Lee & Park Patent and Law Firm

Patent Academy

Patents Utility model Designs Relationship of Rights and Duties Judgments

Purpose of the patent system and what it protects

A patent is a representative right of industrial property and refers to the right to exclusively practice a patented invention.
Through patent rights, a patentee can legally sanction the unauthorized practice of his invention, and can make property profits by transferring patent rights and establishing practice rights.

However, because these rights are granted to the patentee rather than the inventor, if you fail to obtain a patent, you are not guaranteed any rights in principle. This means that even if a competitor copies and sells the product, there is no way to compensate for the losses.

Therefore, inventors should file a patent application as the first step in securing legal protection for an invention that they have spent a great deal of time and money on. A patent application allows an applicant to obtain patent rights after a certain amount of examination and prevents later applications for the same invention from becoming entitled. Patent rights also allow you to enjoy exclusive rights for 20 years (from the date of filing), rewarding your efforts in developing new technologies.

Application documents

The application contains the name and address of the patent applicant, indication of representation, filing date, name of the invention, name and address of the inventor, claims of priority, and the purpose of the request for examination or early publication, if any.

Statement	The specification is a part that expresses the invention that is the result of technology development through sentences, and it must be published by specifying the invention and specifying the protection object among the published inventions described therein. When it is published, it serves as a "technical document" for the public and a "right document" for the inventor. The specification contains the name of the invention, a brief description of the drawings, a detailed description of the invention, and the scope of the patent claims. The new law introduces a grace period for patent claims, which allows you to submit patent claims within a certain period of time after filing the application.
Drawings	When preparing a patent application, drawings are attached if necessary to improve the understanding of the description (must be attached in the case of an article or device), and are not submitted if the nature of the invention does not require drawings (method inventions, chemical inventions, etc.).
Summary	A summary is a document attached to the application that summarizes the invention in order to facilitate the use of the specification as technical information. The summary should contain 10 to 20 lines to summarize the invention in a concise manner so that it can be understood.
Attach other documents	A person who claims that the novelty of the invention is intact must attach to the application a document certifying this, a person who has deposited microorganisms must attach to the application a copy of the microorganism deposit certificate, and a person who executes the application procedure by an agent must attach to the application a power of attorney.

Registration Requirements

Industrial Availability	Whether the application constitutes an invention under the Patent Act and whether the invention can be practiced in industry is examined. This is to contribute to the development of industry by protecting and encouraging inventions and promoting their utilization. However, in Korea, inventions related to human treatment methods are currently considered to lack industrial applicability.
Novelty	We examine whether the patent application is the same as an invention already known or practiced in Korea or abroad at the time of application, or whether it is the same as an invention described in a publication already distributed in Korea or abroad at the time of application. However, even if the invention was known or practiced before the application was filed, if it was by a person with the right to patent it or against the will of the person with the right to patent it, relief can be obtained by filing a claim of novelty simultaneously with the application within six months from that date.
Progressivity	Whether an invention can be readily invented by a person having ordinary knowledge in the field of technology to which the invention belongs from a prior art, invention, or publication described in the application.
Priority	If there are two or more applications for the same invention, only the first to file can be granted a patent; if they are filed on the same day, only the person determined by the consultation procedure can be granted a patent. This means that even if you invented the invention before your competitors, you may not be able to obtain a patent if the filing date is late. Therefore, if you make an invention, it is recommended that you file a patent application as soon as possible to obtain the status of a selectee.

Patent Application Examination

Examination is conducted only for patent applications that request it. This is to give applicants time to consider whether examination is necessary and to allow them to choose when to file their claims.

Applications for which no examination is requested are not examined, and thus the request for examination system can contribute to expedited examination.
A request for examination is limited to five years from the filing date (or five years from the international filing date for international patent applications).
If no claims are made within this period, the patent application is considered abandoned. An application requesting examination is transferred to the appropriate division of the examination department according to the international patent classification assigned to the application, and an examiner is then assigned. The assigned examiner will be the examiner in charge of the application.
Examination will not be initiated for all patentable inventions in the application. Examination will be initiated only for those inventions for which an examination claim has been made, and only in accordance with the ranking of the claim.

