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  07/01/2001 : Revised Patent Law 

Patent Act

  CHAPTER I 

GENERAL PROVISIONS 

Article 1 Purpose 

 

The purpose of this Act shall be to encourage, protect and utilize inventions, thereby improving and developing technology, and to contribute to the development of industry. 

 

 

Article 2 Definitions 

 

The definitions of terms used in this Law shall be as follows: 

(i) "invention" means the highly advanced creation of technical ideas utilizing rules of nature; 

(ii) "patented invention" means an invention for which a patent has been granted; and 

(iii) "working" means any one of the following acts:  

(a) in the case of an invention of a product, acts of manufacturing, using, assigning, leasing, importing, or offering for assigning or leasing (including displaying for the purpose of assignment or lease) the product;  

(b) in the case of an invention of a process, acts of using the process; and 

(c) in the case of an invention of a process of manufacturing a product, acts of using, assigning, leasing, importing, or offering for assigning or leasing the product manufactured by the process, in addition to the acts mentioned in subparagraph (b).  

 

 

Article 3 Capacity of Minors, etc. 

 

(1) Minors, limited competents and incompetents shall not initiate the procedure for filing an application, requesting an examination, or any other patent-related procedure (hereinafter referred to as "patent-related procedure") unless represented by their legal representatives. However, this provision shall not apply where a minor or a limited competent can perform a legal act independently. 

 

(2) The legal representative as referred to in paragraph (1) may, without the consent of the family council, act in any patent-related opposition, trial, or retrial procedures initiated by another party. 

 

(3) Patent-related procedures, initiated by a person who lacks the requisite power of legal representation or competence or delegation necessary to initiate any such procedures, shall have retroactive effect if said procedures are ratified by a person having such power of representation or competence. 

 

 

Article 4 Associations, etc., Other than a Legal Entity 

 

A representative or an administrator, who has been so designated by an association or a foundation which is not a legal entity, may make a request for examination of a patent application, file an opposition to the grant of a patent, or appear as a plaintiff or defendant in a trial or a retrial in its association or foundation name. 

 

 

Article 5 Patent Administrator for Nonresidents 

 

(1) A person who has neither an address nor a place of business in the Republic of Korea (hereinafter referred to as a "nonresident") may not, except in cases where a nonresident (or a representative thereof if a legal entity) is sojourning in the Republic of Korea, initiate any patent-related procedure, nor appeal any decision taken by an administrative agency in accordance with this Law or any decree thereunder, unless he is represented by an agent with respect to his patent, who has an address or a place of business in the Republic of Korea (hereinafter referred to as a "patent administrator"). 

 

(2) The patent administrator shall, within the scope of powers conferred on him, represent the principal in all procedures relating to a patent and in any appeal against a decision taken by an administrative agency in accordance with this Law or any decree thereunder. 

 

(3) Deleted. 

 

(4) Deleted. 

 

 

Article 6 Scope of Powers of Attorney 

 

An agent who is instructed to initiate a patent-related procedure before the Korean Intellectual Property Office by a person who is domiciled or has his place of business in the Republic of Korea shall not, unless expressly so empowered, abandon or withdraw an application for a patent, withdraw an application for registration of an extension of the term of a patent right, abandon a patent right, withdraw a petition, withdraw a request for a motion, make or withdraw a priority claim under Article 55(1), request for a trial under Article 132ter, or appoint a sub-representative. 

 

 

Article 7 Proof of Powers of Attorney 

 

An agent (including a patent administrator, the same being applicable hereafter) of a person who is initiating a patent-related procedure before the Korean Intellectual Property Office shall present written proof of his power of attorney. 

 

 

Article 8 Non-extinguishment of Powers of Attorney 

 

A power of attorney of an agent of a person initiating a patent-related procedure shall not be extinguished upon the death or loss of legal capacity of the principal, the extinguishment of a legal entity of the principal due to a merger, the termination of the duty of trust of the principal, the death or loss of legal capacity of the legal representative, or the modification or extinguishment of his power of attorney. 

 

 

Article 9 Independence of Representation 

 

Where two or more agents of a person initiating a patent-related procedure have been designated, each of them shall independently represent the principal before the Korean Intellectual Property Office or the Intellectual Property Tribunal. 

 

 

Article 10 Replacement of Agents, etc. 

 

(1) If the Commissioner of the Korean Intellectual Property Office or the presiding trial examiner considers that a person initiating a patent-related procedure is not qualified to conduct such a procedure or make oral statements, etc. he may order, ex officio, the appointment of an agent to conduct the procedure. 

 

(2) If the Commissioner of the Korean Intellectual Property Office or the presiding trial examiner considers that the agent of a person initiating a patent-related procedure is not qualified to conduct such a procedure or make oral statements, etc. he may order, ex officio, the replacement of the agent. 

 

(3) The Commissioner of the Korean Intellectual Property Office or the presiding trial examiner may, in the case referred to in paragraph (1) or (2) of this Article, order the appointment of a patent attorney to conduct the procedure. 

 

(4) The Commissioner of the Korean Intellectual Property Office or the presiding trial examiner may invalidate any action taken before the Korean Intellectual Property Office or the Industrial Property Tribunal by the person initiating the patent-related procedure referred to in paragraph (1) of this Article or by the agent referred to in paragraph (2), of this Article prior to the appointment or the replacement of the agent, referred to under paragraph (1) or (2), respectively, after the issuance of an order referred to under paragraph (1) or (2). 

 

 

Article 11 Representation of Two or More Persons 

 

(1) Where two or more persons jointly initiate a patent-related procedure, each of them shall represent the joint initiators except for actions falling under any of the following subparagraphs; however, this provision shall not apply where those persons have appointed a common representative and have notified the appointment of the representative to the Korean Intellectual Property Office or the Industrial Property Tribunal: 

(i) abandonment or withdrawal of a patent application or withdrawal of an application for registration of an extension of term of a patent right; 

(ii) withdrawal of a petition; claim or withdrawal of a priority claim under Article 55(1); 

(iii) withdrawal of a request; and 

(iv) request for a trial under Article 132ter. 

 

(2) Where the common representative has been appointed and notified under the provision of paragraph (1), a written proof of the fact that the representative has been appointed shall be presented. 

 

 

Article 12 Mutatis Mutandis Application of Provisions of  

the Code of Civil Procedure 

 

Except where there is an express provision relating to agents in the Patent Law, the provisions of Part I, Section 2, Subsection 4 of the Code of Civil Procedure shall apply mutatis mutandis to agents under this Law. 

 

 

Article 13 Venue of Nonresidents 

 

If a nonresident has appointed a patent administrator with respect to his patent right or other right relating to a patent, the domicile or place of business of the patent administrator shall be considered to be that of the nonresident. Where there is no such patent administrator, the location of the Korean Intellectual Property Office shall be regarded as the seat of the property under Article 9 of the Code of Civil Procedure. 

 

 

Article 14 Calculation of Time Limits 

 

The time limits provided for in the Patent Law, or any decrees thereunder shall be calculated as follows: 

  (i) the first day of the period shall not be counted unless the period starts at midnight; 

  (ii) if the period is expressed in months or years, it shall be counted according to the calendar; 

  (iii) if the start of the period does not coincide with the beginning of a month or year, the period shall expire on the day preceding the date in the last month or year of the period corresponding to the date on which the period started; however, if there is no corresponding day in the last month, the period shall expire on the last day of that month; and 

  (iv) if the last day of a period for executing a patent-related procedure falls on an official holiday, including Labor Day, designated by the Labor Day Designation Law, said period shall expire on the working day following such holiday. 

 

 

Article 15 Extension of Time Limits, etc. 

 

(1) The Commissioner of the Korean Intellectual Property Office or the President of the Industrial Property Tribunal may extend, for the benefit of a person residing in an area that is remote or difficult to access, the period for submitting an amendment of grounds for opposition according to Article 70(1) or the period for demanding a trial under Article 132ter upon a request or ex officio. 

 

(2) When the Commissioner of the Korean Intellectual Property Office, the President of the Industrial Property Tribunal, a presiding trial examiner or an examiner has designated a time limit for a patent-related procedure to be initiated under the Patent Law, extend it upon a request or ex officio.  

 

(3) When a presiding trial examiner or an examiner has designated a date for initiating a patent-related procedure under the Patent Law, he may change the date upon a request or ex officio. 

 

 

Article 16 Invalidation of Procedure 

 

(1) When a person who has been notified to make an amendment in accordance with Article 46 fails to do so within the designated time limit, the Commissioner of the Korean Intellectual Property Office or the President of the Industrial Property Tribunal may invalidate the procedure relating to the patent.  However, where a person who has been notified to make an amendment for not paying the fees for a request for examination under Article 82(2) fails to pay said fees for the request for examination, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may invalidate the amendment to the specification attached to the patent application. 

 

(2) When a patent-related procedure has been invalidated under paragraph (1), if the delay of the time is deemed to have been caused by reasons not imputable to a person who received an invitation to amend, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual property Tribunal may revoke a disposition of invalidation at the request of a person who received an invitation to amend within fourteen days from the date on which the reasons for the delay ceased to exist.   However, this provision shall not apply where one year has elapsed after the designated period expires. 

 

 

Article 17 Subsequent Completion of Procedure 

 

If a person who initiated a patent-related procedure has failed to observe the time limit for requesting a trial under Article 132ter, or the time limit for demanding a retrial under Article 180(1) for reasons beyond his control, he may subsequently complete the procedure that he failed to conduct within fourteen days after said reason ceases to exist.  However, this provision shall not apply in a case where one year has elapsed after said period expires. 

 

 

Article 18 Succession of Procedural Effects 

 

The effects of a procedure taken in relation to a patent or other right relating to a patent shall extend to the successor in title. 

 

 

Article 19 Continuation of Procedure by Successor 

 

Where a patent right or other right relating to a patent is transferred while a procedure relating to the patent is pending before the Korean Intellectual Property Office or the Intellectual Property Tribunal, the Commissioner of the Korean Intellectual Property Office or the presiding trial examiner may require the successor in title to continue the procedure relating to the patent. 

 

 

Article 20 Interruption of Procedure 

 

If any patent-related procedure pending before the Korean Intellectual Property Office or the Intellectual Property Tribunal falls under any of the following subparagraphs, it shall be interrupted, unless there is a representative authorized to conduct the procedure: 

  (i) when the party involved has died; 

  (ii) when the legal entity involved has ceased to exist by reason of merger; 

  (iii) when the party involved has lost the ability to conduct the procedure; 

  (iv) when the legal representative of the party involved has died or lost his power; 

  (v) when the commission of a trustee given by the trust of the party involved has terminated; or 

  (vi) where the representative as provided in the provisions of Article 11(1) has died or lost his qualification. 

 

 

Article 21 Resumption of an Interrupted Procedure 

 

When a procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal has been interrupted in the manner referred to in Article 20, any person who falls under any of the following subparagraphs shall resume the procedure: 

  (i) in the case as provided for under Article 20(i), the deceased person's successor, administrator of inheritance, or other person authorized to pursue the procedure under the Law; however, the deceased person's successor may not resume the procedure until such time as his right to succession is no longer subject to renunciation; 

  (ii) in the case as provided for under Article 20(ii), the legal entity established by or existing after the merger;  

  (iii) in the cases as provided for under Article 20(iii) and (iv), the party whose ability to take the necessary procedure has been restored or any person who becomes the legal representative of the party, respectively;  

  (iv) in the case as provided for under Article 20(v), a new trustee; and  

  (v) in the case as provided for under Article 20(vi), a new representative or each joint initiator involved. 

 

 

Article 22 Request for Continuation 

 

(1) The request for continuation of an interrupted procedure under Article 20 may be made by an opposing party. 

 

(2) When a request for continuation of an interrupted procedure interrupted under Article 20 is made, the Commissioner of the Korean Intellectual Property Office or the presiding trial examiner shall notify the opposite party. 

 

(3) The Commissioner of the Korean Intellectual Property Office or the trial examiner shall, if it has been deemed that there are no grounds for granting the request for continuation of the interrupted procedure under Article 20, dismiss the request by decision after examining the request, ex officio. 

 

(4) The Commissioner of the Korean Intellectual Property Office or the trial examiner shall decide, upon request for continuation, whether to permit resumption of the interrupted procedure after a certified copy of the decision or trial decision was sent. 

 

(5) If a person referred to in Article 21 does not take over the interrupted procedure, the Commissioner of the Korean Intellectual Property Office or the trial examiner shall, ex officio, designate a period within which he shall resume such procedure. 

 

(6) If no request for continuation has been made within the designated period provided in paragraph (5), it is considered that the continuation has been made on the day following the expiration of such designated period. 

 

(7) If the Commissioner of the Korean Intellectual Property Office or the presiding trial examiner deems that the continuation made in accordance with paragraph (6), he shall so notify the parties involved. 

 

 

Article 23 Suspension of Procedure 

 

(1) If the Commissioner of the Korean Intellectual Property Office or the trial examiner is unable to carry out his duties due to a natural disaster or other unavoidable circumstances, the procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal shall be suspended until such impediments cease to exist. 

 

(2) If a party involved is unable to pursue a procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal on account of impediments of indefinite duration, the Commissioner of the Korean Intellectual Property Office or the trial examiner may order its suspension by decision. 

 

(3) The Commissioner of the Korean Intellectual Property Office or the trial examiner may cancel the decision issued under paragraph (2). 

 

(4) If a procedure is0 suspended under paragraphs (1) or (2), or a decision is canceled under paragraph (3), the Commissioner of the Korean Intellectual Property Office or the presiding trial examiner shall so notify the parties involved. 

 

 

Article 24 Effects of Interruption or Suspension 

 

The interruption or suspension of a patent-related procedure pending in the Korean Intellectual Property Office shall suspend the running of a term and the entire term shall start to run again from the time of the notification of the continuation or resumption of the procedure. 

 

 

Article 25 Capacity of Foreigners 

 

Foreigners who have neither an address nor a place of business in the Republic of Korea shall not enjoy patent rights or other rights relating to a patent, except as provided for in any one of the following subparagraphs: 

  (i) where their country allows nationals of the Republic of Korea to enjoy patent rights or other rights relating to a patent under the same conditions as its own nationals; 

  (ii) where their country allows nationals of the Republic of Korea to enjoy patent rights or other rights relating to a patent under the same conditions as its own nationals in the case that the Republic of Korea allows their country's nationals to enjoy patent rights or other rights relating to a patent; or 

  (iii) where they may enjoy patent rights or other rights relating to a patent according to a treaty or equivalents of a treaty (hereinafter referred to as "treaty"). 

