Newly November
Provisions regarding the expropriation and implementation of the patent right
[Enforcement Date 28. Jul. 20 I 0.] [Presidential Decree No.22306, 26. Jul, 20 I0., Partial Amendment]
=;61 (t!- ;x:H t!- g.:i!D 042-481-5807
Article 1 (Purpose)
The purpose of this decree is to provide for matters regarding Patent Act Article 41(2). 41(4), Article
l 06, 106bis, Alticle 107, Article 110, Article 111bis, A1ticle 114, and Article 116. (Amended
ovember 30, 2005, July 26, 2010)
[Wholly amended August 28, 1990]
Article 2 (Application for Disposition)( I) When a Competent Minister recognizes that a patent-pending
invention falls under the "Patent Act"(hereinafter the "Act") Paragraph (2) of Alticle 41 or a patented
invention falls tmder Paragraph (1) of Article 106 or Paragraph (1) of A11icle l06bis ofthe Act, a
Competent Minister may request to the Commissioner ofthe Korean Intellectual Property Office(KJPO)
to expropriate the patent right in accordance with the applicable provisions.
(2) A competent Minister requesting an expropriation under Paragraph (I) to the Commissioner of the
Korean Intellectual Property Office (KlPO) may request patent investigation regarding related
invention.
[Wholly amended, July 26, 201OJ
Article 2-2 (Request for Award for import of medicine)
In case of request for awards to import a patented medicine that is produced through compulsory
implementation on the patented invention in order to treat diseases that tlu·eaten the health of the
majority of its citizens pursuant to Subparagraph (iii) of Paragraph (1) of Article, the following
requirements shall be fulfilled:
(i) Insufficient or no manufacturing capability to produce the medicine concerned in this country
(ii) In time of war, uprising, or other similar emergency, or declaration of a state of disaster under
Article 36 of "Disaster and Safety Management Act"
[This A1ticle Added. 30, 20051
Article 2-3 (Qualification of the importing country)
In paragraph (7) of A.Iiicle 107, the term "a non-WTO member country Iisted in a Presidential Decree"
refers to the poorest developing country defined by the United Nations General Assembly Resolution.
November
documents:<Amended
[This Article evvly Added. November 30. 2005]
Article 3 (Petition etc.)(l) A person who requests application pursuant to Paragraph (1) of Article 2 or
Request or an Application under Article 1.14 or Article 116 shall submit a petition or a written request
stating the following: <Amended July I , 1987: August 28. 1990: 30. 2005: July 26. 20 I 0>
(i) Application number or patent number
(ii) Title of Invention
(iii) The name and address of the applicant (and, if the applicant is a juridical person, the name,
business address, and the name of the representative)
(iv) The name, address or business address of patent applicant. patentee. exclusive licensee,
non-exclusive licensee. or pledgee
(v) Indication of requested information
(vi) The purpose and grounds of the request
(vii) The a.J110Wlt of compensation or remuneration for the license and the method a.J1d time of
payment
(viii) The scope of non-exclusive licenses (except for the request pursuant to Paragraph (2) of Article
41 or Paragraph l of Article 106 of the Act)
(2) Any petition or written request pursuant to Paragraph ( I ) shall contain the following
ovember 30. 2005>
(i) Documents stating basis for calculating the Amount of compensation or remuneration
(ii) Documents to prove the grounds for the application or request
(iii) Documents to prove that no agreement is reached despite having a consultation under reasonable
conditions with the patentee or exciusive licensee on the grant of a non-exclusive license for the
patented invention or a consultation is impossible to arra.J1ge (limited to the request pursuant to
Article 107). However, this shall not apply to the proviso of Paragraph (1) of Article l 07 of the Act.
(3) Anyone who intends to apply for award pursuant to Article 2bis shall submit documents to prove the
cases corresponding to subparagraphs of Article 2bis in addition to the documents pmsuant to
Paragraphs (1) and (2).<Newly added November 30. 2005>
(4) Anyone who intends to apply for award pursuant to Subparagraph (v) of Paragraph ( I ) of Article I07
of the Act shall state the country that intends to import the medicine, the name and quantity of the
medicine required on the written request, and submit the following documents in addition to the
documents as described in Paragraphs (1) and (2). If the number o[ the countries that intend to import
the medicine (hereinafter, referred to as "importing country") is 2 or more, each country should be
separated and filed accordingly.<Newly added ovember 30, 2005>
(i) Document proving that the importing medicines are used to treat diseases that threaten the health of
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the majority of its citizens
(ii) Docwnent showing that the importing country intends to import the medicines from the requester
for the award
(lii) Proper assessment ofthe economic value ofmedicines in the importing country
(jv) Copy of the document notified pursuant to Paragraph (7) of Article 107 of the Act or a
documentary evidence thereof
(v) Pursuant to Subparagraph (iii) of Paragraph (2) of Article 110 of the Act, the address of a Web site
that publishes packaging and markings that are distinguishable from the medicines supplied by the
patentee, exclusive licensee or non-exclusive licensee (tmless the license is granted by an award.
