Décret d'application de la loi sur les brevets (décret présidentiel n° 590 du 27 mars 1962, modifié jusqu'au décret présidentiel n° 21917 du 30 décembre 2009), République de Corée

1. The Government. local governments. the governments or local governments of foreign countries. or international organizations;
2. National and public schools provided for in Article 3 of the Higher Education Act or national and public universities of foreign countries;
3. Domestic and foreign national and public research institutions; and

4 . Corporations incorporated to run the patent information business which are designated and publicly notified by the Commissioner of the Korean Intellectual Property Office.

[This Article Wholly Amended by Presidential Decree No. 19697. Sep. 28. 2006]

Article 2 (Deposit of Micro-Organisms)

(1)

Any person who desires to make a patent application for an invention related to a micro-organism. shall deposit such micro-organism with a depository determined by the Commissioner of the Korean Intellectual Property Office or an organization which has acquired a status as an international depository under Article 7 of the Budapest Treaty on the International Recognition of the Deposit of Micro-Organisms for the Purposes of Patent Procedure (hereinafter referred to as "international depository"). and append documents certifying the fact (in cases of deposit with the international depository. a copy of the latest deposit certificate of those issued under Article 7 of the Budapest Treaty on the International Recognition of the Deposit of Micro-Organisms for the Purposes of Patent Procedure) to the patent application: Provided. That if a person who has ordinary knowledge in the field of technology to which the invention belongs. can easily obtain such micro-organism. it need not to be required to deposit such micro-organism. (Amended by Presidential Decree No. 18694, Jan. 31, 2005)

(2)

If a new deposit number is issued to the micro-organism deposited under paragraph 0) after a patent application is filed. a patent applicant or a patentee shall report it. without delay. to the Commissioner of the Korean Intellectual Property Office. (Amended by Presidential Decree No. 14059, Dec. 31. 1993)

Article 3 (Matters to be Entered in Patent Specifications of Invention related to Micro-Organism) Any person who intends to file a patent application for an invention related to a micro-organism shall enter in the specifications prescribed in Article 42 (2) of the Act. the deposit number issued by the depository or the international depository when he/she has deposited the microorganism pursuant to the main sentence of Article 2 0), and the method of acquisition of the micro-organism when he/she did not deposit it pursuant to the proviso to Article 2 0).

[This Article Wholly Amended by Presidential Decree No. 21567. Jun. 26. 2009J

Article 4 (Apportionment of Samples of Micro-Organism)

(1) A person who intends to practice an invention related to a microorganism deposited under Article 2 for the purpose of a test or research, may have samples of such micro-organism apportioned by the depository or international depository, in any of the following cases: (Amended by

Presidential Decree No. 15408. Jun. 26. 1997; Presidential Decree No. 17995. Jun. 13.2003; Presidential Decree No. 20127. Jun. 28. 2007; Presidential Decree No. 21567, Jun. 26. 2009)

1. Where a patent application for the invention related to the microorganism is published or the registration of establishment is filed; and
2. Where it is required to prepare a written opinion prescribed in Article 63 0) of the Act (including the cases where Article 170 (2) of the Act is applicable mutatis mutandis).

(2) No person who has samples of a micro-organism apportioned under

paragraph (1), shall allow another person to use the micro-organism. Article 5 (Descriptive Method of Scope of Patent Claim)

(1) When the claim (hereinafter referred to as "claim") within the scope of the patent claim provided for in Article 42 (8) of the Act is to be entered, the independent claim (hereinafter referred to as "independence") shall be entered and the dependent claim (hereinafter referred to as "dependence") that substantiates the independence by limiting or adding to it may be entered. In such cases, if it is deemed necessary, other dependence that shapes up the dependence by limiting or adding to it may be entered.

