- TABLE OF CONTENTS
- CHAPTER 1 PATENTS AND UTILITY MODEL RIGHT
- CHAPTER 2 INTRODUCTION TO PATENTS
- CHAPTER 3 PATENTS INVENTION
- CHAPTER 4 PATENT APPLICATION
- CHAPTER 5 PATENT EXAMINATION
- CHAPTER 6 PATENT RIGHT
- CHAPTER 7 IPT’S PATENT TRIAL
- CHAPTER 8 PATENT LITIGATION
TABLE OF CONTENTS
CHAPTER 1 PATENTS AND UTILITY MODEL RIGHT ································ 3
Ⅰ. Patents ··················································································································· 3 - Subjective requirements ····················································································· 3
- Objective requirements ······················································································· 3
- Procedural requirements ····················································································· 4
Ⅱ. Utility model right ······························································································· 5 - Consistency to Patent Act ················································································· 5
- Difference to Patent Act ··················································································· 5
CHAPTER 2 INTRODUCTION TO PATENTS ····················································· 9 SECTION 1 INTRODUCTION TO PATENTS ·························································· 9
Ⅰ. Goals of the patent system ················································································ 9 - Meaning ··············································································································· 9
- Protection for invention ····················································································· 9
- Inventive application ·························································································· 9
Ⅱ. Development of patents ···················································································· 10 - Introduction of patents ····················································································· 10
- Enactment and amendment of the Patent Act ·············································· 11
- Reform of the patent litigation system ························································· 13
4. Basic principles of the Patent Act in Korea ················································ 14 SECTION 2 INTRODUCTION TO PROCEDURE FOR THE PATENT ACT ··· 15
Ⅰ. Competency ········································································································ 15 - Capacity ············································································································· 15
- Legal capacity ··································································································· 17
Ⅱ. Power of attorney ······························································································ 18 - Meaning ············································································································· 18
- Types and rights of power of attorney ························································· 19
- Certification of power of attorney ································································· 21
- Non‐distinguishment of power of attorney ···················································· 22
- Principle of individual agent ·········································································· 22
- Replacement of power of attorney, etc ························································· 23
- Common representative ···················································································· 23
- Venue of nonresident nationals ······································································· 24
Ⅲ. Period ·················································································································· 25 - Meaning ············································································································· 25
- Types of period ································································································ 25
- Calculating method for period ········································································ 25
- Extension of period ························································································· 26
- Ⅳ.
- Introduction to the procedure ··········································································· 28
- The effects of the procedure ·········································································· 28
- Invalidity of the procedure ············································································· 29
- Subsequent completion of the procedure ······················································ 31
- Suspension of the procedure ··········································································· 32
- Ⅴ.
- Publication ·········································································································· 35
- Meaning ············································································································· 35
- Publication for public notification of registration ········································ 35
- Pre‐Grant Publication ······················································································· 36
- Effect disclosed in the Pre‐Grant Publication ··············································· 36
CHAPTER 3 PATENTS INVENTION ···································································· 41 SECTION 1 PATENTABLE INVENTION ································································ 41
Ⅰ. Meaning ·············································································································· 41
Ⅱ. Requirements for an invention ········································································· 41 - Utilization of the law of nature ····································································· 41
- Technical idea ··································································································· 43
- Skillfulness of creation ···················································································· 43
- Relation between invention and discovery ···················································· 44
Ⅲ. Types of invention ····························································································· 44 - Categories of invention ··················································································· 44
- Invention of material ······················································································· 45
- Invention of a method ····················································································· 45 SECTION 2 REQUIREMENTS FOR PATENTABILITY ········································ 45
- Ⅰ. Industrial applicability ······················································································· 45
- Meaning ············································································································· 45
- Scope of industry ····························································································· 45
- Applicability ······································································································ 46
- Medical service ································································································· 46
- Ⅱ. Novelty of invention ························································································· 48
- Meaning ············································································································· 48
- Criteria for time and place in deciding novelty ·········································· 48
- Cause of losing novelty ·················································································· 49
- Determining novelty ························································································· 53
- Ⅲ. Inventive step of invention ··············································································· 55
- Meaning ············································································································· 55
- Relevant provisions ·························································································· 56
- Theories on determination of inventive step ················································ 56
- Method of determining inventive step ··························································· 57
- Type of inventive step determination ···························································· 59
- Non‐publicly known invention ········································································ 62
- Ⅳ. Identicalness of invention ················································································· 63
- 1. Expanded first‐to‐file application ···································································· 64
- Prior application ······························································································· 66 SECTION 3 PATENTABLE SUBJECT MATTER ··················································· 69
Ⅰ. Patentable subject matter ·················································································· 69 - Nature of right to obtain patent ···································································· 69
- Content of right to obtain a patent ······························································· 70
Ⅱ. Holder of Right ································································································· 72 - Inventor ············································································································· 72
- Joint inventor ···································································································· 72
- Successor ··········································································································· 73
- Prior applicant ·································································································· 73
- Legitimate holder of right ··············································································· 73
CHAPTER 4 PATENT APPLICATION ·································································· 77 SECTION 1 PROCEDURE OF PATENT APPLICATION ····································· 77
Ⅰ. Meaning ·············································································································· 77
Ⅱ. General principles for patent application ························································ 77 - Writing requirement ························································································· 77
- Use of Korean mandated ················································································ 78
- Formalism ·········································································································· 78
Ⅲ. Types of Application Form for Patents ·························································· 78 - Application Form for Patents ········································································· 78
- Specifications ···································································································· 79
- Drawing ············································································································· 81
- Abstract ············································································································· 82
- Patent application procedure ··········································································· 85
- Ⅳ.