The same shall be applied hereinafter), a document that states clearly the characteristics thereof,
and the matters determined in the Award. However, if the packaging and markings that are
distinguishable from the medicine supplied by the patentee, exclusive licensee, or non-exclusive
licensee are not possible, or the distinguishable packaging and markings impact significantly on the
price ofthe medicines, one shall provide the documentary evidence.
(5) Where any change is required in the Award docmnent pmsuant to Paragraph (1) of Alticle 111bis,
the written request shall include the followings:<Newly added, November 30, 2005>
(i) Patent number for approved award
(ii) Title ofthe invention for approved award
(iii) Name and address of the applicant (and, if the applicant is a juridical person, the name, business
address, and the name ofthe representative)
(iv) The name, address or business address of patent applicant, patentee, exclusive licensee, or
non-exclusive licensee
(v) Indication ofrequested information
(vi) The pmpose and grounds ofthe request
(vii) Reason for the changes in award document and the documentary evidence supporting the reason
(6) The Commissioner of the Korean Intellectual Property Office may request to submit any additional
information as it deems necessary as related to Paragraphs 1 to S.<Newly added November 30. 2005:
July 26. 2010>
Article 4 (Delivery of Copy of Petition and Announcement of Application)(}) Where the Petition
pursuant to Article 3 has been received, the Commissioner of the Korean Intellectual Prope1ty Office
shall deliver the copy ofpetition to the patent applicant, patentee, exclusive licensee, non-exclusive
licensee, or pledgee unless the Act provides another provision and give an opportt.mity to submit an
argument within a designated period. <Amended July 1, 1987>
(2) Where the Argument has been submitted pursuant to the Paragraph (1) , the Commissioner of the
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Korean Intellectual Property Office shall deliver a copy of the argtm1ent to the applicant.
(3) Where the Petition pursuant to Article 3 has been received or the Conunissioner of the Korean
Intellectual Propet1y Office intends to cancel the patent right on his authority pursuant to Article 116 of
the Act, the Conunissioner of the Korean Intellectual Property Office shall notify his intention in the
Patent Gazette. However, if it is required to be kept secret in the interest of national defense, the
intention will not be published. <Amended July 1, 1987: August 28, 1990>
(4) Deleted <July 1, 1987>
Article 5 (Ruling on the amount of compensation etc.)(l) The Conunissioner of the Korean Intellectual
Property Office (KIPO) shall execute the processing pursuant to ParagTaph (J) of Article 2 and At1icle 3
after the period designated by Paragraph (J) of Article 4. <Amend July 1 1987: August 28, 1990: July
26,2010>
(2) When the Commissioner of the KIPO executes the processmg pursuant to Paragraph (1), the
Commissioner of the KIPO shall also decide the compensation or remuneration for the processing on the
criteria for calculation of the amount of compensation pursuant to Article 2bis. <Amended July 26,
2010>
(3) the Conm1issioner of the KIPO shall take the opinions of the applicant, patent applicant, patentee,
exclusive licensee, non-exclusive licensee, or pledgee into consideration in determining the
compensation or remuneration pursuant to Paragraph (2).<Amended July 1, 1987: August 28, 1990:
November 30, 2005>
(4) If necessary to determine the amount of compensation or remuneration pmsuant to Paragraph (2),the
Commissioner of the KIPO may hear an opinion of the Intellectual Property Rights Depute Resolution
Committee established pursuant to Article 41 of the Invention Promotion Act and the heads of relevant
authorities and take the opinions into consideration in determining the compensation or remuneration.
