Preparation for filing a Patent Application Prosecution of the Patent Application Difference between Patent and Utility Model Application Patent Infringement
		KOREAN PATENT PROCEDURE Presented by Yeo-Pyo YOON Senior Partner/Patent Attorney Honesty & Patent
II. Prosecution of the Patent Application
	A. Request for Examination
		1. General Aspects
		Request for Examination
		A request for examination must be filed within five years (or three years in case of a utility model application) 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date for a PCT application), otherwise the patent application concerned shall be deemed to have been irretrievably withdrawn.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 the 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 20 years (15 years for a utility model application) 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, or an application converted from a utility model application or a design 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 the said period of five (or three) years has expired.
		2. The 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.
		3. Amendments to be filed with the Request for Examination
		The applicant can change the specification of his application by filing an amendment concurrently with the request for examination. Such an amendment can be filed (a) when the request for examination is filed by the applicant, or (b) within a three-month response term given to the applicant if the request for examination is filed by a third party. In such a situation, it is advantageous to authorize the request in the name of a person other than the applicant since the applicant then has a three-month response term, from the date of the official notification indicating that a request for examination has been filed by the third party, to file the amendment.
	B. Laying-open of Applications
		The patent application shall be laid open in the Patent Gazette at the expiration of one year and six 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 law, the laying-open of a patent application was possible only after eighteen 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 18 months from the effective filing date, if the applicant so desires. 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, in the event that the application is granted publication.
	C. Preferential Examination
		The applicant can request "preferential examination", when the Commissioner of 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; and
		4. Application related to official services of the central or local government or government-funded research institutes. The preferential examination can also be requested with respect to utility model applications and design applications.
	D. Amendments
		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 part of the application including the specification, claims, and drawings. However, the periods for filing amendments are limited under the Korean Patent Law.
		2. Possible Periods for filing Amendments
		a) Voluntary Amendments
		A voluntary amendment can be filed any time within fifteen months from the effective filing date. The first publication Gazette is issued eighteen months after the effective filing date, and the fifteen-month time limit on voluntary amendments is set to give KIPO the time it needs to include such amendments in the publication Gazette.
		b) With the Request for Examination
		After fifteen months have passed from the effective filing date, an amendment can be filed together with a request for examination (or within three months after receiving a Notice from KIPO that the Request for Examination was filed by a third party).
		Filing of an amendment together with the Request for Examination is allowed so as to provide the applicant with an opportunity to make the changes required to obtain a patent right which may differ from that originally sought.
		c) In Response to Official Actions
		When an Official Action is received, the applicant is again presented with an opportunity to file an amendment in response. The term for response for a foreign applicant is normally two months, which can be extended up to two times for one month each time.
		d) In Response to Oppositions
		If an opposition is filed against an application which has been granted as a patent or utility model after examination, the applicant is presented with yet another opportunity to file an amendment. Again, the applicant is given a two-month term extendible by two months to file an amendment together with a reply to the opposition.
		e) In Response to Final Rejection
		If an application is finally rejected, the applicant can file an appeal within thirty days from the receipt of the Final Rejection. Within thirty days from the filing date of the appeal, an amendment can be filed. At that time, the applicant is presented with an opportunity to make further amendments, in view of the results of the examination. If such an amendment is filed, the rejected application is returned to the Examiner for reexamination of the amended application. If the Examiner considers that the application is then allowable, the Examiner will overturn the rejection and render the grant decision for the 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. The amendment can be made within the scope of what was originally disclosed in the application and what is obvious or self-evident from the original disclosure. If the amendment goes beyond this scope, it will be regarded as introducing new matter, i.e. it shall be deemed to change the subject matter of the specification.
	E. Preliminary Rejection Notice
		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 this Notice as an Argument and Amendment, within one month (Korean applicant) or two months (foreign applicant) from the date of the Notification. A foreign applicant can usually obtain an extension of the one month term up to three 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 Law, 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 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 whether "worked or known in other countries without any publication" is sufficient to negate novelty.
		When an application is laid open after the filing date of an application that was filed prior to the filing date of the application and which discloses the claimed invention of the later-filed application, the disclosure of the claimed invention anywhere in the specification of the earlier filed but later laid-open Korean application will result in rejection of the later filed application.
		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.
		Whenever there is a conflict with an earlier application of a different applicant, the Examiner applies the whole content approach. A rejection based on duplicate patenting is therefore applied mostly where the same inventor or applicant (assignee) is named in both applications so that First-to-File rule cannot be applied in this situation, or 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 identical with any of the inventions so 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 Law, 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.