- Claim of Patent ·································································································· 86
- Meaning ············································································································· 86
- Function of Claim of Patent ·········································································· 86
- Make up of Claim of Patent ········································································· 87
- V.
- Singularity of Invention ······················································································ 90
- Meaning ············································································································· 90
- Invention of Group ·························································································· 90
- Requirements for Application #1 ··································································· 91
- Legal Effect for Breach ·················································································· 91
VI. Withdrawal and abandonment of application ················································· 91 SECTION 2 AMENDMENT OF APPLICATION ··················································· 92
Ⅰ. Amendment system ···························································································· 92 - Meaning ············································································································· 92
- Types of amendment ························································································ 92
Ⅱ. Object of amendment ························································································ 93 - Procedural amendment ····················································································· 93
- Substantive amendment ···················································································· 93
Ⅲ. Procedure of amendment ·················································································· 96 - Ⅳ.
- Effect of amendment ························································································· 96
- Lawful amendment ··························································································· 96
- Unlawful amendment ······················································································· 96
- V.
- Dismissal of amendment ····················································································· 98
- Meaning ············································································································· 98
- Object of amendment dismissal ····································································· 98
- Cause of dismissal of amendment ································································· 99
4. Appeal to dismissal of amendment ······························································· 99 SECTION 3 DIVISIONAL & CONVERSION APPLICATION ··························· 100
Ⅰ. Divisional application ······················································································ 100 - Meaning ··········································································································· 100
- Requirements for lawful divisional application ·········································· 100
- Procedure of divisional application ······························································ 101
- Effect of divisional application ···································································· 101
Ⅱ. Conversion application ···················································································· 102 - Meaning ··········································································································· 102
- Requirements for lawful conversion application ········································· 103
- Procedure of conversion application ···························································· 104
- Effect of conversion application ··································································· 104
- Relations between original application and conversion application ········· 105
SECTION 4 PRIORITY ···························································································· 105
Ⅰ. Meaning ············································································································ 105
Ⅱ. Priority based on treaty ·················································································· 105 - Meaning ··········································································································· 105
- Requirements for priority claim ··································································· 106
- Procedure of priority claim ··········································································· 107
- Effect of priority claim ················································································· 108
- Determination of priority claim ···································································· 109
Ⅲ. Domestic priority ····························································································· 109 - Meaning ··········································································································· 109
- Requirements for domestic priority claim ··················································· 110
- Procedure of priority claim ··········································································· 110
- Withdrawal of prior application ···································································· 111
- Effect of priority claim ················································································· 112
CHAPTER 5 PATENT EXAMINATION ······························································ 115 SECTION 1 REGIMES OF EXAMINATION ························································ 115
Ⅰ. Examination regime and non‐examination regime ········································ 115 - Meaning ··········································································································· 115
- Comparison between examination regime and non‐examination regime ·· 115
- Neo‐examination regime ················································································· 116
- Classification of examination ········································································ 116
Ⅱ. Publication of application ··············································································· 117 - Meaning ··········································································································· 117
- Time for publication of application ····························································· 118
- Legal effect of publication of application ··················································· 118
- Early publication of application by request ················································ 119
Ⅲ. Request for examination of application ························································ 120 - Meaning ··········································································································· 120
- Content ············································································································ 120
- Legal effect of examination request ···························································· 121
- Ⅳ.
