PATENT

(Clicks a question and the reply appears.)
[General]


Q1:Are there any restrictions on Korean patent attorneys regarding simultaneously representing competitors in overlapping areas of technology? A1:Yes, there is a restriction. According to Ethics-Rule, patent attorneys should not accept cases that may create a conflict of interest with other cases already being handled. However, if clients give patent attorneys consent to represent the competitors, simultaneous representation may be allowed.

[Filing Requirements]


Q1:Can I file a Korean application in English to obtain a filing date? A1:No.

Q2:When is the due date for filing a national phase application derived from a PCT application? A2:The due date for the national entry in Korea is 31 months from the first priority date regardless of whatever a demand under Chapter II was filed within 19 months of the first priority date.

Q3:What should be filed at the time of filing a national phase application from a PCT application? A3:Korean translation of the specification, claims, abstract, and any text included in drawing as originally filed, must be filed at the time of filing a national phase application, or at the time of requesting the substantial examination in Korea

Q4:Must translations of amendments made under Article 19 and/or 34 of PCT be filed at the same time as the national filing? A4:No. Although you may nationalize Article 19 and/or 34 amendments by filing the translation thereof at the time of the national filing, it is not recommended to file such translations because KIPO conducts its own search, independent of the International Search Report and they often cites other references. Therefore, to obtain the broadest patent, it is generally better to start with the original claims, Also you may save the translation cost if such amendments have not been nationalized. You may have opportunity to effect the same amendments or file another amendment when you request examination.

Q5:If a claim of priority was inadvertently omitted in a PCT application, is there any way to restore the priority in Korea? A5:There is no way to restore the priority in Korea. However, if priority has been properly claimed but a certified copy of the priority document was not submitted during the PCT international phase, you can file a certified copy within the statutory period designated by the KIPO examiner.

Q6:Is there any duty to disclose relevant prior art for a Korea patent application? A6:No.

[Patentability]


Q1:What are patentable inventions? A1:There are three major requirements for patentability. Inventions must have novelty and an inventive step, and industrial applicability. Novelty means inventions that were not publicly known or worked in Korea or elsewhere, or described in a publication distributed or publicly available through electronic telecommunications in Korea or elsewhere prior to the filing date (or priority date) of the patent application (Absolute novelty). To have an Inventive step, the inventions must not be easily made by those skilled in the art of the applicable field prior to the filing date (or priority date) of the patent application.

[Novelty]


Q1:Is a submission date of a paper by a professional journal deemed to be a distribution date? A1:No, the actual distribution date of the journal is deemed to be the publication date.

Q2:If the journal distributes copies of the paper to a committee of professionals for evaluation before printing of the paper, would it be deemed to be publication? A2:Such committees are generally considered to maintain the confidentiality of the information that is disclosed therein. Consequently, the distribution to such committees is not deemed to be a publication unless there is an explicit rule that the information disclosed there can be disclosed to public.

Q3:If an oral presentation describing an invention has been made at a conference of specialists in Korea, would the event be considered to have made the invention publicly known? A3:If the specialists do not have any obligation to maintain confidentiality of the invention, the oral presentation will constitute an event that results in the invention becoming publicly known. But if the specialists are actually obligated to keep the invention secret under certain regulations or if it is deemed that they were most likely obligated to do so, the event would not resulty in the invention becoming publicly known.

Q4:Does the term of publication include a poster session or other visual display of information without restriction on its further use or disclosure? A4:A publication includes written information such as documents, drawings and the like, as well as visual displays of information usch as poster sessions, slide films, overhead projector sheets, video tapes, photographs and the like. For example, illustrations on a white board used in the presentation would be a publication since the audience could copy them by hand. Even an oral presentation would be a publication if the contents that have been recorded eletronically and/or in the audiences notes as texts and illustrations and copied and distributed to the audiences colleagues are proven to be exact copies of the information originally provied on the white board.

[Examination]


Q1:When will applications be examined? A1:Applications willbe examined when the KIPO receives a Request for Examination. The request must be filed within seven years of the filing date. If a timely request is not filed, the application will be deemed to have been withdrawn.

Q2:Is there an additional examination fee for dependent claims? A2:The official examination fee is calculated based on the total number of claims, both independent and dependent.

Q3:Does KIPO have systems for expediting the examination of applications? A3:Yes, KIPO has a procedure for expediting examination. The Accelerated Examination system may be requested by either the applicant or a third party.

Q4:What is required for requesting Accelerated Examination? A4:The requirments are: A Request for Examination has been filed (may be submited together with the request for Accelerated Examination); Substantive examination by the Examiner has not yet begun; And anyone of the following; the applicant or his licensee is working or is planning to work the claimed invention; the applicant has filed a corresponding patent application in a country other than Korea;

Q5:If a prior U.S. application claiming compounds does not have physical or chemical data, will priority be denied for a corresponding Korean application? A5:Priority is likely to be denied. If new chemical compounds are disclosed with their chemical formula or structures but without any physical or chemical data including information about their preparations, such a disclosure may be deemed not to have fully disclosed an invention.

Q6:I first filed a U.S. application, and then filed a Korean application claiming priority to the U.S. application. I wish to have the Korean claims identical with those issued in the U.S. patent. Is it advisable to amend the Korean claims so as to conform to the issued U.S. claims when requesting examination? A6:No. Examinations in Korea are carried out independentyl regardless of the results of examination in the U.S. The applicant in Korea is not currently required to report any prior art references discovered in other countries. Therefore, it would be wise to try to obtain a broadest patent protection in Korea regardless of the claims in other countries.

