1. Request for Examination  
A request for examination must be filed within five (5) years from the Korean filing date (or from the international filing date for a PCT application).  Otherwise, the patent application concerned shall be deemed to have been irretrievably withdrawn. 

 It is to be noted that when filing the request for examination, an applicant should contemplate the number of claims to be presented in the application, since the expense not only for filing the request for examination but also for paying the patent annuities after being granted a patent increases as the number of claims remaining in the application increases. 

 It is also to be noted that an applicant should determine the appropriate time to file the request for examination, since the term of the patent right shall be twenty (20) years from the Korean filing date, and the examination procedure is first initiated after about two to three years from the date of filing the request for examination. 

 With respect to a divisional application, a request for examination must be made within a non-extendible period of thirty (30) days from the date on which such application has been filed, even after said period of five (5) years has expired. 

2. Order of Examination
The examination of patent applications will be carried out in the order of receipt of the requests for examination.  However, due to a backlog in examinations, even when such examination requests are filed upon filing the application, examination will not take place for at least about two to three years after the filing date of such application.   

The patent application that has not yet been published shall be laid open in the Patent Laid-Open Gazette at the expiration of eighteen (18) months from the priority date of the application, or from the actual filing date in Korea if no priority date is claimed, regardless of the examination proceedings of the application.
Under the old Act, the laying-open of a patent application was possible only after eighteen (18) months have passed from either the filing date or priority date, whichever was earlier.  However, from July 1, 1996 an application can be laid open in the Gazette at any time prior to eighteen (18) months from the effective filing date, if the applicant desires so.  The intent of this system is to provide the patent applicant with provisional protection during early stages of the application by enabling the applicant to claim retroactive compensation for damage which occurred from the date of laying-open of the application in the Gazette, only after the registration of the patent right

  
  The applicant can request preferential examination, when the Commissioner of the KIPO recognizes that a person, other than the applicant, is commercially and industrially working the invention claimed in a pending application after the application has been laid open or when an invention claimed in an application falls under the following categories: 

1. application in the field of defense;
2. application useful for the prevention of environmental pollution;
3. application directly related to the encouragement and improvement of export;
4. application related to official services of the central or local government;
5. application by a business approved as a venture business according to the    regulations under Article 25 of a Special Measure Law of the venture business    promotion;
6. application related to products resulted from the nation’s new-technology    development supporting works or quality certification projects;
7. application being a basis of a priority claim according to the Treaty (but, which    should be in progress of application procedures in other foreign Patent Offices,    claiming the priority based on the application);
8. application related to an invention which an applicant is carrying out or he is    getting ready to carry out; and
9. application directly related to electronic transactions.

 
1. General Aspects 
 It is possible that the invention for which the applicant seeks protection will vary from the one originally filed, due to continuing development of the invention, or as a result of research of competitors’ development activities and/or market demands.  In such cases, the applicant can change any pat of the application including the specification, claims and drawings.  However, the periods and extent for filing amendments are strictly limited under the Korean Patent Act, which intends to harmonize the interest between the applicant and any third parties. 

2. Possible Periods for Amendments 

a) Voluntary Amendments 
  A voluntary amendment can be filed any time before receiving a Notice of a First Preliminary Rejection or a Notice of Allowance of Patent.

3. Extent of Amendments 
   Before the transmittal of a certified copy of the grant decision, both the detailed description and the claims can be amended to any extent within the scope of the original disclosure of the application.  In other words, any kind of amendment can be made to the claims or disclosure, including the drawings, so long as it does not introduce new matter. 
If the amendment goes beyond the scope of what was originally disclosed in the application and what is obvious or self-evident from the original disclosure, it shall be a reason for rejection to a patent application, a reason for opposition to the grant of a patent or a reason for invalidation trial of a patent.

 In order to be granted a patent, an invention must meet the following three requirements; industrial applicability, novelty and non-obviousness (inventive step).  However, if the Examiner finds any reason for rejection of an application, a Notice of Preliminary Rejection Reasons is issued.  The applicant can file a Response to the Notice as an Argument and/or Amendment, within two (2) months from the date of the notification.  An applicant can usually obtain an extension of the one-month term, without limiting the number of times, simply by filing a request.