While these examinations are conducted by Patent Office examiners, the public may be indirectly involved in the examination process by providing information during the course of the examination. Depending on the priority of your application, a late filing may result in a late examination start, even if it was filed first.
The examiner will issue a preliminary opinion on the outcome of the examination, which should state the reasons for the rejection. The applicant will attempt to overcome the reasons for rejection by filing comments, amendments, divisional applications, and amendments to overcome the reasons for rejection.
If, despite the applicant's efforts to overcome these reasons for rejection, elements that do not meet the patent requirements still remain, the examiner will issue a rejection, which is the final disposition of the examination.

The applicant can then appeal the rejection to the Board of Appeals, the Patent Court, and the Supreme Court. On the other hand, if the examiner finds that the patent application has been filed in a certain manner and procedure, and no further reasons for rejection can be found, a patent decision should be issued.

Priority Examination System

This is a system that allows an application that is subject to unauthorized practice by others after filing or that requires urgent processing to be examined in priority to other applications regardless of the order of filing.
Priority examination is granted by application in the following cases.

In the case of unauthorized practice by a third party in the business of the applied invention

In the field of defense industry

Useful for preventing pollution

Applications directly related to export promotion

Applications related to national or local government functions

Applications from companies that have been confirmed as venture companies

Applications relating to the results of national new technology development support projects such as the Industrial Basic Technology Development Project.

Applications related to the results of national quality certification projects

Applications pending at foreign patent offices as overseas applications

Applications that are self-provisional or in preparation for self-provisionalization

A patent application in which the applicant for priority examination has requested an expert organization pursuant to Article 58(1) of the Act to conduct a prior art search for the patented invention and has requested the expert organization to notify the Commissioner of the KIPO of the results of the search.

Patent Registration

Once the examiner has issued a patent decision and the patent establishment registration fee has been paid within a certain period of time, the Commissioner of the Korean Intellectual Property Office will ex officio register the establishment of the patent right.
If the patent establishment fee is not paid within the statutory period, including the late payment period, the patent application will be deemed abandoned, so special attention is required to pay the patent establishment fee.

In order to maintain patent rights, you must pay at least the first three years of patent fees.
The patent fee must be paid in a lump sum within three months from the date of delivery of the patent registration decision, and the annual fee for each year after the fourth year must be paid before the corresponding payment year; however, even if the annual fee including the first three years of patent fee is not paid before the due date, the patent right will not lapse if the annual fee including the patent fee is paid within six months from the due date.

However, in this case, the patent fee will be doubled. For subsequent registration fees, the rights holder must voluntarily pay the registration fee before the new annual period begins.
A registered patent right lasts for 20 years from the date of filing.

Purpose of the patent system and what it protects

Most countries with industrial property systems protect the creation of technical ideas through patent law alone.
However, a few countries, including Germany, have enacted a separate utility model law in addition to their patent law, thus providing dual protection.
Thus, patent laws and utility model laws are closely related and have very similar legal frameworks.
Therefore, this discussion of utility models will focus on how they compare to patent law.

The purpose of a utility model

The German utility model system was originally established to complement the patent system.
In the process of operating the patent system, so-called improved inventions or micro-inventions were sometimes downplayed and monopoly rights were not granted, and it was recognized that it was necessary to protect and encourage the small inventions of small and medium-sized enterprises and individual inventors for industrial policy purposes, and the utility model system was established to complement the patent system.
Korea introduced the patent system by promulgating the Patent Ordinance in 1908, and then enacted the Utility Model Law in 1946, modeled after the Japanese Utility Model Law.

Similarities with Patent Law

Korea's utility model law has the same ideology as patent law in that it protects the creation of technical ideas.
However, the difference is that the object of protection of the patent law is a technical idea that is sophisticated, i.e., an invention, while the utility model is a utility model, i.e., a technical idea that is more general than an invention. Also, like the patent law, the utility model law can be considered the same in that it aims to contribute to industrial development by protecting and encouraging the creation of technical ideas and promoting their use.

Furthermore, many of the basic principles of the Patent Act and the Utility Model Act are completely consistent or similar.
The main provisions of the Utility Model Act are completely consistent with the Patent Act, and in most cases, the provisions of the Patent Act are closely followed.

