Application Procedure for Trademarks

Overview

Trademarks, and service (Trademark hereinafter) marks may be protected in the Republic of Korea under the Trademark Act; and for such protection, marks should be registered with the Korean Intellectual Property Office ("KIPO"). The use of a trademark is not a prerequisite for filing an application for the registration of a trademark. Unregistered marks are not protected under the Trademark Act, although the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark. There is no course of action against infringement of a well-known or famous unregistered trademark under the Trademark Act, but an action may be brought under the Unfair Competition Prevention Act.

The Korean Trademark Law is characterized by :

i) First-to-File Rule;
ii) Substantive Examination;
iii) Opposition

* Click on the button marked () in the flow chart below to see description for each procedure.

* Filing an Application

(i) ApplicantAny person who uses or intends to use a trademark in the Republic of Korea may file an application for the registration of a trademark. Although the Korean Trademark Act adopts a registration system, not a use system, the applicant of a trademark application should have a bona fide intent to use his trademark in the Republic of Korea. Nonetheless, trademarks which will not actually be used are also registered. Such trademarks, however, will be subject to cancellation if they remain unused for three or more consecutive years after their registration.

(ii) Document RequiredFor a trademark application, the following documents should be submitted to KIPO:

(a) an application stating the following: the name and address of the applicant (including the name of an executive officer, if the applicant is a juristic person); the trademark; the designated goods and class thereof; the date of submission; and the country and filing date of the priority application, if the right of priority is claimed;
(b) 10 specimens of the trademark (8cm x 8cm or smaller in size);
(c) if the right of priority is claimed, the priority document; and
(d) a power of attorney, if necessary

Only document (a) must be submitted at the time of filing the trademark application. The name of an executive officer of the applicant may be added later on the applicant's own initiative or in response to a notice of amendment issued from KIPO.
If the applicant fails to submit specimens of the trademark or power of attorney at the time of filing the trademark application, KIPO will issue a notice of amendment requesting the applicant to submit them, designating a time limit thereof. The priority document must be submitted within 3 months from the filing date in the Republic of Korea of the trademark application. This time limit cannot be extended

(iii) Designation of Goods/Services: Nice Classification

A person who desires to file a trademark application must designate goods/services on which the trademark is to be used in accordance with the Nice Classification of Goods or Services for the Purpose of Registration of Marks. The Republic of Korea adopted the Nice Classification as of March 1, 1998.

A trademark application may be filed for the registration of trademark for goods or services which fall under several classes in accordance with the Nice Classification. In this case, the applicant has to pay additional fees for each classification.

(iv) Claim of PriorityThe right of priority can be claimed in a trademark application for a applicant whose country of origin is a party to the Paris Convention or under a bilateral agreement between two relevant governments or on a reciprocal basis. In order to enjoy the priority right, an application should be filed in the Republic of Korea within 6 months from the filing date of the priority application. The priority document should be submitted to KIPO within 3 months from the filing date of his/her application.

* Formal Examination

According to Article 2(1) of the Enforcement Regulation of the Trademark Act, the application will be returned to the submitter without any application number being assigned thereto and will be treated as if it had never been submitted in any of the following circumstances:
(i) where the kind of the application is not clear;
(ii) where the name or address of a person (or juristic person) who takes the procedure (i.e. the applicant) is not described;
(iii) where the application is not written in Korean;
(iv) where a specimen of the trademark is not attached to the application paper;
(v) where the designated goods/services are not described in the application paper; or
(vi) where the application is submitted, by a person who has no address or place of business in the Republic of Korea, without coming through a patent agent in the Republic of Korea.
Once the application has satisfied such requirements, KIPO assigns an application number and examines as to whether or not other formality requirements under the Trademark Act have been met. If anything is found missing or wrong, the Commissioner of KIPO will issue a notice of amendment requesting the applicant to supplement the missing data or amend it, and within specified a time limit. If the applicant does not comply with such request, the trademark application will be nullified.

* Substantive Examination

(i) Initiation of Examination
Unlike patent or utility model applications, trademark applications are automatically examined in order of their filing date. However, under Article 22-4(2) of the Trademark Act, the Commissioner of KIPO may grant priority in the examination order to those trademark applications who satisfy certain requirements. The examination of a trademark application generally takes about 11 months from its filing date.

(ii) Requirement for RegistrationFor a trademark to be registered under the Trademark Act, it should meet the following requirements:
(a) It should fall under the definition of a trademark prescribed in the Trademark Act:
(b) It should be distinctive so as to serve as an indication of goods or services or, if it is not inherently distinctive, it should have acquired a secondary meaning;
(c) It should not fall into any of the categories of unregistrable trademark prescribed in the Trademark Act.

* Publication

If the examiner finds no ground for rejection of a trademark application, or he or she considers that the rejection has been overcome by the applicant's response (argument and/or amendment), he or she shall render a decision to publish the trademark application.

* Opposition

Once a trademark application is published in the official gazette, called the "Trademark Publication Gazette," any person may file an opposition within two month (non-extendible). A notice of opposition containing a brief statement on the grounds for opposition must be submitted within the thirty-day period. Then, the opponent may amend, add or supplement the grounds for opposition within 30 days after the expiration of the thirty-day period.

* Decision of grant of protection

⌈Decision to register trademark⌉ is the administrative disposal which means that it has suitable registration requirements for a trademark as a result of the examination of the trademark application by the examiner, thus an applicant can receive establishment registration of trademark right.

* Registration

An applicant who has received trademark registration can receive establishment registration of the trademark right after paying the registration fee within the specified period.

* Civil/Criminal Court

The legal remedies against infringement of trademark right or exclusive license mainly include civil injunction, a claim for damages, a claim for credit recovery, and it might be possible to punish the person infringing on the trademark right based on criminal liability. Actions against infringement are generally treated as civil actions or criminal actions, so they are not included in the jurisdiction of the patent court.

* Renewal

The duration of the protection of a trademark right is 10 years from the date of registration of the trademark, which may be renewed every 10 years. For the renewal of a trademark registration, an application for the renewal should be filed with KIPO. Once a renewal application has been duly filed, the trademark registration is deemed to have been renewed on the expiration date of the original registration.

* Notification of provisional refusal

In case of a decision of rejection, in which the trademark registration application is included in the grounds for rejection, the grounds for rejection are informed in writing and the opportunity to submit the argument is granted for a specified period.

* Written opinions/amendments

The applicant can obtain an opportunity to avoid unfavorable disposal by settling the grounds for rejection such as submitting advantageous reasons or evidence for the argument within the predetermined period, or submitting an amendment which deletes the designated trademark infringing on the cited trademark.

* Decision of refusal

In the event that the examiner finds grounds for rejection stated in the Trademark Act and informs the applicant by submitting the written opinion, but the applicant does not amend the grounds for rejection, the examiner may decide to reject.