1. Types of Rejection Reasons 

a) Industrial Applicability 
An invention may not be granted a patent unless it is industrially applicable. “Industrial” is not defined under the Patent Act but is generally considered to be a very broad term.  Patent applications for inventions which are impossible or difficult to work are usually rejected on the grounds that they do not have industrial applicability.  (e.g., perpetual motion, invention using human body) 

b) Lack of Novelty 
 Any invention identical with any of the following inventions is rejected as lacking novelty: 

(i) invention publicly known or worked in Korea prior to the filing date, or

(ii) invention described in a publication distributed in Korea or in a foreign country or invention used by the public through electric communication circuits prior to the filing date. 
Rejection for lack of novelty is most often based on paragraph (ii), and rejections based on paragraph (i) are rather rare.    
When the claimed invention is regarded as identical with, or anticipated by the prior art, the   Examiner rejects the claim for the reason of lack of novelty.  However, this type of rejection is made only when the claimed invention is disclosed in a publication issued before the filing date of the application.    
  Note that paragraph (i) is based on events that took place in Korea only and do not include any matter publicly known or worked in any foreign country.  However, the Supreme Court has held that “due to easy transportation and communication between Korea and Japan,
it is not difficult to infer an invention which was known or worked publicly in Japan to be considered as an invention which was known or worked publicly in Korea.”  In view of this Supreme Court precedent, it seems to be difficult to say that “worked or known in other countries without any publication” is not sufficient to negate novelty.    
  Where the invention claimed in a later application is identical with that claimed in a prior application, the later application is rejected to avoid duplicate patenting. 
  Further, where an invention for which a patent application is filed is identical with an invention or device described in the specification or drawings initially attached to another patent application which was laid open or published after grant for public inspection after the filing date of said patent application or to a utility model application which was published after grant for public inspection after the filing date of said patent application, a patent shall not be granted for the invention of the said patent application.  This provision shall not apply, however, in cases where the inventor of the patent application concerned and the invention of the other patent or utility model application are the same person or where the applicant of the patent application and the applicant of the other patent or utility model application are the same person at the time of filing.  And also, the provision shall not apply in cases where the filing (priority) dates of both applications are the same.

c) Inventive Step or Non-Obviousness
  
   Even if the claimed invention is not so identical with any of the inventions as to lose novelty under paragraph (I)-(ii), above, the invention may still be rejected, as lacking an inventive step, if the invention is readily conceivable by a person skilled in the art to which the invention belongs.    To determine whether or not an invention is readily conceivable or obvious from the prior art, the “features of the invention” are first studied.  The invention is considered to have an inventive step or non-obviousness where the “features of the invention” are not readily conceivable from the prior art.  Even if the “features of the invention” are readily conceivable, the invention may still be considered to have an inventive step where features of the invention bring about unexpected “advantageous effects or results.”  The non-obviousness type rejection is most often encountered by the applicant.

d)  Insufficient Disclosure 
   When the Examiner considers that the disclosure of the invention is insufficient, namely, not detailed enough to enable anyone skilled in the art to work the invention, the application is rejected.  Further, if the drawings are considered insufficient to enable the reader of the specification to understand or work the invention, the application is rejected. 
   Under the Korean Patent Act, the “description of the invention” in a specification is required to explain the purpose, features and advantageous effect(s) of the invention, so that a person skilled in the art to which the invention relates can easily practice the invention without any obstacle.    When the Examiner considers that the claim does not define all the necessary conditions or elements of the invention required to obtain the intended advantages, the claim is rejected. 
    In many cases, when the Examiner considers the claim to be too broad in view of the state of the art and believes it should be restricted to incorporate some additional features disclosed in the specification so as to define a patentable invention, he cites some prior art reference(s) to reject the claim and at the same time, issues a rejection based on insufficient disclosure. 
  When the Examiner considers that the application contains a patentable invention but the claim is too broad, he also points out that the purpose is not accomplished by the claimed invention by citing a prior art reference covered by the broad claim and rejects the application as being insufficient in disclosure, and implicitly requires that some additional features of the invention should be incorporated into the broadest claim. 
   If an amendment to the specification or drawings shall be made beyond the scope of the disclosure in the specification or drawings originally filed in the application, the application is rejected.

