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.

Criminal Sanctions on Trade Secret Infringements in Korea

Trade secret Infringers may be prosecuted as criminals in addition to civil litigations. The Korean UCPA stipulates that anyone who illegally acquires trade secret of others or uses or discloses to a third party a misappropriated trade secret may be imprisoned up to ten (10) years or fined in an amount of KRW50,000,000 (approximately US$50,000) or two (2) to ten (10) times of the monetary gains. The fine may amount to the 10 times of the value of the stolen trade secret. In Hyundai Motors case, two former engineers were punished to 3.5 years imprison and US$3 million fines respectively.

Further, the Korean Supreme Court held that the act of divulging trade secret to the competitor for the purpose of gaining economic benefit by former employees shall be punished as criminal violation of the fiduciary duty under the Criminal Code. Besides UCPA, trade secrets misappropriations may be prosecuted under the criminal code, too.

In addition to criminal sanction on individuals, companies may be punished by fine that is KRW50,000,000 (approximately US$50,000) or two (2) to ten (10) times of the value of the stolen trade secrets or monetary gains of infringers.

Criminal Procedure of South Korea

1. Initiation of Investigation

Investigation is initiated upon discovery of the possibility that a crime may have been committed. The ultimate responsibility in all investigative procedures is in the hands of the prosecutor. Based on collected evidences, the prosecutor assess the validity of the judgment that a crime has occurred, and take appropriate measures upon this ascertainment.

2. Booking, Arrest & Detention

Booking denotes the formation of a criminal case after initiation. An individual subject to investigation becomes a criminal suspect once a criminal charge has been determined by the investigation agency. In principle, prosecutors or police officers must obtain a warrant issued by a judge to arrest a suspect; however, there exist certain exceptions to these warrant requirements in cases that necessitate "Emergency Arrest" and "Arrest of Flagrant Offender". The prosecutor may detain the arrested suspect with a warrant of detention issued by the judge upon request by the prosecutor within 48 hours from the time of arrest. A suspect may request a preliminary hearing prior to detention, and an arrested or detained suspect may request a review of legality to the court. Through such process, the suspect may be released.

3. Prosecution

Suspects are indicted in cases when there is a prosecutor’s decision that such suspects must stand trial. On the other hand, prosecutors may dismiss a case without indictment. The ground such as ambiguous location of the suspect, in which case further proceedings are unfeasible, will lead to a stay of prosecution.

4. Trial and Sentencing

A judge hears trial upon motions filed by prosecutors. Sentencing occurs when defendants are found guilty of their charges. The punishment may include death penalty, imprisonment and fine, etc.