Ⅰ. Patents ··················································································································· 3
Ⅱ. Utility model right ······························································································· 5
CHAPTER 2 INTRODUCTION TO PATENTS ····················································· 9 SECTION 1 INTRODUCTION TO PATENTS ·························································· 9
Ⅰ. Goals of the patent system ················································································ 9
Ⅱ. Development of patents ···················································································· 10
4. Basic principles of the Patent Act in Korea ················································ 14 SECTION 2 INTRODUCTION TO PROCEDURE FOR THE PATENT ACT ··· 15
Ⅰ. Competency ········································································································ 15
Ⅱ. Power of attorney ······························································································ 18
Ⅲ. Period ·················································································································· 25
CHAPTER 3 PATENTS INVENTION ···································································· 41 SECTION 1 PATENTABLE INVENTION ································································ 41
Ⅰ. Meaning ·············································································································· 41
Ⅱ. Requirements for an invention ········································································· 41
Ⅲ. Types of invention ····························································································· 44
Ⅰ. Patentable subject matter ·················································································· 69
Ⅱ. Holder of Right ································································································· 72
CHAPTER 4 PATENT APPLICATION ·································································· 77 SECTION 1 PROCEDURE OF PATENT APPLICATION ····································· 77
Ⅰ. Meaning ·············································································································· 77
Ⅱ. General principles for patent application ························································ 77
Ⅲ. Types of Application Form for Patents ·························································· 78
VI. Withdrawal and abandonment of application ················································· 91 SECTION 2 AMENDMENT OF APPLICATION ··················································· 92
Ⅰ. Amendment system ···························································································· 92
Ⅱ. Object of amendment ························································································ 93
Ⅲ. Procedure of amendment ·················································································· 96
4. Appeal to dismissal of amendment ······························································· 99 SECTION 3 DIVISIONAL & CONVERSION APPLICATION ··························· 100
Ⅰ. Divisional application ······················································································ 100
Ⅱ. Conversion application ···················································································· 102
SECTION 4 PRIORITY ···························································································· 105
Ⅰ. Meaning ············································································································ 105
Ⅱ. Priority based on treaty ·················································································· 105
Ⅲ. Domestic priority ····························································································· 109
CHAPTER 5 PATENT EXAMINATION ······························································ 115 SECTION 1 REGIMES OF EXAMINATION ························································ 115
Ⅰ. Examination regime and non‐examination regime ········································ 115
Ⅱ. Publication of application ··············································································· 117
Ⅲ. Request for examination of application ························································ 120
SECTION 2 EXAMINATION OF APPLICATION ··············································· 125
Ⅰ. Examination ······································································································ 125
CHAPTER 6 PATENT RIGHT ··············································································· 131 SECTION 1 CREATION OF PATENT RIGHT ····················································· 131
Ⅰ. Meaning ············································································································ 137
Ⅱ. Term of a patent right ···················································································· 138
Ⅲ. Extension of the term of a patent right ······················································· 138
Ⅰ. License ·············································································································· 142
Ⅱ. Exclusive license ······························································································ 143
Ⅲ. Non‐exclusive license ······················································································· 145
SECTION 7 REGISTRATION ·················································································· 150
Ⅰ. Meaning ············································································································ 150
Ⅱ. Effect of registration ······················································································· 151
Ⅲ. Publication of registration ··············································································· 151
CHAPTER 7 IPT’S PATENT TRIAL ··································································· 155 SECTION 1 IPT TRIAL SYSTEM ········································································· 155
Ⅰ. Meaning ············································································································ 155
Ⅱ. Nature of patent trial ······················································································ 155
Ⅲ. Industrial Property Tribunal ············································································ 155
Ⅰ. IPT Trial on appeal to patent rejection, etc. ············································· 171
Ⅱ. Re‐examination of amended application ························································ 173
Ⅲ. IPT trial to invalidate patent ·········································································· 174
Ⅵ. IPT trial to correct ·························································································· 184
Ⅶ. IPT trial to invalidate correction ··································································· 188
Ⅷ. Trial to grant non‐exclusive license ···························································· 189
CHAPTER 8 PATENT LITIGATION ···································································· 193 SECTION 1 LITIGATION ON IPT DECISION, ETC. ········································ 193
Ⅰ. Introduction ······································································································· 193
Ⅱ. Relationship to civil and administrative litigation ······································· 194
Ⅲ. Types ··············································································································· 194
Ⅰ. Interest in lawsuit ···························································································· 196
Ⅱ. Period for filing a lawsuit ·············································································· 197
1. Peremptory period ························································································ 197
2. Court to file a lawsuit ·················································································· 198 SECTION 4 PRE‐TRIAL PROCEDURE ································································ 198
Ⅰ. Meaning ············································································································ 198
Ⅱ. Patent litigation and pre‐trial procedure ························································ 198
SECTION 5 TRIAL IN PATENT LITIGATION ··················································· 200
Ⅰ. Content of trial ································································································ 200
Ⅱ. Principle and procedure of trial ··································································· 200
Ⅲ. Argument by the parties ················································································· 201 SECTION 6 CONCLUSION OF LITIGATION; APPEAL ··································· 201
Ⅰ. Cause of conclusion ······················································································ 201
Ⅱ. Conclusion by other than judgment ······························································ 201
Ⅲ. Conclusion by judgment ··············································································· 203
Ⅳ. Appeal to Supreme Court ··············································································· 203
3. Scope of appeal ····························································································· 204 SECTION 7 PATENT ATTORNEY’S FEE AND COST OF LITIGATION ······ 204
Ⅰ. Meaning ············································································································ 204
Ⅱ. Patent attorney’s fee and cost of litigation ·················································· 205
PATENTS AND UTILITY MODEL RIGHT
CHAPTER 1 PATENTS AND UTILITY MODEL RIGHT
The purpose of a patent is to facilitate technological development and contribute to industrial development by protecting and encouraging invention and promoting its use, and to further the development of the industry through the invention application. In this sense, the patent system might be called a protective system for new technologies, a facilitating system for inventions, or a system which guarantees exclusive use. Therefore, a patent applicant who registers with the Patent Office, thereby disclosing his or her invention, in exchange, receives the exclusive right to control how the invention is to be used.
Not all inventions are patentable. In order for inventions to be registered as patents, they must meet the requirements for patentability, which include “subjective requirements”, “objective requirements”, and “procedural requirements” as prescribed by the Patent Act.
A. Competent inventor
An applicant for patents shall be an “inventor” or a “legal successor” to a unique invention.
B. Legal capacity
As a legal subject of exercisable right, a “natural person” and a “legal entity” shall be deemed to have legal capacity. With regard to a foreigner’s legal capacity, his or her legal capacity shall be deemed as equal to that of a Korean citizen under the equal protection clause.
Objective requirements refer to the requirements on the application of a patentable invention. The requirements may be divided into “positive requirements for patentability” and “negative requirements for patentability”. Positive requirements for patentability involve how the patentable invention shall be applied, while the negative requirements for patentability involve how the patentable invention shall not be applied.
A. Positive requirements for patentability
“Invention” under the Patent Act shall mean “a highly skilled thing or art that is a technological creation of ideas using natural laws.”
PATENTS AND UTILITY MODEL RIGHT
(2) Industrial applicability One of the purposes of a patent system is to develop industry. “Industry” shall include, but shall not be limited to, manufacturing, farming, forestry,
stock farming, and supplementary industrial fields such as transportation service, traffic business, etc. “Medical services” shall include services that involve medical treatment and examination, but shall not include preventive medical activities to human beings as defined under the scope of “Industry” as prescribed by Patent Act due to humanitarian concerns.
Novelty requires that the invention be quantitatively “different” from a previously registered invention.
(4) Inventive step
Inventive step describes the level of creativity regarding the invention and requires that the invention be a non‐obvious progression of prior Art. This requirement shall not be fulfilled if a skilled and reasonably informed person in the industry applied for an invention that serves the same purpose addressing the same issue.
B. Negative requirements for patentability
In spite of satisfying the above positive requirements for patentability, an invention that is anticipated to cause public disorder, be subject to bad moral judgment, or harm public health shall not be deemed patentable.
In order for an invention to be granted a patent, it shall satisfy the following provisions for patent application procedure as prescribed by the Patent Act in addition to the aforementioned subjective and objective requirements.
A. The procedure for the application shall satisfy the requirements indicated for the specific type of patent;
B. Filling in accordance to the application specifications shall satisfy the requirements under the rules of provisions;
C. The application shall satisfy the requirements under the scope of applications.
PATENTS AND UTILITY MODEL RIGHT
Ⅱ. Utility model right
Most countries incorporating an industrial property right system have placed only technological creation of ideas under protection of patent laws. But several countries, including Germany, have enacted utility model laws, aside from patent laws, protecting technological creation of ideas pursuant to dual legal systems. Accordingly, the Korean Patent Act and Utility Model Act are closely related to each other and similarly reflect laws from other legal systems.
The German utility model system was established to supplement their patent system. Before implementing its utility model system, Germany did not grant exclusive rights to reformation inventions or micro‐inventions under its original patent system. Therefore, Germany decided to recognize, thereby protecting and encouraging, micro‐inventions of small and medium sized businesses or individual inventors. As a result, several other countries implemented various utility model systems to supplement their respective patent systems
1. Consistency to Patent Act
The Korean Utility Model Act shares principles with the Patent Act. Like the Patent Act, the Utility Model Act aims to facilitate technological development and contribute to industrial development by protecting and encouraging the technological creation of ideas and promoting its use. They, however, differ in the level of creativeness required. The Patent Act protects highly skilled and technical designs and arts, while the Utility Model Act protects creations that are less skillful and technical in nature.
The Utility Model Act and the Patent Act share many rules and requirements including, “first‐to‐file” principle, drawing system, amendment and refusal of amendment system, claim of priority system, local claim of priority system, public notification of registration and opposition to the grant of registration system, compulsory license system and ruling system, rights appropriation system, rights revocation system, request for a trial system, application division system, claim of patent multinomial system, rights infringement system, and reexamination and final appeal system. The Utility Model Act also applies the penal provisions when the following criminal acts have been committed: criminal infringement, false testimony, intentional fictitious declaration, disclosure of secrets and fine for negligence imposition, etc. Accordingly, the provisions of the Patent Act shall be applied mutatis mutandis to the Utility Model Act in its major parts.
A. Objects of protection
“Invention” is classified into invention related to ‘a thing’ and invention related to ‘a method’. Further, ‘a thing’ is divided into ‘an article’, which has a certain form or style and ‘a material’, which does not have a certain form or style. The Patent Act
PATENTS AND UTILITY MODEL RIGHT
covers all inventions as ‘a thing’ and inventions as ‘a method’, whereas the Utility Model Act protects utility design related to ‘a thing’ classified as ‘an article’. ‘Materials’ such as agricultural chemicals, medicine, DNA structure, microorganism, fiber optics, and cement creation shall be protected under the Patent Act and not under the Utility Model Act.
B. Requirements for registration
Both registration for patentability of invention and registration for utility design require the fulfillment of industrial applicability, novelty, and the inventive step. Note that the Patent Act has a higher requirement for the inventive step than the Utility Model in light of the prior art.
C. Term of rights and its extension
The term for patent rights and utility model rights differ from each other. The term of rights for patents shall take effect on the registration date lasting for a twenty‐year period, while the term or rights under the utility model shall take effect on the registration date as well, but lasting for a shorter term of ten years.
D. Applications and the examination procedure
The application and examination procedures differ amongst the Utility Model Act and the Patent Act on the following points.
E. Requirements for rights license
The Patent Act and the Utility Model Act differ in that the former protects inventions and the latter protects utility designs. The Utility Model limits the right of licensing to cover only production, use, assignment, lending, or import of an article, or engagement into assignment or lending of said article.
INTRODUCTION TO PATENTS
CHAPTER 2 INTRODUCTION TO PATENTS
SECTION 1 INTRODUCTION TO PATENTS
Ⅰ. Goals of the patent system
The purpose of a patent system is to promote the industrial development of the nation in order to effectively protect “inventions” among industrial property rights. For this purpose, an inventor will be granted exclusive licensing rights in exchange for his or her disclosure of such invention to the Patent Office which will promote technological development and ultimately contribute to the nation’s industrial development. Each country’s system varies depending on their respective industrial policy. However, the basic mechanism where a grant of exclusive license is exchanged for disclosing an invention thus allowing a third party to utilize it according to a legal procedure is the same everywhere.
The Patent Act of Korea states in Article 1 “the purpose of this Act is to facilitate technological development and contribute to industrial development by protecting and encouraging invention and promoting its exploitation.” This indicates that “protection for invention” and “inventive application” are two cornerstones that are necessary for the purpose of industrial development.
Article 22 Paragraph 2 under the Constitution of the Republic of Korea states that “the rights of authors, inventor, scientists, engineers and artists shall be protected by the Acts.” Protecting the ownership rights in the manufacturing industry are prescribed by related Acts. The Acts provide substantial protection for inventions, as well as processes that are deemed patentable under the Patent Act as a property right for a certain period of time.
An inventive application requires the disclosure of an invention to the public in return for its protection and enablement of a third party to freely avail himself of such invention for the purpose of research. An inventive application shall consist of the “disclosure of invention” and the “inventive license.”
INTRODUCTION TO PATENTS
A. Disclosure of invention
A person who pursues ownership for inventive rights shall submit certain contents of the invention to the government in order to obtain a grant of exclusive license to such invention. The contents of the invention shall be disclosed to the public unless an extraordinary circumstance exists. The Patent Act implements an open applications system and a public notification of registration system as a means of disclosure of invention. Such patents are disclosed by publication issued by the Korean Intellectual Property Office.
B. Inventive license
To obtain a patent, an inventor is always obligated to disclose the invention. But, under certain circumstances, an inventor may also be obligated to offer an inventive license to third parties. An inventive license includes, but is not limited to, his own license and licenses allowing third parties to use the invention for a certain price. Accordingly, most countries incorporating a patent system have stipulated provisions for controlling licenses under certain conditions for public interest reasons.
Ⅱ. Development of patents
1. Introduction of patents
In Korea, Seok Young Ji was the first to propose the idea of a patent system in his memorial speech to the government in 1882. However, Korea did not create a patent system until much later when the country received pressure from the rest of the world to establish a patent system.