특허법과 차이점

Protected subject matter	Patent law protects 'inventions', while utility model law protects 'designs'. A utility model differs from a patent in that it only needs to be created and does not need to be sophisticated. Also, the utility model law only protects designs for 'articles' and not for 'methods'. 'Things' can be further categorized into 'articles' that have a certain shape and 'substances' that do not have a certain shape. Articles are protected under both the current patent law and the utility model law, while substances, such as pesticides, medicines, DNA structures, microorganisms, glass compositions, cement compositions, etc., are protected under the patent law but not under the utility model law.
Registration Requirements	A utility model differs from a patent in that it does not need to be more advanced than the prior art, but only needs to be in the state of technological progress at the time of filing. Therefore, there is a significant difference between the standard for determining the inventiveness of a patent application and the standard for determining the inventiveness of a utility model application when the examiner of the KIPO examines the registration requirements.
Duration of rights and their extension	The term of a patent is 20 years from the date of filing, while the term of a utility model is 10 years from the date of filing. Therefore, as one of the selection criteria for whether to file a patent application or a utility model application for the technology developed by the applicant, the ease of imitation by others and the resulting advantages and disadvantages of product life may be considered.
Application and Examination Procedures	The application and examination process under the Utility Model Act differs in several respects from patent law. A patent application is accompanied by drawings only if necessary, whereas a utility model application must be accompanied by drawings. The filing fee, examination fee, and registration fee for a utility model application are lower than the fees for a patent. The examination period for a patent application is five years from the filing date (or from the priority date if there is a priority claim), whereas the examination period for a utility model is three years.

Purpose of Design and what is protected

Under the Design Protection Act, a design is an article's form, shape, color, or combination thereof that creates an aesthetic impression through visual perception.
Designs are protected only for the aesthetic appearance of an article, regardless of any new technology.
The purpose of the design registration system is to grant exclusive rights to the creator of a new design for a certain period of time, thereby inspiring creativity and promoting consumers' willingness to purchase, and ultimately contributing to industrial development.

Application and Registration Requirements

Application Requirements	To register a design, you must submit an application for design registration in the prescribed form and drawings to the Korean Intellectual Property Office, the competent authority, and pay the prescribed fee. The drawings must include a perspective view and six views (front, back, left, right, top, and bottom), which can be substituted with photographs.
Registration requirements	In order for your design to be registered, it must meet the following basic requirements: The design must be embodied in a specific article. The design must be for a tangible personal property that is capable of industrial utilization. The design must not be identical or similar to a design that has already been marketed domestically or abroad or shown in a publication prior to the filing of the design application. The application design must be creative enough to distinguish it from other designs. There is no prior registered or published design identical to or similar to the application design in the field of similar goods.

Application Requirements

To register a design, you must submit an application for design registration in the prescribed form and drawings to the Korean Intellectual Property Office, the competent authority, and pay the prescribed fee. The drawings must include a perspective view and six views (front, back, left, right, top, and bottom), which can be substituted with photographs.

Registration requirements

In order for your design to be registered, it must meet the following basic requirements:

The design must be embodied in a specific article.

The design must be for a tangible personal property that is capable of industrial utilization.

The design must not be identical or similar to a design that has already been marketed domestically or abroad or shown in a publication prior to the filing of the design application.

The application design must be creative enough to distinguish it from other designs.

There is no prior registered or published design identical to or similar to the application design in the field of similar goods.

Examination Process

Patent Office examiners do not begin examining a design application immediately after it is filed, but rather after a considerable period of time before deciding whether to grant registration.
The length of the examination period varies depending on the overall volume of applications, but as of 2008, examination begins approximately six to eight months after the filing date.
For some highly prevalent items, only a portion of the registration requirements will be examined in order to expedite the process, and the examination of these items will be completed in approximately two to three months from the filing date.

Registration Decision

If the examiner does not find any reason for refusal of the design application, a final registration decision will be made, and the applicant will be sent a registration decision letter.

Registration Fee Payment/Registration

If the examiner does not find any reason for refusal of registration, a final registration decision will be made and the applicant will receive a registration decision letter. If the applicant pays the 3-year registration fee for establishing design rights within 3 months after receiving the registered copy of the decision, the design rights will be granted on that date. If the applicant fails to pay the establishment fee within this period, the design registration application will be deemed abandoned.
On the other hand, the design right lasts for 15 years from the date of registration (the date of payment of the initial registration fee), and after 3 years from the date of registration. The annual registration fee must be paid every year to enjoy the full 15-year period.

