Korean Patent System Korean Patent System andand

Recent Changes.Recent Changes. Practices in Practices in Chemistry.Chemistry.

Bong Sig SONG

Korean Patent Attorney

Y. S. CHANG & ASSOCIATESFebruary 9th 2008

IPRs Protected in Korea

Intellectual Property

Industrial Property

Copyright

Neo-IPRs

Patent

Utility Model

Design

Trademark

Semiconductor chipLayout designs

Computer ProgramsData Bases

Trade secretsUndisclosed Information

Korean Intellectual Property Office(KIPO)Korean Intellectual Property Office(KIPO)

Approx. 800 Examiners

Located in Tae-Jeon city, 200 km south of SEOUL

Electronic Filing System

5 Examination Bureaus (Trademark/Design,

Machinery, Chemistry, Electric/Electronics and

Telecommunication)

Intellectual Property Tribunal

                                                                      

Korean appls. Vs Foreign appls.Korean appls. Vs Foreign appls.

Applications Proportion Applications Proportion

2000 72,831 71.4% 29,179 28.6% 102,010 2001 73,714 70.5% 30,898 29.5% 104,612 2002 76,570 72.1% 29,566 27.9% 106,136 2003 90,313 76.1% 28,339 23.9% 118,652 2004 105,250 75.1% 34,865 24.9% 140,115 2005 122,188 75.9% 38,733 24.1% 160,921 2006 125,476 75.5% 40,713 24.5% 166,189

Total

patentapplications

Classification YearKorean Foreign

Applications in 2006 by country of originApplications in 2006 by country of origin

Countries PatentsUtility

models

J apan 17,604 37 1,400 (1,404) 4,277 (7,392) 23,318 (26,437)U.S.A. 10,368 96 732 (795) 6,302 (10,345) 17,498 (21,604)Germany 3,284 6 144 (163) 849 (1,428) 4,283 (4,881)Netherlands 2,059 72 (73) 272 (421) 2,403 (2,553)France 1,402 115 (118) 743 (1,242) 2,260 (2,762)India 83 2 (2) 26 (32) 111 (117)

Designs Trademarks Total

PCT applicationsPCT applications

Korean English J apanese Total Patents Utility models Total2000 703 870 1,573 #REF! 15,124 9 15,133 #REF!2001 1,485 828 1 2,314 47.1% 16,686 4 16,690 10.3% 2002 1,663 847 1 2,511 8.5% 17,868 6 17,874 7.1% 2003 1,764 1,176 2 2,942 17.2% 16,974 7 16,981 -5.0% 2004 2,088 1,475 2 3,565 21.2% 21,168 15 21,183 24.7% 2005 2,856 1,833 1 4,690 31.6% 24,473 9 24,482 15.6% 2006 3,714 2,204 1 5,919 26.2% 26,635 14 26,649 8.9%

Year

Receiving Office Designated Office

Application language Increasingrate

Translation for national phase Increasingrate

Madrid Protocol Madrid Protocol ApplicationsApplications

Year Office of OriginOffice of the Designated

Contracting Party2003 108 1,548 2004 141 4,874 2005 154 6,699 2006 208 8,483

Main Characteristic of Korean Main Characteristic of Korean Patent PracticePatent Practice

First to File Rule Grace Period of 6 months

Late filing of Claims

Publication of an Unexamined Application

Request for Examination

No Opposition

Invalidation Trial

Filing an ApplicationFiling an Application

Applicant Inventor or his assignee

Required Documents An application, a specification, drawings, an

abstract, priority documents and POA

Priority Claim 1 year from the earliest filing date The priority document must be submitted within

1 year and 4 months from the priority date

Publication of Unexamined applicationPublication of Unexamined application

18 months from the filing date

Can be made upon request

Temporary protection is provided to patent

applications that have been laid open

Request for ExaminationRequest for Examination

Should be made within 5 years from the filing

date of the application

Deemed to have been withdrawn in case no

request is made

Substantial examination is commenced within 1

year from the filing date of the request for

examination

Expedited ExaminationExpedited Examination

Request for expedited examination can be made when: An invention has been commercially worked by

a person who is not the applicant. An invention has been commercialized or is

about to be commercialized by the applicant

Substantial examination is commenced and the first office action will be issued within 2 months

Substantial ExaminationSubstantial Examination

Requirement for Registration Novelty Inventive Step Industrial Applicability Description Requirements Unity of Invention

First Office Action Response period : 2 months Time extensions are available Argument and/or Amendment

Final Office Action Grant or Final Rejection

RegistrationRegistration

When an applicant receives a notice of decision to grant a patent he should pay, as a registration fee, the first 3 year’s annuities within 3 months from the date of receipt of such notice6 months grace period is available Registration fee doubles

Intellectual Property Intellectual Property TribunalTribunal

Handles trials against the final rejection of an application; invalidation trials; trials for correction, trials for confirming the scope of a patent right, etc.