Japan came to rule Korea after winning the China‐Japan War and Russia‐Japan War. On August 12, 1908, Japan and the United States entered into and promulgated the U.S.Japan Treaty addressing protection of invention, design, trademark and copyright for the purpose of protecting their respective homeland technology. A patent system was introduced through the Korea Patents Order (Japan Emperor Order 196). On August 29, 1910, the Korea Patents Order was abrogated after Annexation, and the Japan Patent Act was directly implemented in Korea.
In 1945, Japan was defeated in World War II and Korea regained independence. The Patents Administrative Incorporation Committee was founded on January 4, 1946. Shortly thereafter on January 22nd, the ‘Patents Office’ was established pursuant to Order 44,
U.S. Martial Law. On October 5, 1946, along with the inauguration of the first Commissioner of the Patent Office, the Patent Act was enacted and promulgated pursuant to Order 91, U.S. Martial Law. Thereafter, on October 15, 1946, the Local Rule, the Patent Act was promulgated, and a legal system for industrial property rights protection including the Utility Model Act and the Design Act was formed.
INTRODUCTION TO PATENTS
2. Enactment and amendment of the Patent Act
INTRODUCTION TO PATENTS
INTRODUCTION TO PATENTS
A. Background of system renovation
Ever since the “1946 Patent Act” which was enacted pursuant to Order 91, U.S. Martial Law after liberation on October 5, 1946, a patent‐related litigation system has established itself through the Korean Intellectual Property Office; the system allows trial at the Trial Court and the Appellate Court, then the final decision was made in the Supreme Court. However, a decision to refuse and a trial decision by the Korean Intellectual Property Office, in spite of being an administrative measure, was not allowed to appeal on a ruling from a High Court, but, instead, had to institute a final appeal to the Supreme Court according to the structure illustrated above. On the ground that such rights to judgment as guaranteed under the Constitutional Law was infringed, an action was called to the Constitutional Court on September 28, 1995 for violation of the Constitution with regard to 1992 Patent Act, specifically in violation of Article 186 Paragraph 1 of the Constitution. The Constitutional Court ruled that there was a violation of the Constitution with respects to the Patent Act’s Article 186 Paragraph 1. Accordingly, on January 5, 1995, the Patent Act was amended mainly having a focus on the revision of the patent litigation system; the Amendment was made effective on March 1, 1998.
B. Major description
(1) Change of structure
The Trial Court of the Korean Intellectual Property Office previously took charge of first trial, the Appellate Court of the Korean Intellectual Property Office presided over the second trial, and the Supreme Court took charge of the third trial. The Trial Court and the Appellate Court were abrogated. And the newly established Intellectual Property Tribunal of Korean Intellectual Property Office took over the first trial, the Patent Court took over the second trial, and the Supreme Court has handled all unresolved issues. However, since the trial decision of the Intellectual Property Tribunal is not a court decision, the patent litigation system has actually adopted a dual trial format through the Patent Court and the Supreme Court.
(2) Establishment of the Intellectual Property Office
The Trial Court and the Appellate Court of the Korean Intellectual Property Office have been integrated. Also under the Korean Intellectual Property Office, the independent agency called the Intellectual Property Tribunal has been established, thus adjusting the Commissioner of the Korean Intellectual Property Office to that of the President of Intellectual Property Tribunal with respect to the operation of the patent appeals system.
INTRODUCTION TO PATENTS
(3) Establishment of the Patent Court
The Patent Court shall be established at the level of a High Court in the Ministry of Justice and have an original jurisdiction over actions concerning objections to trial decisions and rulings of the Intellectual Property Office.
A. Principle of the right
Principle of the right means that an inventor has a right to obtain patents according to the Acts, and the government enforces this right following the system in place. Korea prescribes an inventor as a “patentable person” under the Acts declaring the principle of the right.
B. Substantive examination
The method to grant a patent shall be comprised of a non‐substantive examination and a substantive examination. A non‐substantive examination is a system in which formal methodological requirements apply to patents and to grant patentability. A substantial examination with regard to validity of patents shall be decided by the court at the time of inurement of a patent dispute. Substantive examination is a system in which substantial examination occurs in respect to the prerequisites for patentability. Korea has adopted the principle of substantive examination.
C. Prior right system
In cases where patent applications conflicted over identical inventions, the “first‐to‐invent” principle grants the first inventor patents; the “first‐to‐file” system grants patents to the first applicant irrespective of when the invention was actually completed. The “first‐to‐invent” principle protects the prior inventor and is desirable in promoting invention. However, procedurally, it is difficult to determine priority of completion of invention with this system. On the other hand, the “first‐to‐file” system protects the prior applicant and it is favored in promoting invention publication. At present, most countries, including Korea, have adopted the “first‐to‐file” system.
D. Laying open of application
Laying open of application is a system that publicizes an invention as applied after the lapse of the time limit from the application date for patents irrespective of whether or not the patent is granted to application, which mainly aims to promote inventive application and to prevent abuse of substantive examination.
INTRODUCTION TO PATENTS
E. Application for substantive examination
The Patent Act introduced a patent application for examination system requesting substantial examination aside from the application itself, through substantial examination as processed by the order of applications for examination. The purpose of this system is to correct disadvantages of applicants and the third party by eliminating backlogging of examinations.
F. Public notification of registration and a system of oppositions to the grant of patents
The Office shall grant patents to patentable invention unless any cause of rejection is a result of substantial examination. When the patent is registered, anyone may take opposition to the grant of registration within three months of the public notification of registration date to minimize inefficient rights through cooperation by the public forum.
G. Registration system
Patents shall be inured by registration. Accordingly, patents shall be inured when one is entitled to a grant of a patent, pays a certain fee amount, and goes through the registration procedures. In addition, in cases where the right inures to change after patent registration, one can oppose a third party only after one registers the right.
SECTION 2 INTRODUCTION TO PROCEDURE FOR THE PATENT ACT
“Legal Capacity” describes the position or qualification of a subject’s rights. Since not all legal competent persons are able to acquire rights or bear obligation, we rely on one’s competency to understand and determine intention to show that a legal competent person expresses “mental capacity”. Accordingly, a declaration of intention made by a person lacking mental capacity shall not be granted legal effect. However, to address the realistic issue of deciding mental capacity, the “incapacity system” was introduced within the scope of “legal action related to property”, which aims to protect incompetent persons by revoking their actions without confirming whether they act with mental capacity or not.
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A person may be considered either incompetent or competent in describing capacity. Accordingly, capacity means a position or a qualification who is solely entitled to valid legal action. Civil Code does not provide for capacity, however, such terms as competency, competent person, incompetency, incompetent person are related to capacity. Accordingly, the Patent Act prescribes capacity of incompetent person under Article 3 of the Act.
B. Incompetent person under the Patent Act.
(1) Incompetent person system
(a) Legal action taken solely by an incompetent person can be revoked and may not be revoked if the incompetent person stands favorable with the action. But once it is revoked, it shall be invalid retroactively, whose absolute effect of invalidity shall influence all parties thereof. This incompetent person system is frequently acted in common, and it shall be applied only to “legal action related to property” using declaration of intention as a determining factor.
(b) Civil Code prescribes the following persons as incompetent persons:
(2) Incompetent person under the Patent Act
The Patent Act prescribes “Minors” as a person of quasi‐competency or a person of incompetency who shall not apply for patents without a legal representative. However, it shall not be applicable to such cases where minors and a person of quasi‐competency are deemed to take legal action independently. This is pursuant to the incompetent person system of the Civil Code found in Paragraph 1, Article 3 of the Act, which prescribes that an incompetent person can only apply for the procedures for patents through legal representatives.
(3) Authority of legal representative
The scope of power of attorney shall be prescribed by the provisions of the Act. Article 950 from the Civil Code states that, in order to protect an incompetent person from arbitrary actions of his legal representative, the legal representative will be able to represent incompetent person in the procedural act with consent of a family meeting, and the actions of the legal representative in violation of this regulation can be revoked
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by the family meeting. On the other hand, Paragraph 2, Article 3, Patent Act prescribes that the “legal representative of Paragraph 1 shall be able to take action regarding opposition for patent proceedings for trial or reexamination by a third party without a consent of a family meeting.” This indicates that a legal representative shall be able to take proceedings regarding opposition for patent trial or reexamination by a third party for passive‐relative procedural acts between parties without a consent from a family meeting.
(4) Ratification by a legal representative
“Legal Capacity” or “Legal Character” means a position or a qualification that can be the subject of rights. In the Civil Code, a person that is the subject of rights of legal capacity is a human being – “natural person” or a certain group, association or foundation – “legal entity”. The provisions of litigation party competency of an unincorporated association or foundation that is substantially an association or a foundation, but fails to obtain authorization by the competent authorities or go through registration of establishment shall not be prescribed in the General Provisions of the Civil Code, but in Article 48, Civil Procedure Act. In the Patent Act, one must have legal capacity in order to be the subject of rights related to a patent‐related procedure and a patent right.
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B. Legal capacity of an association, etc, not in case of legal entity
Article 4 of the Patent Act prescribes “in cases where a representative or a manager is determined as an association or a foundation, not a legal entity, a person shall be able to apply for examination, oppositions to the grant of a patent, apply and defend a trial decision or apply and defend for reexamination in the name of its association or foundation.” This means that anyone entitled to apply for an examination and oppositions to the grant of patents within a set period of time, and the fact that an association or a foundation, not a legal entity is prescribed to be entitled to be a party in trial or reexamination has the same purpose prescribed in the Article 48, Civil Procedure Act “as an association or a foundation, not a legal entity, a representative or patent manager can be a party in its name.”
C. A foreigner’s legal capacity
Ⅱ. Power of attorney
Effect of legal action shall be inured to a person who declares the intention to utilize power of attorney. However, in a system of “power of attorney”, the legal effect is ascribed to the third party, not the person who declared the intention. This power of attorney was not allowed in ancient Roman or German law. But in the 17th century, Germany developed an “agreement for the third party” theory which is now known as the power of attorney. The concept of power of attorney has been admitted as an independent legal system and is allowed in all legal action except for ‘status‐related legal action’ where one demands sole and absolute decision‐making power. Accordingly, the power of attorney separates a person with legal action or declaration of intention from a person
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who receives such legal effect. The effect of representation by power of attorney shall totally belong to him or her.
The provisions regulating the power of attorney can be found in the Patent Act under Article 3, legal power of attorney, Article 5, patent manager system by nonresident nationals, Article 6 to 10, the scope, authenticity, non‐distinguishment of power of attorney, and individual agent and replacement. In addition, the Civil Procedure Act shall apply mutatis mutandis to matters not related to Article 12 of the Patent Act unless otherwise described with regard to an agent specifically prescribed in the Patent Act.
An agent under the Patent Act can be divided into a “legal representative” or a “temporary substitute” pursuant to the type of inurement.
A. Legal representative
A legal representative is a person who holds power of attorney pursuant to the provisions of the Patent Act regardless of the intention of the principal. Parents who are persons having paternal right (Article 909, Article 911, Civil Code) or guardians (Article 928, Civil Code) shall be legal representatives under the positive law with regard to minors among incompetent persons and guardians (Article 929, Article 938, Civil Code) with regard to person of quasi‐competency or person of incompetency.
Paragraph 1, Article 3 of the Patent Act states that “minors, person of quasi‐competency or person of incompetency, unless otherwise through a legal representative, shall not go through the procedure for application for a patent for others. However, this shall not be applicable to such cases where minors and a person of quasi‐competency are deemed to take a legal action independently”, which prescribes that incompetent persons can and shall take the procedure for patents only through a legal representative.
(2) The scope of power of attorney
The scope of power of attorney shall be prescribed by the provisions of the Patent Act. Article 950 of the Civil Code regulates that, in order to protect an incompetent person from arbitrariness of a legal representative, the legal representative may represent an incompetent person in the procedural act with consent of a family meeting, and the actions of a legal representative in violation of the above regulation can be revoked by the family meeting. On the other hand, Paragraph 2, Article 3 of the Patent Act states that the “legal representative of Paragraph 1 shall be able to take proceedings regarding opposition for patents, proceedings for trial or reexamination from the other party without a consent of a family meeting.” This indicates that a legal representative shall be able to take proceedings regarding disadvantageous acts against an incompetent person without consent from a family meeting.
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B. Temporary substitute
Temporary substitute refers to the case when a principal grants power of attorney to another. Temporary substitute can be divided into a “non‐exclusive agent” and a “patent manager” depending on whether the principal has his or her own address or a place of business.
(1) Non‐exclusive agent
Non‐exclusive agent refers to a “patent manager” under the Patent Act and an agent of a person who has his or her own address or place of business.
(b) The scope of temporary substitute
The scope of temporary substitute is determined through “conferred power” of the Patent Act stating that the principal grants the agent power of attorney. A non‐exclusive agent, unless otherwise conferred power as prescribed by Article 6 of the Patent Act, shall have a right to take a patent‐related procedure. Matters related to specially conferred power needing confirmation of individual intention of the principal are provided for as “applications abandonment, withdrawal, withdrawal of application for registration of extension of term of patents, patents abandonment, withdrawal of application, withdrawal of a request for a trial, claim of priority or its withdrawal prescribed under Paragraph 1 of Article 55, a request for a trial or appointment of sub‐agent prescribed under Article 132‐3.”
(2) Patent manager
The Patent Act provides for a patent manager system for smooth patents procedures for nonresident nationals. A patent manager is a person who has an address or a place of business in Korea as an agent with respect to patents of nonresident nationals among temporary substitutes. Nonresident nationals shall not take part in a patent‐related procedure or bring an action against measures taken by the administrative agency regarding the Patent Act or orders pursuant to the Patent Act without a patent manager (Paragraph 1, Article 5 of the Act).
The current Amendment Act prescribes that the patent manager shall be able to represent all procedures with respect to patents within the conferred scope of representation. It shall have a general right unlike a non‐exclusive agent even in the act of following the principal’s disadvantage. And, without specially conferred power, it can represent disadvantageous acts such as a withdrawal of applications or a withdrawal of a request for a trial (Paragraph 2, Article 5 of the Act).
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For example, if the scope of power of attorney says, in the blank of delegating power of attorney, “whole cases with respect to ○○ applications of the court”, it shall be deemed that it is included in specially conferred power issues.
