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Patent Examination Stan-dards in S. Korea

Chulhee LEE, Korean Patent Attorney

ABA 29th Annual Intellectual Property Law Conference

April 2-4, 2014, Arlington Virginia

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Speaker Mr Chulhee Lee

Received BS in EE (Seoul National University, 1988) & MS in EE (KAIST, 1990)

Member of Technical Staff (Korea Telecom, 1990-1995)

Korean Patent/Trademark Attorney (KPAA, 1996) Associate (First Law of Offices of Korea, 1996-2001) Founder and Senior Partner (Veritas Patent and Law Office,

2001-present)

Speaker, ABA 28th Annual IP Law Conference 2013 Book Author “e-Attorney’s Patent Story,” 2000 Expert in business method patents & standard essential

patents chlee@veritaspatent.com

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Industrial Property Laws

Patent First-to-file; Publication regardless of examination;

Request for substantive examination; Application without claim

Utility Model Apparatus only; Lower Inventive Step; 10 Year Pro-

tection Design

Typeface, Partial Design, Secret Design, Similar Design; 15 Year Protection(from Registration)

Trademark Shape(3D), Color, Sound, Hologram, Motion, Scent

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Statistics

201,339 Patent Applications in 2012 CN 652K; US 542K; JP 342K; EPO 257K Patent 188K Utility Model 12K Korean 160K Foreign 41K Foreign: JP 16K; US 11K;DE 3K; FR 1K; CN 1K

11,848 PCT Applications in 2012 Big 5 Country of Origin: US 51K; JP 43K; CN 18K;

DE 18K (Total 194K)

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Treaties

Paris Convention 1980 WIPO 1979 PCT: Signed 1984; International Searching Authority

1997; Korean as a Language of Publication 2007 Budapest Treaty on Deposit of Microorganism 1988 GATT 1967; WTO 1995

KOR-US FTA: Effective 2012.3 Trademark subject matter Novelty grace period; Patent cancellation due to

non-working; Patent term extension due to prosecu-tion delay

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Timeline

US RegularApplication

PCTApplication

KoreanNational Phase

Publication

Immediately af-ter 31 M from

US Application or after Request for Examination

1 Y fromUS Application

(regarded as officialKorean filing date)

First Office Action

12 M (2-4 M for Pri-oritized Examina-

tion) from Request for

Examination

31 M fromUS Application

Responseto OA

2 M(4 M Extendible)

Request forReexamina-tion; Appeal

30 D from De-cision of Re-fusal (30 D Extendible)

RegistrationFee Due

3 M fromAllowance

(6 M Grace Period)

Request for Substantive Examination5 years from - Korean filing date (non-PCT case) - International filing date (PCT case)

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Requirements for Patentability

Subject Matter §2① Industrial Applicability §29① Novelty §29 , §30 ① Inventive Step §29② Unpatentable Invention §32 First-to-File Rule §36 Written Description Requirement

Specification §42③ Claim §42 , §42④ ⑧

Unity of Invention §45

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Subject Matter

“Invention" means the highly advanced creation of a technical idea using the rules of nature. §2①

Examples

Yes: Computer Software(Smartphone Apps); Busi-ness Method; e-Commerce* Computer program itself is allowed as a claim title: “Claim 1. A program for implementing…”

No: Scientific Theories; Mathematical Methods; Pub-lic Policy/Public Health

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Industrial Applicability

Medical Practice Surgical Operation, Therapy, Diagnostic Method

* Veterinarian Practice

Non-commercializable Invention Pure Experimental, Pure Academical

Non-implementable InventionEx) UV-absorbing Film Covering Earth

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Novelty

Publicly Known; or Publicly Worked Described in Publication; or Publicly available through

telecommunication line Within or outside of Korea Before the date of application

Novelty Grace Made public/published by Inventor Made public/published against Inventor 12 Months grace period Indicate in the Request; Submit evidence within 30

days

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Inventive Step

Inventions that could have been easily made by a per-son skilled in the art in view of prior arts

Factors for determining inventive step Motivation: Suggestion; Similarity in problem to be

solved; Similarity in function, work, operation; Close relation in technical fields

Mere exercise of ordinary creativity: Replacement with equivalents; Workshop modification of a design in applying a specific technology; Partial removal of technical features; Limitation of use

Advantageous effect; Commercial success

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Office Action Pendency

First office action pendency: 11.7 M average.