* Intellectual Property Tribunal

In the event a person who receives and objects to, a decision to reject, which is relevant to the trademark registration, additional registration of the designated products, and registration of trademark classification transformation, he or she can appeal to the Intellectual Property Tribunal within 30 days from the date of delivery of the certified copy of the decision to reject.

* Patent Court

A patent court decides actions against a trial decision of the Intellectual Property Tribunal and the actions for cancellation of trial decisions of the Species Protection Appeals Committee in the Ministry of Agriculture and Forestry. The representative patent litigations of the patent court include appeals on trial decisions of the Intellectual Property Tribunal such as trial decisions on keeping the grounds for rejection, patent invalidation judgment, trademark registration cancellation judgment, and decision to dismiss a request for a trial.

* Supreme Court

The highest court means the highest institution of the judicial branch. The final ruling is decided in the highest court, and it is final unless a new trial is applied for. In Korea, it is the Supreme Court of Korea.

Should you have any questions, please feel free to contact us (info@patentinkorea.com)

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Application Procedure for Patents and Utility models

Overview

 

After a patent application is filed with KIPO, a patent right is granted through various steps. The Korean system is characterized by:
(i) First-to-File Rule;
(ii) Publication of Unexamined Application;
(iii) Request for Examination
The procedure for registering a utility model is the same as that of a patent except for some notification periods.

Procedures for Granting a Patent and Utility Model

(the Uitlity Model under Utility Model Act which was entered into on October 1,2006)

* Filing an Application

(i) Applicant

Either the inventor of an invention or his assignee can file a patent application for the invention with KIPO. The applicant may be either a natural person or a juristic person

(ii) Documents Required
A person who desires to obtain a patent must submit to the Commissioner of KIPO the following documents:

(a) an application stating the name and address of the inventor and the applicant the title of the invention, and priority data (if the right of priority is claimed);

(b) a specification setting forth the following matters: the title of the invention; a brief description of drawings (if any); a detailed description of the invention; and claim(s);

(c) drawing(s), if any;

(d) an abstract;

(e) if the right of priority is claimed, the priority document which is a certified copy of the priority application together with its Korean translation(whenever an applicant is requested to submit a Korean translation of a priority document) ; and

(f) a power of attorney, if necessary.
(iii) Claim of Priority
In order to enjoy the priority right, an application should be filed in the Republic of Korea within 1 year from the filing date of the priority application. The abovementioned priority document may be submitted within one year and four months from the priority date. If the priority document is not submitted within that period of time, the claim of priority will become null and void

* Formality Examination

When a patent application is submitted to KIPO, it is checked to ensure that all requirements necessary to accord the application a filing date have been satisfied. Under the Article 11(1) of the Enforcement Regulation of the Patent Act, in any of the following instances the application will be returned to the submitter without any application number being assigned thereto and will be treated as if it had never been submitted:

(i) where the kind of the application is not clear;
(ii) where the name or address of a person (or juristic person) who is initiating the application procedure (i.e. the applicant) is not described;
(iii) where the application is not written in Korean;
(iv) where the application is not accompanied by the specification (including detailed description of the invention) or drawings (only for utility applications) ; or
(v) where the application is submitted, by a person who has no address or place of business in the Republic of Korea, without using an agent in the Republic of Korea.
Once the application has satisfied the requirements, KIPO assigns an application number and examines as to whether or not other formal requirements under the Patent Act have been met. If KIPO discovers that a document or information is missing, such as power of attorney or the name of the representative of the juristic person, it will issue a notice of amendment requesting the applicant to supplement the missing data, within a specified time limit. The applicant may obtain an extension of the designated time period.
If the applicant does not comply with such a request within the designated or extended period, the patent application will be nullified and then considered as having never been filed.

* Request for examination

A patent application will be taken up for examination only if a request for examination is made either by the applicant or by an interested party within 5 years (3 years in the case of a utility model application) from the filing date of the application. If no request for examination is made within this five-year period (3 years in the case of a utility model application), the patent application is deemed to have been withdrawn. Once a request for examination has been duly filed, it cannot be withdrawn. A patent application is taken up for examination in the order of filing the request for examination thereof.

* Laying open of Publication for Public Inspection

Applications that have not yet been published will be automatically laid-open in the official gazette called "Patent Laid-open Gazette" after 18 months from the filing date in the Republic of Korea or, if the right of priority is claimed from an earlier foreign filing, from the priority date.
The laid-open publication may be made, upon the request of the applicant, prior to the eighteen month period. This will provide an earlier protection to a patent application which is being infringed upon.
Once a patent application has been laid-open, any documents relating to the application are made available for public inspection. Any person may submit to the Commissioner of KIPO information relevant to the patentability of the invention concerned together with any supporting evidence. (Information can be provided before a patent application is laid-open)
The Patent Act offers a special legal effect upon a laid-open patent application: under Article 65(1), if the applicant sends a warning letter to an alleged infringer after his application has been laid-open, any subsequent computation of a reasonable amount of compensation will be reckoned from the date when the infringer receives the warning letter. The right to claim compensation cannot be exercised before the relevant patent right is registered.

* Substantial Examination

For a patent to be registered under the Patent Law, it should meet the following requirements;
(a) It should fall under the definition of invention under the Patent Act
(b) It should have Novelty, Industrial Applicability, and Inventive Step
(c) It should not fall into any of the patent categories unable to be registered as prescribed in Article 32 of Patent Act.

* Decision of registration

If the examiner finds a ground for rejection of a patent application, a notice of preliminary rejection will be issued; the applicant will be given an opportunity to submit a response to the preliminary rejection within a time limit designated by the examiner. Such a time limit is extendable upon the request for an extension by the applicant.
In responding to the preliminary rejection, the applicant may file an argument with or without an amendment to the specification and/or claims. If the examiner determines that the argument is without merit and the ground for rejection has not been overcome, he will issue a notice of final rejection of the patent application.
If no grounds for rejecting a patent application are found, the examiner shall grant a patent right.

* Registration

When a patent applicant receives a notice of decision to grant a patent he should pay, the first 3 years' annuities within 3 months from the date of receipt of such notice as a registration fee.
In case he fails to pay the registration fee within the three-month period the registration can still be made by paying twice the usual fee within 6 months after the expiration of the three-month period. Therefore, if the registration fee is not paid within 9 months from the date of receipt of a notice of decision to grant a patent, the patent application will be deemed to have been abandoned.

* Publication of gazettes

Where the examiners find no grounds for rejection of a patent application, KIPO publishes the patent registration after the patent applicant pays the registration fee. Once a patent has been published in the Patent Registration Gazette, any person may file an opposition against the registration of a patent between the date on which the patent is registered and the date that marks a lapse of three months since the publication date.