		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.
		e) Lack of Unity of Invention
		Under Patent Law, 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 Law. 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) The Use of Improper and Inconsistent Terminologies
		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 the 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. Thus, we can say the official printed procedure only suggests inserting the reference numerals but, in practice, 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 Inventive Step
		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 the 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 the 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 not merely 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) Amendments
			I) Reducing the 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. In other words, all of the claims can be replaced with new claims, provided that the application has not yet been published for opposition purposes. 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 the differences over the 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, if a prior art reference which was not considered when the specification was originally drafted is cited by the Examiner, the applicant must introduce a description of this prior art into the specification and draft the specification in such a way that the drawbacks inherent in the prior art disclosed in the cited reference are solved by the claimed invention. 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 the 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. and publish the patent application in the Patent Gazette (2nd publication).
	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 an first option, a patent application can be converted into a Utility Model application. It is based on the assumption that a Utility Model will be easier to obtain than a patent. 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. As a third option, the above two options can be combined which may be the most effective way to have the claims allowed.
	H. Registration Publication and Opposition
		After the grant decision, the applicant make a registration in the KIPO. Then, the examiner shall publish the patent application in the Patent Gazette(Registration Publication). Within the three months following the registration publication date, any person can object to the grant of patent for the published invention.
	I. Types of Trials in Intellectual Tribunal of Korean Industrial Proprty Office
		1. Trial for confirmation of the scope of a patent right
			This trial can be initiated only by an interested party. In case of infringement by a third party, a controversy arises as to whether there actually exists an infringement or not. In such case, a patentee or an interested party can demand a Trial for Confirmation of the Scope of a Patent Right with the KIPO in order to receive a judgment officially determining whether or not the subject patent right may cover technically the article manufactured, sold and/or used by an infringer.
		2. Trial for invalidation of a patent right
			If a patent falls into one of the following particulars, the patent can be invalidated by a Trial:
			a) In case that a patent has been granted to a person who has no right to own and enjoy the patent right.
			b) In case that a patent has been granted for an invention that is not a new industrial one.
			c) In case that a patent has been granted for an invention known and used publicly prior to the filing of the patent application.
			e) In case that a patent has been granted for an invention published on the publication circulated in Korea or in a foreign country prior to the filing of the patent application.
			f) In case that a patent has been granted for an invention which was filed later than another prior application covering the same invention.
			g) In case that a patent has been granted for an invention which can not be carried in business.
			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.
		4. Trial for invalidation of correction
		If Correction has been made beyond the scope the above trail for correction, an interested party or an Examiner can initiate a trial for the invalidation of correction.
		5. Trial for granting a 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 Decision
		Any person who objects to an examiner's decision of final rejection or a trial decision of rejection can appeal to the Intelletual Tribunal within 30 days from the date of transmittal of the certified copy of the decision.
		7. Trial against Examiner's Decision of Amendment Dismissal
		In a case where the applicant has received a decision of amendment dismissal to decline amendments on the grounds of changing the subject matter thereof and is dissatisfied with such decision, the applicant may file a demand for trial against the decision of amendment dismissal within 30 days from the transmittal of the certified copy of the decision of amendment dismissal.
	J. 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.
	K. Appeal to the Patent Court
		Any person who objects to a Trial examiner's decision in the Intellectual Tribunal of the Korean Industrial Property Office can appeal to the Patent Court within 30 days from the date of transmittal of the certified copy of the Intellectual Tribunal's decision.
	L. 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).
	M. 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 patent 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 fees within six months following the expiration of the payment period set forth above, paying double the patent fees as a penalty for the late payment.
	N. Appointment of Patent Administrator
		According to the provision of Article 5 of the Patent Law, when a foreigner owns a Korean Patent the owner shall appoint a patent administrator, residing in Korea, for such a patent, and register the appointment of the patent administrator with the Korean Industrial Property Office. In order to register the patent administrator for such a patent, applicant is to use a fresh Power of Attorney, signed by either the applicant or the representative of the applicant company. However, if a Power of Attorney has already been filed with the KIPO when the application was filed, the very same Power of Attorney could be applicable to secure registration of our appointment as the patent administrator.
	O. Documents for transfer of ownership of patent application (or patent)
		1. When an applicant is merged into another company:
			a) Certificate of Merger issued by the competent company registry office in the home country, and b) Power of Attorney of the assignee.
		2. When an applicant assigns his patent application to another party:
			a) A Certificate of Assignment to be executed by the assignor b) The 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 non-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.