(Amended by Presidential Decree No. 19697. Sep. 28. 2006; Presidential Decree No. 20127. Jun. 28. 2007)

(2) The claim shall be entered in a proper number according to the nature of the invention. (Amended by Presidential Decree No. 17995. Jun. 13. 2003)

(3) Deleted. (by Presidential Decree No. 16417. Jun. 30. 1999)

(4)

When the dependence is entered, one or more paragraphs from among independence or other dependence shall be quoted and the number of paragraphs quoted shall be entered. (Amended by Presidential Decree No. 16417, Jun. 30. 1999)

(5)

The claim that quotes not less than two claims shall mention alternatively the numbers of the quoted claims. (Amended by Presidential Decree No. 17995. Jun. 13. 2003)

(6)

In the claim that quotes not less than two claims, the quoted claim shall be prohibited from quoting two or more other claims again. The same shall apply to the formula by which in the claim that quotes not less than two claims, the quoted claim quotes one claim that results in quoting not less than two claims after quoting one claim again. (Amended by Presidential Decree No. 19697. Sep. 28, 2006)

(7)

The claim that is quoted shall be entered ahead of the claim that quotes other claim. (Amended by Presidential Decree No. 17995, Jun. 13. 2003)

(8)

Each claim shall be entered after changing the line of each paragraph and the serial number in the Arabic figure shall be given in the order of the entries.

Article 6 (Requirements for Single Patent Application for Group of Inventions) A single patent application for a group of inventions as prescribed in the proviso to Article 45 0) of the Act shall meet the following requirements:

1. The inventions described in the application shall have mutual relationship in adopted technology; and
2. The inventions described in the application shall have the same or corresponding technological features. In such cases, the technological features shall be improved in respect of the inventions at large when compared with prior arts.

[This Article Wholly Amended by Presidential Decree No. 17995. Jun. 13. 2003]

Article 7 (Invention subject to Application for Registration of Patent Right Duration Extension) For the purpose of Article 89 of the Act, the term "invention prescribed by Presidential Decree" means any of the following inventions : (Amended by Presidential Decree No. 15009. Jun. 3, 1996; Presidential Decree No. 16852, Jun. 23, 2000; Presidential Decree No. 18694, Jan. 31. 2005: Presidential Decree No. 20127. Jun. 28, 2007; Presidential Decree No. 21053. Sep. 30. 2008)

1. Invention of medicines which is subject to the item license under Article 31 (2) or (3) or 42 (1) of the Pharmaceutical Affairs Act for purposes of embodying the patented invention; and
2. Invention of agricultural chemicals or raw materials thereof which are to be registered under Articles 8 (1), 16 (1) and 17 (1) of the Agrochemicals Control Act for purposes of embodying the patented invention.

CHAPTER IT EXAMINATION AND TRIAL EXAMINATION

Article 8 (Qualification for Examiners. etc.)

(1) A person eligible to become a trial examiner shall be any public official falling under any of the following subparagraphs of the Korean Intellectual Property Office or agencies under its control. who has completed the prescribed education and training course for trial examiners conducted by the International Intellectual Property Training Institute: (Amended

by Presidential Decree No. 21917. Dec. 30, 2009)

1. A public official of Grade V or higher in general service;
2. A public official in general service who belongs to the Senior Civil Service; and
3. A specialized contract-based public official who satisfies the qualification criteria of Grade A or B pursuant to attached Table 1 of the Contract-based Public Officials Regulations.

(2) A person eligible to become a trial examiner shall be any state public official of Grade N or higher in general service or a public official in general service who belongs to the Senior Civil Service assigned to the administrative post of the Korean Intellectual Property Office or its agencies. who has completed the prescribed education and training course for trial examiners conducted by the International Intellectual Property Training Institute and who falls under any of the following subparagraphs: (Amended

by Presidential Decree No. 16417. Jun. 30. 1999: Presidential Decree No. 18694. Jan. 31. 2005; Presidential Decree No. 19513. Jun. 12. 2006; Presidential Decree No. 19697. Sep.

28. 2006)

1. A person who has served as an examiner at the Korean Intellectual Property Office for two or more years;

2. Deleted; and (by Presidential Decree No. 19697. Sep. 28. 2006)

3. A person whose total term of office is not less than two years having served as an examiner at the Korean Intellectual Property Office, having been engaged in affairs of trial as a state public official of Grade V or higher in the general service or a public official in the general service who belongs to the Senior Civil Service at the Patent Tribunal and having served as a technical examiner in the Patent Court.