* Notification of reason for refusal

If the examiner finds grounds for refusal under Article 62 of the Patent Act, a notice of the grounds for refusal should be issued to the applicant and the opportunity to submit an argument should be given after determining the period.

* Written opinion/amendment

An applicant can amend the description or the drawing(s) attached to the written patent application before the certified copy of the decision to grant a patent is delivered. But, in case the applicant receives a notice of the grounds for rejection from the examiner, the applicant can make amendments within the period of submitting a written amendment based on the notice of the grounds for rejection. In addition, in the case where the grounds for rejection occurred due to an amendment, the application can be amended within the period of submitting the written amendment on the relevant notice or a reexamination is requested.
The amendment can be done within the scope of matters disclosed in the description or the drawing(s) originally attached to the written patent application.
In case of receiving a notice of the grounds for rejection where the grounds for rejection occurred due to an amendment, the amendment is possible only in the event that the claim(s) is limited or deleted, the scope of the claim is reduced by adding to the claim(s), any incorrect description is corrected or unclear description is written clearly within matters disclosed in the description or the drawing(s) originally attached to the written patent application, or the scope of the claim returns to before the amendment, responding to the grounds for rejection on the addition of new matters.

* Reconsideration of reason for refusal

In the event where the grounds for rejection are found as a result of a reexamination after an amendment is submitted, the grounds for final rejection are to be informed, In a case where the grounds for dismissal of an amendment are in an amendment after informing of the grounds for final rejection are found, the examiner dismisses the amendment and examines the previous description.
But, when the grounds for rejection are not found by the examiner after reexamination, the relevant application is accepted for registration. The application is determined to be rejected in cases where the grounds for rejection still exist after the notification.

* Decision of refusal

As a result of the reexamination of the amendment submitted after the notice of the grounds for rejection, and in the event that the grounds for rejection under Article 62 of the Patent Act still exist, the application is determined to be rejected.

* Appeal against examiner's decision of refusal

A trial will be held when the applicant who has received a decision of rejection wants to appeal the decision requests to cancel it with the Intellectual Patent Tribunal.

* Appeal decision to maintain examiner's decision of refusal

When an appeal of the decision to reject is claimed, an administrative patent judge of the Intellectual Patent Tribunal can decide to dismiss in the event that he or she acknowledges the claim is not reasonable.

* Appeal decision to revoke examiner's decision of refusal

When the appeal of the decision to reject is claimed, an administrative patent judge of the Intellectual Patent Tribunal can cancel the decision to reject in the event that he or she acknowledges the claim is reasonable.

* Patent Court

An action against a trial decision or dismissal of a request for a trial or retrial of the Intellectual Patent Tribunal can be filed in the patent court, and the court will decide the grounds for the claim(s).

* Supreme Court

When the person objects to the decision of the patent court on the patent litigation, he or she can appeal to the supreme court, claiming the decision violates the laws and regulations.

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Overview of the Trademark System in Korea

* History of the Korean trademark system


* What is a trademark?
> Concept of the trademark
> Concept of a service mark
> Concept of a collective mark
> Concept of a business emblem


* Neighboring concepts of a trademark
> Trademark and trade name
> Trademark and geographical indication
> Trademark and domain name

* Purpose of a trademark system

* Function of a trademark

* Requirements for trademark registration

* Information on trademark applications
  > A Single application for a single trademark
  > Designation of articles to use a registered trademark
  > Additional application of designated articles
  > Divisional application
  > Converted application
  > Application to renew the term of a registered trademark
  > Application trend

* Trademark right
  > Term of a trademark right
  > Expiration of a trademark right
  > Application to register the reclassification of goods
  > Transfer of a trademark right
  > Trademark license system

* Protection of an owner of trademark rights

* Protection of foreign well-known trademarks

* Collective mark right for a geographical indication

History of the Korean Trademark system

1908: The Trademark Decree promulgated
1946: The Patent Institute was established and patent laws were enacted.
1949: The Trademark Act was enacted.
1977: The Korean Intellectual Property Office (KIPO) was established as an
            independent office under the Ministry of Commerce, Industry and Energy.
1979: Korea joined the World Intellectual Property Organization (WIPO).
2002: Application to join the Trademark Act Treaty submitted to the WIPO
2003: Application to join the Madrid Agreement submitted to the WIPO


What is a trademark?

* Concept of a trademark in trademark act

As a social fact, a trademark refers to all sensible expression methods used to distinguish my goods from another person's goods. However, it is difficult to protect all such marks legally and technically.
Accordingly, trademark act limits the protectable constituents of a trademark. In the past,
the constituents of a trademark were limited to the symbol, character, diagram, three-dimensional shape, or any combination of these as well as a combination of color with each of these. As the scope of protectable trademarks was expanded from July 1, 2007, trademark act additionally protects a mark formed by a single color or a combination of colors, hologram marks, motion marks, and all types of marks which are visually recognizable.
However, a trademark in Trademark Act has still been limited to devices which are visually recognizable. Even though marks unidentifiable by the naked eye ??? characterized by such senses as sound, smell, taste ??? are used to distinguish my goods from another person's goods in real transactions, they cannot be protected by Trademark Act. (Provided, the act is under amendment consultation so that marks identifiable by means other than the naked eye, like sound, smell, and taste, can also be covered.)
In addition, even though a mark is used on products, a mark that does not distinguish my goods from another person's goods is not a trademark. Therefore, if a design is used to inspire users with an aesthetic sense only or as a price mark irrelevant to the identification of owners, it shall not be deemed a trademark in accordance with the Trademark Act. In a wider sense, service marks, collective marks, and business emblems may be also regarded as trademarks.


* Concept of a service mark

A "Service Mark" refers to a mark used by a person who conducts a service business (advertisement, communication, banking, transportation, restaurant, etc.) to distinguish his/her service business from the service businesses of others.
In other words, a trademark is the identification mark of a "product", while the service mark is an identification mark of
a "service business."


* Concept of a collective mark

A "collective mark" refers to a mark intended for use by a legal entity founded in association with persons who conduct business activities such as producing and selling goods; members of the legal entity can use the mark for their goods and services.


* Concept of a business emblem

A "business emblem" refers to a mark used by a person engaged in a nonprofit business ??? like the YMCA or Boy Scouts ??? to indicate that person's business (e.g. Republic of Korea National Red Cross, Junior Chamber, Rotary Club, Korea Consumer Agency, etc.)