<Amended July 26, 2010>
[Title amended July 26, 2010]
Article 5-2 (Criteria fot· Calculation for the amount of compensation etc.)(I ) The compensation
pursuant to Paragraph (3) of Article 106 of the Act is calculated based on the following:
(i) Estimated total royalty during the duration of patent
(ii) Market price of a comparable patent unless the an1ount of compensation is determined pursuant to
Paragraph (1)
(2) The amount of compensation pursuant to Paragraph (3) of Article 106bis of the Act or the
remuneration pursuant to Paragraph (5) of Article 107 of the Act is calculated based on the following
4
equation:
Amount of compensation or remuneration total estimated unit sales of the product unit price of the= x
product market share base ratex x
(3) As stated in the equation of Paragraph (2), the scheduled quantity of the product the unit price of the
product, the market share and the base rate are defined as follows.
(i) Total estimated unit sales of the product: total estimated number of products sold per year during
the working period
(ii) Unit price of the product: average of annual factory price of the product during the working period
(iii) Market share: Percentage of utilization of patent in producing products in its unit
(iv) Base Rate: 3%. However, depending on the practical value of the patents and industrial
applicability. a rate of more than 2 percent to less than 4 percent can be considered.
(4) If the amount of the compensation or remuneration is not determinable pursuant to Paragraphs ( 1) to
(3). the amount may be determined depending on a separate criteria announced by theCommissioner of
the Korean Intellectual Property.
(5) The amount of compensation or remuneration pursuant to Paragraphs (2) to (4) shall be the sum
during all working period. However. when the exclusive license and non-exclusive license is granted
where totalestimated unit sales cannot be predicted, the amount of compensation or remuneration per
unit product may be determined using the following formula:
amount of compensation or remuneration per unit product sales price of the product market share= x
base rate
[This Article Newly Added July 26. 20 10]
Article 6 (Failure to work patented invention)(l) The terms "Justifiable reasons prescribed by
Presidential Decree" of Paragraph (I) of Article 107 are as follows: <Amended July 1. 1987: August 28.
1990>
(i) No-working of patented invention due to mental and physical inability of patentee. However. it
shall be limited to be proved by the head of 1nedical institutions
(ii) Where working of the patented invention is contingent upon government agency or individual
permission. approval, or agreement and patentee fails to resolve these issues
(iii) Where working of patented invention is prohibited or restricted by enactment of law
(iv) Where working of the patented invention is unable to carry out due to the lack of raw materials or
facilities therefor in the country or import prohibition of pertaining material
(v) Where there is no den1and for goods for working patented invention or the patented invention has
not been worked commercially on a substantial scale
(2) Where the patented invention has not been worked for more than three consecutive years after
5
x
registration of patent or the patented invention has not been launched more than two consecutive years,
it is deemed to non-working of patented invention.
Article 7 (Decision of Execution)
Decision ofexecution pursuant to Article 5 shall be served with following matters in writing<Amended
July 1, 1987: August 28, 1990: November 30, 2005>
(i) The number of the decision
(ii) The name and address of the applicant (and, if the applicant is a juridical person, the name,
business address, and name of representative)
(iii) The name, address or business address of Patent applicant or patentee, exclusive licensee
non-exclusive licensee, or pledgee
(iv) The indication on application or request information
(v) The text of the decision (including compensation and consideration)
(vi) The reasons for decision (including the purpose of request or demand and the grounds thereof)
(vii) The date of decision
(viii) The matters pursuant to Subparagraphs (iii) and (iv) of Paragraph 2 of Article
Article 8 (Delivery of Certified Copies of Decision and announcement)
Where the decision for execution is made pursuant to Article 5 and Article 7, the Commissioner of the
Korean Intellectual Property Office shall deliver a certified copy of the decision to a patent applicant or
patentee, exclusive licensee, non-exclusive licensee, or pledgee. Also, its decision shall be published in
the Patent Gazette. However, if it is required to be kept secret in the interest of national defense, the
decision may not be published.
Article 9 (Exception to Petition Etc.)(l) Pursuant to Paragraph ( 1) of A.Iiicle 6 or Paragraph (1) of Article
6bis of the Act, when the Commissioner of the KIPO considers that some of items for the petition or
attaclunent (hereinafter, referred to as "documents" in this Aliicle) pursuant to Paragraphs (1) and (2) of
Alticle 3 cannot be contained or attached without acknowledging the existence of patent right due to an
extremely emergency circumstances or inevitable matter at the time the petition is submitted pursuant to
Paragraph 1 of Article 2, notwithstanding Paragraphs (1) and (2) ofArticle 3, the petition can be
accepted on the condition that the documents shall be supplemented as soon as the presence of the
patent right is confirmed. In this case, the petition is deemed to have been received pursuant to
Paragraphs (1) and (3) of A.Iticle 4 when the documents are supplemented.