- Examination per claim ···················································································· 122
- Meaning ··········································································································· 122
- Content ············································································································ 122
- Ⅴ.
- Preferred examination ······················································································ 122
- Meaning ··········································································································· 122
- Content ············································································································ 123
- Legal effect of preferred examination decision ·········································· 125
SECTION 2 EXAMINATION OF APPLICATION ··············································· 125
Ⅰ. Examination ······································································································ 125 - Meaning ··········································································································· 125
- Qualification of examiner ·············································································· 126
- Exclusion of examiner ··················································································· 126
- Procedure for substantive examination ························································ 127
CHAPTER 6 PATENT RIGHT ··············································································· 131 SECTION 1 CREATION OF PATENT RIGHT ····················································· 131 - Registration of patent right ··········································································· 131
- Issuing of patent registration certificate ···················································· 131
- Items to enter in the patent register process ············································· 131 SECTION 2 EFFECT OF PATENT RIGHT ·························································· 132
- Ⅰ. Meaning ············································································································ 132
- Ⅱ. Scope of effect ································································································· 132
- Scope in place ································································································ 132
- Scope in time ································································································· 132
- Scope of protection ························································································ 132
- Ⅲ. Content of effect ······························································································ 133
- ‘Commercially and industrially’ ··································································· 133
- ‘Patented invention’ ····················································································· 133
- ‘Using’ ············································································································· 133
- ‘Monopoly’ ······································································································ 134
- Ⅳ. Restriction on effect ························································································ 134
- Meaning ······································································································· 134
- Restriction from limitation of right ····························································· 135
- Restriction caused by relationship with others ··········································· 136 SECTION 3 ASSIGNMENT AND JOINT‐OWNERSHIP OF PATENT RIGHT ·· 136
- Ⅰ. Assignment of patent right ············································································· 136
- Ⅱ. Joint ownership of patent right ······································································ 137
- Working of jointly owned invention ···························································· 137
- Restriction on assignment ············································································· 137
- Restriction on licensing ················································································· 137
- Other ················································································································ 137 SECTION 4 TERM OF PATENT RIGHT ····························································· 137
Ⅰ. Meaning ············································································································ 137
Ⅱ. Term of a patent right ···················································································· 138 - Term ··············································································································· 138
- Calculation of term ························································································ 138
Ⅲ. Extension of the term of a patent right ······················································· 138 - Meaning ··········································································································· 138
- Object of application for extended registration ·········································· 138
- Extended term ································································································· 138
- Application of extended registration ···························································· 139
- Examination of application for extending period of registration ··········· 139
- Registration of extension and its effect ······················································ 140
- Invalidation trial of registration of extension ··········································· 140 SECTION 5 EXTINGUISHMENT OF PATENT RIGHT ····································· 140
- Ⅰ. Meaning ·········································································································· 140
- Ⅱ. Cause of extinguishment of patent right ······················································ 140
- Abandonment of patent right ········································································ 140
- Cancellation of patent right ·········································································· 140
- Invalidation of patent right ··········································································· 141
- Non‐payment of patent fee ··········································································· 141
- Non existence of heir ···················································································· 141
- Expiration of term of a patent right ··························································· 141 SECTION 6 LICENSE ······························································································ 142
Ⅰ. License ·············································································································· 142 - Meaning ··········································································································· 142
- Scope of license ····························································································· 142
- Types of license ····························································································· 143
Ⅱ. Exclusive license ······························································································ 143 - Meaning ··········································································································· 143
- Creation of exclusive license ········································································ 144
- Content of exclusive license ········································································· 144
- Relationship between patentee and exclusive licensee ······························ 145
- Extinguishment of exclusive license ···························································· 145
Ⅲ. Non‐exclusive license ······················································································· 145 - Meaning ··········································································································· 145
- Non‐exclusive license by consent ································································· 146
- Statutory license ··························································································· 146
- Forced license ································································································· 148
SECTION 7 REGISTRATION ·················································································· 150
Ⅰ. Meaning ············································································································ 150
Ⅱ. Effect of registration ······················································································· 151 - Create a right ······························································································· 151
- Effect a change in right ·············································································· 151
- Effect against a third party ·········································································· 151