Neighboring concepts of a trademark


* Trademark and trade name

A trademark is an affixed mark that distinguishes my goods from another person's goods, thereby preserving the identity of products. A trade name is a name used by a merchant (legal equity or individual) to indicate his/her service business and to maintain the identity of business. A form of personal name, the trade name is depicted and formed by characters, and must be used in the case of companies. On the other hand, the trademark is a symbol to distinguish my goods from another person's goods, and may consist of symbols, characters, diagrams, a combination of these, or a combination of color with these.
As per international trends (a trademark composed of a trade name or vice versa), a trade name conforms to a trademark in accordance with the Corporate Identification Program. If a trade name is used for a product mark and is registered in accordance with trademark registration requirements, it may be protected as a legal trademark. As the number of trademarks composed of trade names gradually increases, there are many cases in which overlap occurs between two parties.


* Trademark and geographical indication

Both a trademark and a geographical indication have the function of representing the origin and quality of goods, relate to business profits and are marks protected under the scope of the intellectual property. To this extent, they resemble a trademark. Thanks to such similarities, there are some countries in which geographical indications are protected like trademarks under trademark and geographical indication protection act; there are also countries which protect geographical indication as a collective mark or a certification mark under trademark act.
However, a trademark is a mark that identifies a "specific business subject" providing goods or services, while a geographical indication is an indication that identifies a "specific region" in which business subjects using the relevant indication are located. The geographical indication enables one business to exclude other competitors from using a given mark like a trademark, but unlike a trademark it has no "exclusive owner."
In the Republic of Korea, the trademark act (Act No. 7290) was amended on December 31, 2004; "geographical indication" has been protected as a collective mark from July 1, 2005. The geographical indication is not a simple place name. If a product has a specific quality, reputation, and characteristic like "Indie Yonder Hangtag" (walleye pollock) and these features originate from a geographic characteristic such as the climate, soil, or topography of the region, the geographical indication denotes the place in which the goods are produced, manufactured, and processed. When the features distinctive to a region like quality or reputation are essentially attributable to geographic characteristics including natural conditions like the climate, soil, or topography of the region, or personal conditions like traditional production methods, the geographical indication indicates that the goods are produced, manufactured, and processed in that region.


* Trademark and domain name

A trademark is a mark affixed to goods to distinguish my goods from another person's goods. A domain name refers to an address (IP Address) composed of digits corresponding to the address of a host computer in Internet and is composed of a combination of alphabetic characters and digits. The trademark originated from the function of indicating the source of goods, while the domain name originated from the function of indicating the location of a host computer in Internet. Thanks to the emergence of e-commerce, the domain name itself serves as an indicator of the origin of goods or services. As the frequency of cyber squatting increases (in which a person registers another person's trademark under his own name and then resells that trademark to the rightful owner for an exorbitant price), disputes involving trademarks and domain names will also increase.
In Korea, the registration of a trademark does not in principle grant its owner the right to register a domain name corresponding to the trademark, and vice versa. (For more information, refer to trademark and domain.)



Purpose of a trademark system

The purpose of a trademark system is to ensure the maintenance of the business reputation of persons using trademarks by protecting trademarks so as to contribute to the development of industry and to safeguard the interests of consumers. (Article 1 of the Trademark Act)



Function of a trademark

* Distinguish my goods from another person's goods
Distinguish my goods from another person's goods by affixing a trademark to the goods

* Indicate the origin
Inform consumers which products with a same trademark come from the same origin

* Guarantee quality
Guarantee consumers that all products with a same trademark have the same quality

* Advertising
Remind consumers of the goods associated with a trademark as one sales promotion method in commercial transactions

* Property
This refers to the property and economical value inherent in a trademark, which may be realized by the free assignment and establishment of the rights for use.


Requirements for trademark registration


* Personal Requirements (a person who is entitled to register a trademark)
Any person (legal equity, individual, joint manager) who is using and intends to use a trademark, as a person who is entitled to be granted trademark rights in Korea, may register a trademark as prescribed by Trademark Act.
All Koreans (including legal equity) may be trademark right owners. The qualification of foreigners is subject to treaty and the principle of reciprocity.

* Substantive requirements
Trademark registration requirements are classified into procedural requirements, like application type, and substantive requirements (positive requirements, passive requirements) to ensure that the composition of a trademark itself has sufficient distinctiveness to distinguish my goods from other person's goods, or corresponds to grounds of unregistrability. In Trademark Act the substantive requirements are important.

1) Positive requirement
The most important function of a trademark is to distinguish my goods from another person's goods. For registration, the trademark must have a distinctive feature from the onset. In Trademark Act, the distinctiveness enables traders or common consumers to recognize whose goods are indicated by the mark
The existence of distinctiveness is generally decided subject to designated goods. The Article 6(1) of Trademark Act enumerates the grounds by which a trademark cannot be registered due to lack of distinctiveness as follows:

a. Usual name of the goods
The mark indicates only the name of the goods, regarding specific goods, (e.g. snack goods - corn chip, confectionery - walnut cake, automobile - car)

b. Mark customarily used on the goods
The mark is customarily used on a specific kind of goods among businesses engaged in the same industry (e.g. confectionery - dry cake, alcohol - refined rice wine, textiles - Tex)

c. Mark describing the features of goods
Origin mark: Indicates the origin of the goods (e.g. apple - Daegu, ramie fabric - Hansan, dried croaker - Yeonggwang)
Quality mark: Indicates the quality and superiority of the goods (e.g. Low, Middle, High, Special, Super) Indicates the quality and superiority of the goods (e.g. Low, Middle, High, Special, Super)
Raw material mark: Indicates the name of raw materials used in the goods (e.g. suit - wool, necktie - silk)
Performance mark: Indicates the effect or performance of the goods (e.g. TV - Hteck, copier - quick copy)
Usage mark: Indicates the usage of the goods (e.g. bag - student, clothes - lady)
Quantity mark: Two pairs, 100m, etc.
Shape mark: Indicates the ordinary shape and size of the goods (e.g. small, large, capsule, slim)
Production method, processing method, business method marks: Indicate how the goods are produced, processed, and used (e.g. farm produce - natural agricultural method, shoes - handmade, desk - fabricated)
Time mark: Indicates when the goods are used (e.g. tire - all-weather; clothes - spring, summer, autumn, winter)

d. Conspicuous geographical name, an abbreviation, or a map
The mark consists solely of a sign indicating a conspicuous geographical name, its abbreviation or map (e.g. Mt. Geumgang; Mt. Baekdu; New York, etc.)

e. Common surname or name of legal entity
The mark indicates the surname of ordinary persons, or the name of legal entity/group, or a trade name (e.g. Lee, Kim, President, commercial company, association, Chancellor, etc.)

f. Simple and commonplace sign
The mark consists solely of a very simple and commonplace sign (e.g. 123, ONE, TWO, etc.)