The effect of representation of power of attorney shall belong to the principal, therefore, power of attorney of a person who has taken a patent‐related procedure including patent manager shall be provided in written form (Article 7 of the Act).
Documents that approve power of attorney of a legal representative shall consist of an extract or a copy of the domiciliary register, an extract or a copy of registration of incorporation, and documents to approve temporary substitute include a power of attorney or other arrangements approving conferred power, etc.
In cases where a person has not approved power of attorney to initiate a patent‐related procedure, the Commissioner of the Korean Intellectual Property Office, the President of the Intellectual Property Tribunal or a presiding trial examiner shall order an amendment by indicating a certain period to prove power of attorney in a written form. In cases where a person fails to provide such an amendment order, he shall be liable to invalidity of the procedure for the year or be forced to dismiss his request for a trial (Article 16 of the Act, Article 141 of the Act).
B. In a case of individual power of attorney
In cases where a person initiates a patent‐related procedure through an appointed power of attorney, he shall submit a power of attorney in an attached form to report of power of attorney appointment.
However, appointment report shall not be submitted in cases where an agent submits an application form for patents, oppositions form to the grant of patents, application form for a trial. reapplication for examination report or written reply attaching a power of attorney in cases of applications, oppositions to the grant of patents, request for a trial, reapplication for examination or reply to oppositions to the grant of patents, request for a trial, reapplication for examination (Paragraph 2, Article 5, Local Rule).
C. In a case of general power of attorney
In cases where a patent‐related procedure is initiated by an agent, and he would like to grant a general power of attorney without specifying the cases in advance with regard to present and future issues, he shall submit an application for a general power of attorney registration together with a general power of attorney to the Commissioner of the Korean Intellectual Property Office. The Commissioner of the Korean Intellectual Property Office
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will give a general power of attorney registration number and notify its number to the applicant for general power of attorney registration.
Requirements under the general power of attorney registration include entering the general power of attorney registration number onto the documents submitted to the Korean Intellectual Property Office or Intellectual Property Tribunal without the need to include additional proof of power of attorney. However, such procedures of general power of attorney will not be allowed in oppositions to the grant of patents and trial (except for a trial against decision to refuse a patent or decision to revoke a patent). Therefore, the provisions of individual power of attorney shall apply mutatis mutandis to matters related to the application for a general power of attorney registration.
An agent by power of attorney who initiates a patent‐related procedure of the Patent Act shall, in spite of problems to the principal himself, maintain continuity of the procedure. And for swift‐smooth proceedings of administrative procedure, application of non‐distinguishment of power of attorney of litigation under Article 86 of the Civil Procedure Act shall be applied mutatis mutandis.
B. Cause of non‐distinguishment of power of attorney
The power of attorney of an agent shall not be extinguished even if the following causes inured to the principal or a legal representative who delegated a patent‐related procedure.
If there are multiple agents of a person who initiate a patent‐related procedure, each person represents the principal with regard to the Korean Intellectual Property Office or Intellectual Property Tribunal (Article 9 of the Act). Accordingly, in cases where there are several agents, any of the procedures initiated between the Korean Intellectual Property Office and an agent shall be deemed valid, and documents shall be transmitted to any one of the several agents.
The actions of the several agents may contradict or collide with each other. In cases where the contradictions occur at the same time, none shall be valid. However, in cases
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where it happens at a different time, if the proceeding act can be withdrawn, its act shall be withdrawn by the subsequent act. Likewise, if the proceeding act cannot be withdrawn, the subsequent act shall have no effect.
In cases where it is deemed that the Commissioner of the Korean Intellectual Property Office or a presiding trial examiner determines, in its sole discretion, that a person who initiates a patent‐related procedure is not expected to appropriately carry out its procedure or he will not be able to carry out its procedure smoothly or express his own opinions at oral hearing, he shall be able to order to carry out such procedure by the agent. (Paragraph 1, Article 10 of the Act) In cases where it is deemed that the agent of a person who initiates a patent‐related procedure is not expected to appropriately carry out its procedure or he will not be able to carry out its procedure smoothly or express his own opinions at oral hearing, then he shall be able to order a replacement for the agency (Paragraph 2, Article 10 of the Act).
The Commissioner of the Korean Intellectual Property Office or a presiding trial examiner, after ordering appointment or replacement of power of attorney, shall be able to invalidate a patent‐related procedure related to the Korean Intellectual Property Office or Intellectual Property Tribunal taken by a person who initiates a patent‐related procedure prior to appointment or replacement of power of attorney or an agent prior to replacement.
The term “common representative” means a person who is reported to be a party in a written form to represent multiple parties initiating two or more patent‐related procedures. In this sense, the procedure will be simpler than that in taking two or more patent‐related procedures at the same time. A representative of multiple parties is similar in its legal characteristics of a party designated under Article 49 of the Civil Procedure Act, however, differing in that it represents multiple parties.
B. Capacity of multiple parties
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C. Common representative
(1) A representative
In a case of initiating two or more patent‐related procedures, each multiple party shall appoint its own representative in taking action on behalf of each multiple party. In cases where the parties would like to appoint and report a representative out of multiple parties with the number of reported representatives, the representative shall only be entitled to the procedure.
(2) The right of a representative
A common representative shall have the position of the principal and a representative of other parties concurrently; it shall be entitled to the procedure of representing all of parties commonly. A procedural act representing other parties shall be enabled within a scope that is allowed by each representative. Accordingly, in cases where one initiates the procedural act as illustrated in Paragraph 1, Article 11 of the Act, one shall obtain an agreement of the other party.
Special venue for nonresident nationals is prescribed in Civil Procedure Act Article
9: “a trial related to a property right without an address or without a known address in the Republic of Korea shall be brought in the court with the jurisdiction of purpose for a request for a trial or object of mortgage or seizable address of a property of a defendant.”
Accordingly, a trial against a patent or the patent right of nonresident nationals shall be brought:
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Due date indicates a certain period. Period means continued time from a certain designated point of time to another certain designated point of time. The calculating method of period shall be normally determined pursuant to Civil Code (Article 155‐Article 161), however, the Patent Act prescribes another period calculating method (Article 14 of the Act), therefore, this act shall be given preference over other Acts.
2. Types of period
A. Legal period
Legal period refers to the period pursuant to the relevant Act, and may include the extension period (Paragraph 1, Article 15 under the Patent Act) or an additional period (Paragraph 5, Article 186 under the Patent Act). The legal period shall not include any arbitrary length of time. Legal period under the Patent Act shall include, but not be limited to, a deadline for submission of certificates in cases of being deemed an invention without public announcement (Paragraph 2, Article 30 of the Patent Act), an altered applications period (Paragraph 1, Article 53 of the Act), an application period for examination for patents (Paragraph 2, Article 59 of the Act), etc.
B. A designated deadline
A designated deadline refers to the time determined pursuant to the Patent Acts deemed necessary to carry out the procedure by the Commissioner of the Korean Intellectual Property Office, the President of Intellectual Property Tribunal, and a presiding trial examiner or examiner. A designated deadline under the Patent Act shall include, but not be limited to, a consultation order period for identical applications (Paragraph 6, Article 36 of the Act), a procedural amendment period (Article 46 of the Act), and a written argument for deadline submission (Article 63 of the Act), etc.
3. Calculating method for period
Calculating method for period is divided into “natural calculating method” that exactly calculates the natural time flow from one moment to another moment and “calendar calculating method” calculates the time pursuant to the calendar time. In addition, the calendar calculating method is classified into “extensive calculating method” that extends a substantial period by excluding the beginning day and “contractive calculating method” refers to contracting a substantial period by including one day. The Patent Act adopts the former, “extensive calculating method”, as a base, although the latter is exceptionally accepted.
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A. Day on which computation begins (Paragraph 1, Article 14 of the Act)
The Patent Act adopts the extensive calculating method, which excludes the beginning day in the counting period. In rare cases, however, where the period begins at 12:00 a.m., the beginning day is included. For example, in cases where a written argument deadline for submission is June 10, 2001, the period shall be 12:00 a.m., June 11, 2001 that is calculated to be extended in a case of an application for extension of the period.
B. Day of expiration
In cases where a person initiates a patent‐related procedure and is unable to perform the procedural act during the allotted period, he shall lose the opportunity to take such act. However, an extension of a patent term system is available for the protection of
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an inventor for the benefit of a person who initiates a patent‐related procedure residing in an area that is remote or difficult to access or is not expected to take such act within a set period of time (Article 15 of the Act).
B. Period of subjection of extension
(1) Legal period
The Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may extend the following period by ex officio determination or by a party’s application for the benefit of a person residing in an area that is remote or difficult to access.
(2) A designated deadline
A designated deadline indicates that a written argument for a deadline for submission shall be within two months as pursuant to Article 63 of the Act. An amendment period shall be one month as pursuant to Article 46 of the Act as a rule. However, the extension or contraction of a designated deadline may be offered if necessary. At this time, in cases where the Commissioner of the Korean Intellectual Property Office, the President of Intellectual Property Tribunal, a presiding trial examiner or examiner determine the period for a patent‐related procedure, it may ex officio or by a party’s application determine an extension or a contraction.
C. Extension of the procedure
A person who would like to receive a legal period or a designated extension of a period shall pay the required fee for an application form for extension of a patent term as prescribed by Paragraph 2, Article 16, Local Rule of the Patent Act prior to the expiration of the original term and submit it to the Korean Intellectual Property Office. Where the application form is submitted after the lapse of the set period, extension of a patent term shall not be approved.
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Ⅳ. Introduction to the procedure
1. The effects of the procedure
A. Period of enter into force
(a) Delay and loss of the mail
Where an applicant submits documents by registered mail with regard to international applications submitted to the Commissioner of the Korean Intellectual Property Office which fails to be delivered due to delay or loss of the mail within the deadline for submission, he may submit proof that he already submitted documents by mail within five days prior to the deadline for submission to the Commissioner of the Korean Intellectual Property Office (Paragraph 1, Article 86, Local Rule, Patent Act). Submission of evidence shall be made within one month as of the day that an applicant is aware of a delay of a document’s arrival or the day that he could have been aware of the fact if he had paid considerable attention, but it shall be submitted within six months from expiration of a deadline for submission for the documents. In cases where it is deemed that the documents couldn’t arrive within a deadline for submission due to a delay or loss of the mail as seen from the submitted evidence, the documents shall be presumed to be regarded as submitted within the deadline for submission (Paragraph 2, Article 86, Local
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Rule, Patent Act). Note that the documents may be delivered via air mail. In addition, in cases where it is clear that it usually takes more than three days to arrive if otherwise by a method other than air mail and the documents are not delivered via air mail, it shall not be deemed to arrive within the deadline for submission (Paragraph 3).
(b) Suspension of postal service
Where an applicant submits documents with regard to international applications to the Commissioner of the Korean Intellectual Property Office and the documents fail to arrival within a deadline for submission due to suspension of postal service as a result of war, revolution, riot, strike, natural disaster or other similar accidents in the locality or a place of stay belonging to an address or a place of business of applications or its power of attorney, applications may submit evidence to the Commissioner of the Korean Intellectual Property Office. Submission of evidence shall be made within one month from the day that an applicant is aware of the delay of the document arrival or the day that he could have been aware of the fact if he had paid considerable attention, but it shall be submitted within six months from the expiration of a deadline for submission of the documents. Where it is deemed that the reason the documents failed to arrive within a deadline for submission arrival was due mainly to delay by the postal service as seen from submitted evidence, an applicant may prove he delivered the documents within five days of recovery from the postal service, the documents shall be presumed to be submitted within the deadline for submission.
B. Succession of effect
The effects of a patent‐related procedure or other a patent‐related right extends to the successor in title. The effects of the procedure includes not only the effects of the procedures that a party initiates to the Korean Intellectual Property Office but also the general procedures the Korean Intellectual Property Office initiates to a party.
C. Continuation of the procedure
Where a patent‐related procedure continues in the Korean Intellectual Property Office or Intellectual Property Tribunal and application for transfer of a patent‐related right is made, the Commissioner of the Korean Intellectual Property Office or a presiding trial examiner may continue its procedure for a patent‐related right with its successor and with the notification to the party in a written form.
2. Invalidity of the procedure
Invalidity of the procedure occurs when the procedure effective retroactively loses its effects of a patent‐related procedure initiated to the Korean Intellectual Property Office
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or Intellectual Property Tribunal due to defection from regulation. The Patent Act prescribes the provisions related to the amendment of defective procedure within a period ruled by the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal. If the defect fails to be amended within a certain period of time, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall, in its own discretional administrative act, make a decision to invalidate the procedure.
A. Subject of amendment order
(1) In violation of the provisions of Paragraph 1, Article 3 of the Act (capacity of Minors, etc) or Article 6 (the scope of power of attorney)
In cases where an incompetent person without capacity such as minors, person of quasi‐competency or persons of incompetency, initiates a patent‐related procedure without a legal representative for patent‐related procedure, or an agent initiates a patent‐related procedure of applications for patents abandonment, withdrawal of application, withdrawal of a request for a trial, local claim of priority or its withdrawal, decision to refuse a patent, a request for a trial for a decision to revoke a patent or refuse an application to extend the term of a patent right or a decision to refuse a patent or appointment of sub‐agent without especially conferred power of the principal, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may order a procedural amendment by designating a deadline. If no such legal amendment is made within the designated deadline for legal amendments, the procedure may be invalid.
(2) In violation of type
A patent‐related procedure shall observe the provisions as prescribed by the Patent Act, and any violated procedure shall be ordered to amend. If no such legal amendment is made within a designated deadline of legal amendment, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall make the procedure for amendment invalid.
(3) In cases of not paying the fee
An applicant who initiates a patent‐related procedure shall pay the required fee, however if the applicant fails to pay within the set period of time, the procedure shall be invalid. In cases where a person, not an applicant for patent, applies for examination and then amends the application and therefore adds claims for a patent, an applicant shall pay an application fee for examination per its increased claims for a patent. If the application fee for examination fails to be paid within set period of time, any amendment to the specification shall be invalid.
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B. Remedies for disposition of invalidity
3. Subsequent completion of the procedure
In cases where a person initiates patent‐related procedure and is delayed without following the procedural act during the specified act period, he shall lose the opportunity to take such act. However, it may be deemed harsh and unfair that the applicant lose such an opportunity due to “non‐ascribable reasons.” Therefore, the procedure that is not performed within a certain period can be subsequently be completed through remedies as prescribed by Article 17 of the Act.