 

 

Article 26 Effects of Treaty 

 

Where a treaty contains special provisions relating to patents that are different from those of the Patent Law, such special provisions shall prevail. 

 

 

Article 27   Deleted. 

 

 

Article 28 Effective Date of Submitted Documents 

 

(1) Applications, demands or other documents (including articles, the same applying hereafter in this provision) submitted to the Korean Intellectual Property Office or the Intellectual Property Tribunal under the provisions of the Patent Law, or any decree thereunder, shall be effective as of the date on which they are delivered to the Korean Intellectual Property Office or the Intellectual Property Tribunal. 

 

(2) Where applications, demands or other documents are submitted by mail to the Korean Intellectual Property Office or the Intellectual Property Tribunal, they are deemed to be delivered to the Korean Intellectual Property Office or the Intellectual Property Tribunal on the date as stamped by the mail service if the stamped date is clear; however, if such stamped date is unclear they are deemed to be delivered on the date when the mail was submitted to a post office, provided that such date is proved by a receipt therefor. However, this provision shall not apply in cases where written applications for registration of a patent right and other rights related thereto and documents concerning an international application under Article 2(vii) of the Patent Cooperation Treaty (hereinafter referred to as an "international application") are submitted by mail. 

 

(3) deleted. 

 

(4) Details concerning the submission of documents with regard to the delay of mail, loss of mail, or interruption of mail service, other than the provisions of paragraphs (1) to (2), shall be prescribed by the Ordinance of the Ministry of Commerce, Industry, and Energy. 

 

 

Article 28bis Entry of Identification Number 

 

(1) A person provided for by the Ordinance of the Ministry of Commerce, Industry and Energy from among persons who initiates a procedure for patent (excluding any person to whom an identification number has already been granted under paragraph (2) or (3)), shall apply for the grant of his identification number to the Korean Intellectual Property Office or the Intellectual Property Tribunal. 

 

(2) If any person makes an application under paragraph (1), the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall grant an identification number and notify him thereof. 

 

(3) If a person who initiates a procedure for patent under paragraph (1) fails to apply for the grant of an identification number, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall, ex officio, grant an identification number and notify him thereof. 

 

(4) If a person to whom an identification number has been granted under paragraph (2) or (3) initiates a procedure for patent, he shall enter his identification number in any document as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. In this case, notwithstanding the provisions of this Law or any decree thereunder, a domicile (a place of business if a legal entity) may not be entered in said document. 

 

(5) The provisions of paragraphs (1) to (4) shall apply mutatis mutandis to an agent of a person who initiates a procedure for patent. 

 

(6) An application for grant of an identification number, the grant and notification thereof or other matters necessary therefor shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. 

 

 

Article 28ter Procedure for Filing Patent Applications by

Means of Electronic Documents

 

(1) A person who initiates a patent-related procedure may, pursuant to the methods prescribed by Ordinance of the Ministry of Commerce, Industry and Energy, convert a written application for a patent or other documents as presented to the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal under this Law into electronic documents, and may present them by means of any communication network or on a floppy disk in which they are written. 

 

(2) Electronic documents as presented under paragraph (1) shall have the same effect as other documents presented under this Law. 

 

(3) Electronic documents presented through a communication network under paragraph (1) shall, if a presenter thereof confirms a receipt number through a communication network, be deemed to have been received as contents written in a file of a computer system for receipt operated by the Korean Intellectual Property Office or the Intellectual Property Tribunal. 

 

(4) The kinds of documents capable of being presented by means of electronic documents under paragraph (1) and the methods of such presentation or other necessary matters shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. 

 

 

Article 28quater Report on Use of Electronic Documents and

Electronic Signature

 

(1) A person who intends to initiate a procedure for patent by means of electronic documents shall, in advance, report the use thereof to the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal, and shall affix his electronic signature so that the presenters may be discerned. 

 

(2) Electronic documents as presented under Article 28ter shall be deemed to have been filed by the person who affixes his electronic signature under paragraph (1). 

 

(3) Matters necessary for procedures of report on use of electronic documents and the methods of electronic signature as prescribed under paragraph (1), shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. 

 

 

Article 28quinquies Notification, etc. through a Communication

Network

 

(1) If the Commissioner of the Korean Intellectual Property Office, the President of the Intellectual Property Tribunal, a presiding trial examiner, a trial examiner, a presiding examiner, or an examiner intends to give notification and make transmission (hereinafter referred to as a "notification") of any pertinent documents to a person who reports the use of electronic documents under Article 28quater(1), he may do so through a communication network. 

 

(2) The notification of any pertinent documents given through a communication network under paragraph (1) shall have the same effect as that given in writing. 

 

(3) The notification of any pertinent documents under paragraph (1) shall, if it is written in a file of a computer system operated by a person who receives said notification, be deemed to reach as contents written in a file of a computer system for transmission operated by the Korean Intellectual Property Office or the Intellectual Property Tribunal. 

 

(4) Matters necessary for the classification and the methods of such notification as given through a communication network under paragraph (1) shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. 

 

 

CHAPTER II 

REQUIREMENTS FOR PATENTS AND PATENT APPLICATION 

 

 

Article 29 Requirements for Patents 

 

(1) Inventions having Intellectual applicability may be patentable unless they fall under any of the following subparagraphs: 

  (i) inventions publicly known or worked in the Republic of Korea prior to the filing of the patent application; or 

  (ii) inventions described in a publication distributed in the Republic of Korea or in a foreign country prior to the filing of the patent application or inventions made available to the public through electric telecommunication lines as prescribed by Presidential Decree. 

 

(2) Notwithstanding paragraph (1), where an invention could easily have been made prior to the filing of the patent application by a person having ordinary skill in the art to which the invention pertains, on the basis of an invention referred to in each subparagraph of paragraph (1), a patent shall not be granted for such an invention. 

 

(3) Notwithstanding paragraph (1), a patent shall not be granted where the invention for which a patent application is filed is identical to an invention or device described in the specification or drawings initially attached to another patent application laid open or published after grant for public inspection after the filing of said patent application, or identical to a utility model application published after grant for public inspection after the filing of said patent application.  This provision shall not apply, however, in cases where the inventor of the concerned patent application and the inventor of the other patent or utility model application are the same person or where the applicant of the patent application and the applicant of the other patent or utility model application are the same person at the time of filing.  

 

(4) Where the other patent or utility model application under paragraph (3) is an international application that is deemed to be a patent application under Article 199(1) of this Law or which is deemed to be a utility model registration application under Article 57(1) of the Utility Model Law (including an international application considered to be a patent application under Article 214(4) of this Law or a utility model application under Article 71(4) of the Utility Model Law), in applying the provisions of paragraph (3), "laid open" shall read "laid open or was the subject of an international publication under Article 21 of the Patent Cooperation Treaty" and "an invention or device described in the specification or drawings originally attached" shall read "an invention or device described both in the specification, claims, or drawings of the international application as of the international filing date, and in the translated version thereof." 

 

 

Article 30 Inventions not Deemed to be Publicly Known, etc. 

 

(1) If a patentable invention falls under any of the following subparagraphs, it shall be recognized as being novel where Articles 29(1) or (2) apply to the invention claimed in the patent application; provided that, the patent application therefor is filed within six months of the applicable date: 

  (i) when a person having the right to obtain a patent has caused his invention to fall within the terms of any of the subparagraphs in Article 29(1) by conducting any one of the following acts on the invention: 

(a) conducting tests on the invention; 

(b) publishing the invention in printed matter; 

(c) publishing the invention through electric telecommunication lines as prescribed by Presidential Decree; or

(d) presentation of the invention in writing before an academic organization as prescribed by Ordinance of the Ministry of Commerce, Industry and Energy. 

  (ii) when, against the intention of the person having the right to obtain a patent, the invention falls within the terms of any of the subparagraphs in Article 29(1); or 

  (iii) when a person having the right to obtain a patent has caused his invention to fall within the terms of any of the subparagraphs of Article 29(1) by displaying his invention at an exhibition.         

 

(2) Any person desiring to take advantage of the provisions of paragraph (1)(i) or (iii) shall submit, simultaneously with his patent application, a written statement to that effect to the Commissioner of the Korean Intellectual Property Office, to whom he shall also submit, within thirty days from the filing date of the patent application, a document proving the relevant facts. 

 

 

Article 31 Patent for Plant Invention 

 

Any person who invents a variety of plant which reproduces itself asexually may obtain a plant patent therefor. 

 

 

Article 32 Unpatentable Inventions 

 

Inventions liable to contravene public order or morality or to injure public health shall not be patentable, notwithstanding the provisions of Article 29(1) or (2). 

 

 

Article 33 Persons Entitled to Obtain a Patent 

 

(1) Any person who makes a new invention or his successor shall be entitled to obtain a patent in accordance with the Patent Law; however, employees of the Korean Intellectual Property Office and the Intellectual Property Tribunal shall not obtain patents during their employment at the Office except in the case of inheritance or bequest. 

 

(2) If two or more persons jointly make an invention, the right to obtain a patent shall be jointly owned. 

 

 

Article 34 Patent Application Filed by an Unentitled Person;  

  Protection of Lawful Holder of the Right 

 

If a patent cannot be granted because an application was filed by a person who is not the inventor or a successor to the right to obtain a patent (hereinafter referred to as an "unentitled person") under the provision of Article 33(1) as prescribed in Article 62(ii), a subsequent application filed by the lawful holder of the right shall be deemed to have been filed on the date of filing of the initial application filed by the unentitled person. This provision shall not apply, however, if the subsequent application is filed by the lawful holder of the right more than thirty days after the date on which the application filed by the unentitled person was rejected.  

 

 

Article 35 Patent Granted to an Unentitled Person; 

            Protection of Lawful Holder of the Right

 

If a decision to revoke a patent becomes final for lack of entitlement to obtain a patent under the provision of Article 33(1) as prescribed in Article 69(1)(ii) or a decision of invalidation becomes final due to a lack of entitlement under the provision of Article 33(1) as prescribed in Article 133(1)(ii), a subsequent application filed by the lawful holder of the right shall be deemed to have been filed on the filing date the revoked or invalidated application; however, this provision shall not apply if the subsequent application is filed more than two years after the publication date of the first application or more than thirty days after the decision of revocation or invalidation becomes final.  

 

 

Article 36 First-to-File Rule 

 

(1) Where two or more applications relating to the same invention are filed on different dates, only the applicant of the application having the earlier filing date may obtain a patent for the invention. 

 

(2) Where two or more applications relating to the same invention are filed on the same date, only the person agreed upon by all the applicants after consultation may obtain a patent for the invention. If no agreement is reached or no consultation is possible, none of the applicants shall obtain a patent for the invention. 

 

(3) Where a patent application has the same subject matter as a utility model application and the applications are filed on different dates, paragraph (1) shall apply mutatis mutandis; whereas if they are filed on the same date, paragraph (2) shall apply mutatis mutandis.  However, the provision of paragraph (2) shall not apply in any cases where a patent application is made on the same date as a utility model registration application (including a patent application which is deemed to be made on the same date as a utility model registration application under Article 53(3)), as prescribed in Article 53 as a dual application. 

 

(4) Where a patent application or utility model application is invalidated or withdrawn, or a utility model application is rejected, such application shall, for the purposes of paragraphs (1) to (3), be deemed never to have been filed. 

 

(5) A patent application or utility model application filed by a person who is not the inventor, creator, or successor in title to the right to obtain a patent or utility model registration shall, for the purposes of paragraphs (1) to (3), be deemed never to have been filed. 

 

(6) The Commissioner of the Korean Intellectual Property Office shall in the case of paragraph (2), order the applicants to report to him the results of the consultation within a designated period of time. If such report is not submitted within the designated period, the applicants shall be deemed not to have reached an agreement within the meaning of paragraph (2). 

 

 

Article 37 Transfer of the Right to Obtain a Patent 

 

(1) The right to obtain a patent may be transferred. 

 

(2) The right to obtain a patent shall not be the subject of a pledge. 

 

(3) In the case of joint ownership of the right to obtain a patent, a joint owner shall not assign his share without the consent of all the other joint owners. 

 

 

Article 38 Succession to the Right to Obtain a Patent 

 

(1) The succession to the right to obtain a patent before the filing of the patent application shall not be effective against third persons unless the successor in title files the patent application. 

 

(2) Where two or more applications for a patent are filed on the same date on the basis of a right to obtain a patent for the same invention derived by succession from the same person, the succession to the right to obtain the patent by any person other than the one agreed upon by all the patent applicants shall not be effective. 

 

(3) Paragraph (2) shall also apply where a patent application and a utility model application are filed on the same date, on the basis of the right to obtain a patent and utility model registration for the same invention and device which has been derived by succession from the same person. 

 

(4) Succession to the right to obtain a patent after the filing of the patent application shall not be effective unless a notice of change of applicant is filed, except in cases of inheritance or other general succession. 

 

(5) Upon inheritance or other general succession with respect to the right to obtain a patent, the successor in title shall notify the Commissioner of the Korean Intellectual Property Office accordingly without delay. 

 

(6) Where two or more notifications of change of applicant are made on the same date, on the basis of a right to obtain a patent for the same invention that has been derived by succession from the same person, a notification made by any person other than the one agreed upon after consultations among all the persons who made notifications shall not be effective. 

 

(7) Article 36(6) shall apply mutatis mutandis to the cases under paragraphs (2), (3) or (6). 

 

 

Article 39 In-Service Inventions 

 

(1) An employer, a legal entity, or the Government or a local public entity (hereinafter referred to as an "employer") shall have a non-exclusive license to the patent right concerned, where an employee, an executive officer of such a legal entity, or a public official (hereinafter referred to as a "employee") or successor in title has obtained a patent for an invention which, by reason of its nature, falls within the scope of the business of the employer and an act or acts resulting in the invention (hereinafter referred to as "in-service invention") were part of the present or past duties of the employee 

 

(2) Notwithstanding paragraph (1), an in-service invention made by a public official shall pass to the State or a local governmental entity and the patent right shall thereby revert to the State or a local governmental entity. 

