Korean IP system Patents procedure Trademarks procedure Design Patent procedure

Korean IP system

The intellectual property (IP) system in South Korea is well-structured and sophisticated, designed to cater to both domestic and international IP management. Here’s how the system functions in detail:

  1. IP Application and Registration: The Korean Intellectual Property Office (KIPO) is the primary government body responsible for processing IP applications, including patents, utility models, trademarks, and design rights. Applications can be submitted directly to KIPO or internationally through treaties such as the Patent Cooperation Treaty (PCT) for patents, which South Korea is a signatory to.
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  2. IP Examination and Granting: Once an application is filed, KIPO conducts a thorough examination to assess compliance with statutory requirements. For trademarks, for instance, KIPO examines the distinctiveness of the mark and potential conflicts with existing trademarks. If approved, the trademark is published for opposition and, barring any successful oppositions, registration is granted. This grants the trademark owner exclusive rights for ten years, renewable indefinitely for further ten-year periods.
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  3. IP Disputes and Trials: The Intellectual Property Trial and Appeal Board (IPTAB) handles IP disputes, including appeals against KIPO decisions. IPTAB decisions can be further appealed to the specialized Patent Court, and from there, to the Supreme Court of Korea. IPTAB operates under the executive branch and functions as an administrative tribunal, while the Patent Court is part of the judicial branch, emphasizing the adversarial system of legal proceedings.
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  4. International IP Management: South Korea is a participant in major international IP agreements, which facilitates the handling of international IP registrations and the extension of protections to and from other countries under treaties like the Madrid Protocol for trademarks.
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  5. Enforcement and Protection: IP rights holders have exclusive rights to use their IP and can initiate legal actions against infringements. This might involve civil litigation or, in some cases, criminal prosecution. South Korea also employs digital rights management and anti-piracy measures to protect digital and multimedia content..

South Korea’s IP system is designed to support creators and innovators by providing a comprehensive legal framework for the protection and management of intellectual property both domestically and internationally​

Patent & Utility Model

1. Patent System Overview

  • Purpose: The Korean patent system is designed to stimulate technological development and industrial growth by protecting, encouraging, and utilizing inventions. This system promotes the commercialization and development of technology through the publication of inventions and the grant of exclusive commercial rights.
  • Requirements for Patent Rights:
    • Industrial Applicability: The invention must be usable in any kind of industry.
    • Novelty: The invention must not be known or used before the application date.
    • Inventive Step: The invention must not be obvious to someone skilled in the art based on existing knowledge.
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2. Utility Model System Overview

  • Background: The utility model system in Korea has shifted from a quick registration system (registration before examination) to a more rigorous system where substantive examination occurs before registration. This change aims to address issues such as abuse of the system and improve examination efficiency.
  • Major Revisions:
    • Abolishment of Quick Registration System: Previously, utility models were registered rapidly without substantive examination, focusing only on formality checks.
    • Introduction of Examination Post-Registration: Similar to the patent system, utility models now undergo a detailed examination process that includes scrutiny for inventive step and industrial applicability.
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3. Patent Rights: Term and Effect

  • Duration: Patents last 20 years from the filing date, while utility models last for 10 years.
  • Territoriality Principle: The rights are enforceable only within South Korea.
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4. Filing Rules

  • First-to-File System: Korea operates on a first-to-file basis, meaning that the right to a patent is granted to the first person to file an application, regardless of the actual date of invention. This system emphasizes the importance of timely filing to secure patent rights.
  • First-to-Invent Considerations: Although the first-to-file rule prevails, there is recognition for the first inventor in cases of disputes. Documentation like inventor’s journals and witness testimonies can be crucial in such scenarios.
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Application Strategy for Foreign Firms

  • Understanding Local Regulations: It’s crucial for foreign entities to understand these aspects to navigate the Korean IP landscape effectively. Collaboration with local Korean IP firms might be necessary to manage filings and litigations effectively.
  • Adapting to System Changes: Staying informed about ongoing and upcoming changes in the patent and utility model systems can help in planning and adjusting strategies for IP management in Korea.

Trademark

Purpose of the Korean Trademark System

The Korean Trademark Act is designed to support industrial development and consumer protection. It achieves this by safeguarding the business reputations associated with trademarks, ensuring clear differentiation between goods and services from different sources, and promoting fair competition and consumer trust.
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Trademark Definitions and Types

  • General Trademarks: Include symbols, characters, diagrams, three-dimensional shapes, and color combinations used to distinguish goods.
  • Recent Expansions: Protection has been extended to include non-visual trademarks such as sounds and smells, single colors, combinations of colors, holograms, and motions.
  • Collective Marks: Indicate goods or services that meet certain standards, used by members of a joint corporation or association.
  • Certification Marks: Certify the quality, origin, or other characteristics of goods.
  • Business Emblems: Represent the operations of non-profit organizations.
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Duration and Renewal of Trademark Rights

Trademark rights are granted for ten years from the date of registration and can be renewed indefinitely every ten years. Renewal applications must be submitted within one year before the expiration date, with a six-month grace period post-expiration for late renewals.
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Special Systems in Trademark Law

  • Well-Known Trademark Protection: Provides extended protection for well-known trademarks beyond the categories for which they are registered, preventing misuse across unrelated product categories.
  • Madrid Protocol: South Korea’s participation in the Madrid Protocol allows for international registration of trademarks through a single application, facilitating protection across multiple countries.
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Trademark Application Rules

  • Single Application per Class: Trademarks must be applied for individually for each class of goods as designated by the Korean Ministry of Knowledge Economy. Multiple class applications are allowed for a single trademark, simplifying the registration process.
  • Divisional Applications: If an application covers multiple goods, it can be divided into separate applications for different classes, aiding in portfolio
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Extinguishment of Trademark Rights

Trademark rights can be extinguished due to non-renewal, abandonment by the owner, or failure to reclassify goods as per the latest classification standards. Additionally, rights are extinguished if no successor applies for a transfer within three years of the original owner’s death.

Design

Definition of Design

  • In Korea, design is defined under the Industrial Design Act as the shape, pattern, color, or combination thereof in an article that produces an aesthetic impression on the sense of sight. This includes parts of an article and calligraphy styles. The Act protects visually perceptible designs including color combinations, holograms, motions, and non-visual designs like sounds and smells.
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Design Application Overview

  • Transition to Non-Substantive Examination System (NSES): Korea has transitioned to an NSES for certain short-lifecycle products to expedite the design registration process, allowing for registration within 1 or 2 months from filing.
  • Post-Grant Opposition: This new procedure under NSES allows challenges to the registration after it has been granted, ensuring that only designs that meet the necessary criteria maintain protection.
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Term and Effect of a Design Right

  • Duration: Design rights are granted for 20 years from the filing date, with rights related to a basic design expiring with it.
  • Exclusive Rights: The design right holder has exclusive rights to use, produce, sell, or import the design and similar designs for commercial purposes.
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Special Design Systems

  • Similar Design System: Protects variations of a basic design registered by the applicant, allowing for protection against infringement within the scope of similarity.
  • Set Item Design System: Allows multiple articles used as a set to be examined and registered through one application if they constitute a coordinated whole.
  • Secret Design System: Designs can be kept secret for up to three years from registration, extendable by up to three years, to protect against premature disclosure that could undermine the owner’s competitive advantage.
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