e)  Lack of Unity of Invention 
Under Patent Act, various kinds of inventions or claims directed to different aspects of the invention can be filed in a single patent application.  However, they must be linked as to form a single general inventive concept as prescribed in the Act.  When the relationship between them is not defined in this concept, the Examiner rejects the application based on a lack of unity in the claimed inventions. 
   A reason for the lack of unity of invention cannot be used as a reason in an opposition or a trial for invalidation of a patent right.  This is because the provision does not relate to the intrinsic patentability of inventions and was established solely for the purpose of reducing the work load on the Examiner in prior art searches. 

f) Use of Improper and Inconsistent Terminology 

   These kinds of reasons for rejection are common in the early stages of examinations since most newly evolving technologies do not have corresponding standard Korean terms.  Also, each presiding Examiner has his own preference for particular technical terms.  However, rejections based on these reasons can be easily overcome if the specification is amended using clear terms and expressions which meet the presiding Examiner’s preference. 

g) Lack of Reference Numerals in Claims 
  
  Most Korean Examiners have a very strong preference for having the reference numerals of drawings in the claims since they have a misconception that the claims are not definite without the reference numerals set forth in the claims.  Although the official printed procedure only suggests inserting the reference numerals, their insertion can be regarded as a requirement under the Korean patent practice. 

2. Interpretation of Rejection Reasons    

    When a Notice of Preliminary Rejection Reasons or some other kind of Official Action is received, it is important to grasp the true intention of the Examiner.  Patent Attorneys should be accustomed to the way the Examiner thinks and should be in a better position to understand the true intention of the Examiner.    The reason for rejection may be based on a lack of novelty or obviousness only, insufficient disclosure only, a combination of lack of novelty and insufficient disclosure, or any formal defects. 

a) Lacking Novelty or Obviousness 
  
   Whenever an application is rejected as lacking novelty or as being obvious, it can be considered thereafter to be free of the problem of insufficient disclosure, because it can be assumed that the Examiner conducted a prior art search after fully understanding the invention based on the disclosure of the application.  It is therefore necessary to clearly specify in an argument any differences between the prior art and the invention of the application, and any technical superiority of the invention of the application derived from the differences. 

b) Insufficient Disclosure or Formal Defects 
  
  Whenever an application is rejected for insufficient disclosure only or formal defects only, it can usually be assumed that the Examiner did not find any prior art against the invention of the application and is willing to grant a patent on the application if the partial insufficiency of the disclosure of the application or any formal defects are corrected.  If the rejection for insufficient disclosure is reasonable, it is only necessary to amend the application as pointed out by the Examiner.  If the application is very poorly drafted, the Examiner may be unable to fully understand the details of the invention and, therefore, be unable to conduct a prior art search.  In this case, a rejection based on prior art may be made after the specification is amended to correct the insufficient disclosure. 

c) Rejection of Only Some of Claims 

   When the Examiner rejects only some of the claims filed, the application will sometimes be allowed if the rejected claims are deleted.  Under Korean patent practice, however, even if only one of a plurality of claims is rejected, the entire application can be rejected.  The Examiner, therefore, may not refer to the other claims if there is reason for rejecting one claim, unlike the U.S. practice where the Examiner is required to refer to all the claims when issuing a Notice of Preliminary Rejection.