(2) Upon receiving the Petition pmsuant to Paragraph ( 1), if considered necessary for disposition for the
6
application before the docu1nents are supplemented, the Commissioner of the KIPO may dispose
notwithstanding Article 4 and Article 5. In this case, Decision of execution pursuant to Article 7 may
contain matters as subscribed in each Subparagraph of the same Article unless the Commissioner of the
KIPO considers that some matters cannot be contained as subscribed in Paragraph ( 1), and announces
pursuant to Article 8.
(3) As soon as the documents are supplemented after the disposition pursuant to Paragraph (2), the
Commissioner of the KIPO shall execute the supplemental measurement pursuant to Article 4, Article 5,
Article 7 and Article 8 for the disposition.
[This Article Newly Added. July 26. 2010]
Article 10 Deleted <June 27. 2001>
Article 11 Deleted <June 27. 2001>
Article 12 Deleted <June 27, 200 1>
Article 13 Deleted <June 27. 2001>
Article 14 Deleted <June 27. 2001>
Article 15 Deleted <June 27, 200 1>
Article 16 Deleted <June 27. 200 1>
Article 17 Deleted <June 27. 2001>
Article 18 Deleted <June 27. 200 1>
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Article 19 (Mutatis mutandis)
The provisions of this decree shall apply mutatis mutandis to utility model and design. <Amended June
27, 200 1, June 30, 2005>
ADDENDA <No. 4216, 10. Nov, 1969>
This Decree enters into force on the date of its promulgation.
ADDENDA <No. 7002, 04. Jan, 1974>
(1) (Date of Entry into Force) This Decree enters into force on January 1, 1974.
(2) (Abolition decree) Presidential Decree No. 4 192, Patent Compensation Committee Charter 1s
abolished.
(3) (Transitional Measures on Pending Cases) Any limitation on no-issuance of the patent for the
invention of the patent application that is pending at the KIPO when this Provision enters into force, the
expropriation of a right to obtain a patent, and any limitation, expropriation, revocation of the patent
right or disposition on the working of a patented invention are subject to the previous provisions.
ADDENDA <No. 9101. 26. JuL 1978>
(1) (Date of Entry into Force) This Decree enters into force on the date of its promulgation.
(2) Omitted
(3) (Amendment of Other Acts)
(i) and (ii) Omitted
(iii) The following articles of the Provisions regarding expropriation and implementation of patent right
8
are amended as follows.
"Patent Bureau" in Article 9 reads "KIPO," and the term "Managing Director of Patent Bureau" in
Paragraph (2) of Article 10 reads "Managing Director of KI PO." "Public Officials of Patent Bureau"in
Paragraph (2) of Article 17 reads " Public Officials or KI PO." "Director of Patent Bureau" in this Decree
reads "Commissioner of KIPO."
ADDENDA <No. 12202,01. Jul, 1987>
This Decree enters into force on July 1, 1987.
ADDENDA <No. 13087, 28. Aug, 1990>
This Decree enters into force on September I, 1990.
ADDENDA <No. 15009, 03. Jun, 1996>
Article 1 (Date of Entry into Force)Th.is Decree enters into force on July 1, 1996. However, the amended
provisions of Subparagraph (ii) of Article 7 enter into force on December 7, 1996.
Article 2 (Amendment of Other Acts) (1) and (2) Omitted
(3) The following articles of the Provisions regarding expropriation and implementation of patent right
are amended as follows.
Title of Article 9 "(Industrial Property Rights Review Committee)" reads "(Industrial Property Review
Conunittee)," and "Industrial Property Rights Review Committee" in the same Article reads "Industrial
Property Review Committee.'' " Paragraph (3) of Article l 07 of the Act" in Subparagraph (iii) of the
same Article reads "Paragraph (1) of Article 107."
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ADDENDA <No. 17256,27. Jun, 2001>
This Decree enters into force on July L 2001.
ADDENDA <No. 18903, 30. Jun, 2005>
Article 1 (Date of Entry into Force)This Decree enters into force on July L 2005.
Article 2 (Amendment of Other Acts) ( 1) to <18> Omitted.
<19> Some provisions of the Provisions regarding expropriation and implementation of patent right are
amended as follows:
"Design" [uijang] in Article 19 reads "design"[dizain]
<20> Omitted
ADDENDA <No. 19153, 30. Nov. 2005>
This Decree enters into force on December L 2005.
ADDENDA <No. 22306,26. Jul, 2010>
This Decree enters into force on 28 July 20 10.
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