Specialized Systems under the Design Protection Act

Unexamined Design Registration System	This is a system that registers textile paper, wallpaper, synthetic resin support, apparel, bedding, and some articles with a high registration rate by examining only the method requirements and some substantive registration requirements, and takes about 4 months from application to registration unless there is a specific reason for refusal.
Similar Design System	Design rights are easy to be copied by others, but the scope of similarity is abstract and unclear, so it is necessary to register a similar design within the scope of similarity in advance to prevent infringing imitation. Therefore, there is a system that allows you to register a modified design of a basic design registered or applied for by yourself under the name of a similar design.
One Article Design System	The Design Act has a one-design-one-application policy. However, there is an exception to this rule: the Uniform Design System, which allows a single application to be filed for the design of an article that is used as a single garment and has a uniform overall appearance.
Secret Design System	When applying for a design registration, if the applicant applies, the design can be kept secret for a period of three years from the date of registration of the establishment of the design right without publication.

Infringement Cases

Disputes in patent-related cases require specialized and highly technical judgment, so in order to ensure the professionalism and fairness of the judges, the Patent Trial and Appeal Board of the Korean Intellectual Property Office is in charge, then the Patent Court is a higher court, and then the Supreme Court is the highest court.

1. If you are a rights holder

* Careful review before asserting rights

It is important to clarify the purpose of asserting your rights, as the method of asserting your rights will vary depending on whether you are seeking to stop the infringement, obtain substantial damages from the other party, or suppress the other party's business. It is important to note that if you hastily initiate a dispute without such careful preliminary examination, the dispute may develop in an unwanted direction and you may end up in trouble. The general steps a rights holder should take are in the following order:

* Clearly understand the scope of your rights

The basic nature of intellectual property rights is that they are exclusive, but their scope is strictly limited. In the case of a patent or utility model, the scope is limited to what is stated in the claims, and the scope of a registered design and a registered trademark is the same or similar. The interpretation of the scope of claims or similarity is a highly technical and legal issue, so it is important to understand the scope of your rights with the help of a patent attorney.

* Gather evidence of infringement

If you believe that your rights have been infringed, the most important thing is to secure evidence of infringement before asserting your rights. In other words, it is necessary to collect the actual infringing goods (preferably with receipts or bills of sale), catalogs, photographs, any other relevant item or documentation. In addition, most importantly, you must accurately identify the other infringer against whom you will assert your rights and the personal information of that party.

* Determine infringement

It is necessary to collect evidence of suspected infringement and determine whether it falls within the scope of one's rights, i.e., whether it constitutes infringement. This requires a high degree of legal and technical judgment, which is why it is advisable to enlist the help of a patent attorney. A patent attorney may provide assistance to a client upon request, or may provide an official opinion in the form of an infringement determination. To obtain an official infringement determination, a patent attorney may request a scope of rights determination from the Korean Intellectual Property Office, which seeks a determination that the infringing product falls within the scope of the intellectual property right.

* Claim of right

If you are convinced that the other party has infringed on your rights, you will send a written notice, usually a warning letter. It is also possible to pursue criminal prosecution or civil remedies such as injunctions and garnishments directly without a warning letter, which requires strategic consideration.

* How the dispute unfolds

Often, the party that receives a cease and desist letter will seek the assistance of a patent attorney, and the dispute will evolve into a highly legal and technical battle. In criminal and civil cases, the assistance of a lawyer may also be required, and the case may escalate into various judgments and lawsuits such as an invalidation judgment, scope of rights confirmation judgment, or preliminary injunction case, while in some cases, a warning letter is enough to end the case by mutual agreement.

2. If you are not the rights holder

* Analyze your rights

If you receive a claim of infringement from another party, the first thing you should do is to analyze the rights that have been infringed. Since intellectual property rights are intangible property rights that do not have any form of exclusivity, it is often quite difficult to determine the exact scope of the rights through technical and legal review. Therefore, even the right holder, such as a patent holder, may claim infringement without having a good understanding of their exclusive rights. If you are faced with a claim of industrial property infringement, you should not panic. With the help of a patent attorney, you should first carefully review the claim, then analyze your rights, and depending on the results, you may be able to devise a number of responses as follows:

* If it falls within the scope of the right

If you find that your product or manufacturing method infringes the patent right, you should determine whether the other party's right is defective. In other words, if the other party's right is patented incorrectly with grounds for invalidity, you should collect the evidence and request a patent invalidation judgment, and inform the other party of this fact and try to reach an amicable settlement. However, even in this case, until the invalidation is confirmed, the patent is still an exclusive right, so it is recommended to cease selling or producing the product and try to reach a settlement with the rights holder. If you believe that the other party's patent is not invalid, you should stop infringing as soon as possible and try to reach a settlement. Emotional responses or unsubstantiated claims are not helpful in resolving the issue and often make the situation worse.