g. Other marks without distinctiveness
Common slogans, catchwords, expressions used in greetings (e.g. Believe it or not, I can do it, www, etc.)
The necessity for distinctiveness is judged based on when the registration of a mark is concluded. In a combined mark, the distinctiveness is judged based on the whole of the constituents of the mark, and common traders or consumers related to the designated goods. If one does not have to consider the relation with the designated goods, it is judged by the common average recognition criteria.
"Mark indicated by a common method" refers to a mark which is represented with printed or italic-type Korean, Chinese, or Roman characters." "To consist solely" indicates that if a mark includes a common name, but it is just part of the distinguishing mark, or it is absorbed in the distinguishing mark and constitutes a coordinated whole, the distinctiveness is wholly recognized, except in cases in which two or more technical marks are combined.
Even if a trademark falls under Paragraphs c, d, e, f above, when, as a result of using the trademark before the application for registration, consumers are easily able to recognize the person whose goods are indicated by the trademark, the trademark may be registered (Article 6(2) of Trademark Act). Also, notwithstanding marks that are subject to Paragraph c (applied only to the origin) or d above, whenever the mark is used as a geographical indication on specific goods, a collective mark for a geographical indication may be registered for the designated goods that use the geographical indication (Article 6(13) of Trademark Act).

2) Passive requirement (grounds of unregistrability)
Even if a trademark has distinctiveness, when it grants an exclusive license, or when it infringes public good or another person's profit, the trademark registration needs to be excluded. The grounds of unregistrability are restrictively enumerated in Article 7 of the Trademark Act.

a. Trademarks that are identical or similar to the following: the national flag, the national emblem, as well as colors, medals, decorations or badges of the Republic of Korea, official signs and hallmarks indicating control and warranty of the Republic of Korea or its public institutions

1-2. Trademarks that are identical or similar to the following: the national flags of the allies of the [Paris Convention for the Protection of Industrial Property] (hereinafter referred as the "Paris Convention"), or of the members of the World Trade Organization or of the signing parties to the Trademark Act Treaty (hereinafter referred as "the allies" in this clause)

1-3. Trademarks that are identical or similar to the following: the titles, the acronyms or marks of the International Red Cross, the International Olympic Committee or well-known international organizations. But this is not applied in cases where the International Red Cross, the International Olympic Committee or well-known international organizations have applied for trademark registration on their titles, the acronyms or marks.

1-4. Trademarks that are identical or similar to the following: the national flag, the national emblem as well as colors, medals, decorations or badges of the allies of the Paris Convention, or the titles, the acronyms, the national flag, the national emblem, as well as colors, medals, decorations or badges of inter-governmental international organizations (in case the allies are members), which are designated by the commissioner after being informed by the World Intellectual Property Organization(WIPO) based on Article 6, Clause 3 of the Paris Convention. But this is not applied in cases where allies or inter-governmental international organizations apply for trademark registration on their titles, the acronyms (limited to the inter-governmental international organizations) or marks.

1-5. Trademarks that are identical or similar to the following: official signs and hallmarks indicating control and warranty of the allies or public institutions, which have been designated by the commissioner after being informed by the World Intellectual Property Organization based on Article 6, Clause 3 of the Paris Convention; application regarding the same or similar products with those signs and hallmarks

b. Trademarks that falsely indicate a connection with, or that criticize, insult or are liable to defame, any nation, race, ethnic group, public organization, religion or well-known deceased person (i.e: Yankee, Negro, etc.);

c. Trademarks that are identical or similar to well-known marks that indicate a nonprofit business of a state, a public organization or its agencies or public corporations, or a nonprofit public service (e.g. YMCA, KBS, RED CROSS, etc.);

d.Trademarks whose meaning and details are perceived by users as being liable to contravene public order or morality (e.g. obscene shapes or characters, words like swindler or pickpocket, etc.);

e. Trademarks comprised of a mark that is identical or similar to a medal, certificate of merit or decoration awarded at an exhibition held by or with the authorization of the Government of the Republic of Korea or at an exhibition held by or with the authorization of the government of a foreign country.;

f. Trademarks containing the name, title or trade name, portrait, signature or seal, famous pseudonym, professional name or pen name of well-known persons, or an abbreviation of these (e.g. DJ, JP, KEPCO, LH, etc.)

g. Trademarks that are identical or similar to another person's registered trademark.

h. Trademarks that are identical or similar to another person's registered trademark when no more than a year has elapsed since the date on which the trademark right expired;

h-1. Trademarks that are identical or similar to another person's registered collective mark for a geographical indication when no more than a year has elapsed since the date on which a registered collective mark for a geographical indication expired;

i. Trademarks that are identical or similar to another person's trademark when that other person's trademark is well known among consumers;

i-1. Trademarks that are identical or similar to another person's geographical indication when that other person's geographical indication is well known among consumers;

j. Trademarks that are liable to cause confusion with the goods or services of another person because consumers easily recognize the trademark as designating the goods or services of the other person;

k. Trademarks that are liable to mislead or deceive consumers regarding the quality of the goods;

l. Trademarks that are identical or similar to a trademark that consumers inside or outside the Republic of Korea easily recognize as indicating the goods of a particular person, and which are used to obtain unjust profits or to inflict harm on a particular person and so on;

l-1. Trademarks that are identical or similar to a geographical indication that consumers inside or outside the Republic of Korea easily recognize as indicating the goods of a certain region, and which are used to obtain unjust profits or to inflict harm on a legitimate users of the geographical indication and so on;

m. Trademarks that consist solely of three-dimensional shapes that are essential for securing the functions of goods, or their packages, that require trademark registration; or ;

n. Trademarks that consist of a geographical indication or include a geographical indication of the origin of wines or spirits of a member state of the World Trade Organization, and which are used for wines, spirits or other similar goods. However, this provision does not apply if a legitimate user of a geographical indication applies to register a collective mark for a geographical indication and the relevant goods are the designated goods.

o. Trademarks that are identical or similar to the form names registered in Article 111 of the [Seed Industry Act, or trademarks used regarding the same or similar products with those form names Under Article 7(5) of Trademark Act, if a trial for the cancellation of trademark registration is requested, and if any of the following subparagraphs occurs after the date of requesting the cancellation trial, the owner of the trademark rights and any person using the trademark may not obtain trademark registration for a trademark that is identical or similar to a registered trademark extinguished with respect to goods that are identical or similar to the designated goods of the extinguished registered trademark, unless three (3) years have elapsed since the day on which each of the following subparagraphs occurs:

a. Where the trademark right has been extinguished because the term has expired;

b. Where a person with the trademark rights abandons the trademarks right or some of the designated goods;

c. Where the trial decision on the cancellation of a trademark registration has been finalized.