A. Reasons of subsequent completion
Subsequent completion shall be restricted to cases with “non‐ascribable reasons of a person who has taken a patent‐related procedure.” These reasons include, not only natural disaster or force majeure, but any other reasons that could not have been avoided even if they paid utmost attention and with full capacity.
B. Subject of subsequent completion
The period of subsequent completion under the Civil Procedure Act shall be restricted to a peremptory period as stipulated in the provisions of a legal period, and the rest of the period shall not be subject to a subsequent completion. Where for the same purpose, a person who has taken a patent‐related procedure fails to observe due to non‐ascribable
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reasons a request for a trial period prescribed under Article 132‐3, the application period for reexamination prescribed under Paragraph 1, Article 180 of the Patent Act, the subsequent completion may be admitted.
C. The procedure for subsequent completion
An applicant shall apply for a subsequent completion within 14 days of extinguishment of the reasons. However, the application must be within one year following expiration of its original period. A person applying for it shall submit:
Suspension of the procedure may occur and may be differentiated from when a procedure is substantially stopped as a result of applying for an extension of a patent term. Suspension of the procedure shall be needed in cases where a party might not be able to participate in the proceedings of procedure if the Korean Intellectual Property Office or Intellectual Property Tribunal continues regardless of the death of the principal, the merger between legal entities, extinguishment of the power of attorney, and so forth which makes a party incapable of carrying out the procedure. Suspension of the procedure consists of interruption of the procedure and suspension of the procedure. Interruption of the procedure means that proceedings of a legal procedure is stopped until a new party shows up and performs where a party may not be able to perform the procedure due to certain reasons.
Suspension of the procedure is logically stopped due to legal reasons or the Korean Intellectual Property Office decides the procedure should be stopped in cases where the Korean Intellectual Property Office or Intellectual Property Tribunal encounters unexpected issues that may impede proceedings. Accordingly, if reasons for interruption of the procedure occur, a person who carries out the procedure may be accompanied by a replacement. On the other hand, in cases of a suspension of the procedure, a person who carries out the procedure may not be accompanied by a replacement.
A. Interruption of the procedure
(1) Reasons for interruption Interruption of the procedure may occur due to the following legal reasons.
(a) In the case of the death of the principal
Where a party dies in the process of the procedure, or is presumed to be dead based upon a missing report, the procedure is interrupted until a successor takes over the
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procedure. A qualified successor shall be a person who should continue the procedure by succession as a property manager or the person who can continue the procedure as pursuant to the Act. However, a successor shall not resume its procedure until the successor abandons its succession. Accordingly, where a successor abandons succession within a deadline for abandonment, the procedure will finish without interruption.
(b) In the case of extinguishment of the principal or legal entities due to a merger, the procedure shall be interrupted. However, in the case of liquidation of a legal entity due to reasons other than a merger, an interruption shall not occur since a liquidated legal entity still exists. Accordingly, rights and obligations of a legal entity shall be interrupted where a legal entity is newly established pursuant to the Act. A legal successor shall be a new legal entity in cases where a new legal entity is established due to a merger.
(c) Where the principal loses capacity to initiate the procedure
A party may lose capacity to perform actions where he is adjudicated to quasi‐competency, incompentency, or a loss of mental capacity. Accordingly, a person or a legal representative who recovers competency to initiate the procedure shall resume its procedure.
(d) In cases of the extinguishment of a legal entity of the principal due to a merger
A party shall not alter itself. However, the procedure shall be interrupted in cases where power of attorney is lost in cases of the death of a legal representative or suspension of in‐service execution, and a party or a legal representative who recovered competency to initiate the procedure shall resume its procedure.
(e) In the case of the termination of the duty of trust of the principal
This refers to the termination of the duty of the principal as pursuant to the Trust Act where a new trustee shall resume the procedure.
(f) In the cases of the death of a common representative or loss of its qualification as prescribed under Paragraph 1, Article 11
In cases of reporting a common representative to the Korean Intellectual Property Office, a representative shall only initiate the procedure. However in cases of the death of a representative or loss of qualification, the procedure shall be interrupted, and a new representative or each party shall resume the procedure.
(2) Exceptions to interruption
Except for the above reasons for interruption of the procedure, the proceedings of procedure shall continue without extinguishment of its power of attorney in order to protect a profit of a successor in cases where there is an agent to a party who triggered an interruption. Since an agent may become an agent of a new party without the procedure for resumption,
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the procedure for litigation shall not be interrupted for the above reasons of interruption.
(3) Settlement of interruption
Interruption of the procedure may be solved by application for a resumption by a party or resumption order by the Commissioner of the Korean Intellectual Property Office. Once solved, proceedings shall resume.
(a) Without taking the procedure for resumption
An application for a resumption of a procedure may be utilized by a successor of a party who has reasons for interruption or the person who precede the successor. This promotes swift procedural performance by enabling an application for resumption for the other party. The Commissioner of Korean Intellectual Property Office or a presiding trial examiner shall inform the other party of the application, and determine whether it is resumed or not. The presiding trial examiner shall dismiss the request ex officio by decision after examining the request.
(b) Resumption order
The Commissioner of the Korean Intellectual Property Office or the trial examiner, in cases where the person as prescribed by Article 21 of the Act fails to resume an interrupted procedure, may ex officio determine a designating period of resumption to carry out the procedure. In the case of failure to resume the procedure within a set period as pursuant to a resumption order of the Commissioner of the Korean Intellectual Property Office or the trial examiner, it shall be presumed to resume on the following day after expiration of its period. In this case, the Commissioner of the Korean Intellectual Property Office or a presiding trial examiner shall notify the fact of resumption to the person as prescribed by Article 21 of the Act.
(4) Effect of interruption
In cases of interruption of a patent‐related procedure, the act of carrying out the procedure shall be invalid. Proceedings of all periods shall resume upon the delivering of a notification of resumption or continuation. In short, proceedings of a period prior to interruption shall be ignored and shall be deemed that a party resumes its procedure from the beginning.
B. Suspension of the procedure
(1) Reasons of suspension
(a) Natural suspension : In cases where the Commissioner of the Korean Intellectual Property Office or the trial examiner shall not be deemed to continue its in‐service duties on account of a natural disaster, an extraordinary geographical phenomenon or other unavoidable reasons, the pending procedure in the Korean Intellectual Property Office or Intellectual Property Tribunal shall be suspended until extinguishment of these events,
INTRODUCTION TO PATENTS
and the Commissioner of the Korean Intellectual Property Office or a presiding trial examiner shall inform such fact to each respective party.
(b) The Commissioner of the Korean Intellectual Property Office or the trial examiner, in cases where a party is unable to continue the pending procedure in the Korean Intellectual Property Office or Intellectual Property Tribunal due to an unfixed period of disability, may determine its suspension by an order, and once the cause of the suspension is solved, suspension may be revoked. In cases of suspension or revocation, the Commissioner of the Korean Intellectual Property Office or a presiding trial examiner shall inform such fact to each respective party.
(c) The procedure might be suspended in relation to other procedures.
A procedure for the examination might be suspended until oppositions to the grant of patents are finally determined, a trial decision is made, or the procedure for litigation is completed if it is deemed necessary to the examination of applications or oppositions to the grant of patents. If it is deemed necessary to a trial, a procedure for the examination might be suspended until oppositions to the grant of patents related to the trial case are determined, a trial decision of the other trial is made, or the procedure for litigation is completed.
(2) The effects of suspension
In the event of a suspension of a patent‐related procedure, procedures of its period shall stop and procedures of all period shall resume as of the day when a party notifies resumption of its procedure or continues its procedure.
Publications are public bulletins issued by the Korean Intellectual Property Office to inform the public of patents‐related matters or patents (Article 221 of the Act). Publications shall be issued as either “Publication for registration public bulletin” or “Pre‐Grant Publication” for convenience of record keeping (Article 19, Enforcement Decree, Patent Act).
2. Publication for public notification of registration
Publication for public notification of registration shall include the following matters (Paragraph 2, Article 19, Order).
INTRODUCTION TO PATENTS
3. Pre‐Grant Publication
Pre‐Grant Publication shall include the following matters (Paragraph 3, Article 19 of the Order). However, the matters that may disrupt public order or morality or harm public health shall not be disclosed.
Where the matters of an application are disclosed through Pre‐Grant Publication, a party shall have a claim for compensation (Article 65 of the Act) with which he shall be able to apply for compensation to be rewarded for a loss as a result of a business
INTRODUCTION TO PATENTS
without a just title and “first‐to‐file” position of the third party. In addition, the third party may submit to the Commissioner of the Korean Intellectual Property Office the purpose that the invention shall not be patentable with evidence approving of the fact.
CHAPTER 3 PATENTS INVENTION
Invention means to create a new thing by using one’s knowledge, including, but not limited to the production of a new method, technology, material, or appliance through scientific and technological creativity.
However, not all inventions may be protected as patents. Only patentable inventions prescribed by the Patent Act shall be protected as patents. Inventions which may disrupt public order, corrupt morality, or harm public health shall not be patentable.
As patent systems have gradually become uniform due to multi‐national treaties, Patent Acts of most countries have focused on international harmony. Only a few countries in the world have defined concepts of invention through their Patent Acts. If we applied the concept of invention in the Patent Act, we could apply the provisions of the Act more clearly. It is difficult, however, to implement a strict concept of invention to various highly skilled and modern scientific technologies.
Regardless of such pros and cons, the Korean Patent Act, in order to promote clarity, defines an invention as a: “highly skilled thing as a technological creation of ideas using the law of nature” under Paragraph 1, Article 2 of the Act’ this seems to be based upon the definition of Aller Kohler.
A. Law of nature
“Law of nature” refers to a certain unchangeable and unavoidable law taking place in the natural world that is the reason for the occurrence of a phenomenon in the natural world. This may include laws such as the law of gravity, the laws of thermodynamics, and the law of energy conservation. On the contrary, laws contrived or discovered through the intellectual activities of human beings, academic laws, or artificial regulations and so forth shall not be included in the laws of nature.
B. Utilization of the law of nature
“Laws of nature” are not subject to discovery or invention. However, note that, in order to become an invention under the Patent Act, it is apparent that an invention will be governed by a “law of nature”. One salient example against the law of nature is the non‐repetitive permanent exercise substance premised on permanent exercise.
To make use of the law of nature means to apply the law of cause and effect in the context of natural science. Utilization means that the whole of the law is used rather than just a part in an invention.
In addition, an invention shall have applicability and repetitiveness; that is, the invention uses unavoidable laws of nature. Therefore it may be repeated and expropriated by a third party under the same conditions. However, 100% certainty of repetitiveness is not required. Less than normal rates of repetition for pioneer inventions are allowed. If the invention’s repeatable success is extremely low but it is deemed fairly certain to be attainable at a certain level, it may be deemed as having repetitiveness.
Even though an inventor is not fully aware of all laws of nature that he is making use of with his invention, the invention, if proved to use laws of nature in the end, shall be deemed an invention for purposes of the Patent Act even though the invention may be created without any recognition of the laws of nature.
As far as laws of nature are concerned, there is a debate in the intelligence information era of the 21st century regarding new technology in the field of computer software and Business Method (BM) patents. Software includes, but is not limited to, a system plan, flow chart, or a manual that discloses a method of how to use a computer as a system that creates and operates a program. A program means a combination of command language for conducting data processing in the computer whether it is in use of any laws of nature or not.
A program is considered similar to calculating a formula. As an expression of man’s intellectual process in the existing law, application for a program itself is rejected on the basis of not utilizing a law of nature. Examples of rejected applications for programs include cases where the program is a method or a device that increases or controls the capacity of hardware as a distinguished type of hardware and apparatus or media that is capable of computer decoding.
In addition, BM patents belong in the category of computer software related inventions. They are combined as operating methods and computer technologies on the internet to protect various operating methods or business ideas with patents operated through the internet. At present, pure business models conducted by social norms, mutual agreements, human psychological judgment or administrative authorities’ action due to artificial determination shall not be admitted as a law of nature invention. If a software application program is realized in combination with hardware using internet, it shall be deemed to use a law of nature.
The dictionary defines technology as “a method or means which applies the theory learned academically.” This definition includes talents or crafts in technical art. In the natural science field it means, “a method or means that applies science to allow mankind to improve the nature for their living.” This second definition of technology includes technology in the human and social science fields, as well as in the natural science field.
However, “technology” under the Patent Act is restricted to technology using laws of nature with concrete means with demonstrating applicability and repetitiveness. It means that with this technology any third party having an average of level of understanding in the technological field will be able to attain the same result. In addition, there needs to be objectiveness of technology in the sense that ability, performance technology, and each technique in sports are not included in various technologies under the Patent Act.
B. Technical idea
Invention shall be a technical idea. The term “idea” means an abstract Idea or a concept rather than a concrete shape. “Technical idea” means a specified idea that has not attained a technical level that would allow it to be concretely applied industrially. In other words, it means an intangible concept existing inside the shape combined via technological means. If, for example, the inventor designs a vehicle for carrying coal in a circular cone in order to level center of gravity, the design would be deemed an idea to level the center of gravity, not the shape of a circular cone itself,. Otherwise, a patent to protect the invention would be an empty right.
In addition, technical ideas shall not be abstract, but concretized and shall be applicable in the future. Accordingly, in a case where there is a theme or conception without a concretization problem‐solving method or it is deemed to attain its goal with such method regardless of there being a problem‐solving method, it shall be deemed as an incomplete invention.
Invention shall be a “creation” of a technical idea. A “creation” is different from a discovery. A creation is something that never existed before while a discovery is making known something that had already exist. As a matter of fact, “invention of use” discovers a specific property of a material and its exclusive use is based upon discovery of the property of the material and is included in the category of invention distinguished from a simple discovery that is recognized directly from the five senses of the body.
Although there are many arguments over whether creativity should require newly‐emerged novelty or non‐obviousness, such requirements have no advantage where patentability judgments are based on novelty and inventive steps. Accordingly, even though novelty is not included when objectively judged, the invention which is deemed creative by a party shall be deemed an invention anyway.