 

(3) In the case of an invention made by an employee which is not an in-service invention, any contractual provision or any provision of service regulation providing in advance that the right to obtain a patent or the patent right shall pass to the employer or that the employer shall have an exclusive license on such invention, shall be null and void. 

 

(4) Notwithstanding Article 6 of the National Property Law, the disposal and management of a patent right which has reverted to the State, in accordance with paragraph (2), shall be governed by the Commissioner of the Korean Intellectual Property Office. 

 

(5) A disposal and management of a patent right under paragraph (4) which has reverted to the State shall be prescribed by Presidential Decree. 

 

 

Article 40 Remuneration for In-Service Inventions 

 

(1) The employee shall have the right to obtain reasonable remuneration when he has transferred to the employer the right to obtain a patent or the patent right with respect to an in-service invention, or has given the employer an exclusive license in accordance with a contract or service regulation. 

 

(2) The amount of remuneration provided for in paragraph (1) shall be calculated in accordance with the profits to be realized by the employer from the invention and the extent of the employer and the employee's contributions to the creation of the invention. In such cases, matters relating to the payment of remuneration shall be prescribed by Presidential Decree or by Ordinance of the local governmental entity. 

 

(3) If the State or a local governmental entity succeeds to an in-service invention made by a public official, the State shall provide reasonable remuneration to the public official. In such cases, matters relating to the payment of remuneration shall be prescribed by Presidential Decree or by Ordinance of the local governmental entity. 

 

(4) Deleted.  

 

 

 

Article 41 Inventions Necessary for National Defense, etc. 

 

(1) If an invention is necessary for the national defense, the Government may order an inventor, an applicant, or an agent not to file a patent application for such invention in foreign patent offices concerned or to keep such invention confidential. However, if such persons obtain permission from the Government, they may file an application therefor in foreign patent offices. 

 

(2) If an invention filed with the Korean Intellectual Property Office is considered necessary for national defense, the Government may refuse for grant a patent and, for reasons of national defense such as in time of war, incident or other similar emergency, may expropriate the right to obtain a patent therefor.  

 

(3) The Government shall pay reasonable compensation for losses arising from its prohibition of the filing of a patent application in a foreign patent office or from the maintenance of secrecy under paragraph (1). 

 

(4) The Government shall pay reasonable compensation in the event that a patent is not granted, or the right to obtain a patent is expropriated under paragraph (2). 

 

(5) If there has been a violation of an order prohibiting the filing of an application for an invention in a foreign patent office concerned or of an order to maintain secrecy under paragraph (1), the right to obtain a patent therefor shall be deemed to be abandoned. 

 

(6) If there has been a violation of an order to maintain secrecy under paragraph (1), the right to request the payment of compensation for the loss arising from maintaining secrecy shall be deemed to be abandoned. 

 

(7) Matters relating to the procedure, etc., for prohibiting the filing of an application abroad, proceedings for maintaining secrecy under paragraph (1), or for expropriation or payment of compensation under paragraphs (2) to (4) shall be prescribed by Presidential Decree. 

 

 

Article 42 Patent Application 

 

(1) Any person desiring to obtain a patent shall file a patent application with the Commissioner of the Korean Intellectual Property Office stating the following: 

  (i) the name and the domicile of the applicant (if a legal entity, the title and place of business); 

  (ii) the name and the domicile, or place of business, of the agent, if any ( the title, place of business and the name of the designated patent attorney if the agent is a patent corporation); 

  (iii) Deleted.

  (iv) the title of the invention;

  (v) the name and the domicile of the inventor. 

  (vi) Deleted.

 

(2) The patent application under paragraph (1) shall be accompanied by a specification, drawing or drawings (if necessary), and an abstract stating the following: 

  (i) the title of the invention;  

  (ii) a brief explanation of the drawings; 

  (iii) a detailed description of the invention; and 

  (iv) claim(s). 

 

(3) The detailed description of the invention under paragraph (2)(iii) shall state the purpose, construction, and effect of the invention in such a manner that it may easily be carried out by a person having ordinary skill in the art to which the invention pertains. 

 

(4) The claim(s) under paragraph (2)(iv) shall describe the matter for which protection is sought in one or more claims (hereinafter referred to as "claim(s)") and the claim(s) shall comply with each of the following sub-paragraphs: 

  (i) the claim(s) shall be supported by a detailed description of the invention; 

  (ii) the claim(s) shall define the invention clearly and concisely; and 

  (iii) the claim(s) shall define only the features indispensable for the constitution of the invention. 

 

(5) Details concerning the drafting of claim(s) under paragraph (2)(iv) shall be prescribed by Presidential Decree. 

 

(6) Details concerning the description of an abstract under paragraph (2) shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. 

 

 

Article 43 Abstract 

 

An abstract under Article 42(2) shall not be interpreted to define the scope of the invention for which protection is sought but rather, shall serve as a technical information document. 

 

 

Article 44 Joint Applications 

 

Where the right to obtain a patent is owned jointly under Article 33(2), all the joint owners shall apply for the patent application jointly. 

 

 

Article 45 Scope of One Patent Application 

 

(1) A patent application shall relate to one invention only. However, a group of inventions so linked as to form a single general inventive concept may be the subject of a patent application. 

 

(2) The requirements for one patent application under paragraph (1) shall be prescribed by Presidential Decree. 

 

 

Article 46 Amendment of Procedure 

 

The Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may order an amendment to a patent-related procedure, designating a time limit if said procedure falls under any of the following subparagraphs: 

  (i) where the procedure has not complied with the provisions of Article 3(1) or 6; 

  (ii) where the procedure has not complied with the formalities specified in the Patent Law or Presidential Decree thereof; or 

  (iii) where fees required in accordance with Article 82 have not been paid. 

 

 

Article 47 Amendment of Patent Application 

 

(1) An applicant may amend the specification or drawings attached to a patent application before the examiner issues a certified copy of a decision to grant a patent under Article 66.  However, in cases that fall under any of the following subparagraphs, an applicant may amend the application within the time limit prescribed in the subparagraphs:  

  (i) where an applicant receives notification of the reasons for refusal under Article 63 (hereinafter referred to as a "notice of the reasons for refusal") for the first time or receives a notice of the reasons for refusal that does not apply under paragraph (ii), the time limit designated for submission of arguments against the notice of the reasons for refusal thereof; 

  (ii) where an applicant receives a notice of the reasons for refusal of an amendment made in response to a notice of the reasons for refusal issued under paragraph (i), the time limit designated for submission of arguments in response to said notice; or 

(iii) where an applicant requests a trial against a decision of refusal of a patent under Article 132ter, the time limit shall be thirty days from the filing date of the request.  

 

(2) An amendment to a specification or drawings under paragraph (1) shall be within the scope of the features disclosed in the specification or drawing(s) originally attached to the application. 

 

(3) An amendment to the claims made under paragraphs (1)(ii) and (iii) shall be limited to the scope prescribed in any of the following subparagraphs.  Where an amendment is made under paragraph (iii), it shall be limited to that which is indicated by the examiner in the notice of the reasons for refusal. 

(i) to narrow a claim; 

(ii) to correct a clerical error; or 

(iii) to clarify an ambiguous description. 

 

(4) An amendment under paragraph (3)(i) shall meet the following requirements: 

(i) An amendment to a specification or drawings shall neither essentially expand nor modify the scope of the claims; and 

(ii) The matters described in the claims after amendment shall be regarded as having been patentable at the time of the filing of the patent application. 

 

 

Article 48   Deleted 

 

 

Article 49 Treatment of an Amendments to a Dual Application, etc. 

 

(1) Deleted. 

 

(2) If a dual application, as prescribed in Article 53, is recognized to extends beyond the scope described in the claims of the utility model registration in the specification that was initially attached to the application for utility model registration after registration of the patent right has been established, said dual application shall be deemed to have been filed on the date when the application in writing was submitted. 

 

 

Article 50  Deleted  

 

 

Article 51 Rejection of an Amendment 

 

(1) Where an amendment under Article 47(1)(ii) is deemed to be in violation of paragraphs (2) to (4) of said Article, the examiner shall reject the amendment by decision. 

 

(2) The decision to reject an amendment under paragraph (1) shall be made in writing and shall state the reasons therefor. 

 

(3) No appeal shall be made against a decision to reject under paragraph (1).  However, this provision shall not apply in an appeal against the final rejection of the patent under Article 132ter.

 

 

Article 52 Division of a Patent Application 

 

(1) An applicant who has filed a patent application comprising of two or more inventions may divide the application into two or more applications in accordance with the time period allowed for amendment as prescribed under Article 47(1). 

 

(2) A patent application divided under paragraph (1) (hereinafter referred to as a "divisional application") shall be deemed to have been filed at the time of filing of the original patent application. However, in applying the provisions of the following subparagraphs to said divisional application, such an application shall be deemed to be made at the time when the divisional application was filed: 

  (i) in the case where Article 29(3) of this Law or Article 5(3) of the Utility Model Law is applicable when the divisional application falls under an another patent application under Article 29(3) of this Law or a patent application under Article 5(3) of the Utility Model Law; 

(ii) in the case where Article 30(2) is applicable; 

(iii) in the case where Article 54(3) is applicable; or 

(iv) in the case where Article 55(2) is applicable. 

 

(3) A person who files a divisional application under paragraph (1) shall indicate the purpose thereof and the patent application that forms the basis of the division. 

 

(4) In a divisional application, any person claiming priority as prescribed in Article 54, may file the documents as prescribed in paragraph (4) of the said Article with the Commissioner of the Korean Intellectual Property Office within three months after filing a divisional application, regardless of the period as prescribed in the said paragraph of the said Article. 

 

 

Article 53 Dual Application 

 

(1) A person who makes an application for utility model registration may make an application for patent (hereinafter referred to as a "dual application") within the limit of such matters as stated in the claims of the utility model registration in the specification, which are initially attached to the application for said utility model registration from the filing date of the application for utility model registration to one year from the date when the establishment of a utility model right has been registered. 

 

(2) A person who makes a dual application under paragraph (1) shall, at the time when an application for patent is made, indicate the purpose thereof and the application for utility model registration, which forms the basis thereof in an application for a patent. 

 

(3) When a dual application is carried out pursuant to paragraph (1), the application for patent shall be deemed to have been filed on the filing date of the utility model application. However, in a case where the provisions of the following subparagraphs apply to such an application for patent, it is deemed to be made at the time when said dual application is made: 

  (i) in the case where Article 29(3) of this Law or Article 5(3) of the Utility Model Law is applicable when the application for patent falls under an another patent application under Article 29(3) of this Law or a patent application under Article 5(3) of the Utility Model Law; 

  (ii) in cases where Article 30(2) is applicable; 

  (iii) in cases where Article 54(3) is applicable; or 

  (iv) in cases where Article 55(2) is applicable. 

 

(4) A person who claims a priority, as prescribed in Article 54, in making an application for a patent under paragraph (1) may, notwithstanding the provision of paragraph (4) of said Article, submit such documents as prescribed in said paragraph to the Commissioner of the Korean Intellectual Property Office within three months after he makes the dual application. 

 

 

Article 54 Priority Claim Under Treaty 

 

(1) If a national of one of the countries which recognizes under a treaty a right of priority for a patent application filed by a national of the Republic of Korea, claims the right of priority for a patent application in the Republic of Korea on the basis of the initial application for the same invention in his country or in one of the said countries, the filing date of the initial application in the foreign country shall be deemed to be the filing date in the Republic of Korea for the purposes of Articles 29 and 36. Where a national of the Republic of Korea has filed a patent application in a country which recognizes under a treaty the right of priority for patent applications filed by nationals of the Republic of Korea, and claims the right of priority for a patent application in the Republic of Korea on the basis of the initial application for the same invention in the said country, this provision shall also apply. 

 

(2) A person intending to claim the right of priority in accordance with paragraph (1) shall file a patent application claiming the right of priority within one year from the filing date of the initial application. 

 

(3) A person intending to claim the right of priority in accordance with paragraph (1) shall specify such claim, the name of the country in which the initial application was filed and the filing date of such application in the patent application which he files in the Republic of Korea. 

 

(4) A person who has claimed the right of priority under paragraph (3) shall submit to the Commissioner of the Korean Intellectual Property Office the documents prescribed in paragraph (i) or the written statement prescribed in paragraph (ii).  However, the written statement referred to in paragraph (ii) shall be submitted only in cases where the country is prescribed by Ordinance of the Ministry of Commerce, Industry and Energy: 

  (i) a written statement setting forth the filing date of the application and a copy of the specification and drawings certified by the government of the country where the initial application was filed; or 

  (ii) a written statement setting forth the file number of the application in the country where the initial application was filed. 

 

(5) Documents under paragraph (4) shall be submitted within one year and four months from the earliest among the dates prescribed in the following subparagraphs: 

  (i) the date on which the application was first filed in a country that is a party to a treaty; 

  (ii) the filing date of the earlier application which would be the basis for claiming a priority right in cases where a patent application contains other priority claims in accordance with Article 55(1); or 

  (iii) the filing date of the application that is to be the basis for claiming a priority right in cases where a patent application contains other priority claims in accordance with paragraph (3). 

 

(6) Where a person who has claimed the right of priority under paragraph (3) fails to submit the document prescribed under paragraph (4) within the prescribed time limit, the claim to the right of priority shall lose its effect. 

 

(7) A person who is eligible to claim the right of priority under paragraph (1) and is in compliance with the requirements of paragraph (2) may amend or add said priority claims within one year and four months from the earliest date prescribed under paragraph (5). 

 

 

Article 55 Priority Claim Based on Patent Application, etc. 

 

(1) A person desiring to obtain a patent may claim the right of priority for an invention claimed in a patent application which has been disclosed in the description or drawings originally attached to a patent or utility model application, for which he has the right to obtain a patent or utility model registration, and which has been filed earlier (hereinafter referred to as an "earlier application") except in any of the following cases: 

  (i) where the patent application concerned is filed more than one year from the filing date of the earlier application; 

  (ii) where the earlier application is a divisional application under Article 52(2) or a dual application under Article 53 of this Law or a divisional application under Article 16(2) of the Utility Model Law or a dual application under Article 17 of the Utility Model Law; 

  (iii) where the earlier application has been abandoned, invalidated, withdrawn or rejected at the time the patent application is filed; 

  (iv) where an examiner's decision to grant or refuse a patent, or a trial decision on the earlier application has become final and conclusive; or 

  (v) where the earlier application is registered under Article 35(2) of the Utility Model Law at the time when said patent application is made.  