3.  Response to be Filed    
  
   As for preparing the response to an Official Action, the applicant can file an Argument either alone or together with an Amendment.  Unless the reason for rejection is clearly unreasonable, it is recommended that an Amendment be filed together with an Argument, so as to increase the application’s chances of being allowed.  Note that amendments on the application as well as claims are allowed only within the time limit for the response. 

a)  Argument 

i)  Analysis of Examiner’s Reasons for Rejection 

    The reasons set forth in the Preliminary Rejection in Korea are generally quite brief relative to the reasons set forth by the Examiner in the United States, so it is often difficult to accurately determine the Examiner’s intention.  It is, however, extremely important to determine the Examiner’s intention from the Examiner’s brief statement and to submit an Argument directed to the problem the Examiner has in mind. 

ii)  Comparison of Claims with Citations 
   
   Under the Korean patent practice, it is very important to analyze the differences in structure between the cited references and the claimed invention, and to find differences in effect or advantages resulting from the structural differences.  In order to contend that the claimed invention is not obvious from the prior art cited, it is very effective to show the advantages of the claimed invention over the invention in the cited references. 

iii) Assertion of Unexpected Effects 

    When two or more prior art references are cited in the preliminary rejection, it is very important to show that the advantages obtained by constitutional elements disclosed in the combination of elements are more than an arithmetic sum of the advantages obtained by constitutional elements disclosed in the cited references.  In other words, it is very effective to show the advantages obtained by the cited references and to show that the advantages obtained by the combination of these elements are not a mere arithmetic sum of the advantages obtained by these elements, but unexpected effects. 

b) Amendment    

    It is possible to make an amendment to the specification and/or drawings within the extent of the matters disclosed in the specification and/or drawings as originally filed as the Korean application. 

i)   Reducing Scope of Claims 

   If it is not possible to assert that there are structural differences and differences in advantages between the claimed invention and the cited inventions, then it is desirable and effective to reduce the scope of the claims.  In mechanical engineering cases, when a claim of an application partially overlaps into the prior art or the invention of an earlier application, it is effective to reduce the scope of the claim to exclude the overlapping part.  Similarly, when a claim is rejected as being too broad, it is also effective to exclude the part which is not supported by the embodiments disclosed. 

ii)  Modifying or Deleting Claims 

   Claims can also be modified in response to the Official Action. When some of the claimed subject matter in the claims is identical to the prior art or to an invention of an earlier application, the claims which are identical to such prior art must be deleted. 

iii) Explaining Differences Over Prior Art 

    Addition of a disclosure of the prior art to show the problems inherent in the prior art solved by the invention of the application is effective in arguing the existence of an inventive step.  Where the prior art is not disclosed, an amendment to add the prior art will not generally be deemed as a change in the gist of the invention. 

iv)  New Matter 

   It is not possible to add new structural features which were not originally disclosed in the specification.  If such features are added to the specification, the amendment is dismissed as adding new matter.  However, if the new matter introduced in the specification is considered to be obvious or self-evident from the original disclosure, the amendment is not regarded as introducing new matter and is accepted. 
  In practice, it is very desirable and important to always draft the specification in a way consistent with the claimed invention.  In other words, the object of the invention and the advantages obtained by the invention must be in line with the drawback inherent in the prior art. Therefore, in view of the object of the invention and the advantage of the invention, the structural features for accomplishing such an object and obtaining such advantages must be clearly defined in the claims.  This requires careful amendment of the specification.   Otherwise, the application will be rejected. 

F. Decision for Patent Grant   

  If the Examiner finds no preliminary rejection reasons for the claimed invention in a patent application for which the request for examination has been filed, he shall make a decision for patent grant. 

G.  Options after Receiving Final Rejection 

   A final rejection can be made when the reasons for rejection found by the presiding Examiner are not resolved by written arguments or amendments presented by the applicant.  If the applicant is not satisfied with such decision, the applicant has several options available in order to respond to this decision.  As a first option, a patent application can be converted into a Utility Model application.  Utility Models are limited to structural inventions.  Method inventions cannot be protected by Utility Models.  Conversion of a patent application into a utility model application is therefore possible only in the case of structural inventions.  Secondly, it is advisable to narrow the scope of the claims and file an Amendment and Appeal against the final rejection.

H.     Registration  

   It usually takes more than two and a half years for an application to proceed to registration after the request for examination has been filed. 