B. High skillfulness
According to the definition of invention, to invent a creation, such creation shall be “highly skillful”. However, “highly skillful” (high skillfulness) is judged not by objective criteria but by a subjective criteria; this traces back to the intention that distinguishes invention under the Patent Act from that of the utility model from the Utility Model Act. In short, utility design omits the term of “highly skilled” as seen in the context of “using the law of nature technological creation of ideas.”
Invention and discovery share requirements of introduction and application of novelty. However, invention is a creation by novelty whereas discovery is finding all or part of whole that have existed before.
Nonetheless, discovery creates many inventions. Inventions tend to promote new discovery. In particular, the biggest problem between invention and discovery for patents in practice is the requirement for its use and application.
Invention of use means “invention attributed to a new discovery of specific use belonging to the material.” Therefore, patentability is deemed admitted where it is recognized that the material is found to have a new use that has not been known in the electric or mechanic field unlike other fields such as the chemical field since its material property is multifaceted. Accordingly, invention of use means an “invention of the materials applying a new use to an originally non‐patentable material.”
Ⅲ. Types of invention
1. Categories of invention
Invention is classified into invention of material and invention of a method pursuant to specifications of such invention. “Invention of material” means concretization of a technological creation of ideas to give it a shape, including, but not limited to, product, apparatus (mechanics, device, facility, etc), creation and material. On the contrary, “invention of a method” means concretization of technological creation of ideas into a certain method, and is classified into a method to produce material and another method. The categories of invention shall not be interpreted just by words of claim of the patent but also by the substantiality of invention.
A method of material and invention of a method are different in the effect of a patent right pursuant to its inventive expropriate type (Act Article 2‐3, Article 94).
2. Invention of material
Invention of material means concretization of a type of material, an invention without having a lapse of a time limit. Among them, invention of product or apparatus means concretization of a tangible type, which combines elements forming space and takes a technological effect. On the other hand, invention of material means a single element material manufactured by a chemical method or a nuclear transformation method.
Invention of a method is affected by the lapse of a time limit, and its constituent elements are a pre‐arranged stage for expropriating its method. Invention of a method under the Patent Act is classified into a method producing the material and other methods, such as use and handling.
SECTION 2. REQUIREMENTS FOR PATENTABILITY
Even if an invention meets the definition of invention in Article 2.1 of the Patent Act (“the Act”) that says an “invention means the highly advanced creation of a technical idea using the laws of nature”, it still has to meet the requirements of industrial applicability, novelty and inventive step prescribed in Article 29 of the Act in order to be granted protection as a patent under the Act.
Ⅰ. Industrial applicability
Since the purpose of Patent Act is to contribute to industrial development, in order for an invention to be patented, it has to have industrial applicability. Thus, an invention which cannot be used industrially or which can only be used in areas other than industry cannot be patented.
2. Scope of industry
Article 1.3 of the Paris Convention for the Protection of Industrial Property interprets industrial property in the broadest sense and shall apply not only to industry and commerce proper, but likewise to agricultural and extractive industries and to all manufactured or natural products. Also, Article 33.4 of the Patent Cooperation Treaty provides that
“industry shall be understood in its broadest sense, as in the Paris Convention for the Protection of Industrial Property.” 1) Therefore, “industry” in Article 29.1 of the Patent Act is generally interpreted as including not only primary or secondary industries such as agriculture, stock‐farming, forestry, fishery, mining and manufacturing but tertiary industries such as commerce, finance, transportation and service industry.
Some argue that service industry is excluded from “industry” mentioned above because it includes little technical idea using the laws of nature, but the general reasoning of opposition is made on the ground that with industrial development in mind, the scope of protection is ever being expanded to include business models. However, inventions in the medical area are treated differently because they deal with the human body.
With respect to the concept of industrial applicability, there are various theories: an invention has to be suitable to use in industrial management; an invention which can only be used academically or experimentally is excluded; an invention has to be a technology directly related to manufacturing of goods; etc. It would be reasonable to exclude only the invention which in its content is not actually applicable to the industrial field or which is purely academic or experimental.
Article 33.4 of the Patent Cooperation Treaty provides, “for the purposes of the international preliminary examination, a claimed invention shall be considered industrially applicable if, according to its nature, it can be made or used (in the technological sense) in any kind of industry.” Industrial applicability is a requirement for a patent because the purpose of Patent Act is industrial development through technological progress and thus if industrial applicability is lacking, then it should be excluded. Since an invention only needs to have applicability in any industry other than medicine, industrial applicability is rarely an issue as a condition of patent.
Medical industry, which is engaged in the treatment, examination and prevention of human disease, includes drugs for treatment or prognosis and methods of treatment, prognosis and operation using drugs and related medical equipment. Among them, drugs and medical equipment are patentable but medical methods dealing with humans are not.2) The reason is that medical method is about what a doctor does with respect to the patients’
for the Protection of Industrial Property’ 2) Types of industrially applicable inventions (See the Examination Guideline of KIPO)
① Invention of a method to operate or prognose human being, i.e., medical treatment, is not industrially applicable. However, products to be used for such invention (medical equipment, drug, etc.) are industrially applicable.
lives and exercising patent at the expense of the patients’ lives is ethically unacceptable. Also, since drugs and medical equipment are patentable, inventors are protected accordingly and doing otherwise will raise medical cost.
The Patent Act does not directly mention inventions of medical methods dealing with the human body but Articles 29.1, 32 and 96.2 applies to this issue in practice. That is, an invention of a medical method dealing with the human body is not patentable on the ground that it is not “industrially applicable” (Article 29.1) and against public policy (Article 32). Also, patent for invention of drugs manufactured by combining two or more drugs or invention of method for such manufacturing does not cover prescription activity or prescribed drug provided for in the Pharmaceutical Affairs Act. (Article 96.2)
KIPO’s Industry Sector Examination Standards (Medical Sector) recognizes as industrially applicable, invention of a method to treat, prognose or prevent disease of mammals except humans or promote their growth. On the other hand, with respect to an invention on human body wastes, invention of method in which substances are applied to human body, excretion or blood are extracted and drugs are made from them, and an invention in which drugs are made from what is already collected, removed, discharged from human body such as blood, serum, urine, feces, sap, placenta, tumor, hair and nail are recognized as applicable to industry. However, invention of method in which drug ingredients are made inside human body using body specific material or method in which such drug ingredients are extracted outside are not recognized as applicable to industry.
Among other countries, Japan has the same provisions as those of the Patent Act and Examination Standard regarding invention of medical methods, while Article 52.4 of the European Patent Convention denies patent to “methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body” from patentability, because these methods are regarded as not susceptible of industrial application.
The goal of the Patent Act is to promote the use of invention by making it public and thus to develop the industry. Since granting monopoly over an invention already known to the public may impede the industry, novelty of invention is the most basic requirement of patentability. How novelty is defined can have great influence on a nation’s industry. Therefore, the definition may differ depending on different countries and eras.
Novelty in the Patent Act requires that an invention’s technological creation be new in comparison to past technology or prior art and novelty is intended to exclude the same technology as prior art.
Article 29.1 of the Patent Act does not define novelty positively but provides that an invention that has industrial applicability has novelty unless it is publicly known or used or it is described in a distributed publication or published through telecommunication means.
A. Criteria for time
The criteria regarding time in deciding novelty is the time for filing an application for a patent.3) Thus, if a person announces and makes public an invention in the morning and someone else files an application for patent in the afternoon that same day, the invention lacks novelty. However, such a case is extremely rare.
B. Criteria for place
In the past, whether or not an invention was publicly known or used was decided only domestically while public notice by documentation or telecommunication was decided globally. With the advance of telecommunication technology, however, an invention known overseas other than by publication can easily be proved and if an invention publicly worked overseas can be patented domestically, it is against the purpose of patent law that an invention has to be new in order to be patentable. The Patent Act revised on March 3, 2006 denies patent for technology publicly known or used overseas.
Different standards apply in different countries in deciding that an invention is not novel because it is publicly known, have been used or published in some place. According to the revised Patent Act, an invention lacks novelty if before the filing of
3) Order in time of the applications is based on the ‘date.’ (Article 36 of Patent Act)
the application the invention is publicly known, publicly used or published, domestically or overseas, or if the invention is publicly through telecommunication by means of internet websites operated by central or local governments or publicly funded research institutes in foreign countries or international organization and thus has become available to the public.
A. Publicly known invention
Public knowledge in Article 29.1.1 of the Act refers to the state in which the general public knows or is capable of knowing, and a publicly known invention is an invention not hidden. Being out of secret is enough to establish as a publicly known state; the number of people knowing is irrelevant. If an invention is disclosed to a person who is obligated to keep it confidential, it is not public knowledge. But if that person reveals it to a third person in violation of his duty, it can become public. Also if the above mentioned duty of confidentiality loses effect it will also become public, and if the person uses the invention, then the invention becomes a publicly used invention, making it difficult to distinguish between whether it is public knowledge or public work.
There are different opinions with respect to the issue of whether or not public knowledge requires ‘actual’ knowledge. Since it may be difficult to prove whether a third party ‘actually’ had knowledge, it would be reasonable to conclude that public knowledge is the state in which the general public is capable of knowing the invention. Cases on this issue hold that a thesis is not in the public domain at the time of printing, submitting to the university or approval by the thesis review committee unless it has already been made public. The thesis becomes public knowledge when it passes the committee and is then published and delivered to the public or to university libraries or distributed to many unspecified people so that the general public is able to access its content.
B. Publicly used invention
Publicly used invention provided for in Article 29.1 of the Patent Act means an invention which those skilled in the art used before the filing of the patent application that would thus make the invention easy to know about. That is, it is an invention which can be used easily and repeatedly without supplementing, adding or further developing the technical idea. Thus, even if an invention was used by a third party, the invention may be deemed to not have been publicly used if those skilled in the art was not able to easily know the contents of the invention. On the other hand, during the construction or at the opening ceremony of a factory in which machinery is installed, an invention
can be deemed a publicly used invention before the filing of the patent application if it was used in circumstances where the general public was able to know the content of the invention and measures to maintain confidentiality were not taken. 4)
C. Invention publicly known by documentation:
Article 29.1.2 of the Act provides that an invention described in a publication distributed in the Republic of Korea or in a foreign country before the filing of a patent application or inventions published through telecommunication lines as prescribed by Presidential Decree lacks novelty and thus lacks patentability as well.
(1) Concept of publication
Publication means document, picture, photo and other information‐transmitting medium copied for the purpose of being opened to the public by a mechanical or chemical method such as printing.5) It also includes not only printed material but handwritten or typewritten material. While some deny that microfilm, CD‐ROM or disc is publication, it would be more persuasive to acknowledge them as publication, considering that, in today’s information society, they transmit information as clearly and securely as traditional printed publications. Finally, although copies may differ from the regular publication in that copies of the original are custom‐manufactured, for the purpose of determining novelty copies are considered publication as well.
A publication has to be intended for the public and excludes secret publications. However, not‐for‐sale or limited edition books can be considered publications if they are copied documents which are open to the public and which includes information.
Distribution means the state in which a publication is delivered so that it can be read or accessed by the public, but does not require that someone has actually read it.6) The courts hold that a publication is distributed once it has been registered for receipt by the library even if it has not been displayed on the bookshelf because by that time someone with interest is able to access the publication, enabling the general public to be aware of the content of the publication.
4) See 99 Hu 6596 decision (Patent Court, Sep 21, 2000) 5) 98 Heo 1945 decision (Supreme Court, Sep 18, 1998) 6) 83 Hu 40 decision (Supreme Court, Dec 23, 1986)
(B) Time of distribution of the publication
1) Where publication date is written
A) If only the year is written, last day of the year
B) If the year and month are written, last day of the month
C) If the year, month and date are written, the date is presumed the publication date
2) Where publication date is not written
A) If a foreign publication has a clear import date, it is presumed to have been distributed at a normal rate of time that is required to import into Korea before the import date.
B) If another publication includes review, excerpt, catalogue, etc. of the relevant publication, the distribution date is presumed to be from the other publication.
C) If a later edition of the publication has date of first edition written on it, that date is presumed to be distribution date. However, in the case of later edition, relevant parts of the first and later edition have to be same.
D) If there are other plausible grounds, distribution date should be presumed from those.
(C) If the filing date and publication date are the same, unless the time of filing is definitely later than the time of publication, the invention does not lose novelty.
(3) Described invention
Described invention means an invention whose content is described in a publication so that those skilled in the art are easily able to use it. For an invention to be described in a publication, at a minimum, what constitutes the invention has to be disclosed. Thus, if only a photo of an invention’s exterior structure is shown, the invention is not considered to be described in a publication because the content of the invention is not recognizable.7)
7) 98 Heo 1945 decision (Patent Court, Spe 18, 1998)
D. Invention publicly known on the Internet
With the rapid progress of IT technology, people can freely disclose information on the Internet but technical information disclosed on the Internet can fall under Article
29.1.1 of the Act only if proved or confirmed. Such information, however, did not belong to the distributed publication category of Article 29.1.2 of the previous Act so the Act was revised on February 3, 2001 to recognize ‘an invention made available to the public through electronic telecommunication lines prescribed by Presidential Decree’ as prior art, without separate proof and confirmation, like the invention described in a publication.
However, technical information published through telecommunication lines such as the Internet can easily be altered and is difficult to put a publication date and secure reliability. So, the revised Act prescribes reliable telecommunication lines, which include Internet, BBS, e‐mail and other devices which can transmit and receive data through wired, wireless, electric or magnetic means.
(2) Relevant provisions
In determining novelty of an invention, invention stated in the claim is examined to determine if it falls under each subparagraph of Article 29.1 of the Act by comparing it with the ‘reference invention.’ An invention is not novel if the reference invention (which corresponds one on one with the invention stated in the claim) meets all elements of the invention stated in the claim. Novelty is different from the inventive step requirement (where the invention stated in the claim is compared with the combination of multiple reference inventions). This is called the Single Source Anticipation Rule in U. S. patent law.
Also, in deciding identicalness which belongs in the novelty category, it is not acceptable to compare the reference invention and the claim of invention applied for the patent simply by expression or format stated. The two have to be compared on the basis of their essences of the technical idea inherent in the claim. Even if only ‘part’ of the technical idea is identical, unless the remaining part constitutes a separate invention, the two inventions are deemed to be identical.8)
B. Invention stated in the claim
(1) The determination of an invention should be based on what is stated in the claim.