 

(2) A person intending to claim the right of priority under paragraph (1) shall, simultaneously with the patent application, make such a claim and identify the earlier application in the patent application. 

 

(3) For inventions which are amongst those described in a patent application containing a priority claim under paragraph (1), which are disclosed in the specification or drawings originally attached to the earlier application which would be the basis for claiming a priority right, [excluding those inventions disclosed in the specification or drawings submitted at the time of the filing of an application whose priority is claimed for an earlier application in the case where that earlier application contains a priority claim under paragraph (1) of this Article or under Article 4D(1) of the Paris Convention for the Protection of Intellectual Property] the patent application shall be considered to have been filed at the time when the earlier application was filed for the purpose of Articles 29(1) or (2), and 29(3) (principal sentence), 30(1), 36(1) to (3), 47(4)(ii), 96(1)(iii), 98, 103, 105(1) and (2), 129 and 136(4)(including cases that apply mutatis mutandis to Article 77(3) or 133bis(3)) of the Patent Law, Articles 8(3), (4) and 39 of the Utility Model Law, or Articles 45 and 52(3) of the Design Law. 

 

(4) For inventions which are amongst those described in the specification of drawings originally attached to a patent application containing a priority claim under paragraph (1), which are disclosed in the specification or drawings originally attached to the earlier application which would be the basis for claiming a priority right, [excluding those inventions disclosed in the specification or drawings submitted at the time of the filing of an application whose priority is claimed for an earlier application in the case where that earlier application contains a priority claim under paragraph (1) of this Article or under Article 4D(1) of the Paris Convention for the Protection of Intellectual Property] the laying open of the earlier application for public inspection shall be considered to have been effected at the time when the publication after registration of a patent right or the laying open of the patent application for public inspection was effected, for the purposes of the principal sentence of Article 29(3) of the Patent Law and the principal sentence of Article 5(3) of the Utility Model Law. In this case, where the earlier application is an international application which is deemed to be a patent application under Article 199(1) of this Law or which is deemed to be a utility model registration application under Article 57(1) of the Utility Model Law (including an international application considered to be a patent application or a utility model application under Article 214(4) of the Patent Law or Article 71(4) of the Utility Model Law), "an invention or device described both in the specification, claim or drawings of the international application as of the international filing date and in the translated version thereof" in Article 29(4) of the Patent Law shall read "an invention or device described in the specification, claim or drawings of the international application as of the international filing date."  

 

(5) A person who is eligible to claim the right of priority under paragraph (1) and who is in compliance with the requirements referred to in paragraph (2) may amend or add said priority claims within one year and four months from the filing date of the earlier application (the earliest filing date in cases where there are two or more earlier applications). 

 

 

Article 56 Withdrawal of an Earlier Application, etc. 

 

(1) IF an application is filed claiming priority from an earlier application under Article 55(1), the earlier application shall be deemed to have been withdrawn at the time that priority is claimed if the earlier application is utility model application and at the expiration of one year and three months from the filing date of the earlier application if the earlier application is a patent application.  However, this provision shall not apply where that earlier application falls under any of the following subparagraphs: 

  (i) in the case of its being abandoned, invalidated, withdrawn, or rejected; 

  (ii) in the case where an examiner's decision of patentability, or a trial or trial decision, rejecting the application has become final and conclusive; 

  (iii) in the case where priority claims based on the earlier application concerned have been withdrawn; or 

  (iv) in a case of it being registered under Article 35(2) of the Utility Model Law. 

 

(2) The applicant of a patent application containing a priority claim under Article 55(1) may not withdraw the priority claim after the expiration of one year and three months from the filing date of the earlier application. 

 

(3) Where the patent application containing a priority claim under Article 55(1) is withdrawn within one year and three months from the filing date of the earlier application, the priority claim shall be deemed withdrawn simultaneously therewith. 

 

 

CHAPTER III 

EXAMINATION 

 

 

Article 57 Examination by Examiner 

 

(1) The Commissioner of the Korean Intellectual Property Office shall have applications for patents and oppositions to the grant of patents examined by an examiner. 

 

(2) The qualifications for examiners shall be prescribed by Presidential Decree. 

 

 

Article 58 Search for Prior Art, etc. 

 

(1) If it is deemed necessary for the process of examination, the Commissioner of the Korean Intellectual Property Office may rely on a specialized search organization for searching prior art. 

 

(2) If it is deemed necessary for the process of examination, the Commissioner of the Korean Intellectual Property Office may request the cooperation of, or seek advice from, a government agency, an organization specialized in the technology concerned or an expert having profound knowledge and experience in patent matters, and may, pay them allowances or expenses for such cooperation or advice within the limits of the budget of the Korean Intellectual Property Office. 

 

(3) Necessary matters concerning the designation of specialized search organizations, such as a standard for designation and implementation procedures for searching documents under paragraph (1), shall be prescribed by Presidential Decree. 

 

 

        Article 58bis Cancellation of the Designation of a Specialized Search Organization 

 

Where a specialized search organization falls under any of the following subparagraphs, the Commissioner of the Korean Intellectual Property Office may cancel the designation of said search organization or order suspension of its business operations within a designated time limit.  However, if a specialized search organization falls under subparagraph (i), the Commissioner of the Korean Intellectual Property Office must cancel its designation: 

        (i) where the search organization has obtained designation through false or unfair means; or 

        (ii) where the standard for designation is improper under Article 55(3). 

              

 

        Article 59 Request for Examination of a Patent Application 

 

(1) A patent application shall be examined only upon the filing of a request for examination. 

 

(2) When a patent application has been filed, any person may make a request for examination of the patent application to the Commissioner of the Korean Intellectual Property Office within five years from the filing date thereof. 

 

(3) With respect to a divisional application under Article 52(2), or a dual application under Article 53, a request for examination can be made even after the expiration of the period prescribed in paragraph (2) within thirty days from the date of the division or the dual application. 

 

(4) A request for examination of an application shall not be withdrawn. 

 

(5) If a request for examination has not been made within the time limits prescribed in paragraph (2) or (3), the patent application concerned shall be deemed to have been withdrawn. 

 

 

Article 60 Procedure for a Request for Examination 

 

(1) Any person desiring to make a request for examination of an application shall submit a written request for examination of an application to the Commissioner of the Korean Intellectual Property Office, stating the following: 

  (i) the name and the domicile of the person making the request (if a legal entity, the title, the place of business and the name of its representative); 

  (ii) the date of submission of the request; and 

  (iii) the identification of the patent application for which the request for examination is made. 

 

(2) The Commissioner of the Korean Intellectual Property Office shall, where a request for examination has been made prior to the publication of an application, publish such fact in the Patent Gazette at the time the application is laid open. Where a request for examination has been made after the laying-open of the application, the Commissioner shall publish such fact in the Patent Gazette without delay. 

 

(3) The Commissioner of the Korean Intellectual Property Office shall, where a request for examination of an application has been made by a person other than the applicant, notify the applicant of such fact. 

 

 

Article 61 Preferential Examination 

 

The Commissioner of the Korean Intellectual Property Office may direct the examiner to examine one application in preference over another if the former falls under any of the following subparagraphs: 

  (i) where a person other than the applicant is commercially and industrially working the invention claimed in a patent application after the laying-open of the application; or 

  (ii) where the Commissioner of the Korean Intellectual Property Office deems it necessary to urgently process a patent application as prescribed by Presidential Decree. 

 

 

Article 62 Decision of Refusal of Patent 

 

The examiner shall make a decision to refuse a patent where the invention falls under any of the following subparagraphs (hereinafter referred to as "reason for refusal"): 

  (i) where the invention is not patentable under Articles 25, 29, 31, 32, 36(1) to (3), or 44; 

  (ii) where the application is filed by a person who does not have the right to obtain a patent therefor under the provision of Article 33(1) of where the invention is not patentable under the proviso of Article 33(1); 

  (iii) where it is in violation of a treaty;  

  (iv) where it has not satisfied the requirements prescribed under Article 42 (3) to (5) or 45; or 

(v) where the application is amended in violation of Article 47(2). 

 

 

Article 63 Notification of Reasons for Refusal

 

Where an examiner intends to render a decision to refuse a patent under Article 62, he or she shall notify the applicant of the reasons and give the applicant an opportunity to submit a written statement of applicant's arguments and shall designate a time limit for such submission.  However, this provision shall not apply if the examiner intends to reject an amendment under Article 51(1) as it applies under Article 47(1)(ii).

 

 

Article 64 Laying Open of Application 

 

(1) Under Ordinance of the Ministry of Commerce, Industry and Energy, the Commissioner of the Korean Intellectual Property Office shall lay open a patent application in the Patent Gazette one year and six months from the date prescribed under any of the following subparagraphs or upon request from the applicant even before the expiration of one year and six months from said date.  However, this provision shall not apply where the application has already been published in accordance with Article 87(3): 

  (i) where a patent application contains a priority claim under Article 54(1), the priority date shall apply; 

  (ii) where a patent application contains a priority claim under the provisions of Article 55(1), the filing date of the earlier application shall apply as prescribed in Article 55(1);  

  (iii) the earliest filing date among the filing dates of two or more applications that are the basis for claiming a priority right in a patent application under Article 54(1) or 55(1); or 

  (iv) where a patent application does not fall under any of subparagraphs (i) to (iii), the filing date of the patent application shall apply.

 

(2) Any person may, at the time the application is laid open under paragraph (1), furnish the Commissioner of the Korean Intellectual Property Office with information together with evidence, to the effect that the invention concerned is unpatentable under Article 62. However, if the requirements prescribed in Article 42(5) and 45 mentioned in subparagraph (iv) of Article 62 are not complied with, this provision shall not apply. 

 

(3) The provisions of Article 87(4) shall apply mutatis mutandis to the laying-open of applications under paragraph (1).  

 

(4) Matters to be published in the Patent Gazette with respect to the laying-open of applications under paragraph (1) shall be prescribed by the Presidential Decree. 

 

 

Article 65 Effects of Laying Open of Application 

 

(1) After an application is laid open, an applicant may warn a person who has commercially or industrially worked the filed invention, in writing indicating that a patent application for the invention has been filed. 

 

(2) An applicant may demand a person who has commercially or industrially worked the filed invention after being warned as provided in paragraph (1) or knowing that the invention has been laid open, to pay compensation in an amount equivalent to what he would have normally received for the working of the invention from the date of warning or the time when he/she knew that the patent application of the invention had been laid open to the time of the registration of the patent right. 

 

(3) The right to demand compensation as provided in paragraph (2) shall be exercised only after the registration of the patent right.  

 

(4) The exercise of the right to demand compensation under paragraph (2) shall not preclude the exercise of the patent right.  

 

(5) Articles 127, 129, and 132 of the Patent Law, or Articles 760 and 766 of the Civil Code shall apply mutatis mutandis to the exercise of the right to demand compensation under paragraph (3). In such case, "the time when the damaged party or his legal representative became aware of such damage and of the identity of the person causing it" in Article 766(1) of the Civil Code shall read "the date of registration of the involved patent right." 

 

(6) Where a patent application is abandoned, invalidated or withdrawn after the laying-open of the application, or a decision of refusal or revocation of a patent under Article 74(3), or a decision to invalidate a patent under Article 133 (except where prescribed under subparagraph (iv) of Article 133 (1)) has become final and conclusive, the right under paragraph (2) shall be deemed never to have existed.  

 

 

Article 66 Decision to Grant a Patent

 

Where an examiner does not find any grounds for rejecting a patent application, he shall render a decision to grant a patent. 

 

 

Article 67 Formalities for Decision of Patentability 

 

(1) A decision to either grant or refuse a patent (hereinafter referred to as a "decision of patentability") shall be made in writing and shall state the reasons therefor. 

 

(2) Where a decision of patentability has been rendered, the Commissioner of the Korean Intellectual Property Office shall transmit a certified copy of the decision to the patent applicant.  

 

 

Article 68 Mutatis Mutandis Application of Provisions Concerning

Trial to Examination

 

The provisions of Article 148(i) to (v) and (vii) shall apply mutatis mutandis to the examination of a patent application. 

 

 

Article 69 Opposition to the Grant of a Patent 

 

(1) Any person can file an opposition to the granting of a patent with the Commissioner of the Korean Intellectual Property Office on the grounds that the patent falls under any one of the following subparagraphs from the date of the patent right registration upto three months after the date of publication of the patent right registration. Where the patent contains two or more claims, an opposition may be filed against each claim. 

  (i) where the patent has been granted contrary to the provisions of Article 25, 29, 31, 32, 36(1) to (3) or 44; 

  (ii) where the application is filed by a person who does not have the right to obtain a patent under the provision of Article 33(1) or where the invention is not patentable under the proviso of Article 33(1);    

  (iii) where the patent has been granted in violation of a treaty; 

  (iv) where the patent has been granted contrary to the provision of Article 42(3) or (4);  

  (iv)bis where the application is amended in the violation of Article 47(2); or 

  (v) where the establishment of the patent has been registered in violation of the proviso of Article 87(2). 

 

(2) A person who files an opposition (hereinafter referred to as "the opponent") shall submit a written opposition together with the relevant evidence stating the following: 

  (i) the name and the domicile of the opponent (if the opponent is a legal entity, its title and place of business);  

  (i)bis if the opponent has an agent, the name and the domicile or place of business of the agent (if the agent is a patent corporation, its title, place of business and the name of the appointed patent attorney);  

  (ii) the identification of the patent to which the opposition is made; or 

  (iii) the grounds for the opposition and identification of the relevant evidence. 

 

(3) The provisions of Article 133(4) shall apply mutatis mutandis to an opposition. 

 

 

Article 70 Amendment of Grounds for Opposition, etc. 

 

(1) An opponent may amend the grounds and evidence set forth in the written opposition within thirty days from the expiration of the time limit for opposition. 

 

(2) When an opposition to the grant of a patent is filed, the presiding examiner designated under Article 71(3) shall transmit a copy of the written opposition to the patentee and give him an opportunity to submit a written response, designating a time limit for submitting such a response. 

 

 

Article 71 Collegial Body for Examination and Decision 

 

(1) Three examiners constituting a collegial body shall examine and rule on the opposition. 