Information on trademark applications


* A single application for a single trademark

An applicant for trademark registration shall designate one or more classes of goods for the classification of goods prescribed by ordinance of the Ministry of Knowledge Economy, and file an application for each Trademark; this is referred to as the Doctrine of a Single Application for a Single Trademark. Filing for two trademarks with one application is not allowed.
This doctrine is principally applied to an application for new trademark registration, an application for the additional registration of designated goods, and an application for renewal of the term of a trademark right.
Under the Enacted Trademark Act of 1997, the "Principle of a Single Application for a Single Trademark" was abolished from March 1 1998, while the "Principle of One Multiple Class Application for Single Trademark" was applied. As a result, an applicant can file an application for every trademark and also simultaneously designate both the trademark and service business when filing an application.


* Designation of articles to use a registered trademark

When a person files an application for trademark registration, he/she may designate a trademark to be protected and also the goods using the trademark as one class or multiple classes in accordance with the Classification of Goods and the 'Notice of the Name and Classification of Goods and Service Businesses' as specified in Article 6 of the Enforcement Regulations of Trademark Act. The Addendum of the Enforcement Regulations of Trademark Act specifies 34 classifications of goods from 1st class to 34th class and 11 classifications of service businesses from 34th class to 45th class.
Before March 1, 1998, the Korean Intellectual Property Office used the classification of goods class prepared by KIPO. After that, KIPO has used the 'Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks.'


* Additional application of designated articles

If the scope of designated goods needs to be enlarged subject to the situation after application or registration, an owner of trademark rights or an applicant may receive a permit for the additional registration of designated goods which adds new articles to the goods designated by the registered trademark or the trademark application, as a result, extend the scope of trademark rights to be protected as an owner of trademark rights.
An applicant may designate one article or two or more articles at one time. However, if the designated goods need to be added after filing an application or registration, the applicant may additionally file an application for goods designated separately and add them.
To register the designated goods additionally, an owner of original trademark rights or an application for original trademark registration must exist; an applicant must be the same as the owner of a registered trademark or an applicant for trademark registration; the trademark to additionally register designated goods must be same as the relevant registered trademark or trademark application; these must not correspond to any refusal reason against common trademark applications.
When there is an additional registration of designated goods, the goods registered additionally are incorporated into the original trademark rights as a combined whole. As the original trademark rights are extinguished, the additional registration is extinguished as well. However, whether there are any grounds for invalidation or whether trademark rights are infringed shall be independently construed and judged, irrelevant of the original registration.
Under Trademark Act before March 1, 1998, in case of the same trademark in the same classification of goods class, only one trademark could be registered. After that, as the Registration System of Multiple Class by Single Application has been performed, the additional registration articles were limited to the same classification of goods class in the past, while an applicant can separately file an application and a registration for every article.


* Divisional application

If an applicant files an application by designating one or more goods as designated goods, the application can be divided into two or more applications for each good or the Classification. In other words, the division of an application does not entail a division of the trademark, but a division of designated goods.


* Converted application

The conversion of an application can be allowed among trademark applications, service mark applications, and collective mark applications, except collective mark applications for geographical indication and business emblem applications.
An application to register the renewal of the term of trademark rights or an application for the additional registration of designated goods can be converted into an application, except if an invalidation trial or a cancellation trial is requested in relation to a registered trademark that served as the basis of an application to register the renewal of the term of trademark rights or an application for additional registration of designated goods. To prevent the misuse of this system, the conversion does not apply where an invalidation trial or a cancellation trial is requested.
In addition, the conversion of an application through other Acts (mutual conversion of an application among trademark, patent, utility model, and design) must not be allowed - including reciprocal conversion of an application among an application for new trademark registration, an application for additional registration of designated goods, or an application to register the renewal of the term of trademark rights.


* Application to renew the term of a registered trademark

The term of trademark rights is ten (10) years from the registration date. However, these may be extended by an application to register the renewal of the term of trademark rights every 10 year. As long as the trademark rights are continuously used, they may have semi-permanency.
To renew the term of registered trademark rights, an applicant shall file an application to renew the term of a registered trademark within one year before the expiration of the term of a registered trademark. Although the term has expired, the applicant may file an application to renew the term of a registered trademark before the lapse of six (6) moths. In this case, he or she shall pay a required negligence fine.


* Application trend

The number of trademark applications in 2009 was 162,682, revealing a decline of 8.7% compared to 178,211 in 2008; there were 180,257 trademark applications in 2007.



Trademark right


* Term of a trademark right

Trademark rights are commences when the trademark right is registered; it ends 10 years after the registration date. However, it may be extended every 10 years by an application to register the renewal of the term of trademark rights. As long as the trademark rights are continuously used, they may have semi-permanency.
To renew the term of registered trademark rights, an applicant shall file an application to renew the term of a registered trademark within one year before the expiration of the term of a registered trademark. Although the duration has expired, the applicant may file an application to renew the term of a registered trademark before the lapse of 6 moths. In this case, he shall pay a required negligence fine.


* Expiration of a trademark right

If the term of trademark rights expires as a result of a default of the renewal of the term, or an applicant gives up the trademark right at his/her disposal, or he/she does not apply for registration of the reclassification of goods within a given period for goods registered under the previous classification of Korean goods, the trademark rights are extinguished. In addition, if an application to transfer a registered trademark is not filed by a successor in title within 3 years of the death of the original owner of the trademark, the trademark rights are extinguished on the day after the expiry of a three-year period following the death of the original trademark owner.


* Application to register the reclassification of goods

A trademark rights owner who has obtained trademark registration, a supplementary registration of designated goods or a registration for renewal of the term of a registered trademark for designated goods in accordance with the Korean Classification of Goods before March 1, 1998, shall reclassify the designated goods under the Classification of Goods (NICE Classification) as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy.
An application to register the renewal of the term of a registered trademark and an application to register the reclassification of goods may be filed through one application. When a person who has to register the reclassification of goods does not perform this obligation within the given period, the trademark rights for the designated goods to be registered as the reclassification of goods shall extinguish at the date on which the expired date of the given period is included.
An application to register the reclassification of goods must be filed within the period beginning one year before the date on which the term of the trademark right expires and no later than six months after the expiry date of the term.


* Transfer of a trademark right

The transfer of a trademark right replaces only a trademark right owner, keeping the sameness of the trademark rights content. As the trademark rights are also a kind of intangible property rights, they need to be freely transferrable like common property rights. However, this may be restricted if necessary in order to protect the owner's profit in terms of the purpose of Trademark Act.
Generally, a trademark right may be freely transferred in itself by selling or donation without reference to business, and divided and transferred for every designated good.


* Trademark license system

1) Exclusive License

A trademark rights owner may grant an exclusive license regarding the trademark rights to others. An exclusive licensee is entitled to exclusively use the registered trademark regarding the designated goods to the extent allowed in the license agreement
Accordingly, an exclusive licensee as well as a trademark rights owner is entitled to seek prevention or injunction against other persons who use a trademark identical or similar to the registered trademark for goods identical or similar to the designated goods. And an exclusive licensee may transfer an exclusive right, or grant nonexclusive rights to others with the consent of the trademark rights owner.
An exclusive license has no effect on any third parties unless it is registered and transferred (registration is a preferential right against third parties). An exclusive licensee shall specify his/her name or title to goods which use a registered trademark.


