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Purpose of the patent systemPurpose of the patent system
The purpose of the patent system is to accelerate the development of technology through the protection, encouragement, promotion, and utilization of inventions, and thereby contribute to the development of industry.
The publication of inventions leads to the accumulation and utilization of technology and the advancement of industry.
Granting exclusive rights for the commercial usage of a patented invention promotes commercialization, encourages the development of inventions, and leads to the advancement of industry
Requirements for acquiring patent rights
A patent must have industrial applicability; it must be usable in industry.
The technology must have novelty; it must not be known to the public (prior art) before an application is submitted.
The technology must have an inventive step; it must not be easily derivable from prior art, even though it differs from prior art.
Effect and term of a patent right
The term of a patent right commences when the establishment of patent right is registered; it ends 20 years after the filing date of the patent application. The corresponding term for a utility model is 10 years.
The effect of a patent right is subject to the principle of territoriality; that is, it is valid only in the country where the right is obtained.
The First- to- File Rule and the First-to-Invent RuleThe first-to-file rule and the first-to-invent rule are two different principles for determining which applicant is to be granted the rights when two or more patent applications are filed for the same invention. The first-to-file rule applies in Korea.
Regardless of who invented the invention, the rights of an invention are given to the applicant who was the first to file the application at the patent office.
The first-to-file rule is practical because it grants rights for the cost of disclosing the technology and it encourages swift disclosure of inventions.
This rule is in accordance with the purpose of the patent system because it aims to promote industrial advancement through the swift disclosure of inventions.
Under the first-to-invent rule, the rights of an invention are given to the actual inventor, regardless of the order in which applications are filed.
This rule has the strength of protecting inventors. Private inventors who don't own an enterprise prefer this rule.
To benefit from this rule, the inventor must provide a journal of the inventive activities that led to the invention and secure witnesses of the invention. The patent office must confirm the time of the invention.
Procedures for Granting a Patent
1. Formality examination
When a patent application is submitted to KIPO, it is checked to ensure that all requirements necessary to accord the application a filing date have been satisfied, such as missing of power of attorney or the name of the representative of the juristic person.
2. Lay-open of Publication for public inspection
Applications that have not yet been published will be automatically laid-open in the official gazette called "Patent Laid-open Gazette" after 18 months from the filing date in the Republic of Korea or, if the right of priority is claimed from an earlier foreign filing, from the priority date.
3. Substantive examination
For a patent to be registered under the Patent Law, it should meet the following requirements;
(a) It should fall under the definition of invention under the Patent Act
(b) It should have Novelty, Industrial Applicability, and Inventive Step
(c) It should not fall into any of the patent categories unable to be registered as prescribed in Article 32 of Patent Act.
4. Decision of registration
If the examiner finds a ground for rejection of a patent application, a notice of preliminary rejection will be issued and the applicant will be given an opportunity to submit a response to the preliminary rejection.
If no grounds for rejecting a patent application are found, the examiner shall grant a patent right.
When a patent applicant receives a notice of decision to grant a patent, he should pay the first 3 years' annuities within 3 months from the date of receipt of such notice as a registration fee. KIPO publishes the patent registration after the patent applicant pays the registration fee.
| Utility model system
BackgroundSince utility model technology has a short life-cycle and is easy to copy, the quick registration system was introduced to protect the technology in its early stage, and to promote its development and commercialization for SMEs.
Current utility model systemBackground of current utility model system of registration after examination
With the shortening of the pendency period for patent applications, the merits of the quick utility model registration system (registration before examination) are also diminishing, while the weaknesses of the system are standing out. These weaknesses include the abuse of obtaining registration without examination, the difficulty of a complicated examination procedure for applicants, and the decline of examination efficiency. To resolve these problems, the utility model system has been replaced by a system of registration after examination.
After the repeal of the quick registration system of the utility model, which examined only the formality and basic requirements of the application, the registration after examination system was introduced so that examiners would consider the registration of a utility model only after substantive examination. The procedure of the quick registration system such as the basic requirements examination, the TES (Technology Evaluation System) after examination, and the request for correction system were all repealed. An examination procedure similar to the patent system including request for examination, official notification of reasons for rejection, and an amendment was introduced.
