In brief: patent prosecution in South Korea

Scope and ownership of patents

Can a patent be obtained to cover any type of invention, including software, business methods and medical procedures?

A method for the medical operation, treatment or diagnosis of diseases in human beings, namely, a method relating to medical procedures, is deemed to lack industrial applicability and, therefore, is not eligible for patent protection. However, a medical instrument or medicine for use in the medical operation or diagnosis of diseases in human beings is deemed to be industrially applicable and patentable.

The Korean Patent Act does not explicitly prescribe whether a business method or software is patentable. Thus, a business method or software is patentable, as long as the statutory requirements for patentability (the nominal definition of what constitutes an invention, industrial applicability, novelty, inventive step, etc) are met. A business method or software is deemed to comply with the nominal definition of what constitutes an invention, that is, ‘a highly advanced creation of a technical idea using the laws of nature’, if information processing by software is implemented by hardware resources. Such implementation of information processing should be stated in the claim in order to be patent-eligible. In particular, software inventions can be protected by claims for a computer program (or an application) stored in a medium.

Further, claims directed to a program signal, a data signal or a computer program list and claims that involve human acts, economic rules, artificial decisions, mathematical algorithms or human mental processes are not allowable for patent protection.

Who owns the patent on an invention made by a company employee, an independent contractor, multiple inventors or a joint venture? How is patent ownership officially recorded and transferred?

According to the Korean Invention Promotion Act, an employee who has made an invention as an employee has a right to obtain a patent for the invention. When the employee acquires a patent right, the employer who hires the employee will be entitled to a non-exclusive licence for the patent right because of his or her contribution to the completion of the employee invention. The employer may require the employee to transfer the right to obtain a patent, the patent right, etc, in advance or to grant an exclusive licence for the patent right where there is a contractual agreement or employment regulations. Further, the employee will have a right to receive fair compensation, if he or she has agreed to transfer the rights of the employee invention to the employer or to grant an exclusive licence to the employer according to a contractual agreement or the employment regulations.

Where two or more persons jointly make an invention, they are entitled to jointly own the right to obtain a patent.

If an independent contractor is an inventor, the right to the patent belongs to the independent contractor, unless there are any other contractual obligations.

In the case of a joint venture, if there is an agreement regarding patent ownership between the joint venture and the companies who established the joint venture, the ownership of the patent right will be determined according to the agreement.

Transfer of patent ownership through inheritance or other general succession will automatically take effect if the requirements prescribed under the law are met (no separate steps to record the transfer are required). However, a transfer of patent ownership through an assignment will only be effective upon recordal of such a transfer with the KIPO.

If a decision invalidating the registration of a patent becomes final and conclusive on the basis that the application was filed by a person that is not entitled to obtain a patent, a corresponding application filed by one entitled to obtain a patent within 30 days from the date the invalidation decision becomes final and conclusive shall be deemed to have been filed on the filing date of the application filed by the unentitled person. In addition, where an application filed by an unentitled person is granted a patent, a person who is entitled to obtain the patent can request the court to transfer the patent.

Patent office proceedings

How long does it typically take, and how much does it typically cost, to obtain a patent?

In view of the current pace of examination at the Korean Intellectual Property Office (KIPO), it takes approximately 12 months to receive the examination results after a request for examination is filed. Accordingly, assuming that an office action, such as a preliminary rejection, is issued, it takes approximately 20 months to obtain a patent in Korea.

Legal fees for preparing and filing a patent application generally range from US$2,500 to US$7,000 in inbound cases depending on the amount of text to be translated, and from US$2,000 to US$3,500 in domestic cases, depending on the complexity of an invention. When filing a patent application with the KIPO, official fees, which include a basic fee of US$46 and additional fees of US$18 for each priority, must be paid. In addition, when filing a request for examination, official fees, including a basic fee of US$143 and additional fees of US$44 for each claim, must be paid.

After a notice of allowance is issued, in order to register a patent, the applicant must pay the first three years’ annuities in a lump sum, which includes a basic fee of US$45 and additional fees of US$39 for each claim.

If any official notification is issued by the KIPO, legal fees for responding thereto will be additionally incurred.

Are there any procedures to expedite patent prosecution?

In Korea, a request for expedited examination may be filed concurrently with or after filing a request for examination of a patent application for the following patent applications:

• applications for an invention that has been commercially worked by a third party after the publication of the application;
• applications that require expedited prosecution as specified in the statute for which a party who would like to request expedited examination submitted a prior art search report to the KIPO (eg, applications for an invention relating to the fourth industrial revolution including artificial intelligence (AI), internet of things (IoT), autonomous vehicles, Big Data, 3D printing, cloud computing and cognitive robotics);
• applications that are eligible for requesting expedited examination under the Patent Prosecution Highway (PPH) programme between the KIPO and a corresponding foreign patent office; and
• applications for which a prior art search has been conducted by one of the institutes authorised by the KIPO and it is requested to submit the prior art search report to the KIPO.

