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 If no request for examination is made by the deadline, the application is deemed to have been withdrawn.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.

About This Blog

Kasan Insight :: Korea IP Law Blog provides news, updates and in-depth analysis on Korean intellectual property law, including judgments, legislation, IP strategies and patent landscape in Korea for international readers.

This blog is edited and maintained by professionals of Kasan IP and Law Firm.

About Kasan IP and Law Firm

Since its establishment in 2000 by Korean and American licensed professionals having experience working at leading law firms and companies, Kasan has steadily grown into one of the leading intellectual property law firms in Korea.  We specialize in intellectual property matters, including patent, utility model, trademark, design, copyright, unfair competition dispute, and licensing of technology. The firm's professionals and staff of over 70 have knowledge and resources needed to offer quality legal services to our international clients with confidence and sensitivity for cultural, social and legal differences.

Quality Legal Services 

From the very beginning of Kasan, the standard of every aspect of our practice has been excellence and that touchstone remains intact today. For years, we have represented countless innovators, assisting in protecting ideas, promoting discoveries, and introducing new concepts to the market. We believe our relationships with our clients is based on the trust and confidence that develop over time through prompt, high-quality and consistently valuable service.

Full Range of Legal Services

Kasan provides a full range of legal services in diverse aspects of IP related matters that require in-depth specialization. The firm is not merely a gathering of professionals from various fields but it is an integrated working group of legal and technical specialists that are highly qualified and experienced in their respective fields. 

Manpower

We are aware that our services are judged by the quality, ability and commitment of our members who deliver the service. We have over 70 members including 30 patent and trademark attorneys and 5 attorneys at law, and have heavily invested in manpower that would enable us to deliver specialized services in various IP and legal sectors. Kasan provides clients with linguistic assistance through a Chinese patent attorney, a Japanese technical advisor, a Canadian technical advisor and an American technical advisor. And we strive to provide them with a great environment to show their best abilities.

Experience, Responsiveness, and Reasonable Cost

We are devoted to providing swift, accurate and pragmatic legal advice and action. And we understand and appreciate the ever changing business environment in which our clients finds themselves everyday. Our foremost priority is to enable our clients to come to the best decisions.

Our professionals have a great deal of experience in fields such as electronics, software, mechanical engineering, chemistry, pharmaceuticals and biotechnology. They are graduates of top universities in Korea, the U.S., Canada, China, and Japan. And they have many years of experience working for domestic and foreign clients.

Kasan has provided domestic and international clients with the most effective and proactive legal services at the most reasonable price in the country. We strive to provide cost-effective practices.