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Office Action

No separate rejections; all rejection grounds should be included

Rejection/Allowance by claims Allowable claims indicated

Final Rejection New rejection is based on the amendment Prior art rejection on newly added claims Prior art rejection on claim formerly rejected on

grounds of new matter or description requirement

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Response to OA

Response(Written Opinion) period 2+4 Months Prior request required for extension

Argument or Amendment or both

Examiner Interview Face-to-face at KIPO Request through the website of KIPO or telephone No formal Interview Summary

Telephone communication

Allowance rate: 67.2% for Patent 48.0% for UM in 2012

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Prioritized Examination

Person other than applicant works the applicant’s pub-lished invention

Others Defense Industry; Green Technology(Less emission,

Anti-pollution, etc.) Certified Venture Business’s application Applicant is or in preparation of working the inven-

tion PPH; PCT-PPH

Prior-art Search Report by Applicant required Normal Request for Substantive Examination required 24,205 requests in 2012

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Patent Prosecution Highway

Bilateral PPH: JP 2007, US 2008, DK 2009, CN 2012 PCT-PPH: US 2011, CN 2012 IP5-PPH from 2014.1 Global PPH from 2014.1

Number of requests: 1,141 PPH; 181 PCT-PPH, 2012

USAJapanEPO

China

UK, Australia, Canada, Portugal, Russia, Spain, Nordic, FinlandNorway, Denmark

IP5 PPH Global PPH

Germany, MexicoSingapore, IsraelSweden, AustriaHungary

Korea

Bilateral PPHGreen: PPH+PCT-PPHBlack: only PPH

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Amendment

Voluntary: Anytime before issuance of Decision of Grant

After OA: Response period

No New Matter Further restriction: After Final OA or upon requesting

Reexamination Further limitation, Correction, Clarification, Amend-

ment deleting new matter, etc.

Refusal of Amendment No appeal allowed against Refusal of Amendment;

Arguable only in appeal against Final OA

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Claim Language

The following expressions are generally NOT accepted:

Approximation: consisting essentially of; substantially; generally; mainly; approximately; about; similar; suffi-cient; appropriate; proper; many; high; most of; almost

If necessary; in particular; for example; such as Numerical limitation without maximum or minimum:

more than 30 wt%; less than 120 g Dual numerical limitations within a single claim: “120-

200 ” or “more appropriately 150-180 ”℃ ℃ And/or

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Divisional Application

Respond to rejection based on unity of invention Secure allowed claims first and argue against rejected

claims later Secure more number of patents

Time limit: Same as amendment* NoA issue time is unpredictable: ask the examiner to hold the issuance of Decision of Grant

Scope: No new matter allowed; Usually the same speci-fication and partial set of original claims

Same application date with the original

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After-Final Procedure

Reexamination (≒RCE, ≠Reexamination of US) 30 Days from receipt of Decision of Rejection Amendment required; Scope strictly restricted Same Examiner Not compatible with Request for Appeal Trial Same process with regular examination Rejected in reexamination: only Appeal available

Appeal 30 Days from receipt of Decision of Rejection Reviewed by 3/5 Trial Examiners in IP Tribunal IP Tribunal(KIPO) Patent Court(Appellate)

Supreme Court

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New Developments

Reduce examination period: 13.2 11.7 M “Preliminary Examination” Broaden PPH countries: 14 21 Countries Extend subject matter: Smartphone app, Architecture

design Effective 2014

For the Convenience of Applicant: Idea description, Specification in foreign language Submitted Congress 2013

Novelty Grace: Request at the time of application Request later

More opportunity for Divisional Application: Allowed af-ter Decision of Grant Bill to be Introduced in 2014

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FAQ_1

What language must I use for patent applications in Ko-rea? Korean.

Does Korea allow divisional applications? Yes. How soon after filing an application in Korea do I need

to file a request for examination? 5 Years. Can I present third-party observations on a Korean

patent application? Yes. What is the time limit for replying to official actions in

Korea? 2 months. Is there a grace period for paying annual fees in Korea?

Yes, 6 months; 3 extra months for patent in work.

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FAQ_2

Can a lapsed patent be restored in Korea? No, but with exception”.

Can I request a patent-term extension in Korea? Yes, up to 5 years.

How can I challenge a granted patent in Korea? Invali-dation Trial.

Where can I search Korean patent information in Eng-lish? http://www.kipris.or.kr; http://www.epo.org/searching/asian/korea/search.html

Where can I get an English machine translation of a Korean patent? http://www.kipris.or.kr

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FAQ_3

Where can I find legal-status information on Korean patents in English? http://www.kipris.or.kr/enghome/main.jsp

Where can I find official information about fees in Ko-rea?http://www.kipo.go.kr/kpo/user.tdf?a=user.english.html.HtmlApp&c=92004&catmenu=ek03_04_01

Can I access the documents in the file of a Korean patent application? Yes.

Where can I find information about patent agents in Ko-rea? http://www.kpaa.or.kr/kpaa/eng/index.do

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Thank You!