2) Nonexclusive License

A trademark rights owner or an exclusive licensee may grant a nonexclusive license regarding the trademark rights to others. A nonexclusive licensee is entitled to use the registered trademark regarding the designated goods to the extent allowed in the license agreement. The nonexclusive licensee may transfer his/her rights to others with the consent of the trademark rights owner and the exclusive licensee.
A nonexclusive license has no effect on any third parties unless it is registered and transferred (registration is a preferential right against third parties). A nonexclusive licensee shall specify his/her name or title to goods which use a registered trademark.
In addition, a nonexclusive licensee is just entitled to use a registered trademark on the designated goods. Therefore, he has no injunction right against infringement. Only a trademark rights owner or an exclusive licensee is entitled to seek injunction against infringement.


Protection of an owner of trademark rights


* Effect of a trademark right

 Once a trademark is registered, a trademark rights owner is entitled to exclusively use the registered trademark on the designated goods; seek injunction against others who use any trademark identical or similar to the registered trademark; and exercise a claim of infringement injunction or a right of compensation for damages against others who infringe the trademark rights by using any trademark identical or similar to the registered trademark.


* Infringement

Without the consent of the trademark rights owner are considered to infringe upon trademark rights: (i) acts of using a trademark that is identical or similar to the registered trademark of another person on goods that are identical or similar to the designated goods; (ii) acts of delivering, selling, counterfeiting, possessing, or keeping a trademark right that is identical or similar to the registered trademark of another person in order to use or cause a third party to use the trademark on goods that are identical or similar to the designated goods.


* Remedy methods for an infringement of a trademark right

There are remedy methods against the infringement of a trademark right as follows:
① Civil remedy: A claim of infringement injunction, a right of compensation for damages, provisional disposition, provisional seizure, recovery of reputation, etc.;
② Criminal remedy (irrelevant of complaint): Offense of infringement, confiscation, etc.;
③ Administrative remedy: Control of counterfeit goods, border measures by customs authorities, and settlement of intellectual property rights dispute, etc.


Protection of foreign well-known trademarks

Regardless of whether or not they are registered under the Trademark Act, well-known or famous marks are protected by way of barring the registration of a mark which is identical with, or similar to, such marks. An application for the registration of such mark filed by a person other than the owner of the famous mark will be rejected; and, if the registration is erroneously granted, it will be subject to invalidation.

Even if goods and/or service concerning a trademark application are not identical with or similar to those of a well-known trademark, the application shall be refused due to the possibility of misleading the consumers about the origin of goods or services. Furthermore, an interested party may request a trial or invalidation of registration of such a trademark if it has been registered.

It is prescribed in the revised Trademark Act which became effective as of March 1, 1998 that the registration of a trademark shall be refused when the application is made for unfair purposes, such as the aim of free-riding on the reputation of the marks which are well-known in the Republic of Korea.

In addition to the Korean Trademark Law, the Unfair Competition Prevention Act also provides the protection of well-known trademarks. Any person who is, or is likely to be, injured by acts of unfair competition such as acts causing confusion with another person's goods or business facilities by using an indication identical with or similar to another person's name, trade name or marks, including well-known trademarks, may bring a civil action before the court seeking an injunctive relief, monetary damage and/or restoration of injured business reputation or goodwill. Furthermore, the Law also set forth criminal provisions.


Collective mark right for a geographical indication


* Concept

"Geographical indication" refers to an indication that identifies a product as originating in a certain region where a given quality, reputation or other characteristics of the product are essentially attributable to that region.


* Requirements [Substantive Requirement]

Conformity to the definition of geographical indication under the Trademark Act
Protection by a geographical indication is limited to goods; this includes agricultural goods, marine products, processed goods, and industrial products (especially handicrafts), except service business.
A geographical indication applies to the geographical origin of goods and indicates the name of a place in which goods are produced, manufactured, and/or processed. It is not limited to the name of an administrative district and does not require that goods must be produced, manufactured, and/or processed in the same region.
Specific quality, reputation, or other characteristics of goods are required. In quality, reputation, or other characteristics, goods which are produced, manufactured, and/or processed at a place must be differentiated from goods which are produced, manufactured, and/or processed elsewhere.
The basic correlation between characteristics of goods and geographical environment is required. A geographical indication shall be essentially based on geographical environment including natural conditions (e.g. climate, soil, topography) or personal conditions (e.g. specific production method) as well as the quality, reputation, or other characteristics of goods which are produced, manufactured, or processed in a region.

[Subjective Requirement]

Establishment of a group with corporate personality composed of producers, and preparation of articles of association
An application to register a collective mark for a geographical indication shall be filed by groups (producer group, processor group, etc) with a corporate personality that consist only of persons who produce, manufacture, or process goods corresponding to the geographical indication in a certain region. An application filed by an individual, companies under Commercial Law or groups without a corporate personality shall not be registered.

[Procedural Requirement]
Submission, examination and registration of filing documents and documentary evidence
To register a collective mark for a geographical indication, a legal entity such as a producer group qualified to file shall prepare a required application, submit an application to register a collective mark for a geographical indication to the Korean Intellectual Property Office together with documentary evidence which conforms to the definition of geographical indication, pay a registration fee with the registration decision of an examiner, and then register the right.


* Effect

A collective mark for a geographical indication excludes any third party from registering any trademark or a collective mark for a geographical indication which is identical or similar to a registered collective mark for the geographical indication. When any person in another region uses a mark which is identical or similar to the registered geographical indication on the designated goods, he may assume civil and criminal liability for infringement of trademark rights.
The collective mark right for a geographical indication does not apply to marks which are customarily used for goods identical to the designated goods for the registered collective mark for a geographical indication; or a geographical indication or a homonymous geographical indication used by a person who produces, manufactures, or processes goods related to a geographical indication in the relevant region.


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Overview of the Patent System in Korea

* History of the Korean patent system

* What is a patent?
  > Purpose of the patent system
  > Requirements for acquiring patent rights
  > Effects and term of a patent right

* Information on patent applications
  > First-to-file rule and first-to-invent rule
  > Inventions and devices

* Patent examination system
  > Accelerated examination system
  > Deferred examination system
  > Divisional application
  > Converted application
  > Priority claim under treaty
  > Claim for domestic priority
  > Ex officio amendment
  > Request for reexamination (reexamination before a trial)
  > Pendency period



History of the Korean patent system

1908: The Patent Decree laid the foundation in Korea for institutionalizing intellectual property.
1946: The Patent Institute was established and patent laws were enacted
1961: The patent laws were divided into four industrial property laws: the Patent Act, the Utility Model
         Act, the Trademark   Act, and the Design Act.
1977: The Korean Intellectual Property Office (KIPO) was established as an independent office under
         the Ministry of  Commerce, Industry and Energy
1979: Korea joined the World Intellectual Property Organization (WIPO)
1980: Korea joined the Paris Convention
1984: Korea joined the Patent Cooperation Treaty



Information on patent applications


The first-to- file rule and the first-to-invent rule
The first-to-file rule and the first-to-invent rule are two different principles for determining which applicant is granted a right whenever two or more patent applications are filed for the same invention. Only the first-to-file rule applies in Korea.