 

(2) The Commissioner of the Korean Intellectual Property Office shall designate examiners constituting a collegial body for each opposition. 

 

(3) The Commissioner of the Korean Intellectual Property Office shall designate one examiner from the collegial body pursuant to paragraph (2) as the presiding examiner. 

 

(4) The provisions of Articles 144(2), 145(2), 146(2) and (3) shall apply mutatis mutandis to the collegial body and the presiding examiner. 

 

 

Article 72 Examination Ex Officio in Examination of Opposition 

 

(1) In the examination of an opposition, grounds that have not been pleaded by the patentee or the opponent may also be considered.  However, in such cases, the patentee and the opponent shall both be given an opportunity to state their opinion within a designated time limit. 

 

(2) In the examination of opposition, no examination may be made on the purpose of a claim not submitted by the opponent.  

 

 

Article 73 Joint or Separate Oppositions 

 

(1) Where two or more oppositions have been filed, the examiners may examine or decide upon them jointly or separately. 

 

(2) Deleted. 

 

(3) Deleted. 

 

 

Article 74 Decision on Opposition 

 

(1) After the expiration of the time limits provided for under Article 70(1) and (2), the examiner shall render a decision on the opposition. 

 

(2) Notwithstanding the provision of Article 70(1), where the opponent fails to submit the grounds and evidence within the time limit for opposition under Article 69(1), the presiding examiner may reject the opposition by decision. 

 

(3) Where it is deemed that the opposition has legitimate grounds, a collegial body shall render a decision to revoke the patent (hereinafter referred to as a "decision to revoke a patent").  

 

(4) Where a decision of revocation of a patent becomes conclusive, the patent shall be deemed never to have existed. 

 

(5) Where it is deemed that the opposition has no grounds, a collegial body shall render a decision to maintain a patent (hereinafter referred to as a "decision of maintenance of a patent"). 

 

(6) No appeal shall be made against a decision of rejection or a decision of maintenance of a patent rendered in an opposition. 

 

 

Article 75 Manner of Decision on Opposition 

 

(1) All decisions on patent opposition shall be made in writing which shall include the following, and the examiner who has made the decision shall sign and seal it: 

  (i) the case number of the opposition; 

  (ii) the name and the domicile of the patentee and the opponent (if the opponent is a legal entity, its title and place of business);  

  (ii)bis if the patentee or opponent has an agent, the name and the domicile or place of business of the agent (if the agent is a patent corporation, its title, place of business and the name of the appointed patent attorney);  

  (iii) the identification of the patent related to the decision; 

  (iv) the conclusion and grounds of the decision; and  

  (v) the date of the decision. 

 

(2) Where a decision on an opposition is made, the presiding examiner shall transmit a certified copy of the decision to the patentee as well as the opponent. 

 

 

Article 76 Withdrawal of Opposition 

 

(1) An opposition may not be withdrawn after a certified copy of the decision under Article 75(2) has been delivered or after a notification stating the applicant's argument has been made under the latter part of Article 72(1). 

 

(2) The provisions of Article 161(2) and (3) shall apply mutatis mutandis to a withdrawal of the opposition. 

 

 

Article 77 Correction of Patent in an Opposition 

 

(1) A patentee may make a request for correction of the specification or drawings of a patented invention within the period designated under Article 70(2) or the latter part of 72(1) where it falls under any of the subparagraphs of Article 47(3). 

 

(2) Where a request for correction as referred to in paragraph (1) has been made, the presiding examiner shall transmit a copy of the request for correction to the opponent. 

 

(3) The provisions of Articles 136(2) to (5), (7) to (9), 139(3) and 140(1), (2) and (5) shall apply mutatis mutandis to request for correction under paragraph (1).  In such cases, "before issuance of a notification of closure of the trial examination under Article 162(3) (where the trial examination is reopened under Article 162(4), before a subsequent notification of the closure of the trial examination is issued under Article 162(3))" in Article 136(9) shall read "within the designated period where there is a notification issued under Article 136(5)". 

 

(4) Where a decision is rendered to allow correction of the specification or drawings of a patented invention, Commissioner of the Korean Intellectual Property Office shall publish the contents of the correction in the Patent Gazette. 

 

 

Article 78 Suspension of Examination or Litigation Proceedings 

 

(1) The examination procedure of a patent application or an opposition to the grant of a patent may, if necessary, be suspended until a decision on an opposition or a trial becomes conclusive or litigation proceedings have been completed. 

 

(2) The court may, if necessary, suspend the proceedings until the examiner's decision on a patent application or an opposition to the grant of a patent becomes final and conclusive. 

 

(3) No appeal shall be made against the suspension under paragraphs (1) and (2). 

 

 

Article 78bis Mutatis Mutandis Application of  

Provisions Concerning Trials to Opposition 

 

The provisions of Articles 141(1) to (3), 142, 148(i) to (v), (vii), 154(8), 157, 165(3) to (6) and 166 shall apply mutatis mutandis to the examination and decision of oppositions. 

 

 

 

CHAPTER IV 

PATENT FEES AND PATENT REGISTRATIONS, ETC. 

 

 

Article 79 Patent Fees 

 

(1) A person who wishes to register a patent right, or a patentee under Article 87(1), shall pay the patent fees. 

 

(2) Matters necessary to the payment of patent fees, including the method and time limits for the payment of patent fees under paragraph (1), shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. 

 

 

Article 80 Payment of Patent Fees by Interested Party 

 

(1) Regardless of the intent of a person liable to pay patent fees under the terms of Article 79(1), any interested party may pay the patent fees. 

 

(2) An interested party who has paid the patent fees in accordance with paragraph (1) may demand reimbursement of his expenses to the extent that the person liable to pay is currently making a profit. 

 

 

Article 81 Late Payment of Patent Fees 

 

(1) A patentee or any person wishing to register a patent right may make late payment of the patent fees within six months following the expiration of the payment period prescribed under Article 79(2). 

 

(2) Where patent fees are paid late under paragraph (1), an amount equivalent to twice the patent fees shall be paid. 

 

(3) If the patentee or a person wishing to register a patent right does not pay the patent fees within the extended period provided for under paragraph (1), the patent application shall be deemed to have been abandoned and the patent right concerned shall be deemed to have been extinguished retroactively to the time when the period for payment of the patent fees expired. 

 

 

Article 81bis Recovery of a Patent application or Patent Right by Late Payment of the Patent Fees 

 

(1) If a patentee or any person wishing to register a patent right has failed to observe the time limit for late payment of the patent fees under Article 81(1) due to unavoidable circumstances, he may make late payments of the patent fees within fourteen days after said reason ceases to exist.  However, this provision shall not apply where six months has elapsed after said period expires under Article 81(1). 

 

(2) Where late payment of the patent fees is submitted in accordance with paragraph (1), notwithstanding the provision of Article 81(3), the patent application shall be deemed not to have been abandoned and the concerned patent right shall be deemed to have continued retroactively from the date on which the period for payment of the patent fees expired. 

 

(3) The effects of a patent application or a patent right under paragraph (2) shall not extend to another person's working of the patented invention from the date of expiration of the extended period for late payment of the patent fees to the date of submittal of late payment of the patent fees (hereinafter referred to as an "the term of limited effect"). 

 

(4) During the term of limited effect, a person who has been commercially or industrially working or preparing to work an invention in good faith under a patent application or patent right in accordance with paragraph (2) in the Republic of Korea, shall have a non-exclusive license on that patent right under the patent application.  Said license shall be within the scope of the object of the invention or business that he/she is working or preparing to work.

 

(5) A person who has been granted a non-exclusive license in accordance with paragraph (4) shall pay reasonable remuneration to the patentee or exclusive licensee. 

 

 

Article 82 Official Fees 

 

(1) A person initiating a patent-related procedure shall pay the official fees. 

 

(2) Where the number of claims is increased because of amendments to the specification after a request for examination made by a person other than the applicant, the applicant shall pay the fees for the request for examination corresponding to the increased number of claims. 

 

(3) Matters necessary to the payment of official fees, including the method and time limits for payment of the fees under paragraph (1), shall be prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy. 

 

 

Article 83 Reduction or Exemption of Patent Fees or Official Fees 

 

(1) Notwithstanding Articles 79 and 82, the Commissioner of the Korean Intellectual Property Office shall grant an exemption from the payment of patent fees or official fees in the following situations: 

  (i) official fees or patent fees corresponding to the patent applications or patent rights belonging to the State; or 

  (ii) fees related to requests for an invalidation trial made by an examiner under Articles 133(1), 134(1) or 137(1). 

 

(2) Notwithstanding Articles 79 and 82, where the patent application has been filed by an entitled person in accordance with Article 3 of the National Assistance Law, or a person prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy, the Commissioner of the Korean Intellectual Property Office may reduce or exempt the payment of the fees prescribed by the Ordinance of the Ministry of Trade, Industry and Energy and the for the patent fees for obtaining the registration of a patent right for the first three years. 

 

(3) A person who wishes to take advantage of reduced fees or exemption from the payment of the patent fees or official fees in accordance with paragraph (2) shall submit the documents prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy to the Commissioner of the Korean Intellectual Property Office. 

 

 

Article 84 Refund of Patent Fees, etc. 

 

(1) Patent fees and official fees which have been paid shall not be refunded. However, in the following cases such fees shall be refunded upon a request by the person who made such payment: 

  (i) patent fees or official fees paid by mistake; 

  (ii) portion corresponding to the patent fee for the years subsequent to the year in which a decision of revocation of a patent or a decision of invalidation on the patent becomes final and conclusive; or 

  (iii) portion corresponding to the patent fee for the years subsequent to the year in which a decision of invalidation on the registration of patent term extension becomes final and conclusive. 

 

(2) When Patent fees and official fees have been paid incorrectly, the Commissioner of the Korean Intellectual Property Office shall issue a notification to the party who paid said Patent fees and official fees. 

 

(3) The refund of the patent fees and official fees under paragraph (1)(i) may not be claimed if more than one year has elapsed from the date of notification of the incorrect payment, and the refund of the portions corresponding to the patent fee under subparagraphs (ii) and (iii) of said paragraph may not be claimed after one year from the date when a decision of revocation of the patent or a decision of invalidation of the patent becomes final and conclusive.  

 

 

Article 85 Patent Register 

 

(1) The Commissioner of the Korean Intellectual Property Office shall keep the Patent Register at the Korean Intellectual Property Office and shall register the following matters: 

  (i)the establishment, transfer, extinguishment, restriction on disposal or extension of the term of a patent right; 

  (ii)the establishment, maintenance, transfer, modification, extinguishment, or restriction on disposal of an exclusive or non-exclusive license; and 

  (iii)the establishment, transfer, modification, extinguishment or restriction on the disposal of a pledge on a patent right or on an exclusive or non-exclusive license. 

 

(2) All or parts of the Patent Register under paragraph (1) may be stored on magnetic tapes, etc. 

 

(3) Necessary information relating to the matters and procedures of registration not provided for in paragraphs (1) or (2) shall be prescribed by Presidential Decree. 

 

(4) Specifications and drawings of patent applications and documents prescribed by Presidential Decree are considered to be part of the Patent Register. 

 

 

Article 86 Issuance of Certificate of Patent Registration 

 

(1) When a patent right has been registered, the Commissioner of the Korean Intellectual Property Office shall issue the certificate of patent registration to the patentee. 

 

(2) Where the certificate of patent registration do not coincide with the patent register or other documents, the Commissioner of the Korean Intellectual Property Office shall reissue the certificate of patent registration with amendments, or issue new letters patent upon request or ex officio. 

 

(3) When a decision on a trial for amendment under Article 136(1) has become final and conclusive, the Commissioner of the Korean Intellectual Property Office shall issue new certificate of patent registration in accordance with the trial decision. 

 

 

 

CHAPTER V 

PATENT RIGHT 

 

 

Article 87 Registration of Establishment of Patent Right and  

Publication of Registration 

 

(1) A patent right shall enter into effect upon establishment of registration thereof. 

 

(2) Where patent fees have been paid in accordance with Article 79(1) or where an exemption from the payment of patent fees has been granted under Article 83(1)(i) and (ii), the Commissioner of the Korean Intellectual Property Office shall register the patent right.  However, in cases that fall under any of the following subparagraphs, a patent right shall be registered only if an utility model right concerned is abandoned: 

  (i) in a case where the establishment of an utility model right has been registered with respect to an application for utility model registration which forms the basis of a dual application in such a dual application; and 

  (ii) in a case where a dual application (hereinafter referred to as a "dual application for utility model registration" in this subparagraph) has been filed under Article 17 of the Utility Model Law on the basis of an application for a patent and where the establishment of an utility model right has been registered with respect to the dual application for utility model registration. 

 

(3) Where a registration has been made under paragraph (2), the Commissioner of the Korean Intellectual Property Office shall publish the grant of the patent together with the relevant information in the Patent Gazette. 

 

(4) The publication of the registration of a patent for an invention required to be treated confidentially shall be reserved until it is declassified upon declassification, the registration shall be published without delay. 

 

(5) The Commissioner of the Korean Intellectual Property Office shall provide the application documents and the attached materials thereof for public inspection for a period of three months from the date of publication of registration. 

 

(6) Matters to be published in the Patent Gazette with respect to the publication of registration under paragraph (3) shall be prescribed by the Presidential Decree.  

 

 

Article 88 Term of Patent Right 

 

(1) The term of a patent right shall commence upon registration of the patent right under Article 87(1) and be in force for twenty years from the filing date of the patent application.

 

(2) Where a patent is granted to a lawful holder of the right under Article 34 or 35, the term of a patent right under paragraph (1) shall be calculated from the date following the filing date of the patent application by the unentitled person.  

 

(3) Deleted. 

 

(4) Where a patent application is deemed to have been filed at the time of submission of a dual application under Article 49(2), the term of patent right under paragraph (1) of this Article shall commence upon registration of the patent right and be in force for twenty years from the filing date of the utility model application that is the basis of the dual application.  

 

Article 89 Extension of Term of Patent Right 

 

Notwithstanding the provisions of Article 88(1), where authorization or registration under provisions of other laws or regulations were required in order to work a patented invention, and it has taken an extended period of time to complete the activity test, the safety tests, etc., necessary to obtain such authorization or registration (hereinafter referred to as a "authorization") and which is prescribed by the Presidential Decree, the term of the patent right may be extended by a period, up to five years, during which the patented invention could not have been worked.  

