element is outside the scope of the patent.

The Supreme Court held that prosecution history estoppel should be applied in view of specification, opinions of an examiner from filing of the application to issuance of a patent and the intent of an applicant as indicated in the amendments and arguments during prosecution. Furthermore, in a patent containing more than one claim, the prosecution history of each claim should be independently reviewed to decide whether certain subject matter was intentionally excluded from the scope of the claim.

Basics of Patent Prosecution Process in Korea

Korea has the first-to-file rule. All unexamined applications are automatically published after 18 months from the filing date in Korea or the earliest priority date in a foreign country. In addition, after a patent application is granted and the patent is registered, the granted specification shall be published. As a third party observation, once an unexamined patent specification has been published, any party may submit any relevant information relating to the patentability of the application to KIPO in order to prevent granting a patent thereof. The third party may not reveal their indent through a straw man action.

In other side, an applicant may warn in writing an alleged infringer about possible infringement of the claimed invention after his application has been published. And the applicant may obtain reasonable compensation of damage from the alleged infringer. A reasonable amount of compensation will be determined from the date of receipt of the warning letter. The compensation, however, can be collected only after the registration of the patent application

A patent application will be examined only when an applicant requests the examination of the application within 5 years of the filing date in Korea or the international filing date for a PCT route application. If no request for examination is made by the deadline, the application is deemed to have been withdrawn.

A registered patent may be invalidated only through an invalidation proceeding in KIPO. Because the IPT in KIPO has exclusive jurisdiction on the invalidation trial, an infringement court case may not invalidate the subject patent.

Patent Prosecution Process 

Bifurcation – Separation of Infringement and Validity

Korea has bifurcated system that allocates decision power to separate authorities. Patent Infringement Issue and Patent Invalidity Issue must be decided by two separate and independent courts as shown below. Patent infringement and invalidity challenge may occur simultaneously but two proceedings are correlated. Invalidity defense is allowed in limited circumstances under patent Infringement lawsuits. A court may stay the infringement lawsuit proceeding on its discretion due to Invalidity proceeding.

Overview of Basic Structure

Legal System in Korea

There are three tiers of courts in Korea: the District Courts, the High Courts and the Supreme Court. The Supreme Court located in Seoul consists of a Chief Justice and 13 Justices. Korea follows civil law tradition. Accordingly, a decision of the Supreme Court does not have binding authority but since the lower courts follow the Supreme Court’s interpretation of a law, the effect of a Supreme Court decision amounts to a binding force on the lower courts. Neither the jury system nor punitive damage compensation exists in Korea.

The District Courts and its Branch Courts hear the first instance of cases. For example, a patentee must bring a patent infringement lawsuit before a District Court or a Branch Court of a District Court that has jurisdiction over the case. The High Courts are appellate courts. A panel of three judges hears patent infringement cases.

The Patent Court

The Patent Court is the court that specializes in IP, and is located in Daejon which is a city 200 km south of Seoul. The Patent Court is a high court having exclusive jurisdiction over all appeals of the IPT and KIPO. There are 5 panels of 3 judges and 17 technical experts assisting judges of the Patent Court as law clerks. They have different technical expertise, and thus ensure a broad coverage of technology. Further, most of them are former ex-examiners having at least 10 years experience examining patent applications at KIPO.

KIPO and the IPT

The Korean Intellectual Property Office ("KIPO") is located in Daejeon. Within KIPO, the Intellectual Property Tribunal ("IPT"), as Board of Appeal, handles appeals, invalidity proceedings, and proceedings to determine the scope of patent rights. Invalidation Petitions must be brought to the IPT, which has exclusive subject matter jurisdiction for the validity of patents, utility models, industrial designs and trademarks. KIPO has four examination bureaus: Trademarks & Design, Machinery & Metals, Chemistry & Biotechnology and Electric & Electronic.

Bifurcated System

Invalidity must be reviewed by IPT. The district court may not decide invalidity of a patent. Any party interested in the validity of a granted patent may initiate an invalidation proceeding by filing an invalidation petition to the IPT. The invalidation petition may be filed even after the expiration of the subject IP rights. A panel of 3 board examiners reviews the case and may allow oral arguments hearing for both parties.

Need for Korean Patent Application

1. Korea Has an Attractive Market with a Respectable Size.

i. In 2013, Korea has a sizable market, and is currently the 13th largest economy in the world. Moreover, Korea is in the midst of broadening its scope of trades, as well as increasing the size of such trades through Free Trade Agreements (FTA) with the United States, Europe, China, Japan, and more.

ii. Current Status of FTA
Since entering into FTA with the United States in 2012, and with the European Union in 2011, the size of trades between Korea and the US and the EU is continuing to increase. Korea is in the process of entering into FTA with China and Japan as well.

2. Numerous International Companies Are Currently Applying for Patent Protections in Korea. 

i. In 2012, the number of Korean patent applications reached approximately 190,000 – this makes Korea the 5th largest nation in the world, in terms of number of patent applications. Approximately 40,000 applications – 21% of the total 190,000 applications – are submitted by foreign companies, reaffirming Korea’s status as a convenient forum for patent protection.

ii. In addition, 11,000 applications – accounting for approximately 25% of the 40,000 patent applications by foreign companies – were filed by American companies.

3. The Korean Intellectual Property Office (KIPO) Is Highly Trusted Internationally, And Is Appointed To Be The PCT International Searching Authority in Approximately 1/3 Of The U.S. PCT Applications.

   

Year	2007	2008	2009	2010	2011
PCT application in USA	54,042	51,642	45,627	45,008	48,596
PCT international Search by KIPO	2,735	11,371	13,356	13,319	15,168

Source: WIPO, PCT Yearly Review 2012 (May 2012), KIPO

Chief Foreign Enterprises as PCT International Search Requester in KIPO (2012)

• INTEL (semiconductor) 
• MICROSOFT (software) 
• HEWLETT-PACKARD (computer and electronic appliances) 
• BAKER HUGHES (oil well development) 
• Applied Materials (semiconductor production equipment) 
• THE REGENTS OF THE UNIVERSITY OF CALIFORNIA (medical supplies and chemistry) 
• GOOGLE (internet search) 
• 3M (electronic and information technology) 
• CATERPILLAR (machines of construction) 
• KIMBERLY-CLARK WORLDWIDE(health and hygiene item)

4. Using KIPO’s Accelerated Patent Examination Track Provides the Shortest Turnaround Time for Patent Issuance in the World.

i. Applications utilizing the accelerated examination track of the KIPO issue in approximately 3 months (approximately 10 months in cases of office actions).

ii. Quickly obtaining patent protections in Korea may have a positive influence in acquiring patent protections overseas for the invention.

iii. Please refer to the link below for specific requirements and protocols for requesting the KIPO accelerated track for examinations.
http://goo.gl/Acw3I7

5. Why Kasan? - Kasan's Patent Application Service

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• Accumulated Knowhow

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