 The patent right shall come into force upon establishment of its registration.  A person desiring to register a patent right shall pay the registration fees for the first three years within three months from the receipt of a copy of a decision that a patent is to be granted. 

  A patentee or any person wishing to register a patent right may pay the patent registration fees within six months following the expiration of the payment period set forth above, paying double the patent registration fees as a penalty for the late payment. 

   In order to ensure the prompt granting of a right, the Pre-grant Opposition System was abolished and the Post-grant Opposition System has been implemented since July 1, 1997.  

  Where the Examiners finds no grounds for refusal of a patent application, he shall make a decision for patent grant.  Then the applicant shall pay the registration fee. After the patent applicant pays the registration fee, the KIPO publishes the patent application in the Patent Gazette (Patent Registration Gazette). During the period from the registration date to 3 months following the registration publication date, any person may file an opposition against the registration of the patent.

J.      Appeal and Trial

 The applicant may lodge an appeal against the Examiner's final rejection within 30 days from the date of receipt of the notice of final rejection. Any party which doubts the validity of a right may request a trial for invalidation of patent.  

  Such appeal and trial procedure are conducted in the Industrial Property Tribunal which was established by merging the former Trial Board and Appeal Board as of March 1, 1998 in the KIPO.

  The Industrial Property Tribunal's decision may be appealed to the Patent Court which was also established as an appellate level court and has been operating from March 1, 1998.  

1. Trial to Confirm Scope of Patent Right 

2.  Trial for Invalidation of Patent Right 

  If a patent falls into one of the following particulars, the patent can be invalidated by a Trial: 

a)  In the case that a patent has been granted to a person who has no light to own and enjoy the patent right. 

b)  In the case that a patent has been granted for an invention that is nor a new industrial one. 

c)  In the case that a patent has been granted for an invention known and used publicly prior to the filing of the patent application. 

d)  In the case that a patent has been granted for an invention published on the publication circulated in Korea or in a foreign country and/or for an invention used by the public through electric communication circuits, prior to the filing of the patent application. 

e)  In the case that a patent has been granted for an invention which was filed later than another prior application covering the same invention. 

f)  In the case that a patent has been granted for an invention which can not be carried in business. 

g)  In the case that a patent has been granted for an invention in contravention of the prescription to prohibit the addition of new matter. 

 The Trial for invalidation of Patent must be demanded by an interested party only or a KIPO Examiner in charge. If a patent is invalidated by a judgment, it is recognized that the patent right did not exist from the beginning.
   
3.  Trial for Correction
  
  After the grant of a patent, if the patentee finds one of the following items, it is possible to make an amendment to the patent through a Trial for Correction:

a)  To narrow the scope of the claims,

b)  To correct the clerical errors, or

c)  To clarify the ambiguous description.

  However, it is impossible to broaden the scope of the claims and the amendment must be one which would be acceptable at the time when the patent was granted - However, this provision shall not apply where an opposition to the patent is pending.

  This trial is intended to protect an invention by providing the opportunity for a patentee to make corrections on the condition that there are not any unexpected losses or damages incurred upon any third parties.  When a trial decision stating that the specifications or drawings of a patented invention are to be corrected become final and conclusive, the patent application, the laying-open of the decision and the registration of the establishment of the patent right, shall be deemed to have been made on the basis of such corrected specifications or drawings.

 Under the present provision, a trial for invalidation can be requested independently of a trial for correction.
  With the purpose of making a prompt decision, the 2001 Revised Patent Act prescribes that an applicant under a trial for invalidation should not request a trial for correction simultaneously, instead it provides an opportunity for correction in the course of the trial for invalidation (effective as of July 1, 2001).

4. Trial for Invalidation of Correction

  If Correction has been made beyond the scope in the above trial for correction, an interested party or an Examiner can initiate a trial for the invalidation of correction.