 

 

Article 90 Application for Registration of Extension of Term

 

of Patent Right

 

(1) A person who wishes to apply for the registration of extension of a patent right under Article 89 (hereinafter referred to as "applicant for registration of extension") shall submit an application for registration of an extension of the term of a patent right to the Commissioner of the Korean Intellectual Property Office stating each of the following:

() the name and domicile of the applicant for registration of extension (if the applicant is a legal entity, the title and location of place of business);

() the name and domicile, or location of place of business, of the agent, if designated ( the name, location of office and designated attorney’s name, if the agent is a patent corporation);

() the identification by its patent number of the patent for which an extension is applied, and the claims of that patent;

() the period of extension applied for;

() the requirements for authorization under Article 89; and

() the grounds for extension as prescribed by the Ordinance of the Ministry of Commerce, Industry and Energy (accompanied by materials substantiating said grounds).

 

(2) The application for registration of an extension of the term of a patent right shall be filed within three months from the date the authorization under Article 89 was obtained; however, the application may not be filed when the unexpired length of the term as provided for in Article 88 is less than six months.

 

(3) Where the patent is owned by joint owners, an application for registration of an extension of the term of a patent right shall be made in the names of all the joint owners.

 

(4) Where an application for registration of an extension of term of a patent right has been filed, the term shall be deemed to have been extended, except where decision of refusal for registration of extension of term under Article 91(1) has become final and conclusive.

 

(5) Where an application for registration of an extension of the term of a patent right has been filed, the Commissioner of the Korean Intellectual Property Office shall publish the information prescribed in paragraph (1) in the Patent Gazette.

 

(6) An applicant for registration of an extension may make an amendment to the matter of paragraph (1)(iii) to (vi) in the application for registration of an extension (except the patent number (Subparagraph iii) of the patent right to be extended) if said amendment is made before the examiner transmits a certified copy of decision for registration or refusal of the extension.

 

 

Article 91 Decision of Refusal on Registration of

Extension of the Term of Patent Right

 

(1) The examiner shall make a decision to refuse an extension of the term of a patent right where it falls under any of the following situations:

() where it is deemed that the authorization under Article 89 is not necessary for working the patented invention;

() where the patentee, or a person who has an exclusive or non-exclusive license under the patent right has not obtained the authorization under Article 89;

() where the term for which an extension is applied exceeds the time period during which the patented invention could not have been worked;

() where the applicant for registration of an extension is not the patentee; or

() where the application for registration of an extension is made in violation of the provisions of Article 90(3).

() deleted

 

(2) "The time period during which the patented invention could not have been worked," as referred to in paragraph (1)(iii), shall not include any period which has elapsed for reasons attributable to the patentee.

 

 

Article 92 Decision etc., on Registration for

Extending Term of Patent Right

 

(1) Where the examiner finds no reason under any of the subparagraphs of Article 91(1) to refuse an application for an extension of the term of a patent right, he or she shall render a decision to grant said extension.

 

(2) When a decision of extension has been made under paragraph (1), the Commissioner of the Korean Intellectual Property Office shall register the extension of the term of the patent right in the Patent Register.

 

(3) When the registration under paragraph (2) has been made, the information prescribed in the following subparagraphs shall be published in the Patent Gazette:

() the name and domicile of the patentee (if the patentee is a legal entity, the title and location of place of business);

() the patent number;

() the date of registration of the extension;

() the period of the extension; and

() the requirements, etc., for the authorization under Article 89.

 

 

Article 93 Mutatis Mutandis Application of Provisions

 

The provisions of Articles 57 (1), 63, 67 and 148 (1) to (5) and (7) shall apply mutatis mutandis to the examination of an application for the registration of an extension of the term of a patent right.

 

 

Article 94 Effects of Patent Right

 

A patentee shall have the exclusive right to work a patented invention both commercially and industrially. However, where the patent right is the subject of an exclusive license, this provision shall not apply to the extent that the exclusive licensee has the exclusive right to work the patented invention under Article 100(2).

 

 

Article 95 Effects of Patent Right the Term of

Which Has Been Extended

 

The effects of a patent right, the term of which has been extended, shall not extend to any other acts except the working of the patented invention with respect to such products for which an authorization was the basis for registering the extension (or where the authorization was obtained for any specific use of the product, with respect to the product adapted for such specific use).

 

 

Article 96 Limitations on Patent Right

 

(1) The effects of the patent right shall not extend to the following:

() working of the patented invention for the purpose of research or experiment;

() vessels, aircraft or vehicles merely passing through the Republic of Korea or machinery, instruments, equipment or other accessories used therein; or

() articles existing in the Republic of Korea at the time the patent application was filed.

 

(2) The effects of the patent right for inventions of medicines (namely, products used for diagnosis, therapy, alleviation, medical treatment or prevention of human disease, hereinafter referred to as "medicines") manufactured by mixing two or more medicines, or for inventions of processes for manufacturing medicines by mixing two or more medicines, shall not extend to the acts of dispensing medicines in accordance with the Pharmaceutical Affairs Law or to medicines manufactured by such acts.

 

 

Article 97 Scope of Protection of Patented Invention

 

The scope of protection conferred by a patented invention shall be determined by the subject matters described in the claims.

 

 

Article 98 Relation to Patented Invention, etc. of Another Person

 

Where the working of a patented invention would infringe another person's patented invention, registered utility model or registered design or similar design under an application filed prior to the filing date of the patent application concerned, or where a patent right conflicts with another person's design right or trademark right under an application for registration for a design right or trademark right filed prior to the filing date of the patent application concerned, the patentee, exclusive licensee or non-exclusive licensee shall not work the patented invention commercially or industrially without the license of the owner of the earlier patent, utility model right, or design right, or trademark right except where Article 138(1) applies.

 

 

Article 99 Assignment and Co-ownership of a Patent Right

 

(1) A patent right may be assigned.

 

(2) Where a patent right is owned jointly, each co-owner of the patent right may neither assign his share nor establish a pledge upon it without the consent of all the other co-owners.

 

(3) Where the patent right is owned jointly, each co-owner may, except as otherwise agreed by a contract among all the joint owners, work the patented invention by himself without the consent of the other joint owners.

 

(4) Where the patent right is owned jointly, a co-owner of the patent right may not grant an exclusive license or a non-exclusive license of the patent right without the consent of all the other joint owners.

 

 

Article 100 Exclusive License

 

(1) A patentee may grant an exclusive license of the patent right to others.

 

(2) An exclusive licensee having been granted an exclusive license under paragraph (1), shall have the exclusive right to work the patented invention commercially or industrially to the extent provided for in the license contract.

 

(3) An exclusive licensee may not transfer the license without the consent of the patentee, except where it is transferred together with the underlying business of the licensee, by inheritance or other general succession.

 

(4) An exclusive licensee may not establish a pledge or grant a non-exclusive license on the exclusive license without the consent of the patentee.

 

(5) The provisions of Article 99(2) to (4) shall apply mutatis mutandis to an exclusive license.

 

 

Article 101 Effects of Registration of a Patent Right

and an Exclusive License

 

(1) The following shall be of no effect unless they are registered:

() the transfer (except through inheritance or other general succession) or extinguishment by abandonment, or restriction on the disposal of a patent right;

() the grant, transfer (except through inheritance or other general succession), modification, extinguishment (except through confusion), or restriction on the disposal; or of an exclusive license; or

() the establishment, transfer (except through inheritance or other general succession) modification, extinguishment (except through confusion), or restriction on the disposal of a pledge on a patent right or exclusive license.

 

(2) Inheritance of, or other general succession relating to a patent right, exclusive license, and pledge under paragraph (1) shall be notified without delay to the Commissioner of the Korean Intellectual Property Office.

 

 

Article 102 Non-exclusive License

 

(1) A patentee may grant to others a non-exclusive license on his patent right.

 

(2) A non-exclusive licensee shall have the right to work the patented invention commercially or industrially to the extent prescribed in the Patent Law or provided for by the license contract.

 

(3) A non-exclusive license granted under Article 107 may only be transferred together with the underlying business..

 

(4) A non-exclusive license under Article 138 of the Patent Law, Article 53 of the Utility Model Law, or Article 70 of the Design Law shall be transferred together with the patent right, utility model right, or design right concerned and shall be extinguished at the same time as the patent, utility model or design right concerned is extinguished.

 

(5) A non-exclusive license, other than those described in paragraphs (3) and (4), may not be transferred without the consent of the patentee (or the patentee and the exclusive licensee in the case of a non-exclusive license on an exclusive license), unless the transfer is made together with the underlying business or through inheritance or other general succession.

 

(6) A pledge may not be established on a non-exclusive license, other than those under paragraphs (3) and (4), without the consent of the patentee (or the patentee and the exclusive licensee in case of a non-exclusive license on an exclusive license).

 

(7) The provisions of Article 99(2) and (3) shall apply mutatis mutandis to the non-exclusive license.

 

 

Article 103 Non-exclusive License by Prior Use

 

Where, at the time of filing of a patent application, a person who has made an invention without having prior knowledge of the contents of an invention described in an existing patent application, or has learned how to make the invention from such a person and has been working the invention commercially or industrially, in the Republic of Korea, in good faith, or has been making preparations therefor, shall have a non-exclusive license on that patent right for the invention under the patent application.  Such license shall be limited to the invention which is being worked, or for which preparations for working have been made, and to the purpose of such working or preparations.

 

 

Article 104 Non-exclusive License Due to Working Prior to

Registration of Request for Invalidation Trial

 

(1) Where a person falling within any of the following subparagraphs has been working an invention, in the Republic of Korea, commercially or industrially, or has been making preparations therefor, prior to the registration of a request for an invalidation trial of the patent or registered utility model concerned, without knowing that his patented invention is subject to invalidation, or has been working a device, in the Republic of Korea, commercially or industrially, or has been making preparations therefor, on the basis of a maintenance decision as prescribed in Article 25(2) of the Utility Model Law or without knowing that his registered utility model is subject to invalidation notwithstanding any due care, such person shall have a non-exclusive license on that patent right or have an non-exclusive license on the exclusive license to a patent right existing at the time when the patent or the utility model registration was invalidated, but such non-exclusive license shall be limited to the invention or device which is being worked or for which preparations for working are being made and to the purpose of such working or the preparations therefor:

() the original patentee, where one of two or more patents granted for the same invention has been invalidated;

() the original owner of a utility model right, where a patented invention and a device registered as a utility model are the same and the utility model registration has been invalidated;

() the original patentee, where his patent has been invalidated and a patent for the same invention has been granted to an entitled person;

() the original owner of a utility model right, where his utility model registration has been invalidated and a patent for the same invention as the device has been granted to an entitled person; or

() in the cases referred to in subparagraphs (i) to (iv), a person who, at the time of registration of the request for an invalidation trial of the invalidated patent right or utility model right, has been granted an exclusive license or a non-exclusive license, or non-exclusive license on the exclusive license and such license has been registered; however, a person falling under Article 118(2) is not required to register the license.

 

(2) A person who has been granted a non-exclusive license in accordance with paragraph (1) shall pay reasonable remuneration to the patentee or exclusive licensee.

 

 

Article 105 Non-exclusive License After Expiration of a Design Right

 

(1) Where a design right under an application which resulted in the granting of a registration, filed prior to or on the filing date of a patent application, conflicts with the patent right and the term of the design right has expired, the owner of such design right shall, to the extent of such design right, have a non-exclusive license on the patent right or the exclusive license existing at the time when the design right expired.

 

(2) Where a design right under an application which resulted in the grant of a registration, filed prior to or on the filing date of a patent application, conflicts with the patent right and the term of the design right has expired, a person who at the time of expiration, has an exclusive license on the expired design right or non-exclusive license under Article 118(1) of this Law, as applied under Article 61 of the Design Law, to the design right or the exclusive license shall, to the extent of the expired right, have a non-exclusive license on the patent right concerned or on the exclusive license existing at the time when the design right expired.

 

(3) A person who has been granted a non-exclusive license under paragraph (2) shall pay reasonable remuneration to the patentee or exclusive licensee.

 

 

Article 106 Expropriation of Patent Right

 

(1) If a patented invention is necessary for national defense in time of war, incident or other similar emergency (hereinafter referred to as an "emergency"), the Government may expropriate the patent right, work the patented invention, or require a person other than the Government to work the patented invention.

 

(2) If a patent right is expropriated, rights to the invention other than the patent right shall be extinguished.

 

(3) If the Government expropriates the patent right, or the Government or a person concerned other than the Government works the patented invention under paragraph (1), the Government or that person shall pay reasonable remuneration to the patentee, exclusive licensee or non-exclusive licensee.

 

(4) Matters necessary for the expropriation, working of a patent right as well as payment in compensation therefor shall be prescribed by Presidential Decree.

 

 

Article 107 Adjudication for Grant of Non-exclusive License

 

(1) Where a patented invention falls under any of the following subparagraphs, a person who intends to work the patented invention may request the Commissioner of the Korean Intellectual Property Office to adjudicate (hereinafter referred to as an "adjudication") for the authorization of a non-exclusive license thereon; however, a request for adjudication under the following subparagraphs (i) and (ii) may only be made if consultations with the patentee or exclusive licensee is not possible or no agreement is reached at the consultation:

() where the patented invention has not been worked for more than three consecutive years in the Republic of Korea, except in the case of natural disaster, unavoidable circumstances or other justifiable reasons prescribed by Presidential Decree;

() where the patented invention has not continuously been worked commercially or industrially in the Republic of Korea on a substantial scale during a period of three years or more without justification, or where the domestic demand for the patented invention has not been satisfied to an appropriate extent and under reasonable conditions;

() where the working of the patented invention is necessary for public non-commercial use; or

() where the working of a patented invention is necessary to remedy a practice determined to be anti-competitive after the judicial or administrative process.

 

(2) The provisions of paragraph (1)(i) and (ii) shall not apply unless a period of four years has lapsed from the filing date of the application for to the patented invention.

 

(3) In adjudication for the authorization of a non-exclusive license, the Commissioner shall consider the necessity of each and every claim.

 

(4) In adjudication for the authorization of a non-exclusive license, the Commissioner shall impose such conditions that the use of patented inventions through the non-exclusive license shall be limited predominantly to the supply of the domestic market; however, this provision need not apply where the authorization is ruled based on the request set forth in subparagraph (1)(iv).