(3) A person eligible to become a presiding trial examiner shall be a state public official of Grade III in the general service or a public official in the general service who belongs to the Senior Civil Service of the Korean Intellectual Property Office or any agency affiliated therewith. who falls under any of the following subparagraphs: Provided. That a presiding trial examiner the position of which is open to the private sector pursuant to the provisions of Article 28-4 (1) of the State Public Officials Act or the position of which is publically offered pursuant to the provisions of Article 28-5 (1) of the same Act shall be appointed from among persons who meet the requirements for performing duties under the provisions of paragraph (2) of the same Article or fall under any of the following subparagraphs: (Amended by Presidential Decree No. 16725, F eb. 28. 20{)();

Presidential Decree No. 18694, Jan. 31, 2005; Presidential Decree No. 19513, Jun. 12.2006; Presidential Decree No. 19697, Sep. 28, 2006)

1. A person who has served as a trial examiner at the Patent Tribunal for two or more years : and
2. A person who is qualified as a trial examiner provided for in paragraph (2) and has worked for the Korean Intellectual Property Office or its affiliated agency for not less than three years while rendering clerical services for examination or a trial.

(4)

Any person eligible to become a Director of the Patent Tribunal shall be a person qualified as a trial examiner.

(5)

Notwithstanding the provisions of paragraphs 0) through (4). any person who is a public official falling under the grade of position (in cluding any public official in the general service who belongs to the Senior Civil Service and any specialized contract-based public official under paragraph 0) 3) as an examiner. trial examiner. presiding trial examiner or Director of the Patent Tribunal as referred to in paragraphs (1) through (4) . and is qualified for a patent attorney. may be appointed as an examiner. trial examiner. presiding trial examiner or Director of the Patent Tribunal: Provided. That a specialized contract-based public official referred to in paragraph (1) 3 shall only be eligible to become an examiner. (Amended by Presidential Decree No. 21917. Dec. 30. 2009)

(6)

Matters necessary for training of an examiner and a trial examiner under paragraphs (1) and (2) shall be determined by the Commissioner of the Korean Intellectual Property Office. [This Ar ticle Wholly Amended by Presidential Decree No. 15408, Jun. 26, 1997]

Article 8-2 (Standards for Designating Specialized Institutions)

(1) The Commissioner of the Korean Intellectual Property Office may designate corporations that fully meet the requirements falling under each of the following subparagraphs as a specialized institution provided for in Article 58 (1) of the Act (hereinafter referred to as "specialized institution") pursuant to Article 58 (3) of the Act: (Amended by Presidential

Decree No. 19697. Sep. 28. 2006)

1. They are required to secure documents and equipment necessary to perform the work of searching prior art or conducting a patent classification under the International Patent Classification:
2. They are required to secure the manpower and the organization exclusively responsible for performing the work of searching prior art or conducting a patent classification under the International Patent Classification:
3. They are required not to have persons on their payrolls who concurrently work for other institutions as its officer or employee. which perform the work provided for in Article 2 of the Patent Attorney Act or are required not to have patent attorneys on their payrolls who are registered pursuant to Article 5 of the same Act from among their officers and employees: and
4. They are required to have officers and employees in charge of the work of searching prior art or conducting a patent classification under the International Patent Classification and to have the security system for their facilities and equipment.

(2) In cases where any specialized institution designated pursuant to paragraph (1) performs any other work than the work of searching prior art or conducting a patent classification under the International Patent Classification. the work of searching prior art or conducting a patent classification under the International Patent Classification shall not be performed in an unfair manner on the grounds of such other work. (Amended

by Presidential Decree No. 19697, Sep. 28, 2006)

(3) Any person who desires to be designated as a specialized institution shall file an application for designating him/her as a specialized institution with the Commissioner of the Korean Intellectual Property Office together with documents proving the fact that all requirements under each subparagraph of paragraph (1) are satisfied. (Amended by

PreSidential Decree No. 18694, Jan. 31, 2005; Presidential Decree No. 19697, Sep. 28. 2006)

(4) Matters necessary for the detailed criteria concerning the securing of documents. equipment. exclusively charged manpower and organiza