8) 93 Hu 1940 decision (Supreme Court, Jun 9, 1995)
C. Reference invention
(1) Publicly known invention
A publicly known invention is an invention known or knowable to the general domestic public before the filing of a patent application.
(2) Publicly worked invention
A publicly worked invention is one which is worked while the invention is known or knowable to the public before the filing of the patent application.
(3) Invention described in distributed publication
An invention described in distributed publication will include not only the invention described in publication but also what is extracted from that invention by those skilled in the art using common technical knowledge at the time of publication.
D. Method of determining novelty
F. Examples where novelty is denied because of substantial identicalness
Novelty is not denied only in the case when an invention is identical to a publicly known and used technology. Courts hold that even if an invention derives from a prior, publicly known and used technology, when the similarity to publicly known and used technology is obvious and thus the invention cannot be deemed a new technology, novelty itself may be denied before the issue of inventive step is explored, including substantially identical inventions in the novelty category.9) Inventions are substantially identical if change in form, location, sequence, proportion or direction does not cause function or effect to change or if elements are divided or combined.
Ⅲ. Inventive step of invention
Inventive step10) is an academic concept that means the degree by which those skilled in the art11) cannot easily invent given the technical standard at the time of the patent application. A novel invention may lack inventive step and granting a monopoly protection to such invention, which belongs to the realm of free technology, is against the purpose of patent law; patent law’s purpose is to promote technological progress. Many countries, including Korea in Article 29.2 of the Act, impose this requirement, despite some differences in language.
9) See 91 Ma 540 decision (Supreme Court, Jun 2, 1992) 10) Section 103 of the US Patent Act uses the term ‘non‐obvious subject matter,’ while Atricle 56
of the EPC uses the trem ‘Inventive step.’ 11) See 91 Ma 540 decision (Supreme Court, Jun 2, 1992)
Article 29.2 of the Act provides that “notwithstanding paragraph (1), where an invention referred to in each subparagraph of paragraph (1) (*publicly known or used invention) could easily have been made before the filing of a patent application by a person with ordinary skill in the art to which the invention pertains, the patent for such an invention may not be granted.”
A. ‘Art to which the invention pertains’
With the rapid progress of technology causing technological areas to specialize and segmentalize, more and more technologies are used in areas outside of their original purposes; sometimes these technologies are used by those skilled in the art of distant technical areas.
‘Art to which the invention pertains’ means in principle the industrial area to which the invention is applied but also includes the technological area which is grasped by the nature or function of all or part of the invention’s elements. Thus, it is not limited by the name of the invention which is stated in the description, but it means the area to which the technical idea, which is the essence of invention, belongs to; all in consideration of the purpose, constitution and effect of the invention as a whole. In practice, this means the technical scope of the relevant class in the International Patent Classification (IPC).
B. ‘Those skilled in the art’
The criteria for determining inventive step are those skilled in the art in the relevant technical areas at the time of the patent application. ‘Those skilled in the art’ is an abstract concept, meaning an average expert who can understand common technical knowledge of the relevant technical area. Thus the patent examiner shall not determine inventive step subjectively but determine objectively from the perspective of those skilled in the art.
With respect to the method or criteria of determining inventive step, there are three theories which place emphasis on the purpose, constitution or effect of the invention respectively. Each theory has its own strengths and weaknesses so inventive step has to be determined considering the purpose, constitution or effect as a whole.
A. Constitution centered theory
The purpose of an invention is the task an inventor intends to solve and the effect of an invention is the result, both of which are based on the inventor’s subjective
perception. Meanwhile, constitution of an invention is concrete, can be objectively grasped and must be stated in the claim thus contrasting the invention to prior art. This theory holds that in determining inventive step, difference in constitution between the invention stated in the claim and what is publicly known has to be grasped and depending on the difficulty in constitution, the purpose and effect of invention have to be considered. According to this theory, if an invention clearly lacks difficulty in constitution, it does not have inventive step despite the difference in purpose or effect, and if on the contrary an invention clearly has difficulty in constitution, it has inventive step even if the difference in purpose or effect is insignificant.
B. Effect centered theory
The purpose is the motive of invention; constitution is an instrument to achieve the task of the invention; and the effect which is achieved when constitution serves its purpose is the substance contributing to technological progress. Therefore, ease of selecting and combining elements of the invention has to be determined by the effect. That is, peculiarity of invention and remarkableness of effect have to be the criteria of inventive step.
C. Predictability theory
Invention is divided into stages. Stage one is where the purpose which is a technical desire to solve a task is established; stage two is where the technical means is constituted by selecting and combining the elements; and stage three is where the effect derived from constitution is actually verified. This theory holds that for each of the above stages, predictability of purpose, constitution and effect have to be the criteria for determining novelty. The theory also holds that the stages have to be treated equally.
Since invention protects the combined technical means of invention, inventive step determination is determining the difficulty of an invention’s technical constitution and is subject to the examiner’s discretion. However, the discretion must not be arbitrary but rather it must be objective thereby requiring that underlying facts be offered as proof.
A. Invention which is the object of inventive step determination
Invention which is the object of inventive step determination is an invention stated in the claim which has novelty. If there are two claims or more, inventive step has to be determined for each claim.
B. Method of determining inventive step
(1) Process of inventive step determination First, invention stated in the claim is examined by the same method as in novelty. Second, reference invention is examined by the same method as in novelty. Third, invention stated in the claim and the reference invention are compared and same
ness and difference are extracted therefrom.
Fourth, whether or not invention stated in the claim can obviously be derived by a technical standard in the relevant area at the time of patent application is articulated.
Fifth, if the above can be articulated, the invention lacks inventive step, but if on
the contrary the above cannot be articulated, the invention has inventive step.
(2) In the establishing of logic, sameness and difference of the elements must be clarified by comparing the reference invention to the invention stated in the claim. Then the following must be examined. With respect to difference one must inquire whether or not the reference invention implies the invention stated in the claim; the commonality of tasks, use and function of the inventions can yield perspective of the motivation. Also, whether or not the effect of invention stated in the claim is better than that of the reference invention due to difference in constitution can yield perspective of how to determine inventive step. For example, even though the invention stated in the claim can be easily done by those skilled in the art from the combination of multiple reference inventions, if the invention stated in the claim has an unexpected and a new effect, then the inventive step may be acknowledged.
C. Caution in the inventive step determination
Criteria for determining the inventive step provided by the Act are whether or not those skilled in the art can easily invent publicly known technology. This is very abstract, so in order to obtain objective validity, the following has to be considered.
A. collective invention
A collective invention to which most inventions belong to is a collection of publicly known technology. A collective invention which lacks inventive step is called aggregation and a collective invention which has inventive step is called combination.
With respect to an invention which collects and combines past technologies and improves them, the Korean Supreme Court16) held that inventive step is lacking unless there is special hardship in the process of combining, the invention produces a greater effect
has a multitude of documentations and is so well known in the industry that examples need not
be shown. ‘Publicly worked technology’ is a publicly known technology which is widely used. 13) 96 Hu 1514 decision (Supreme Court, Aug 26, 1997) 14) 96 Hu 221 decision (Supreme Court, May 30, 1997) 15) 98 Heo 8571 decision (Patent Court, May 20, 1999) 16) 96 Hu 221 decision (Supreme Court, May 30, 1997)
than expected from prior art, and those skilled in the art cannot easily invent, or a new technical method is added.
B. Replacement invention & conversion invention
Replacement invention replaces an element of a publicly known invention with an element of another publicly known invention in the same technical area. Conversion invention brings publicly known inventions from a different area and has inventive step only if there is a hard‐to‐expect effect or technical difficulty in constitution, from the perspective of those skilled in the art. Therefore, a replaced element has to be publicly known, be obvious to those skilled in the art and have substantially the same effect.
C. Use invention
Use invention is an invention derived from new discovery of certain specific use of a matter. Inventive step is acknowledged if the use is novel, effect is remarkably improved, and change of use is easy for those skilled in the art.
D. Utilization invention
(1) Utilization invention is, according to the common gist theory, which is the prevailing theory, an invention which has an additional element to be patented, a prior invention and that prior invention is patented. According to the courts,17) if prior invention and later invention have use relationship, then the later invention belongs to the prior one. In such a relationship, the invention of machine, equipment, etc, the later invention adds a new technical element to the gist of the prior invention. For invention of method, especially manufacturing of chemicals, intermediate substance or catalyst are added with the goal of interaction so it is very difficult to prove that a substance used in prior invention remains the same after the interaction. Also, in chemical manufacturing, use or non‐use of a catalyst has a vastly different technical idea. Thus, between manufacturing method mentioning catalyst and patented manufacturing method not mentioning catalyst, even if they have the same starting and ending substance, the latter is not using prior invention unless use of catalyst is simply an addition to a meaningless process.
Also, recent Supreme Court and Patent Court rulings recognize utilization invention using equivalent material.18)
5466 decision (Patent Court, May 16, 2002)
(2) With respect to equivalence and use relationship, equivalence means the case where part of the elements of invention stated in the claim is replaced with another, equivalent element and the invention is deemed identical to prior invention. Equivalence is a matter of identicalness to prior invention, while utilization invention means an invention which includes all elements of the claim, adds additional element and is patented. Both belong in the scope of patent right of prior invention.
E. Selection invention
Selection invention means, in chemistry, an invention in which unspecified species are selected as an element of a publicly known invention of which all or part of the elements are expressed in genus. Here, species belong to genus and thus is the same as a known technology in principle but if invention in species is not detailed in a publicly known invention in genus, selecting the unspecified ones and combining them can bring about inventive step if there is a special effect that is unexpected from prior art.
Selection invention can belong to utilization invention because selection invention and publicly known invention expressed in genus have basic tasks and technical instruments in common and only have minor differences. But not all selection inventions have relationship of use, which has to be determined according to the scope and content of technology of prior application.
F. Number or form‐restricted invention
This invention comes from limiting the number from a publicly known technology or changing or limiting form or arrangement. It lacks inventive step unless the change or limitation has technical difficulty or significantly increases effect of the invention.
Among them, number restricted invention is an invention expressed in numbers by specifying the length, weight, temperature, angle, combination ratio, etc. of the elements. Here, if the number is within a specific range provided by publicly known technology, then the invention lacks inventive step but if the publicly known technology does not provide numbers or provide different numbers, inventive step can be a contested issue. In such invention, if those skilled in the art use publicly known technology, they will set an optimal condition. So, unless there is something special about the numbers, the invention lacks inventive step because those skilled in the art could use it. In particular, effect of number restricted invention must not be expected from publicly known technology, so specifying the number must have technical significance and restriction must have critical significance in order to gain inventive step. However, specified numbers of the invention exceeding technical common sense does not have a particular critical significance.
Novelty is determined based on the time of the patent application so if the application is filed after an invention is made public, the invention loses novelty. However, under some circumstance where the person making an invention public and the person filing application are the same, the invention is deemed not to lose novelty. (Novelty deemed. Article 30 of the Act)
If Article 29.1 is applied too strictly without allowing exception, it can be harsh on inventors and harm industrial development, so certain inventions which have lost novelty are given relief by relevant provisions in order to protect inventors, unless they harm the general public.
In the past, when a person with the right to obtain a patent conducts tests on the invention, publishes the invention in printed matter, publishes the invention through telecommunication lines as prescribed by Presidential Decree or presents the invention in writing before an academic organization as prescribed by ordinance of the Ministry of Commerce, Industry and Energy, the invention was not denied patent. However, the revised Act (Mar 3, 2006) did away with restriction on the form of publication because publication form other than previously allowed, such as a website, increased in number and some products are launched and advertised in overseas market and thus not able to be patented. In sum, all activities by the applicant who makes the invention publicly known within six months prior to the filing becomes excluded from the grounds for rejection, starting with filings from March 3, 2006.
B. Invention which can be deemed to have novelty
C. Legal effect
(1) Relationship to novelty An invention identical to a publicly known invention is not deemed novel.
(2) Relationship to inventive step
When an invention (A+a) differs from a publicly known invention (A), even if the latter is one which those skilled in the art can easily invent, the latter is not deemed a prior art. That is, an improvement invention is not placed at a disadvantage by a publicly known invention in terms of determining novelty but is used as prior art with respect to the invention of a third party.
D. Submitting written evidence
In order to have relevant invention treated as non‐public, a written application has to be filed to the Commissioner of KIPO simultaneously with the patent application. Documents proving the above have to be submitted to the same, within 30 days of the patent application. (Article 30 of the Act)
Ⅳ. Identicalness of invention
Identicalness of invention is an important concept throughout patent law, and is an important standard in determining the issues of novelty, inventive step, expanded first‐tofile, first‐to‐file and infringement. This section covers identicalness issues regarding expanded first‐to‐file and first‐to‐file only.
1. Expanded first‐to‐file application
The basic rule of patent law is ‘one patent for each invention’ in which a single exclusive patent is granted to a single invention. Where two or more applications related to identical inventions are filed on different dates, only the applicant with the earlier filing date may obtain the patent for the invention based on the first‐to file‐principle regardless of the actual time of invention. Thus, if two applications have identical inventions stated in the claim(s), a patent cannot be granted to the later application according to Article 36 of the Act. However, when an invention identical to the one stated only in the description or drawing of a prior application is stated in the claim(s) of a later application before the prior application or registration is made public, the later applicant, in principle, can be patented and this is problematic. In order to solve this, a later application stating in its claim(s) that the same invention stated in a prior application whose application or registration was published shall not be patented according to Articles
29.3 and 29.4 of the Act. Those articles apply by expanding the scope of prior application, and determining identicalness in the so‐called expanded prior application.
B. Relevant provisions
Where an application is filed for an invention that is identical to an invention or device described in the description or drawing(s) originally attached to another patent application that has already been laid open or published, or where the invention is identical to a utility model whose application has already been published, a patent may not be granted. However, if the inventor of the concerned patent application and the inventor of the other patent or utility model application are identical, or if the applicants of the above are identical at the time of filing, a patent may be granted.19)
C. Requirements for application
(1) In order for Article 29.3 of the Act to apply,
19) Article 29.3 of the Patent Act
If the prior application is divisional or duplicated, the date of the divisional or duplicated application is deemed the filing date according to Article 52.2 or 53.2 of the Act. The reason for this is to prevent the filing date of divisional or duplicated application from moving back to the date of the first application whose description or drawing did not state the new technical items that are in the divisional or duplicated application.