 

(5) In adjudication for the authorization of a non-exclusive license set forth in subparagraph (1)(i), the Commissioner may take into account the need to amend anti-competitive practices in determining the amount of remuneration.

 

(6) With respect to semi-conductor technology, the request for adjudication can be made only in the cases set forth in subparagraph (1)(iii) and (1)(iv).

 

 

Article 108 Submission of Response

 

Where a request for adjudication has been made the Commissioner of the Korean Intellectual Property Office shall transmit a copy of the written request to the patentee or exclusive licensee mentioned in the request and to any other persons having any registered right relating to the patent, and shall give them an opportunity to submit a response within the time limit.

 

 

Article 109 Solicitation of Opinion from the Intellectual Property

Rights Dispute Committee

 

Before making an adjudication, the Commissioner of the Korean Intellectual Property Office shall solicit an opinion from the Intellectual Property Rights Dispute Committee established under Article 29 of the Invention Protection Law.

 

 

Article 110 Formality of Adjudication

 

(1) An adjudication shall be made in writing and shall state the reasons therefor.

 

(2) The following matters shall be specified in an adjudication under paragraph (1):

() the scope and duration of the non-exclusive license; and

() the remuneration for the license and the method and time of payment.

 

 

Article 111 Transmittal of Certified Copies of Adjudication

 

(1) Where an adjudication is made, the Commissioner of the Korean Intellectual Property Office shall transmit certified copies of the adjudication to the parties and any other persons having the registered right relating to the patent.

 

(2) When a copy of an adjudication has been transmitted to the parties under paragraph (1), a consultation to the terms as specified in the adjudication shall be deemed to have been held by the parties.

 

 

Article 112 Deposit of Remuneration

 

A party who is obligated to pay a remuneration under Article 110(2)(ii) shall make a deposit thereof under the following circumstances:

 

() where the party entitled to receive the remuneration refuses or is unable to receive it;

() where an action under Article 190(1) has been brought with respect to the remuneration; or

() where the patent right or exclusive license is the subject of a pledge, except where the pledgee has consented.

 

 

Article 113 Lapse of Adjudication

 

Where a person who was granted the adjudication on the authorization fails to pay or deposit the remuneration (or the first installment thereof, if payment is to be made periodically or by installments) under Article 110(2)(ii) by the time such payment is due, the adjudication shall lose its effect.

 

 

Article 114 Cancellation of Adjudication

 

(1) Where a person who was granted the adjudication on the authorization falls under any of the following subparagraphs, the Commissioner of the Korean Intellectual Property Office may cancel the adjudication, ex officio or upon the request by any interested party. However, in case of subparagraph (ii), such action shall protect the non-exclusive license's lawful interests:

() where the working of the patented invention is not within the purpose of the adjudication; and

() where the grounds for the adjudication on the authorization of non-exclusive license disappears and it is deemed that such grounds will not reoccur.

 

(2) The provisions of Articles 108, 109, 110(1) and 111(1) shall apply mutatis mutandis paragraph (1) of the Article.

 

(3) The non-exclusive license shall be extinguished upon cancellation of the ruling under paragraph (1) of this Article.

 

 

Article 115 Restriction on Reason for Objections to Adjudication

 

Where a request for an administrative trial has been filed under Article 3(1) of the Administrative Trial Law or a revocation action has been brought under the Administration Litigation Law as to the adjudication, the remuneration determined in the adjudication shall not be a basis for objection.

 

 

Article 116 Cancellation of Patent Right

 

(1) Where a patented invention has not been continuously worked in the Republic of Korea for a period of two years or more from the date of an adjudication under Article 107(1), the Commissioner of the Korean Intellectual Property Office may cancel the patent right, ex officio, or upon the request of any interested party.

 

(2) The provisions of Articles 108, 109, 110(1) and 111(1) shall apply mutatis mutandis to paragraph (1) of this Article.

 

(3) The patent right shall be extinguished upon cancellation of a patent right under paragraph (1) of this Article.

 

 

Article 117  Deleted

 

 

Article 118 Effects of Registration of Non-exclusive License

 

(1) When a non-exclusive license has been registered, it shall also be effective against any person who subsequently acquires the patent right or an exclusive license.

 

(2) A non-exclusive license granted under Articles 39(1), 81bis(4), 103 to 105, 122, 182 or 183 shall have the same effect as prescribed under paragraph (1) of this Article even if it has not been registered.

 

(3) The transfer, modification, extinguishment or restriction on disposal of a non-exclusive license or the establishment, transfer, modification, extinguishment or restriction on disposal of a pledge relating to a non-exclusive license shall not be effective against a third party unless it is registered.

 

 

Article 119 Restriction on Abandonment of Patent Right, etc.

 

(1) A patentee shall not abandon his patent right without the consent of the exclusive licensee, pledgee, or non-exclusive licensee under Article 39(1), 100(4) or 102(1).

 

(2) An exclusive licensee shall not abandon his exclusive license without the consent of the pledgee or non-exclusive licensee under Article 100(4).

 

(3) A non-exclusive licensee shall not abandon his non-exclusive license without the consent of the pledgee.

 

 

Article 120 Effects of Abandonment

 

The patent right, or license thereon, shall be extinguished as of the time of abandonment of a patent right or of an exclusive or non-exclusive license.

 

 

Article 121 Pledge

 

Where a patent right or an exclusive or non-exclusive license is the subject of a pledge, the pledgee may not work the patented invention except as otherwise provided by contract.

 

 

Article 122 Non-exclusive License Incidental to Transfer of

Patent Right by Exercise of a Pledge Right

 

If a patentee works a patented invention prior to the establishment of a pledge on the patent right, the patentee shall have a non-exclusive license on the patented invention even if the patent right is transferred by an auction; however, in such case, the patentee shall pay reasonable remuneration to the person to whom the patent right is transferred by an auction, etc.

 

 

Article 123 Subrogation of Pledge Right

 

A pledge may be exercised against the remuneration provided for under the Patent Law or against remuneration or goods to be received for the working of the patented invention; however, an attachment order shall be obtained prior to the payment or delivery of the remuneration or goods.

 

 

Article 124 Extinguishment of Patent Right in Absence of Successor

 

A patent right shall be extinguished when no successor exists at the time of succession.

 

 

Article 125 Report on Working of Patent

 

The Commissioner of the Korean Intellectual Property Office may require a patentee, exclusive licensee or non-exclusive licensee to report as to whether the patented invention has been worked or not, the extent of such working, etc.

 

 

Article 125bis The title of execution on amount of compensation and remuneration

 

A final and conclusive ruling by the commissioner of the Korean Intellectual Property Office on the amount of the compensation or remuneration to be paid under the Patent Law shall have the same effect as an enforceable title of execution; the legal writ, which has the force of execution, shall be given by an official of the Korean Intellectual Property Office.

 

 

Article 126 Injunction, etc., Against Infringement

 

(1) A patentee or exclusive licensee may demand a person who is infringing or is likely to infringe on his patent right to discontinue or refrain from such infringement.

 

(2) A patentee or an exclusive licensee acting under paragraph (1) may demand the destruction of the articles by which the act of infringement was committed (including the products obtained by the act of infringement in cases of a process invention for manufacturing the products), the removal of the facilities used for the act of infringement, or other measures necessary to prevent the infringement.

 

 

Article 127 Acts Deemed to be Infringement

 

The following acts shall be deemed to be infringements on a patent right or an exclusive license:

() in the case of an invention of a product, acts of making, assigning, leasing, importing, or offering for assignment or lease articles used exclusively for producing such products; and

() in the case of an invention of process, acts of making, assigning, leasing, importing or offering for assignment or lease articles used exclusively for working such a process.

 

 

Article 128 Presumption, etc., of Amount of Damage

 

(1) Where a patentee or exclusive licensee claims compensation from a person who has intentionally or negligently infringed a patent right or exclusive license for damages caused by the infringer's transfer of infringing articles, the amount of damages may be may be calculated as the number of transferred articles multiplied by the profit per unit of the articles that the patentee or exclusive licensee might have sold in the absence of said infringement.  Provided that, said compensation may not exceed an amount calculated as follows: the estimated profit per unit multiplied by the number of products that the patentee or exclusive licensee could have produced subtracted by the number of articles actually sold.  However, where the patentee or exclusive licensee was unable to sell his or her product for reasons other than infringement, a sum calculated according to the number of articles subject to said circumstances shall be deducted.

 

(2) Where a patentee or exclusive licensee claims compensation for damages from a person who has intentionally or negligently infringed a patent right or exclusive license, the profits gained by the infringer as a result of the infringement shall be presumed to be the amount of damage suffered by the patentee or exclusive licensee.

 

(3) Where a patentee or exclusive licensee claims compensation for damages from a person who has intentionally or negligently infringed a patent right or exclusive license, the pecuniary amount which he would normally be entitled to receive for the working of the patented invention may be claimed as the amount of damage suffered by the patentee.

 

(4) Notwithstanding paragraph (3), where the amount of actual damages exceeds the amount referred to in paragraph (3), the amount in excess may also be claimed as compensation for damage.  In such a case, the court may take into consideration the fact that there has been neither willfulness nor gross negligence on the part of the person who has infringed the patent right or the exclusive license when awarding damages.

 

(5) In litigation relating to a patent right or exclusive license, where the court recognizes that the nature of the facts of the case make it difficult to provide evidence proving the amount of damage that has occurred, notwithstanding paragraphs (1) to (4), the court may determine a reasonable amount on the basis of an examination of the evidence and on a review of all the arguments.

 

 

Article 129 Presumption of the Patented Process to Manufacture

 

Where one product is identical to another product manufactured by a patented process, the former shall be presumed to have been manufactured by the patented process of the latter except where any one of the following subparagraphs applies:

() inventions publicly known or worked in the Republic of Korea prior to the filing of the patent application; or

() inventions described in a publication distributed in the Republic of Korea or in a foreign country or inventions made available to the public through electronic telecommunication lines prescribed by Presidential Decree prior to the filing of the patent application.

 

 

Article 130 Presumption of Negligence

 

A person who has infringed a patent right or exclusive license of another person shall be presumed to have been negligent regarding such act of infringement.

 

 

Article 131 Recovery of Reputation of Patentee, etc.

 

Upon the request of a patentee or exclusive licensee, the court may, in lieu of damages or in addition thereto, order the person who has injured the business reputation of the patentee or exclusive licensee by intentionally or negligently infringing the patent right or exclusive license to take necessary measures to restore the business reputation of the said patentee or exclusive licensee.

 

 

Article 132 Submission of Documents

 

In litigation relating to the infringement of a patent right or exclusive license, the court may, upon the request of a party, order the other party to submit documents necessary for the assessment of damages caused by the infringement. However, this provision shall not apply when the person possessing the documents has justifiable reason for refusing to submit them.

 

 

CHAPTER

TRIAL

 

 

Article 132bis Intellectual Property Tribunal

 

(1) The Intellectual Property Tribunal shall be established under the jurisdiction of the Commissioner of the Korean Intellectual Property Office to be responsible for trials and retrials regarding patents, utility models, designs and trademarks and investigation and research thereof.

 

(2) The Intellectual Property Tribunal shall be composed of the President and trial examiners.

 

(3) Matters necessary for the organization, personnel and operation of the Intellectual Property Tribunal shall be determined by Presidential Decree.

 

 

Article 132ter Trial Against a Decision of Refusal or Revocation of a Patent, etc.

 

Where a person has received a decision of refusal of a patent, revocation of a patent, or a decision of refusal of an application for extension of the term of a patent right under Article 91, such person may request a trial within thirty days from the date of receipt of the certified copy of the decision.

 

 

Article 132quater Deleted

 

 

Article 133 Invalidation Trial of Patent

 

(1) In the following cases, an interested party or an examiner may request a trial to invalidate a patent and for patent containing two or more claims, a request for an invalidation trial may be made for each claim:

() where a patent has been granted contrary to Articles 25, 29, 31, 32, 36(1) to (3), 42(3), (4), or 44;

() where a patent has been granted to a person who is not entitled to obtain the patent under Article 33(1);

() where a patent has been granted in violation of a treaty;

() where, after the grant of a patent, the patentee is no longer capable of enjoying the patent right under Article 25, or the patent no longer complies with a treaty; or

(iv)bis where an application has been amended in violation of Article 47(2)

() where a patent violates the provisions of the proviso of Article 87(2).

 

(2) A trial under paragraph (1) of this Article may be requested even after the extinguishment of a patent right.

 

(3) Where a trial decision invalidating a patent has become final and conclusive, the patent right shall be deemed never to have existed; however, where a patent falls under paragraph (1)(iv) of this Article and a trial decision invalidating the patent has become final and conclusive, the patent right shall be deemed not to have existed at the time when the patent first became subject to the said paragraph.

 

(4) Where a trial under paragraph (1) of this Article has been requested, the presiding trial examiner shall notify the contents of the request to the exclusive licensee of the patent right and any other persons having registered rights relating to such patent.

 

 

Article 133bis Correction of Patent During Invalidation Trial of Patent

 

(1) Under Article 133(1), a defendant may request corrections to the specification or drawing(s) of a patented invention during the course of an invalidation trial for reasons provided under Article 47(3) within the term designated under Article 147(1) or 159(1).

 

(2) When the corrections have been requested under Paragraph(1), the presiding trial examiner shall transmit a copy of the written request to the defendant.

 

(3) The provisions of Article 136(2) to (5), (7) to (11), 139(3) and 140(1), (2), (5) shall apply mutatis mutandis to a request for correction.  In their application, the provision "before issuance of a notification of closure of the trial examination under Article 162(3) (where the trial examination is reopened under Article 162(4), before a subsequent notification of the closure of the trial examination is issued under Article 162(3)" in Article 136(9) shall read "within the designated term where it would be noticed under Article 136(5)"

 

 

Article 134 Invalidation Trial of Registration for Extension of Term of Patent Right

 

(1) In the following cases, any interested party or examiner may request a trial to invalidate the registration of an extension of the term of a patent right:

() where an extension had been registered with respect to the application which did not require any authorization, etc., under the provisions of Article 89 for the purpose of working the patented invention;

() where the authorization under the provisions of Article 89 was not obtained by the patentee or an exclusive licensee thereof or a registered non-exclusive licensee;

() where the term extended by the registration of an extension exceeds the period of time during which the patented invention could not be worked;

() where the registration of an extension has been effected on an application made by a person other than the patentee;

() where the registration of an extension has been effected on an application made in violation of Article 90(3); or

() deleted.