Ⅲ. Publication of registration ··············································································· 151 - Meaning ··········································································································· 151
- Object ············································································································ 152
- Effect ············································································································· 152
CHAPTER 7 IPT’S PATENT TRIAL ··································································· 155 SECTION 1 IPT TRIAL SYSTEM ········································································· 155
Ⅰ. Meaning ············································································································ 155
Ⅱ. Nature of patent trial ······················································································ 155
Ⅲ. Industrial Property Tribunal ············································································ 155 - Composition ···································································································· 155
- Classification of IPT trial ············································································· 156
- Relationship with Patent Court ····································································· 156 SECTION 2 PROCEDURE OF PATENT TRIAL ················································· 157
- Ⅰ. Request for trial ······························································································· 157
- Mandatory items of the request ··································································· 157
- Amendment of request; Gist of request ······················································ 158
- Mandatory written attachment to the request ··········································· 159
- Ⅱ. Party ·················································································································· 160
- Capacity to be a party ·················································································· 160
- Qualification of a party ················································································· 160
- Request for IPT trial and interest ······························································ 161
- Joint IPT trial ······························································································· 161
- Correction of party ························································································ 162
- Ⅲ. Trial examination ··························································································· 162
- Meaning ··········································································································· 162
- Trial examination of formality and lawfulness ··········································· 162
- Method ··········································································································· 163
- Principle ··········································································································· 163
- IPT decision ····································································································· 165
- Meaning ··········································································································· 165
- Items to be included in IPT decision ························································· 165
- Conclusion of IPT decision ········································································ 165
- Reasoning of IPT decision ········································································· 166
- Effect ············································································································· 167
- Correction of IPT decision ··········································································· 169
- Withdrawal of request for IPT trial ···························································· 170
- Meaning ··········································································································· 170
- Requirements ··································································································· 170
- Method ··········································································································· 170
- Effect ············································································································· 170 SECTION 3 TYPES OF IPT TRIAL ····································································· 171
Ⅰ. IPT Trial on appeal to patent rejection, etc. ············································· 171 - Meaning ··········································································································· 171
- Request period ······························································································ 171
- Items to be included in the request ·························································· 171
- Procedure ······································································································· 172
- Types of IPT decision ··················································································· 172
Ⅱ. Re‐examination of amended application ························································ 173 - Meaning ··········································································································· 173
- Object ·············································································································· 173
- Procedure ······································································································· 173
Ⅲ. IPT trial to invalidate patent ·········································································· 174 - Meaning ··········································································································· 174
- Grounds ········································································································· 175
- Party ················································································································· 175
- Time of request ······························································································ 176
- Effect of invalidation ····················································································· 176
- Request for correction of patent ·································································· 176
- Ⅳ.
- IPT trial to invalidate registration for patent term extension ···················· 177
- Meaning ··········································································································· 177
- Grounds ··········································································································· 177
- Party ················································································································· 177
- Time to request ······························································································ 177
- Object ·············································································································· 177
- Effect of invalidation ····················································································· 178
- Ⅴ.
- IPT trial to confirm the scope of a patent right ········································ 178
- Meaning ··········································································································· 178
- Classification ··································································································· 178
- Party ················································································································· 179
- Time to request ······························································································ 179
- Procedure ········································································································· 179
- Specifying target invention ············································································ 179
- Effect ············································································································· 180
- Relationship between positive trial to confirm the scope of a patent right and a third invention ········································································· 180
- Relationship between trial to confirm the scope of a patent right and patentability requirement ················································································ 181
- Cases ·············································································································· 181
Ⅵ. IPT trial to correct ·························································································· 184 - Meaning ··········································································································· 184
- Petitioner ········································································································· 184
- Time to request ······························································································ 184
- Scope of correction ······················································································ 184
- Request ·········································································································· 186