277 (Supp. 48)

tion, the operation of a specialized institution, and the detailed criteria of security systems under each subparagraph of paragraph (1) shall be provided and publicly notified by the Commissioner of the Korean Intel lectual Property Office. (Newly Inserted by Presidential Decree No. 18694, Jan. 31, 2005: Presidential Decree No. 19697. Sep. 28, 2006) [This Article Newly Inserted by Presidential Decree No. 13744, Oct. 27, 1992J

Article 8-3 (Entrustment. etc. of Searching Prior Art) 0) With respect to the patent applications or international applications that are deemed to require searching prior art or conducting a patent classification under the International Patent Classification pursuant to Article 58 0) of the Act, the Commissioner of the Korean Intellectual Property Office may commission any specialized institution to search prior art or conduct a patent classification under the International Patent Classification. (Amended by Presidential Decree No. 19697. Sep. 28. 2006: Presidential

Decree No. 21567. Jun. 26. 2009)

(2)

In cases where any specialized institution is commissioned by the Commissioner of the Korean Intellectual Property Office to search prior art or conduct a patent classification under the International Patent Classification pursuant to paragraph (1), the head of such institution shall notify without delay the Korean Intellectual Property Office of the result of the search and the classification. (Amended by Presidential Decree No. 19697, Sep. 28. 2006)

(3)

In cases where the Commissioner of the Korean Intellectual Property Office recognizes that the result of the search and the classification referred to in paragraph (2) is insufficient to figure out existence of prior art and the patent classification under the International Patent Classification in connection with the relevant patent application or international application, he/ she may recommission the head of the relevant specialized institution to search prior art and conduct a patent classification under the International Patent Classification after defining the scope of the search, etc.

(Amended by Presidential Decree No. 19697, Sep. 28, 2006; Presidential Decree No. 21567, Jun. 26, 2009)

(4) Paragraph (2) shall be applicable mutatis mutandis to recommission referred to in paragraph (3) . (Amended by Presidential Decree No. 21567. Jun.

26,2009) [This Article Newly Inserted by Presidential Decree No. 13744, Oct. 27, 1992J Article 9 (Object of Prior Examination)

The term "patent application prescribed by Presidential Decree" in subparagraph 2 of Article 61 of the Act means a patent application falling under any of the following subparagraphs, which is designated by the Commissioner of the Korean Intellectual Property Office: (Amended by PreSidential Decree No, 16852, Jun. 23. 2000; Presidential Decree No. 17246. Jun. 27. 2001 ; Presidential Decree No. 18694. Jan. 31. 2005; Presidential Decree No. 19697. Sep. 28. 2006: Presidential Decree No. 20127. Jun. 28. 2007; Presidential Decree No. 20137, Jun. 29. 2007; Presidential Decree No. 21053. Sep. 30. 2008; Presidential Decree No. 21567. Jun. 26. 2009)

1. A patent application in the area of the defense industry;
2. A patent application directly related to green technology (referring to such technology that minimizes emissions of greenhouse gases and pollutants by saving energy and resources and making use of them efficiently throughout the whole process of social and economic activities, such as technology related to reducing greenhouse gases, raising the efficiency of energy utilization, pollution-free production, clean energy, recycling resources, and eco-friendliness (including related convergence technology) or such);
3. A patent application which is directly related to the promotion of exports;
4. A patent application concerning the official duties of the State or local governments (including any patent application concerning the duties of the national and public schools provided for in the Higher Education Act, which is filed by the organization in charge of the technology transfer and industrialization established within the national and public schools pursuant to Article 11 (1) of the Technology Transfer and Commercialization Promotion Act);
5. A patent application filed by an enterprise confirmed as a venture business under Article 25 of the Act on Special Measures on the Promotion of Venture Business;

5-2. A patent application filed by an enterprise selected as a technology-innovative small and medium enterprise under Article 15 of the Technical Renovation of Small and Medium Enterprises Act ;

1. A patent application concerning the results of the State's project for supporting the development of new technology or quality certification;
2. A patent application which is based on a priority right claim under treaties (limited to cases where a foreign patent office, upon receiving such priority right claim based on the relevant patent application, is in the process of taking procedures for such patent);
3. A patent-applied invention for which the applicant is in process of commercializing or is preparing to do so;
4. A patent application which is directly related to the electronic trans

action ;

1. A patent application on which the Commissioner of the Korean Intellectual Property Office has agreed with the commissioner of any foreign intellectual property office to preferentially examine it; and
2. A patent application for which a person who intends to file an application for prior examination retained a specialized institution under Article 58 0) of the Act to search prior arts with respect to the invention for which the patent application is pending, and requested the specialized institution to notify the results of the search to the Commissioner of the Korean Intellectual Property Office.