* First-to-file rule

Regardless of who invented the invention, the right of invention is given to the person who is the first to file the application at the patent office. If two or more applications for the same invention are filed on the same date, the applicants must consult with one another and try to come to an agreement on who may obtain a patent for the invention. If no agreement is reached or no consultation is possible, none of the applicants can obtain a patent for the invention
The first-to-file rule is practical because it grants rights for the cost of disclosing the technology and it encourages swift disclosure of inventions
This rule is in accord with the purpose of the patent system because it aims to promote industrial advancement through the swift disclosure of inventions

* First-to-invent rule

Under the first-to-invent rule, the right of an invention is given to the actual inventor, regardless of the order in which applications are filed
This rule has the strength of protecting inventors. Private inventors who don't own an enterprise prefer this rule
To benefit from this rule, the inventor must provide a journal of the inventive activities that led to the invention and secure witnesses to the invention. The patent office must confirm the time of the invention

* Inventions and devices

- A patent right is granted for inventions, while utility model rights are granted for devices
- In the Patent Act, an invention has a higher degree of technology than a device
Definition of invention: a highly advanced creation of a technical idea using the rules of nature
Definition of device: a creation of a technical idea using the rules of nature
However, the degree of advancement is subjective, and applicants can make that assessment themselves
In other words, a creation filed as a utility model is deemed to be a device, while a creation filed as a patent is deemed to be a invention.



Patent examination system

* Accelerated examination system

According to Article 61 of the Patent Act, the Commissioner of KIPO may have a particular category of patent application examined ahead of other patent applications. KIPO's regulation concerning the procedure for handling requests for accelerated  examination provides that applications eligible for such expedited examination are limited to the following categories:

(1) in case it is considered that an invention has been commercially worked by a person who is not the applicant, after his application has been laid-open;
(2) in case the application is one of the kinds of applications stipulated in the Presidential decree and regarded as urgent

(i) it relates to goods for defense industry and processes for the preparation thereof, as defined in the Special Measures Act Relating to Defense Industry

(ii) it relates to facilities for the prevention of environmental pollution or a process thereof

(iii) it is directly involved in the promotion of export as evidenced by export records, a letter of credit,
a request for validating patent rights from the buyer of expected goods, or documents related to the adoption of international standards

(iv) it is made officially by an employee of the central government, a local government
(including application filed by exclusive organizations for technology transfer and commercialization, which were established in national and public school)

(v) patent applications that the KIPO Commissioner and the heads of patent offices in other countries
agreed to examine on a priority basis

(vi) applications about which anyone requests one of the KIPO-approved agencies(namely the Korea
Institute of Patent Information/ WIPS Co., Ltd./the Korea IP Protection Technology Institute Co., Ltd./and the IP Solution Co., Ltd.) to conduct the prior art search and asks the agency to forward the search results to the KIPO commissioner

(vii) and so forth
A person who desires an accelerated examination of his application must submit a written request together with a statement explaining the necessity thereof in detail and any evidence supporting the statement Flow chart of an accelerated examination

                                   
* Deferred examination system

If necessary, Applicants can have the examination deferred for up to six months from the date of
the examination request.
Instead of specifying a preferred date, applicants can get first action from KIPO within three months of the preferred examination date provided the preferred date is at least 18 months after the date of the examination request and within five years of the application date.


* Divisional application

An applicant who has filed a patent application comprising two or more inventions may divide the application into two or more applications Flow chart of a divisional application

                                   

* Converted application

An applicant can convert a patent application to a utility model application or vice versa, but may not convert the application if thirty days have elapsed since the date on which the person received a certified copy of the first decision to reject the utility model registration application.

Flow chart of a converted application
                                    

* Priority claim under treaty

The system of making a priority claim under treaty is recognized by the Paris Convention and by the member countries of the WTO. Whenever an application filed in one country is filed again in another member country within a year of the first filing, the filing date of subsequent application is deemed to be the filing date described in the original application

Flow chart of a priority claim under treaty
                                 

* Claim for domestic priority

An applicant for a patent may make the priority claim based on a invention disclosed in the description or drawing(s) originally attached to a written application of an earlier application for a patent or utility model registration within a year of filing the earlier application, for which the applicant has the right to obtain a patent or utility model registration.
Flow chart of a claim for domestic priority
                              

* Ex officio amendment

If an examiner determines that an application is patentable but has minor defects such as misspellings
or wrong reference numbers, the examiner can make an ex officio correction of the minor defects
without having to request the applicant to submit a written opinion.
(For decision of registration made after July 1, 2009.)

* Request for reexamination (reexamination before a trial)

Whenever an examiner refuses an application, the applicant can simply request a reexamination after amending the description or drawing(s) . This process is permitted under the revised Patent Act.
Previously, if an application was refused after examination, an applicant had to appeal the examiner's decision of refusal and amend the description or drawing(s) for examination before a trial. On the other hand, according to the revised Patent Act, however, an applicant does not need to appeal but simply request reexamination with amendment.
Flow chart of a request for reexamination (application filed after July 1, 2009)

①Reasons for refusal from before the date of giving notice of the first refusal, but were not mentioned

②Reasons for refusal which were created by the amendments made after giving notice of refusal,
    but were not mentioned

③Reasons for refusal mentioned in previous notice of refusal
                                
Flow chart of a reexamination before a trial (for applications filed before June 30, 2009, and after July 1, 2001)

①Reasons for refusal from before the date of giving notice of the first refusal, but were not mentioned

②Reasons for refusal which were created by the amendments made after giving notice of refusal,
    but were not mentioned

③Reasons for refusal mentioned in previous notice of refusal
                         
Pendency period

- The pendency period starts when an applicant requests an examination and ends when the examination begins. A prolonged pendency period delays the enforcement of rights and hinders the commercialization and profitability of new technologies

- To shorten the pendency period, KIPO has increased the number of patent examiners, expanded outsourcing services on prior art searches, maximized its examination capabilities through performance-based management, developed an automatic search system, and introduced Six Sigma management methods.

As a result of those efforts, KIPO had the fasted examination service in the world by the end of 2006



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