- Procedure of trial examination ····································································· 186
- Trial to correct in multi‐claim system ························································· 187
- Effect ············································································································· 187
Ⅶ. IPT trial to invalidate correction ··································································· 188 - Meaning ··········································································································· 188
- Party ················································································································· 188
- Time to request ···························································································· 188
- Grounds ··········································································································· 188
- Request for correction in a trial to invalidate correction ························· 189
- Effect ············································································································· 189
Ⅷ. Trial to grant non‐exclusive license ···························································· 189 - Meaning ··········································································································· 189
- Requirements ··································································································· 189
- Party ················································································································· 190
- Time to request ······························································································ 190
- Request ············································································································ 190
- Effect of final IPT decision ······································································· 190
CHAPTER 8 PATENT LITIGATION ···································································· 19
CHAPTER 1 PATENTS AND UTILITY MODEL RIGHT ································ 3
Ⅰ. Patents ··················································································································· 3 Ⅱ. Utility model right ······························································································· 5 CHAPTER 2 INTRODUCTION TO PATENTS ····················································· 9 SECTION 1 INTRODUCTION TO PATENTS ·························································· 9
Ⅰ. Goals of the patent system ················································································ 9 Ⅱ. Development of patents ···················································································· 10 4. Basic principles of the Patent Act in Korea ················································ 14 SECTION 2 INTRODUCTION TO PROCEDURE FOR THE PATENT ACT ··· 15
Ⅰ. Competency ········································································································ 15 Ⅱ. Power of attorney ······························································································ 18 Ⅲ. Period ·················································································································· 25 CHAPTER 3 PATENTS INVENTION ···································································· 41 SECTION 1 PATENTABLE INVENTION ································································ 41
Ⅰ. Meaning ·············································································································· 41
Ⅱ. Requirements for an invention ········································································· 41 Ⅲ. Types of invention ····························································································· 44 Ⅰ. Patentable subject matter ·················································································· 69 Ⅱ. Holder of Right ································································································· 72 CHAPTER 4 PATENT APPLICATION ·································································· 77 SECTION 1 PROCEDURE OF PATENT APPLICATION ····································· 77
Ⅰ. Meaning ·············································································································· 77
Ⅱ. General principles for patent application ························································ 77 Ⅲ. Types of Application Form for Patents ·························································· 78 VI. Withdrawal and abandonment of application ················································· 91 SECTION 2 AMENDMENT OF APPLICATION ··················································· 92
Ⅰ. Amendment system ···························································································· 92 Ⅱ. Object of amendment ························································································ 93 Ⅲ. Procedure of amendment ·················································································· 96 4. Appeal to dismissal of amendment ······························································· 99 SECTION 3 DIVISIONAL & CONVERSION APPLICATION ··························· 100
Ⅰ. Divisional application ······················································································ 100 Ⅱ. Conversion application ···················································································· 102 SECTION 4 PRIORITY ···························································································· 105
Ⅰ. Meaning ············································································································ 105
Ⅱ. Priority based on treaty ·················································································· 105 Ⅲ. Domestic priority ····························································································· 109 CHAPTER 5 PATENT EXAMINATION ······························································ 115 SECTION 1 REGIMES OF EXAMINATION ························································ 115
Ⅰ. Examination regime and non‐examination regime ········································ 115 Ⅱ. Publication of application ··············································································· 117 Ⅲ. Request for examination of application ························································ 120 SECTION 2 EXAMINATION OF APPLICATION ··············································· 125
Ⅰ. Examination ······································································································ 125 CHAPTER 6 PATENT RIGHT ··············································································· 131 SECTION 1 CREATION OF PATENT RIGHT ····················································· 131 Ⅰ. Meaning ············································································································ 137
Ⅱ. Term of a patent right ···················································································· 138 Ⅲ. Extension of the term of a patent right ······················································· 138 Ⅰ. License ·············································································································· 142 Ⅱ. Exclusive license ······························································································ 143 Ⅲ. Non‐exclusive license ······················································································· 145 SECTION 7 REGISTRATION ·················································································· 150
Ⅰ. Meaning ············································································································ 150
Ⅱ. Effect of registration ······················································································· 151 Ⅲ. Publication of registration ··············································································· 151 CHAPTER 7 IPT’S PATENT TRIAL ··································································· 155 SECTION 1 IPT TRIAL SYSTEM ········································································· 155
Ⅰ. Meaning ············································································································ 155
Ⅱ. Nature of patent trial ······················································································ 155
Ⅲ. Industrial Property Tribunal ············································································ 155 Ⅰ. IPT Trial on appeal to patent rejection, etc. ············································· 171 Ⅱ. Re‐examination of amended application ························································ 173 Ⅲ. IPT trial to invalidate patent ·········································································· 174 Ⅵ. IPT trial to correct ·························································································· 184 Ⅶ. IPT trial to invalidate correction ··································································· 188 Ⅷ. Trial to grant non‐exclusive license ···························································· 189 CHAPTER 8 PATENT LITIGATION ···································································· 19