Application procedures for the current utility model
Application procedures of the current utility model are unified with patent system to operate reasonable system was established for petitioners’ convenience.
Definition of a designDesign, as specified in Article 2 (1) of the Industrial Design Act (hereinafter referred to as “the Act”), refers to the shape, pattern, color or combination of these in an article that produces an aesthetic impression on the sense of sight.
The same applies to a part of an article and style of calligraphy.
Definition of ArticlesThe articles mean movable properties which can be independently transacted and have the appearance of goods.
Thereby, immovable property, shapeless things such as heat, air, fluid, and electric cannot be included in articles protected in accordance with the Act.
Requirements for a design registrationIndustrial applicability
"Industrial Applicability" refers to articles with the same design that can be produced in large quantities by industrial production methods.
"Industrial Production Methods" include both mechanical and manual production methods.
Novelty signifies that the design, before application, should not be included in publications or catalogues, publicized through sales or exhibition, or exposed in any condition such that someone can identify it.
The creativeness of a design signifies that a person with ordinary skill in the art cannot easily create a given design by internationally or domestically known designs, or by domestically well-known shapes, patterns, colors, or a combination thereof.
Exception to a loss of novelty
If a design, owned by a person entitled to the design registration, is publicly known, worked, or described in the Republic of Korea or a foreign country and the person files the application for the design within six months of the date on which the design was publicly known, worked or published, etc., it is deemed not to lose novelty.
To obtain such benefit, the applicant shall specify the purport of such intention on an application for design registration and submit it to the Commissioner of the Korean Intellectual Property Office with documentary evidence within predetermined term.
Even if the aforementioned requirements are satisfied, designs falling under any of the following cannot be registered:
① Designs which are identical or similar to national flags, national emblems, military flags, decorations, orders of merit, badges and medals of public organizations
② Designs which are identical or similar to national flags and national emblems of foreign countries or characters or indications of international organizations
③ Designs which are liable to contravene public order or morality
④ Designs which are liable to create confusion over articles connected with another person's business
⑤ Designs which include only indispensable shapes to secure the function(s) of articles
Concept of trademarksConcept of trademarks on the Trademark Act
A trademark refers to all sensible methods(hereinafter referred to as "mark") of expression used to distinguish one's goods from those of another. Protection under the Trademark Act include a mark formed of a symbol, character, diagram, three-dimensional shape, color, holograms, motions, and all types of visually recognizable marks.(Item 2 of Para. 1 of Art. 2).
To reflect the ROK-EU FTA, the Trademark Act was amended to include regulations to reject a trademark application that is identical or similar to a geographical indication already protected by the FTA and Korean laws.
Additional amendments to the Trademark Act based on the ROK-US FTA permit non-visual trademarks such as sounds and smells to be eligible for trademarks. A certification mark was also introduced to guarantee the quality and characteristics of goods (enforced on March 15, 2012).
In addition, marks that do not distinguish one's goods from another's are not deemed to be a trademark. If a design is only used to inspire users with its aesthetic nature or as a price mark irrelevant to the identification of owners, it shall not be deemed a trademark in accordance with the Trademark Act. On the other hand, collective marks, and business emblems may be regarded as trademarks.
Concept of a collective mark
A "collective mark" refers to a mark intended to be used directly by a corporation jointly incorporated by persons who produce, manufacture, process or sell goods, or who provide services, or intended to be used by its members.
Concept of a certification mark
A “certification mark” refers to a mark used by a person who commercially certifies and manages the quality, place of origin, methods of production, or other characteristics of goods to certify that goods of others meet quality criteria, the place of origin, methods of production, or other characteristics.
Concept of a business emblem
A "business emblem" refers to a mark used by a person engaged in a nonprofit business like the YMCA or Boy Scouts to indicate that person's business (e.g. Republic of Korea National Red Cross, Junior Chamber, Rotary Club, Korea Consumer Agency, etc.)