5. Trial for Granting Non-exclusive License

   If a patentee, or exclusive or nonexclusive licensee, desires to obtain permission to exercise the patent right provided that  where the working of a patented invention would infringe another person's patented invention, registered utility model or registered design under an application filed prior to the filing date of the patent application concerned, or where a patent right conflicts with another person's design right under an application for registration for a design right filed prior to the filing date of the patent application concerned, the patentee, exclusive licensee or nonexclusive licensee shall not work the patented invention commercially or industrially without obtaining a license from  the owner of the earlier patent, utility model right, or design right, and if the other party concerned refuses it without justifiable reasons or it is not possible to obtain it, the said patentee or exclusive or nonexclusive licensee may demand a trial for granting a nonexclusive license having the scope necessary to work the patented invention.

6. Trial against Examiner’s Final Rejection and Revocation

   Any person who objects to an Examiner’s decision of final rejection and revocation can appeal to the Industrial Property Tribunal within thirty (30) days from the date of transmittal of the certified copy of the decision. A provision for exception is established in cases where a person resides in an area that is remote or difficult to access. The President of the Intellectual Property Tribunal may extend the time limit to 2 months for the benefit of a person in this situation

7. Invalidation Trial of Registration for Extension of Term of Patent Right (Article 134 of the Patent Act)

   Refers to the quasi-judicial administrative procedure to invalidate the registration for extension of the term of a patent right (pursuant to Patent Act Article 134-3), due to any defect in the registration measure.

8.Trial against Decision to Dismiss Application for Registration of Utility Model (Article 54.2 of Revised Korean Utility Model Act)

  The introduction of the Quick Registration System of Utility Model made it possible to register a utility model promptly after basic requirement examination. This system allows applicants to demur to Intellectual Property Tribunal when their application for registration of a utility model has been dismissed as the result of a requirement examination.

L. Re-examination before Trial

 
  When amendments are filed by the applicant within 30 days from the filing of a demand for Trial against a decision of final rejection, the Examiner of the Examination Bureau who was in charge of examining the application concerned is assigned to reconsider the application.   The former Examiner is familiar with the content of the application and the case history, thus the re-examination procedure can expedite the trial examination procedure.

M. Appeal to Patent Court

  Any person who objects to a Trial Examiner’s decision in the Industrial Property Tribunal of the KIPO can appeal to the Patent Court within thirty (30) days from the date of transmittal of the certified copy of the Industrial Property Tribunal’s decision.

N.  Duration

  The old Patent Right remains in force fifteen years from the date of the publication in the Patent Gazette, or twenty years from the date of application (the international filing date if PCT or the actual filing date if Conventional) whichever is earlier, unless it is nullified by an action for its invalidation in the interim.  However, from July 1, 1996, the term of a patent right is changed to 20 years (from the filing date of the patent application).

1.   When an applicant is merged into another company:

a) Certificate of Merger issued by the competent company registry office in the home country,

b) Power of Attorney of the assignee

2.  When an applicant assigns his patent application to another party:

a)  Certificate of Assignment to be executed by the assignor

b)  Assignor’s notarized Individual Nationality Certificate, and

c)  Powers of Attorney executed by both the assignor and the assignee

P. License Grant

  A patentee can grant his party a non-exclusive license or an exclusive license on the patent granted in Korea and, in such event, the exclusive license must be registered with the KIPO.

 In order to register the non-exclusive or the exclusive license with the KIPO, the following documents are needed:

a)  License Agreement,

b)  Power of Attorney and Certificate of Corporation of the patentee, and

c)  Power of Attorney of the licensee.

Q. Points Needs Special Attention

 
 In designating the Republic of Korea, special attention needs to be paid to avoid an unintended designation of KP (Democratic People's Republic of Korea, or North Korea), or vice versa.   
   Although confirmation of precautionary designations may be made within 15 months from the priority date (pursuant to Rule 4.9(b) of the PCT Regulations), such erroneous designation occurs and is found too late to be corrected, as such discovery is often made when the national phase is about to be entered in the Republic of Korea. This is a very serious problem given that there is no recourse to file the patent application again in the Republic of Korea as a national application, since the application would have already been published by WIPO, destroying the novelty of the invention