11 Boards, each board having 6 ~ 11 examiners

Experienced Examiners

New Amendments to the Korean Patent ActNew Amendments to the Korean Patent Act(Effective as of July 1, 2007)(Effective as of July 1, 2007)

Requirements for specificationRequirements for specification

OLD PATENT ACT

The detailed description of an

invention must provide the

purpose, technical constitution and

effect of the invention in such a

manner that it may be easily

carried out by a person of ordinary

skill in the art to which the invention

pertains

The detailed description of an

invention must provide the

purpose, technical constitution and

effect of the invention in such a

manner that it may be easily

carried out by a person of ordinary

skill in the art to which the invention

pertains

AMENDED PATENT ACT

The detailed description shall

provide the invention in a clear

and detailed manner such that

it may be easily carried out by a

person of ordinary skill in the art

to which the invention pertains

The detailed description shall

provide the invention in a clear

and detailed manner such that

it may be easily carried out by a

person of ordinary skill in the art

to which the invention pertains

Claim drafting requirementsClaim drafting requirements OLD PATENT ACT

The claims must define only

the features indispensable

to the technical constitution

of the invention

The claims should describe

all subject matters that are

necessary to define an

invention

AMENDED PATENT ACT

Adoption of late filing of claimsAdoption of late filing of claims

In the newly created Article 42 (3), at the time of filing In the newly created Article 42 (3), at the time of filing

an application the applicant only needs to file a specification an application the applicant only needs to file a specification

that gives a full description of the invention.that gives a full description of the invention.

A set of claims for the described invention in the already filedA set of claims for the described invention in the already filed

specification should follow within 18 months of the priority specification should follow within 18 months of the priority

date or actual filing datedate or actual filing date

Examiners must examine and explain each Examiners must examine and explain each

claim in detailclaim in detail

Examiners must now examine each claim and clearly explain each rejection ground

for a patent or utility model application. As a result, applicants will be better informed

as to the reasoning behind each rejection. In addition, Examiners must inform the

applicant of the acceptable claims in the application, if any

Until now, a Examiner would examine an application as a whole. The rejection of even 1 claim meant the rejection of the entire application. Acceptable claims (if any)were not mentioned and detailed reasons for the rejections were not provided.

Changed

Shortening of designated periodsShortening of designated periods

Any official designated periods set during the course of the

prosecution of a patent or utility model application may now be

shortened.

For example, in case of responding to an Office Action, the

applicant may submit a response at any time during the allowed

two month period and request the patent office to issue a decision

immediately thereafter rather than wait until the two months have

elapsed.

Korean Patent Practice Korean Patent Practice in the chemical fieldin the chemical field

Jong Hyeok PARK(Mr.)

Patent Attorney, Pharmacist

Y. S. CHANG & ASSOCIATES

Patentable Subject MatterPatentable Subject Matter

Same as those of other countries

However, medical treatment of a

human being is not allowed.

Medical Treatment MethodMedical Treatment Method

U.S. Methods for treating human body Therapeutic or diagnostic methods

Europe Diagnostic Method : Patentable Therapeutic Method : Non-patentable

Korea Diagnostic Method : Patentable(effective of

2008) Therapeutic Method :Non-patentable

Patentable Subject MatterPatentable Subject Matterin the field of Biotechnologyin the field of Biotechnology

Examples of patentable subject matter

Gene, DNA fragments, Vectors, Transformants

Proteins, Recombinant Proteins

Antibodies, Enzymes, Plants, Animal

Stem Cell relating Inventions

No established practices yet

Under discussion

Description Requirement for Description Requirement for ClaimsClaims

Statutory Categories Product Claim

A compound ~ A pharmaceutical composition ~

Process Claim A preparation method of a pharmaceutical

composition comprising the use of ~

SWISS type Claim(Use format)SWISS type Claim(Use format)

A use of a compound X for the preparation of an anticancer agent. EPO : Allowable USA : Allowable Korea : Not allowable

Must be amended to a claim directed to a pharmaceutical composition A pharmaceutical composition for treating

cancer comprising X as a main ingredient.

Unclear languageUnclear language

AboutSubstantiallyEssentiallyApproximatelyRelativelyComparableParticularlySuitably

PreferablyConsisting essentially ofSystemAnd/orMainlyAt least(without upper limitation)Such as

Patent Practice Patent Practice in the field of Biotechnologyin the field of Biotechnology

Genes/DNA fragments/Proteins must be

specified by nucleotides or amino acid

sequences

Recombinant vectors must be specified by the

inserted genes and the vector

Mutation type(insertion, substitution, deletion)

and position must be specified in claims

Patent Practice Patent Practice in the field of Biotechnologyin the field of Biotechnology

Nucleotide sequences must be submitted as a

Sequence Listing file

Microorganisms must be deposited before the

filing of an application

Patent Practice Patent Practice in the field of Biotechnologyin the field of Biotechnology

Transition phrase

Consisting of : allowable

Comprising : almost impossible

Consisting essentially of : not allowable

An isolated nucleic acid molecule which encodes a

cancer associated antigen, the complementary

sequence of which, hybridizes, under stringent

conditions, to the nucleic acid molecule comprising

the nucleotide sequence set forth in nucleotides

54-593 of SEQ ID NO:1.

Thank youThank you