The PPH programme enables patent applicants to request fast-track examination for applications, such that the examiners of the KIPO can use the work product from foreign patent offices. The IP5 patent offices, including the European Patent Office (EPO), the Japan Patent Office (JPO), KIPO, the China National Intellectual Property Administration (CNIPA), and the US Patents and Trademark Office (USPTO), initiated a new PPH pilot programme, and patent offices in 28 countries, including the JPO, KIPO and USPTO, initiated a Global PPH programme. The IP5 PPH programme and the GPPH programme replace any existing PPH programmes between the KIPO and the offices participating in the IP5 and global PPH programmes.

What must be disclosed or described about the invention in a patent application? Are there any particular guidelines that should be followed or pitfalls to avoid in deciding what to include in the application?

A patent application must accompany the specification, claims, drawings and abstract.

In the specification, a claimed invention should be clearly and sufficiently described to the extent that the invention could be easily practised by anyone with ordinary skill in the art.

The background art of the invention must be described in the specification. Non-compliance with such a requirement may serve as a basis for rejection, but not for invalidation.

The applicant may defer filing claims until 14 months from the earliest priority date or, if no priority is claimed, from the effective filing date of the patent application.

The applicant may submit the specification, claims and drawings in English when filing a Korean patent application in order to secure an effective filing date of the Korean patent application. A Korean translation of the specification, claims and drawings must be submitted within 14 months from the earliest priority date.

In addition, patent applications may be filed simply with invention disclosures such as scientific publications in Korean or foreign journals or research notes, without a need of complying with complex formal filing requirements. A specification can be drafted in English, which allows English publications to be filed directly, thereby making it possible to secure an earlier filing date. In this case, the Korean-language specification must be filed within 14 months from the earliest priority date.

Must an inventor disclose prior art to the patent office examiner?

The background art of the invention must be described in the specification. The background art of the invention refers to conventional art that may be helpful in understanding a claimed invention and useful in conducting a prior art search or examination. Unlike the information disclosure statement system in the United States, such a requirement does not impose a duty on the applicant to disclose all the information known to individuals associated with the filing and prosecution of the patent application.

May a patent applicant file one or more later applications to pursue additional claims to an invention disclosed in its earlier filed application? If so, what are the applicable requirements or limitations?

It is possible to pursue additional claims for an invention that is disclosed in a patent application in a divisional application, which would be deemed to have the same effective filing date as the parent application. Divisional applications may be filed within the scope of the originally filed specification, claims and drawings of the patent application and within the following time frames:

• at any time prior to the issuance of a first office action;
• within the time period for responding to an office action/a final rejection, if any; and
• from the date of receipt of a notice of allowance to the earlier of three months thereafter or the payment of an issuance fee.

The patent term of a divisional application is 20 years from the effective filing date of its parent application.

Is it possible to appeal an adverse decision by the patent office in a court of law?

The Patent Court has exclusive jurisdiction over all appeals of the decisions of the Intellectual Property Trial and Appeal Board (IPTAB) of the Korean Intellectual Property Office (KIPO).

If an appellant or appellee loses the appeal at the Patent Court, a final appeal at the Supreme Court may be requested.

Does the patent office provide any mechanism for opposing the grant of a patent?

Any person can request the cancellation of a registered patent to the IPTAB by submitting prior arts, which have not been cited during the examination, during the period from the registration date to six months after the publication of the patent. Since the cancellation procedure is an ex parte procedure between the patentee and the IPTAB, all proceedings will be based on written arguments once a request is made by a third party. Only the patentee can appeal the cancellation decision to the Patent Court and subsequently to the Supreme Court.

In addition, an interested party or an examiner may file an invalidation action to challenge the validity of a patent.

Does the patent office provide any mechanism for resolving priority disputes between different applicants for the same invention? What factors determine who has priority?

The Korean patent system is based on the first-to-file rule. In cases where two or more patent applications have been filed with respect to the same invention, only an application having the earliest priority date or effective filing date is eligible to obtain a patent for the invention. The first-to-file rule is applicable regardless of whether the two or more applications are filed by the same applicant or not. If two or more applications having the same priority date or effective filing date relate to the same invention, only one application that has been selected upon mutual agreement by the applicants, or that has been selected by the applicant, is eligible to obtain a patent for the invention. If the applicant fails to select one application, none of the applications will be granted a patent.

Does the patent office provide procedures for modifying, re-examining or revoking a patent? May a court amend the patent claims during a lawsuit?

The patentee may request a trial to correct the specification, claims and drawings at any time after the issuance of a patent. A trial for correction of a patent may also be requested while a lawsuit involving the patent is pending. In such a case, the lawsuit may be suspended at the discretion of the court until the trial for correction is completed. A trial for correction of a patent may not be separately requested if an invalidation action is in process before the IPTAB. However, a request for correction of the specification, claims or drawings may be filed within the prescribed deadline during the invalidation proceedings.

The scope of corrections that are allowable in a trial for correction or a request for correction is restricted to narrowing the scope of the claims, correcting clerical errors and clarifying unclear descriptions. Further, a correction to substantially expand or modify the scope of the claims is not permitted. The subject matter sought to be protected in the claims after correction should be deemed to have been patentable at the time the application was filed.

How is the duration of patent protection determined?

The patent term is 20 years from the effective filing date of a patent application. However, the patent term may be extended to compensate for a period during which a patented invention could not have been worked due to a regulatory approval or registration, or a period during which the examination of a patent application is delayed by the KIPO.

Law stated date

Give the date on which the information above is accurate.

12 March 2021.