 

(2) The provisions of Article 133(2) and (4) shall apply mutatis mutandis to a request for a trial under paragraph (1) of this Article.

 

(3) Where a trial decision that the registration of extension is to be invalidated has become final and conclusive, the registration of extension of the term shall be deemed to have never existed.  However, where the registration of extension falls under Article subparagraph (1)(iii), an extension of the term exceeding the period during which the patented invention could not be worked shall be deemed to be not effective.

 

 

Article 135 Trial to Confirm the Scope of a Patent Right

 

(1) A patentee or an interested person may request a trial to confirm the scope of a patent right.

 

(2) Where a trial is requested to confirm the scope of a patent right under paragraph(1), the confirmation shall apply to each claim if the patent contains two or more claims.

 

 

Article 136 Trial for Correction

 

(1) A patentee may request a trial to correct the specification or a drawing(s) for reasons provided under Article 47(3).  However, this provision shall not apply where an opposition to the patent or an invalidation trial against the patent is pending before the Korean Intellectual Property Office or the Intellectual Property Tribunal.

 

(2) A correction to the specification or a drawing(s) under Paragraph (1) shall be limited in scope to the subject matter disclosed in the specification or drawing(s) of the patented invention.  However, where a clerical error is corrected under Article 47(3)(ii), it shall be limited to the scope of the subject matter of the specification or drawing(s) originally attached to the application.

 

(3) Where paragraph (1) applies, the claim shall neither be substantially extended nor modified.

 

(4) Where Article 47(3)(i) and (ii) apply under paragraph (1), the matters which are described in the claim after correction shall be regarded as having been patentable at the time of the filing of the patent application.

 

(5) Where a request for a trial for correction under paragraph (1) does not comply with any of the subparagraphs of Article 47(3), extends beyond the scope of paragraph (2), or is in violation of paragraph (3) or (4), the trial examiner shall notify the petitioner and provide reasons for the refusal of the request and give the petitioner an opportunity to submit a response within a designated time limit.

 

(6) A trial for correction under paragraph (1) may be requested even after the patent right has been extinguished, except in cases where the patent has been revoked or invalidated by trial decision.

 

(7) A patentee shall not request a trial for correction under paragraph (1) without the consent of an exclusive licensee, a pledgee or a nonexclusive licensee under Articles 39(1), 100(4) or 102(1).

 

(8) Where a trial decision allowing the specification or drawing(s) of a patented invention to be corrected becomes final and conclusive, the patent application, the laying-open of the decision, and the registration of the patent right shall be deemed to have been made on the basis of such corrected specification or drawing(s).

 

(9) A petitioner may amend the corrected specification or drawing attached to the written request prescribed in Article 140(5) only before issuance of a notification of closure of the trial examination under Article 162(3) (where the trial examination is reopened under Article 162(4)  before a subsequent notification of the closure of the trial examination is issued under Article 162(3).

 

(10) Where a decision has been rendered to allow correction of the specification or drawing(s) of the patented invention, the President of Korean Intellectual Property Tribunal shall notify the Commissioner of Korean Intellectual Property Office of the corrected subject matter.

 

(11) In cases where a notification is issued under paragraph (10), the Commissioner of Korean Intellectual Property Office shall publish it in Patent Gazette.

 

 

Article 137 Trial for Invalidation of Correction

 

(1) An interested party or an examiner may request a trial for an invalidation of a correction, where the correction of the specification or drawing of a patented invention under Article 77(1), 133bis(1) or 136(1) has been made in violation of any of the following:

( i ) any subparagraph of Article 47(3); or

(ii) Article 136(2) to (4) (including the case of application in Article 77(3) or 133bis (3)).

 

(2) The provisions of Article 133(2) and (4) shall apply mutatis mutandis to a request for a trial under paragraph (1).

 

(3) A defendant in an invalidation trial under paragraph (1) may request corrections to the specification or drawing(s) of a patented invention for reasons provided under any subparagraph of Article 47(3) within the term designated under Article 159(1).

 

(4) The provisions of Article 133bis (2) and (3) shall apply mutatis mutandis to a request for correction under paragraph (3).  In such cases, "Article 133(1)" in Article 133bis (2) shall read "Article 137 (1)."

 

(5) Where a trial decision to correct the specification or a drawing(s) is to be invalidated under paragraph (1) has become final and conclusive, the correction shall be deemed never to have been made.

 

 

Article 138 Trial for Granting Non-exclusive License

 

(1) If a patentee, or exclusive or non-exclusive licensee, desires to obtain permission to exercise the right provided for under Article 98, and if the other party concerned refuses to grant the permission without justifiable reasons or it is not possible to obtain such permission, the said patentee or exclusive or non-exclusive licensee may request a trial for the grant of a non-exclusive license having the scope necessary to work the patented invention.

 

(2) Where the request under paragraph (1) has been made, a non-exclusive license shall be granted only where the patented invention of the later application constitutes a important technical advance having substantial economical value in comparison with the other party's patented invention or registered utility model for which an application was filed prior to the filing date of the later application.

 

(3) If a person who has granted a non-exclusive license under paragraph (1) needs to work the patented invention of the person who has been granted such non-exclusive license, and if the latter refuses to give permission or if it is impossible to obtain such permission, the former may request a trial for the grant of a non-exclusive license having the scope that necessary to work his patented invention.

 

(4) A non-exclusive licensee, who was granted a non-exclusive license under paragraph (1) or (3) of this Article, shall pay remuneration to the patentee, owner of the utility model right, owner of the design right or exclusive licensee thereof, provided that if payment is not possible for reasons beyond the control of the said non-exclusive licensee, the remuneration shall be deposited.

 

(5) A non-exclusive licensee under paragraph (4) shall not work the patented invention, registered utility model or registered design, or similar design with out payment of remuneration or deposit thereof.

 

 

Article 139 Request for Joint Trial, etc.

 

(1) Where two or more persons request an invalidation trial under Article 133(1), 134(1) or 137(1) or a trial to confirm the scope of a patent right under Article 135(1), the request may be made jointly.

 

(2) Where a trial is requested against any of the joint owners of a patent right, all the joint owners shall be made defendants.

 

(3) Where joint owners of a patent right or of a right to obtain a patent request a trial concerning the right under joint ownership, the request shall be made jointly by all the joint owners.

 

(4) Where there are ground for the suspension of trial proceedings which apply to one of the requesters under paragraph (1) or (3) or one of the defendants under paragraph (2), the suspension shall be effective against all of them.

 

 

Article 140 Formal Requirements of Request for Trial

 

(1) A person who desires to request a trial shall submit a written request to the President of the Intellectual Property Tribunal, stating the following:

() names and domiciles of the parties (if a legal entity, the title and location of place of business);

()bis the name and domicile, or location of place of business, of the agent, if designated (the name, location of office and designated attorney’s name, if the agent is a patent corporation);

() identification of the trial case; and

() purpose of the request and the grounds therefor.

 

(2) No amendment of a request for trial submitted under paragraph (1) may change the intent or purpose thereof; however, this provision shall not apply with respect to the basis for the request under paragraph (1)(iii).

 

(3) When a trial is requested to confirm the scope of a patent right under Article 135(1), the explanation and the necessary drawings which can be compared with the patented invention  shall be attached to the written request.

 

(4) A written request for a trial under Article 138(1) shall, in addition to the particulars referred to in paragraph (1), state:

() the number and title of his patent which is required to be worked;

() the number, title and date of the other party's patent, registered utility model or registered design to be worked; and

() the scope, duration and remuneration for the non-exclusive license for a patented invention, a registered utility model or a design.

 

(5) When a trial for amendment under Article 136(1) is requested, the amended specification or drawings shall be attached to the written request for trial.

 

 

Article 140bis Formal Requirements of Request for Trial on Decision of Refusal of Patent or Revocation of Patent, etc.

 

(1) A person who desires to request a trial against a decision of refusal or revocation of a patent under Article 132ter shall, notwithstanding the provision of Article 140 (1), submit a written request to the President of the Intellectual Property Tribunal and specify:

() name and domicile of the petitioner (if the petitioner is a legal entity, the title and location of the place of business);

()bis the name and domicile, or location of place of business, of the agent, if designated (the name, location of office and designated attorney’s name, if the agent is a patent corporation);

() filing date and file number of the application (in the case of dissatisfaction with a decision of revocation of patent, the registration date and number of the patent);

() title of the invention;

() date of the decision;

() identification of the trial case; and

() purpose of the request and the grounds therefor.

However, in the case of Article 173, the grounds of the request among subparagraph (vi)

may not be specified

 

(2) Where a request for a trial is made against a decision of revocation of patent under Article 132ter, the President of the Intellectual Property Tribunal shall notify the opponent regarding the purpose of the request.

 

(3) If it has been notified under Article 175(2) that the request not specified subparagraph (vi) according to the proviso of paragraph (1), the President of Korean intellectual Property Tribunal shall designate a period within which he shall amend the grounds of the request.

 

 

Article 141 Rejection of Request for Trial

 

(1) The presiding trial examiner shall order an amended submission within a specified time limit where any of the following subparagraphs apply.

() where a request for a trial does not comply with Articles 140(1) and (3) to (5) or 140bis(1);    

() where a procedure relating to a trial falls under any of the following cases:

(a) where the procedure is not in compliance with the provisions of Article 3(1) or 6;

(b) where fees required in accordance with Article 82 have not been paid; or

(c) where the procedure is not in compliance with the formalities specified in the Patent Law or Presidential Decree thereof.

 

(2) Where a person who has been ordered to make an amended submission under paragraph (1) fails to do so within the specified time limit, the presiding trial examiner shall reject the request for trial by decision.

 

(3) A decision to reject a request for a trial under paragraph (2) shall be in writing and shall state the reasons therefor.

 

 

Article 142 Rejection of Request for  

Trial Containing Incurable Defects 

 

If a request for a trial contains unlawful defects which cannot be corrected by amendment, such request may be rejected by a ruling without giving the defendant an opportunity to submit a written reply. 

 

 

Article 143 Trial Examiners 

 

(1) When a trial is requested, the President of the Intellectual Property Tribunal shall direct the trial examiners to hear the case. 

 

(2) The qualifications of the trial examiners shall be prescribed by Presidential Decree. 

 

(3) Trial examiners shall conduct their official trial duties for the trial in an independent manner. 

 

 

Article 144 Designation of Trial Examiners 

 

(1) For each trial, the President of the Intellectual Property Tribunal shall designate trial examiners constituting a collegial body under Article 146. 

 

(2) When any trial examiner designated in accordance with paragraph (1) is unable to participate in the trial, the President of the Intellectual Property Tribunal shall appoint another trial examiner to take his place. 

 

 

Article 145 Presiding Trial Examiner 

 

(1) The President of the Intellectual Property Tribunal shall select one of the trial examiners designated under Article 144 (1) as the presiding trial examiner. 

 

(2) The presiding trial examiner shall preside over all matters relating to the trial. 

 

 

Article 146 Collegial Body for Trial 

 

(1) A trial shall be conducted by a collegial body of three or five trial examiners. 

 

(2) The collegial body referred to in paragraph (1) shall make its decisions by a majority vote. 

 

(3) The consultations of the trial examiners shall not be open to the public. 

 

 

Article 147 Submission of Response, etc. 

 

(1) When a trial has been requested, the presiding trial examiner shall transmit a copy of the written request to the defendant and shall give him an opportunity to submit a response within a designated time limit. 

 

(2) Upon receipt of the response under paragraph (1), the presiding trial examiner shall transmit a copy of the response to the petitioner. 

 

(3) The presiding trial examiner may directly examine the parties in relation to the trial. 

 

 

Article 148 Exclusion of Trial Examiner

 

A trial examiner shall be precluded from exercising his functions in a trial where:

() the trial examiner or his present or former spouse is a party, intervenor, or opponent;

() the trial examiner is or was a blood relative or a member of the household, of a party, intervenor, or opponent;

() the trial examiner is or was a legal representative of a party, intervenor, or opponent;

() the trial examiner has become a witness or expert witness or was an expert witness;

() the trial examiner is or was an agent of a party, intervenor, or opponent;

() the trial examiner participated as an examiner or trial examiner in a decision to grant a patent, a decision on an opposition or a trial decision relating to the case; or

() the trial examiner has a direct interest.

 

 

Article 149 Request for Exclusion 

 

Where there are grounds for preclusion under Article 148, a party or intervenor may request for the exclusion of a trial examiner. 

 

 

Article 150 Challenge of Trial Examiner 

 

(1) Where there are circumstances wherein the participation of a trial examiner would prejudice the fairness of the proceedings in a trial, such trial examiner may be challenged by a party or intervenor. 

 

(2) After a party or intervenor has made a written or oral statement with regard to the case before a trial examiner, he may not challenge the trial examiner, except where the party or intervenor did not know that there was a ground for challenge or where a ground for challenge arose subsequently. 

 

Article 151 Indication of Grounds for Exclusion or Challenge

 

(1) A person who presents a motion for exclusion or challenge under Articles 149 or 150 shall submit a document to the President of the Intellectual Property Tribunal stating the grounds therefor. However, in an oral trial examination, an oral challenge may be made.

 

(2) The underlying causes for exclusion or challenge shall be substantiated within three days from the date the motion was presented.

 

 

Article 152 Decision on Request for Exclusion or Challenge 

 

(1) A decision on a request for exclusion or challenge shall be made by a trial. 

 

(2) The trial examiner subject to the exclusion or challenge motion shall not participate in the trial of the request but may, however, state his opinion. 

 

(3) A decision made under paragraph (1) shall be in writing and shall state the reasons therefor. 

 

(4) No appeal shall be made against a decision made under paragraph (1) of this Article. 

 

 

Article 153 Suspension of Proceedings 

 

When a motion for exclusion or challenge has been presented, the trial proceedings shall be suspended until a decision thereon has been made; however, this provision shall not apply to matters requiring urgent attention. 

 

 

Article 153bisRefrainment of Trial Examiner

 

Where the provisions of Article 148 or 150 apply to a trial examiner, he may refrain from trial proceedings relating to the case with consent from the President of the Intellectual Property Tribunal.