If the prior application claims treaty‐based priority, its filing date is the day on which patent application was filed in the first country.
(2) In domestic priority‐based patent application, with regard to application of Articles
29.3 and 29.4 to prior and later applications,
(3) If earlier application is an international application designated for Korea
A later application has to be identical to the description or drawing of an international application filed on the day deemed as the international filing date according to Article
214.4 of the Patent Act or Article 71.4 of the Utility Model Act, or identical to the translation submitted or invention or utility model stated in the drawing on the day deemed as the international filing date according to Article 214.2 of the Patent Act or Article
71.2 of the Utility Model Act.
If prior application was filed before, but published (application or registration) after the filing of a later application and the two applications have the same inventors or applicants, then the issue of identicalness becomes moot.
Where all inventors as written in one application are completely or essentially identical to those of the other, both applications are deemed to have identical inventors. If inventors are not completely identical on paper, then the applicant has the burden of proof to show that the inventors are the same.
Furthermore, if there are two or more applicants, all the applicants have to be completely identical, and if the concerned application is an amended one, applicant of the original application shall be the applicant of the concerned application.
E. Determining whether or not invention stated in the claim(s) is identical to an invention or device described in the description or drawing(s) originally attached to another patent application
Patent law provides the inventor with an exclusive right to use the patented invention for a certain period of time, in compensation for making the invention public. And in order to prevent rights from being overlapped, a single patent is granted for a single invention, which illustrates ‘one invention, one patent’ or ‘exclusion of double patent’ principles. With respect to the method of granting patents where multiple applications related to identical inventions are filed, there exist the first‐to‐invent rule and first‐to‐file rule.
(1) First‐to‐invent rule and first‐to‐file rule
First‐to‐invent rule protects the first inventor and is ideal for promoting invention, but it is difficult to confirm who the first inventor is. Sometimes an inventor keeps the invention a secret for his own interest and in such cases the rights of the concerned parties of the invention can be unstable. On the other hand, the first‐to‐file rule decides rights based on the date of filing and helps enhance stability of the rights surrounding an invention. It encourages patent applications and suits the purpose of the patent system but can burden the inventors because they have to promptly file.
20) See 98 Hu 1013 decision (Supreme Court, Jun 1, 2001)
Currently, most countries adopt the first‐to‐file rule which values legal stability. Korea adopts the first‐to‐file rule which is provided in the Patent Act, “where two or more applications related to the same invention are filed on different dates, only the applicant of the application with the earlier filing date may obtain a patent for the invention.”21)
(2) Criteria for time in determining prior versus later application
In deciding which application is the first, filing date is the standard. Documents submitted to KIPO take effect the day on which they arrive at KIPO (arrival rule; Article
28.1 of the Act). However, application, demand and other documents submitted by mail is deemed to have arrived at the time of mailing, which is an exception. In the mailing rule, where the date stamp is clear, they are deemed to have been delivered on the date of the stamp, while where the date stamp is unclear, they are deemed to have been delivered on the date on which the mail was submitted to a post office, if the date is verified by a receipt.
The arrival rule, however, not the above, applies if applications to register patent and other related rights and documents concerning an international application under Article 2(vii) of the Patent Cooperation Treaty (referred to as “an international application”) are submitted by mail.
In the first‐to‐file rule, there are some exceptions with respect to filing date. In some cases it is deemed earlier than actually filed while in other cases it is deemed later.
(3) Same day application
21) Article 36.1 of the Patent Act
(4) Identical invention by identical inventor
With respect to multiple applications by a single applicant for a single invention, the same rule as above shall apply. If the dates are different, only the application submitted earlier will be patented, and if the dates are the same, the applicant will be ordered to choose one. If he fails to follow the order, all the applications shall be rejected. Where multiple applications by a single applicant for a single invention are all granted and subsequently one of them is finally invalidated, the remaining registrations are interpreted as valid.
(5) Object’s scope for the prior application
In the application of Article 36 of the Act, regarding identical invention or device, some applications are prior applications and some are not.
B. Method of determining prior application
Articles 36.1 to 36.3 of the Act which deal with identical inventions of prior and subsequent applications concerns whether or not inventions stated in the claim are the same among applications with different or same filing dates or between patent applications and utility model applications, i.e., identicalness of inventions.
(1) Object of determination
Object of identicalness determination according to Article 36 of the Act is the invention stated in the claim(s). Identicalness determination concerns the technical idea of the invention stated in the claim(s) according to the definition of invention. Where the patent claim(s) has multiple claim(s), identicalness is determined for each claim(s).
(2) How to determine whether or not claims are identical
If the difference is
known or worked technology and there is no new effect, Inventions are determined identical
SECTION 3 PATENTABLE SUBJECT MATTER
Ⅰ. Patentable subject matter
The person who can be granted a patent is an inventor or successor. An inventor can be granted a patent as long as the invention meets requirements of the Patent Act. Article 33 of the Act provides, “inventor or successor has the right to be patented according to this Act.”
1. Nature of right to obtain patent
With respect to the nature of an inventor’s right to obtain a patent by making an invention, the following theories exist.
(1) Public right theory
The right is a public right to request the state to grant patent. It is a property right and is assignable. This is an approach with emphasis on procedure.
(2) Private right theory
The right is a natural right created by an act of invention itself. It is a private right preceding application and thus patent application is simply a procedure. This is an approach focused on substance.
(3) Public‐private right theory
The right is public in that the inventor can request the state for a patent but also private in that an act of invention creates an ‘invention right’, a private substantive right.
(1) Specific content
Right to obtain a patent comes into being at the completion of invention and lasts until a patent right is created. It can be exercised by the inventor or successor, who can use, profit from or assign the invention without infringing on the rights of others.
(2) Transfer of right to obtain a patent
(A) Succession of right before patent application
Succession to the right to obtain a patent before filing an application is not effective against third parties unless the successor in title files an application (Article 38.1 of the Act), which is the same for inheritance or other general succession. Where the right to obtain patent is transferred to more than one parties (overlapping transfer), the first‐tofile successor can be patented.
(B) Succession of right after patent application
Succession to the right to obtain patent after filing an application is not effective unless notification of change of the applicant is filed, except for inheritance or other general succession (Article 38.4 of the Act), in order to clarify transfer of right. Upon inheritance or other general succession of the right, the successor in title shall immediately notify the Commissioner of KIPO. (Article 38.5)
(C) Conflict among multiple patent applications or notifications of change of applicant, with same filing date
Where two or more applications are filed on the basis of the right to obtain patent derived by succession from the same person for the same invention on the same day, succession by any person other than the one agreed upon after consultations by all applicants is not effective. (Article 38.2)
Also, where two or more notifications of change of applicant are made on the basis of the right to obtain patent derived by succession from the same person for the same invention on the same day, notification by any person other than the one agreed upon after consultations by all persons who made notification is not effective. (Article 38.6)
Despite the KIPO Commissioner’s order for consultation, if the parties do not report the result of consultation within the designated period, the parties are deemed not to have an agreement and no one can be granted patent on the invention which is the target of the concerned patent application or change of applicant notification. (Article 38.7)
(3) Restriction on transfer of right to obtain a patent
Where two or more persons jointly make an invention, they are entitled to jointly owning the patent (Article 33.2), and where a patent right is jointly owned, the owners may not assign their individual share without the consent of the other owners. (Article 37.3)
(4) Loss of right to obtain a patent
Where decision to refuse patent or opposition to such decision is finalized, if the successor to the right to obtain the patent does not exist or the party loses capacity to own a patent, the right to obtain patent is lost. The same goes for where patent application is abandoned or withdrawn.
Ⅱ. Holder of Right
The right to obtain a patent only belongs to the inventor and successor, which is the ‘inventor rule’. Therefore, a patent application by someone other than an inventor or successor shall be refused (Article 62) and even if registered, can be the object of patent opposition (Article 69.2), invalidated (Article 74) or cancelled (Article 133). Nowadays, since many countries have a strong tendency to promote industrial development by protecting inventors, the ‘inventor rule’ is a global trend.
An inventor is a natural person who actually made the invention. Invention is not a legal, but a factual act, so a person who is not able to conduct legal activity can still make an invention. Also, an inventor is one who directly participates in the creative act of invention, so a mere assistant, advisor or lender of money cannot be an inventor. An inventor also has a right to have his name stated in the application, other than being patented.
A juridical person cannot be an inventor. Article 42.1 provides that a patent application shall state the name and address of the applicant (and, if a juridical person, then the name and address of the business) and the inventor. An applicant needs only to state the name of the juridical person while an inventor has to state the inventor’s name, meaning that an applicant may be a juridical person while an inventor has to be a natural person.
Also, where some of the inventors are omitted or erroneously stated in the patent application due to applicant’s mistake, adding or revising is allowed until the time of decision to grant or refuse the patent. (Article 28 of Ministerial Decree)
Where more than one person jointly makes an invention, they are entitled to jointly own the patent (Article 33.2) and all the joint owners shall jointly file patent application. (Article 44) According to the current law, if any joint inventor objects, remaining joint inventors cannot file application and if only part of the joint inventors participate in the application, the application shall be refused or, if granted, invalidated or cancelled.
Requirements for a joint inventor are same as for sole inventors, and a mere administrator, assistant or lender of money is not a joint inventor. Therefore, in order to be a joint inventor, one has to be an actual cooperator who directly participated in the conceiving or completing of the technical idea.
Employee invention and joint research and development (R&D) are main issues in the joint invention. In an industrial or academic‐industrial joint R&D, it is difficult to decide the share of contribution made by each participant. Therefore, it is necessary to make an agreement by contract in advance. The Patent Act provides that where joint applicants have agreement on each applicant’s share, they have to state so in the application and file to the Commissioner of KIPO along with a document proving there was an agreement. (Article 27 of Ministerial Decree)
The right to obtain a patent may be transferred by contract, inheritance or other general succession. (Article 37.1) This right can be transferred partially. The successor only succeeds to such right as a property right and the inventor’s right to fame remains with him. So, the real inventor’s name has to be stated in the application. Where the right to obtain a patent is jointly owned, each joint owner needs the consent of all other joint owners in order to transfer the right.
Regarding whether or not a successor can be deemed to have succeeded to the right to obtain an overseas patent, there is disagreement but the general interpretation is that unless otherwise agreed to, succession is limited to domestic patents due to the principle of patent independence. Therefore, a successor who wishes to be granted a patent overseas needs to put it in an agreement.
An inventor naturally has inventor’s right, which is included in the right to obtain a patent. However, a patent right is not automatically granted to an inventor but to the first‐to‐file applicant. Because of the inventor rule, a non‐inventor cannot patent even if he is the first‐to‐file applicant.
Non‐right holder is divided into the fraudulent patent holder who is not a legitimate holder of the right to obtain a patent and the ‘good faith non‐right holder’ who is a successor to the fraudulent patent holder. Note, however, that a non‐right holder in Articles 34 and 35 includes both.
Patent application by a non‐right holder shall be refused, cancelled or invalidated. However, although an application by a non‐right holder can be refused or, if granted, cancelled or invalidated, the fact that an application was filed remains, which may hurt the application by a legitimate holder of the right. Thus, Article 34 protects applications
of legitimate holders who files while a non‐right holder’s application is pending, and Article 35 does the same after granting of a patent to a non‐right holder.
B. Protection of legitimate holder of right
(1) Patent application by non‐right holder and protection of legitimate holder of right
Where a patent application is not granted on the ground that it is filed by a non‐right holder, an application by a legitimate holder of right filed thereafter is deemed to have been filed at the same time as the non‐right holder. However, where application by the legitimate holder of right was filed after 30 days from the date when the non‐right holder is decided not to be patented, the above shall not apply.
Therefore, where application is filed within the period designated by law, since the legitimate holder of right’s application is effective retroactively, the legitimate holder shall have priority over a third person filing in between. “Date when a patent application is decided to be refused” is interpreted to mean the date when patent application is finally refused for lack of right and the KIPO notifies accordingly. It will also mean, the filing date of when a non‐right holder files a written withdrawal or abandonment.
(2) Patent of non‐right holder and protection of legitimate holder of right
Where a illegitimate holder of right’s patent is cancelled in an opposition procedure or is finally invalidated in a patent tribunal on the ground that it is an application by an illegitimate holder of right, the patent application by the legitimate holder of right is deemed to have been filed. However, where a legitimate holder of right filed a patent application after two years from the patent registration by an illegitimate holder of right or after 30 days from the patent finally being cancelled, the patent application by the legitimate holder of right does not take effect retroactively to the date of application by the non‐right holder.
C. Conditions for protection of patent application by legitimate holder of right
CHAPTER 4 PATENT APPLICATION
SECTION 1 PROCEDURE OF PATENT APPLICATION
Patent application is an act of submitting an application by an inventor requesting the KIPO to make a patent decision, by which the inventor can be granted a patent. Copyright belongs to the creator ab initio from the moment of creation without any procedures or methods but, a patent is created by an act of the government. That is, an inventor has the right to a patent but he/she must apply for it and perform necessary procedures in order to be granted a patent. A patent application is an attempt to monopolize certain technology and has a big impact on people so it must be submitted to the KIPO in a physical or electronic document format prescribed by relevant laws, in order to prevent uncertainty about its content. Patent applications failing to meet such requirements can be refused a patent or be subject to disadvantage even after being patented.
Once a patent application is recognized legally and accepted by the KIPO, the application date and number shall be issued and a written notice of the application number shall be sent to the applicant. Submission of the application shall become effective on the date of the application’s arrival at the KIPO.
Patent application shall be submitted by an application document, detailed description, drawing and abstract of the disclosure in a physical or electronic document format complying with relevant laws. (Patent Act, Article 28‐3) Submitted documents shall be prepared separately per application unless otherwise provided by law, it will include the applicant’s name (in the case of a juridical person, its name) and identification number (applicant code) and have the applicant’s seal stamped. However, in the absence of an applicant code, it shall include the applicant’s name and address (in the case of a juridical person, its name and place of business) and have the applicant’s seal stamped. (Patent Act Enforcement Rule, Article 2)
In the application procedure, if necessary, it is possible to submit a sample. But, an oral explanation or submission of the sample cannot replace a written application. This writing requirement is in principle adopted in all procedures of KIPO or KIPT, as well as in patent applications.