Q7:Following Q6, should I wait until the Examiner issues a Notice of Reasons for Rejection (First Office Action) to amend the claims? A7:Case by case. However, it is quite conceivable that restricted claims would lead to quick issuance of a patent, particularly if the prior art references cited in the U.S. application seem to be very close references.

Q8:I hear that the Korean Examiner is more likely to give favorable consideration, if the Korean claims were amended so as to conform to the granted U.S. claims. Is this correct? A8:No, If you amend the claims to conform to the issued U.S. patent and inform the Korean Examiner of this fact, it will not help to improve the Examiner's impression. Rather, it is possible to offend the Examiner if the applicant gives too much weight to the U.S. prosecution, because the Korean Examiner is to examine the application according to the Korean Examination Standards and the prior art references discovered in Korea.

Q9:Is an iterview recommended to expedite examination procedures? A9:Yes, an interview with an Examiner is helpful in expedition the examination. It is very effective to have an interview with the Examiner in charge at any stage to obtain favorable results to the applicant.

[Divisional of Applications]


Q1:When can I file a divisional application? A1:You can file a divisional application at anytime you can amend application.

Q2:Can I file a divisional application after an appeal against the Examiner's decision to reject the application has been filed? A2:Yes, you can file a divisional application at the time of filing an appeal. you can also file a divisional application within a response term to a possible Notice of Reasons for Rejection during the appeal.

[Cancellation of the patent]


Q1:The old Opposition System has been combined in a New Invalidation System. Please explain. A1:The Opposition system was integrated into a new Invalidation Trial system as of July 1, 2006. Followings diagram compares the Old Opposition and Invalidation procedures and the new Invalidation procedure.

TRADEMARK

[Trademark protection in Korea]


Q1:What can be a "Trademark" in Korea? A1:"Trademark" can be characters, figures, symbols, three-dimensional shapes, or any combination thereof, or any combination thereof and colors, that is: used in relation to goods by a person who manufactures, certifies and assigns such goods in the course of trade; used for services by a person who provides, certifies such service in the course of trade. Therefore, sounds or smells cannot be a "Trademark".

Q2:Is "registration" necessary for protection of a trademark in Korea? A2:Yes, the registration is necessary. under the Korean Trademark Law, a trademark is protected only after the trademark is registered at the Korean Intellectual Property Office(KIPO). Namely, even if the trademark has been used in Korea, the owner of the trademark unregistered cannot request injunction to prevent the use of the mark by a third party under the Trademark Law. However, such a request may be possible under Unfair Competition Prevention Law if the trademark has become well known in Korea.

Q3:Is "use" in Korea necessary for registration of the trademark? A3:No, "use" is not required for registration. However, intent to use is necessary under the trademark Law, although there is no need to submit a statement thereof. If a registered trademark has not been used for three years, a third party may seek to have the right revoked by demanding a cancellation trial at the KIPO.

Q4:How is a well-known trademark protected in Korea? A4:If a trademark is well known in Korea in relation to goods/services, a third party cannot be allowed to register the trademark that is identical with or similar to the well-known trademark. However, as mentioned above, the owner of the well-known trademark unregistered cannot request injunction to prevent the use of the mark by a third party under the Trademark Law, unless the well-known mark is registered.

Q5:What type of shape can be registered as 3D trademark? A5:A three-dimensional shape per se must be distinctive. Namely, a three-dimensional trademark, consisting solely of the shape of the goods or their packaging with the shape being indispensable to secure the functions of the goods or their packaging, is not to be registered.

[Filing requirements]


Q1:What do I need to do to obtain trademark registration? A1:Korea adopts the substantive examination system for trademark registrations. Therefore, you must file an application for trademark registration at the KIPO, identifying the trademark and the designated goods/services. Multiple-class applications are accepted an cheaper than a collection of single class applications, but a multiple-class application sometimes causes delay in the examination. If a trademark application does not satisfy the requirements of the trademark registration, such as distinctiveness, first to file rule, the application will not be registered. Usually, we suggest a search before filing an application to determine whether there are any prior trademark registrations that are similar to or identical with your trademark.

Q2:I have already obtained a trademark right in my home country. Can I enjoy the priority benefit from such a right in obtaining a trademark right in Korea? A2:If your home country is a party to the Paris Convention, you may file an application claiming priority based on the application filed in your country within six months of the filing date. If a priority is claimed effectively, examination of a corresponding Korean trademark application will be made based on the filing date of your home country application.

[Registration]


Q1:How long is a trademark right protected? A1:Trademark right may be protected indefinitely as long as the trademark owner desires. However, since the term of registration for trademark right is 10 years, the owner of the registration must renew it before the expiration of the term. To maintain the trademark right indefinitely, the trademark right owner needs to renew it every 10 years.

Q2:Are there any way to revoke a registered trademark? A2:Yes. Invalidation Trial You can demand an invalidation trial at any time after the registration. However, only those who have interests in the trademark registration may demand invalidation. Cancellation Trial If the registered trademark has not been used over the past three years, any person can request a cancellation trial against the registration. This trial is sometimes effective when the registered trademark is cited as a prior registration against your pending application.

Q3:If the registered trademark has become famous in Korea, is there any way to protect the registered mark in addition to the trademark registration? A3:No. However, injunctions under the Unfair Competition Law may be possible.