[This Article Wholly Amended by PreSidential Decree No. 16417, Jun. 30, 1999J

Article 10 (Decision on Prior Examination)

(1) Any person who applies for a prior examination, shall file an application for prior examination prescribed by Ordinance of the Ministry of Knowledge Economy, with the Commissioner of the Korean Intellectual Property Office. (Amended by Presidential Decree No. 13870, Mar. 6, 1993; Presidential

Decree No. 15009. Jun. 3. 1996; Presidential Decree No. 16417. Jun. 30. 1999; Presidential Decree No. 20729, F eb. 29. 2008)

(2)

The Commissioner of the Korean Intellectual Property Office shall, upon receiving an application for prior examination under paragraph (1) , decide on whether the prior examination is conducted.

(3)

Matters necessary for the decision on prior examination as referred to in paragraph (2) shall be determined by the Commissioner of the Korean Intellectual Property Office.

CHAPTER III CONFIDENTIAL TREATMENT, ETC. OF PATENT APPLICATION RELATED TO NATIONAL DEFENSE

Article 11 (Criteria for Classification of Patent Application Related to National Defense) The Commissioner of the Korean Intellectual Property Office shall determine the criteria for classification necessary for selection of inventions to be treated as confidential ones under Article 41 (1) of the Act (hereinafter referred to as the "criteria for classification") after consulting with the Commissioner of the Defense Acquisition Program Administration. (Amended by Presidential Decree No. 19697. Sep. 28. 2006)

Article 12 (Procedure for Confidential Treatment)

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(1)

If a patent application filed by a person having a domicile or business place in Korea is conformed to the criteria for classification as prescribed in Article 11. the Commissioner of the Korean Intellectual Property Office shall refer the Commissioner of the Defense Acquisition Program Administration to whether or not it is required to classify and treat such application as confidential one. (Amended by Presidential Decree No. 19697, Sep. 28, 2006)

(2)

In case where the Commissioner of the Korean Intellectual Property Office has made a reference to the Commissioner of the Defense Acquisition Program Administration under paragraph (1). he shall notify it to the inventor. the applicant and the attorney of the patent application. and a person who is deemed to be learned of the invention (hereinafter referred to as the "inventor. etc."). and request them to maintain the confidence thereof. (Amended by Presidential Decree No. 19697, Sep. 28, 2006)

(3)

The Commissioner of the Defense Acquisition Program Administration shall. upon receiving a reference under paragraph (1). make a reply within two months. and if it is deemed necessary to treat the patent application as confidential one. he shall request the Commissioner of the Korean Intellectual Property Office to classify and treat it as confidential one. (Amended by Presidential Decree No. 19697. Sep. 28. 2006)

(4)

The Commissioner of the Korean Intellectual Property Office shall. upon receiving a request to classify and treat any patent application as confidential one under paragraph (3). take any necessary measures in conformity with the confidential service rules. and order the inventor. etc. of the patent application to classify and treat it as confidential one. and if he is not requested so. he shall notify the inventor. etc. of the patent application of a cancellation of the request for maintenance of confidence as referred to in paragraph (2) . (Amended by Presidential Decree No. 18694, Jan. 31, 2005)

(5)

The Commissioner of the Korean Intellectual Property Office shall. upon receiving a reply of the Commissioner of the Defense Acquisition Program Administration under paragraph (3). issue without delay an order to classify and treat the patent application as confidential one. or notify a cancellation of the request for maintenance of confidence under paragraph (4) . (Amended by Presidential Decree No. 19697, Sep. 28, 2006)