Application documents have to be in Korean (Patent Act Enforcement Rule, Article 4.1) and if not, shall be returned as an illegal application. (Patent Act Enforcement Rule, Article 11.1) Attachments to the application, such as power of attorney, certificate of nationality or priority claim shall include Korean translations as well. However, among the priority claim document, detailed description and drawing of the invention, to the extent that they are identical to those attached to the application, do not have to include a Korean translation with a proper explanation. (Patent Act Enforcement Rule, Article 4.2).
Patent application shall be submitted in accordance with the form provided by patent laws and if not, may be returned as an illegal application. (Patent Act Enforcement Rule, Article 11) Also, the applicant may be instructed to amend his/her application by the Commissioner of KIPO (Patent Act, Article 46) and if he/she fails to do so, the Commissioner may invalidate the application. (Patent Act, Article 16)
Ⅲ. Types of Application Form for Patents
1. Application Form for Patents
A person who wishes to be granted a patent has to prepare a patent application in the form prescribed by Attached Form #10 of the Ministerial Decree to the Patent Act (“Ministerial Decree”), attach necessary documents and file them to the Commissioner of KIPO.
A. A patent application has to state the following. (Article 42.1)
B. The following has to be attached to the application.
Where an agent, which in this Act includes patent administrators, purports to represent a person who is initiating a patent‐related procedure before the Korean Intellectual Property Office, the agent shall present written proof of a power of attorney.
The most important attachment to the application is the description, of which the ‘detailed explanation of invention’ functions as a technical documentation showing the content of the invention as a result of technological development, and the ‘claim’ functions as a title of right showing the technical scope to be claimed as a patent. In order to show content of an invention, the following has to be stated according to relevant provisions
A. Title of invention
This facilitates classification, investigation, etc. of the application and has to be stated concisely and clearly according to content of the invention
B. Brief explanation of drawing
C. Detailed explanation of invention
This explains the invention stated in the patent claim and functions as documentation of the invention. It must state, as prescribed by the Industry and Resources Ministerial Decree, the invention in such a manner that it may easily be carried out by a person
with ordinary skill in the art to which the invention pertains.22) (Article 42.3 of the Act)23) Violating this can be cause for a decision to refuse, and if granted, can invalidate a patent application.
(1) Explanation of terminology24)
(2) Requirements for statement
(A) Task to solve
This is the motive of invention. Past technology related to applicable industrial area for the invention must be specifically stated and the task the invention is intended to solve by deriving problems of the past technology has to be clearly stated.
(B) Means of solution
Specific technical means to carry out the purpose of invention has to be stated along with its working. Technical means has to be stated clearly and specifically, and state examples of working which show how the invention is materialized.
23) Patent Act revised Jan 3, 2007 abolished the provision requiring statement of purpose, construction and effect of invention, and required that invention be stated clear and detailed according to the Industry and Resources Ministerial Decree.
24) 1 Examination Guideline of the KIPO (Sep 1, 1998)
1) Technical means to solve a problem: Technical means to carry out the purpose of the invention and the connection between technical means must be stated specifically. However, a technical idea not directly related to the essence of invention need not be stated.
2) Function and working: Not only connection but also function and working of the technical means has to be clearly stated so that a third person can carry it out easily.
3) Examples of working: Specific examples need to be stated to allow a person with ordinary skill to reproduce the invention. And, stating more examples helps clarify the technical idea of the invention and interpret the scope of patent stated in the claim. When using drawings to explain examples, the invention can be clarified by noting ‘symbols of drawing’ in parenthesis.
(C) Effect of invention: Favorable effects, as compared to past technology, derived from combination of the technical means achieving the purpose of invention has to be stated. This can be an important criterion for determining inventive step.
Revised Patent Act (promulgated Jan 3, 2007 and taking effect Jul 1, 2007) abolished the division of purpose, construction and effect, and allowed stating detailed explanation of the invention in a method prescribed by the Industry and Resources Ministerial Decree.
D. Patent claim
Patent claim is a kind of title of right. An inventor publishes invention by ‘detailed explanation of invention’ in the description and the scope of patent. What the inventor obtains in return is determined by the patent claim. (Article 97) Thus, a patent claim has to include one or more claims stating the protection intended for, and the claims have to meet the following.
The Patent Act revised on January 3, 2007 abolished the requirement that a claim only state indispensable items in the construction of an invention.
A drawing transfers an invention into picture in order to serve as a better understanding and is a supplement to description. Drawing can only be attached when necessary from the types of invention, so if it is not necessary or not able to be attached, as in a chemical material, it need not be attached. A drawing has to be prepared according to the guidelines prescribed in Attached Form #12 to Article 21 of the Ministerial Decree.
PATENT APPLICATION CHAPTER 4
A. An abstract attached to a patent application may not be interpreted to define the scope of an invention for which protection is sought but it serves as technical information. (Article 43)
B. Abstract must be prepared in the order of【summary】, 【representative drawing】 and 【reference】.
[Attached Form #10] Patent application form
【Document】patent application【addressee】KIPO Commissioner【Filing date】【international patent classification】 【Invention in Korean】 (Stated so that the whole invention can be generally under
stood)【Invention in English】 【applicant】
【Name】 【applicant code】 (Application for applicant code to be attached)
【 Inventor】【Name in Korean】 【Name in English】 【Resident Registration Number】 【Zip code】【Address】
【Examination request】 (Request can be made within five years of application)【Early publication】 (Published after 3 months if requested and after 18 months by default if not)【How to receive registration certificate】【Intent】Pursuant to Article 42 of Patent Act, application is hereby filed.
【Fee】 【Base fee】 【Examination fee】 【Total】 【Reduction or exemption】 【After reduction or exemption】
【Attachment】 1. Abstract, description, drawing (1 for each)
PATENT APPLICATION CHAPTER 4
[Attached Form #15]25)
【Title of invention(device)】
【Detailed explanation of invention(device)】 【Technical area】 【Background technology】 【Content of invention(device)】
【Task to be solved】 【Means to solve task】 【Effect】
【Details to work invention(device)】 (【Example of working】) (【Industrial applicability】)【scope of Claim of patent(utility mode registration)】【Claim 1】【Brief explanation of drawing】
[Attached Form #12]
【Drawing】【drawing 1】【drawing 2】
[Attached Form #13]
25) Taking effect on Jul 1, 2007.
A. Method of application
In order to file patent application, applicant has to prepare application and file it to KIPO. A method of filing includes written filing and electronic filing using KIPO electronic filing system filing electronic document on line or by floppy disc. However, an invention ordered to maintain confidentiality cannot be filed in electronic document.
B. Applicant Identification Number
A person filing a patent application must apply to KIPO or the Intellectual Property Tribunal (“Tribunal”) for an ‘identification number (applicant code number)’, which shall be provided immediately. If requested by mail, the number shall be returnted by mail. The number shall be used for all documents filed to KIPO or the Tribunal.
C. Application procedure using electronic document
Ⅳ. Claim of Patent
The modern patent system was first legislated in England and ‘patent claim’ was adopted in 1883 by law. As technology diversified with industrial development, it became difficult to make patent infringement determination by statements in the description. Also, the term ‘patent claim’ went into use in the U.S. in the 1820s, gradually being used as an independent item at the bottom of the description. Even after the term ‘patent claim’ became popularized, it was just for reference and the focus was on the description and the drawing.
However, the usefulness of the patent claim was recognized among patent practitioners and U.S. Congress ratified its use by legislating it in 1836. After that, with respect to the scope of claim, the U.S. changed from the center limitation rule to the border limitation rule.
With such background, patent claim is being used as important criteria for interpreting the scope of right. An inventor needs to recognize the importance of the patent claim, which is a title of invention for the patent he obtained in return for his invention.
2. Function of Claim of Patent
Patent claim’s essential and fundamental functions are the protection scope function and the invention defining function.
A. Scope of protection
As may be known from its birth, patent claim is the scope for which an applicant wants protection for his invention, so when someone infringes on the scope, it is patent infringement. In order to clarify this, the Patent Act provides that “the scope of protection conferred by a patented invention is determined by the subject matter described in the claim(s).” (Article 97) Thus, invention stated in the description but not in the claim(s) is not protected.
B. Requirement of construction
Claim(s) must define the invention clearly and concisely. (Article 42.4.2 of the Act)
A. Requirements for statement
A patent claim has the purpose of obtaining protection for an invention, so inventors need to state it so they may have maximum protection. Also, since an invention must be completed, everything necessary to specify the invention must be stated clearly.
There has to be one or more claims, which must be supported by a detailed explanation of the invention and that which defines the invention clearly and concisely. (Article 42.4 of the Act) Thus, an application not meeting the above shall be refused and, if the patent has already been granted, the patent shall be cancelled or invalidated.
(1) To be supported by detailed explanation of the invention
(A) A patent claim must only state the invention mentioned in the description because protecting an invention not stated there is against the purpose of the patent system.
(B) Types not supported by detailed explanation of the invention
1) Where items corresponding to the statement of claim is neither clearly stated nor implied in the description of invention.
2) Where the description and the claim have discrepancy in terminology and their correspondence (matching) is unclear.
3) Statement in the patent claim is phrased as ‘means’ to carry out a certain function or ‘work process’ but the description does not clearly state specific technical construction to implement such means or work process.
(2) Invention shall be stated clearly and concisely
Where, in order to broaden the claim, the construction requirement of the invention is not clearly stated with functional expressions, where combination among the elements and thus the invention is unclear, or where the patent is granted for an invention whose statement is not concise, the burden of interpreting protection scope is shifted to a third person, hurting legal stability. Thus, the patent claim has to state the definition clearly and concisely. However, a functional statement, if clear as a whole, is very helpful in stating the claim.
B. Method of statement
(1) On September 1, 1981, the Patent Act abolished the single claim system where only one claim is stated in the patent claim. The multiple claim system was adopted
where two or more claims are allowed. On the method of stating independent and subordinate claims, Article 5 of the Presidential Decree provides as follows:
[Example 1] Examples where claims citing two or more claims cite other claims
citing two or more claims
1) Method of _____
2) Method of _____ in claim #1
3) Method of _____ in claim #1 or #2
4) Product manufactured by Method of claim #2 or #3
[Example 2] Examples where claims citing two or more claims cite other claims
citing claims citing two or more claims
1) Method of _____
2) Method of _____ in claim #1
3) Method of _____ in claim #1 or #2
4) Method of _____ in claim #3
5) Product manufactured by method of claim #2 or #4
(3) Statement of subordinate claim
[Example]: Prohibited examples (Claim #3 and claim #4) 1) Method of _____
2) Method of _____ in claim #1 3) Method of _____ in claim #2 4) Method (or Product) of _____ in claim #2 or #3
Meanwhile, revised Patent Act (promulgated January 3, 2007; Effective July 1, 2007) allowed a patent claim to be submitted by request of examination or publication of filing.
V. Singularity of Invention
As technology becomes advanced and sophisticated, in order to properly protect an invention obtained from technological development, and to allow people to easily check filed inventions and help KIPO to speed up and improve efficiency of examination, the KIPO determines the scope of multiple inventions included in one application, i.e., the scope of patent application. Thus, despite the ‘one invention, one application’ rule, a group of inventions that form a single general inventive concept may be the subject of a patent application. (Article 45) The U.S., Japan and EPC have similar provisions.26)
A group of Inventions can include multiple independent claims of same or different category. Where the category is the same, the following has to be met.
A. Invention with the same industrial application area: includes cases where specific a invention and related invention have the same, overlapping or directly related technical areas.
26) Article 121 of the US Patent Act provides that if two or more independent and distinct inventions are claimed in one application, the Director of USPTO may require the application to be restricted to one of the inventions, and Article 1.141(a) of the CFR in principle does not allow two or more independent and distinct inventions to be claimed in one application.; Article 82 of EPC (“Unity of invention”); Article 37 of the Patent Act of Japan
27) Article 37.1 of the Patent Act of Japan
B. Invention with the same task: includes the case where a specific invention and related invention have the same or overlapping tasks to solve.
C. Invention with the same main part: ‘main part of claim elements’means that the part deemed necessary to specify the invention by task, and the ‘invention with the same main part’means the case where the related invention has as its main part the main part of specific invention.
A patent application must relate to a single invention only. However, a group of inventions that form a single general inventive concept may be the subject of a patent application (Article 45), with the following requirements. (Article 6 of Presidential Decree)
4. Legal Effect for Breach
Whether or not the ‘one invention, one application’ rule is violated concerns not substantive requirements but the filing procedure of treating two or more applications as one. Thus, a violation shall be cause of patent refusal (Article 62) but, if the patent has been granted, it shall not be a cause of patent invalidation or a request of reason for the patent. Also, where an applicant is refused a patent for the above violation, the applicant can file divisional application or file an amendment by deletion within a designated period.
VI. Withdrawal and abandonment of application
An applicant can withdraw or abandon his/her patent application during the patent procedure. Withdrawal or abandonment may be caused by events prescribed by law or by the applicant’s own will.
SECTION 2 AMENDMENT OF APPLICATION
Ⅰ. Amendment system
Amendment of an application means a procedure which, where the method of application or statement of the description or drawing has flaws. Thus, the applicant cures such flaws during the application procedure while maintaining the identicalness of the original description or drawing. In the first‐to‐file rule, applicants may be haste in filing in order to secure first‐to‐file status and thus the description or drawing may have flaws or unexpected problems. The amendment of application is intended to remedy this problem by protecting the applicants by providing opportunities to cure the flaws. However, since an amendment becomes effective retroactively, unlimited amendment is against the first‐to‐file rule and can hurt third‐parties. Also, unlimited amendments may harm the stability of the patent system and cause problems during the examination procedure.
Therefore, the Patent Act adopts a qualified amendment principle where post‐application amendment is acknowledged with qualification in time and content.
2. Types of amendment
Amendment of patent application is divided into procedural and substantive amendment.
A. Procedural amendment: Where a patent procedure does not meet the method prescribed by law, it can be amended. (Method amendment) Procedural amendment can be done by the applicant’s will or by an amendment order from the KIPO Commissioner. (Article 46)
B. Substantive amendment: Substantive amendment concerns not the mode of application but the description or drawing in which case their erroneous contents are amended. Substantive amendment can be done by the applicant’s will or by an amendment order from the KIPO Commissioner. (Article 47)