* Not within the scope of the rights

You should respectfully explain to the other party that you do not fall within the scope of their rights and inform them that they will be liable for any damages caused by their unreasonable claims, and seek an official judgment that you do not fall within the scope of their rights by requesting a judgment to confirm the scope of their rights.

Judgments

A patent trial is an administrative trial before a panel of judges at the Patent Trial and Appeal Board within the Korean Intellectual Property Office for the purpose of resolving disputes between parties over the disposition of an examiner, such as an examiner's decision to reject a patent application or the validity of a patent right.

Patent appeals can be classified into various categories according to the confrontational nature of the judges, the independence of the proceedings, and the difference in the judicial structure. According to the classification criteria based on the judicial structure, they can be divided into party-based appeals and decision-based appeals.

Inter Partes Review

When there is a dispute over patent rights, the claimant and defendant are parties to the trial, and trial expenses are generally borne by the loser.

Patent Invalidation Trial

This is a trial in which a patent right that has been validly registered loses its effect retroactively or prospectively due to statutory reasons. Even if there are grounds for invalidity in a patent, it does not become invalid automatically, but must be invalidated by an invalidation trial.

Invalidation Judgment of Patent Term Extension Registration

If the extension of the patent term is incorrect, this is a trial to invalidate the registration of the extension.

Declaratory Judgment of Scope of Rights

This is a trial to confirm that an object centered on a patented invention either actively falls within the scope of rights or passively does not fall within the scope of rights.

Invalidation of Correction

This refers to a judgment that invalidates the correction of a specification or drawing confirmed by a correction judgment if the correction of the specification or drawing violates the provisions of Article 136 (1) to (3) of the Patent Act, and can be claimed both during and after the existence of the patent right.

Trial for the Grant of a Non-Exclusive License

If a patented invention uses or violates a patented invention, registered utility model, or registered design of another protected person, this is a trial in which the patentee seeks permission to use the rights of another person to practice the patented invention.

Ex Parte Trial

This refers to a trial in which only the claimant is present, not the parties, and the arbitrator determines the validity of the claim, and the cost of the trial is borne by the claimant.

Appeal of Rejection Decision

If a patent application is rejected by an examiner, the applicant can appeal the rejection. If the applicant wishes to appeal the examiner's rejection, the applicant must file an appeal with the Patent Trial and Appeal Board within 30 days from the date of delivery of the rejection. If the rejection is confirmed as canceled by the appeal, the examiner must re-examine the patent application and issue a patent decision if there are no other reasons for rejection.

Corrections

A correction trial is a trial in which the patentee requests that the patentee correct the specification or drawings of the patented invention, and is available both during and after the term of the patent.

Appeal of Revocation Decision

If a patent opposition is filed against a patent and the examiner's decision is to cancel the patent, the patentee may appeal the decision. In order to request a review of the revocation decision, the patentee must file a request for review with the Korean Intellectual Property Office within 30 days from the date of service of the revocation decision.

Proceedings to Revoke the Decision

If a party to the proceedings is dissatisfied with the decision of the Patent Trial and Appeal Board, it may file an action to cancel the decision with the Patent Court. If a party is dissatisfied with the decision, the party must file a petition with the Patent Court within 30 days from the date of service of the decision. If a petition is filed, the Patent Court will hear the decision and issue a judgment of dismissal if the decision is valid or a judgment of citation if the decision is invalid. The case will be remanded to the Patent Trial and Appeal Board, which will rehear the case.

Appeal to the Supreme Court

A party to an inter partes review proceeding may appeal to the Supreme Court if they are dissatisfied with the decision of the Patent Court. A person aggrieved by a decision must file a notice of appeal with the Supreme Court within two weeks of being served with a copy of the Patent Court's decision. If an appeal is filed, the Supreme Court will examine whether there is a legal error in the judgment and will either dismiss the case or affirm the judgment. If affirmed, the case will be remanded to the Patent Court, which will rehear the case.