Trademark

Summary
  1. Legislation
    Trademark in Korea is governed under the Trademark Act 1961
  2. Definition
    A trademark refers to the sensible method of expression used to distinguish one’s good from those of another.
  3. Criteria
    A trademark can be a

      1. Symbol
      2. Character
      3. Diagram
      4. Three dimensional
      5. Any combination thereof

    However, the following are not to be patented

      1. That is identical or similar to a geographical indication
      2. Non-visual trademark (sound and smell)
      3. Usual name of goods
      4. Mark customarily used on the goods
      5. Mark describing the features of goods
      6. Conspicuous geographical name, an abbreviation or a map
      7. Common surname or name of legal entity
      8. Simple and commonplace sign
      9. Other marks without distinctiveness
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Madrid Protocol
    Korea is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six (6) months
    Korea is also a Contracting Party of the Madrid Protocol which allows for a single application, called the ‘international application’ to be filed to the, The International Bureau of the World Intellectual Property organization. This allows for the mark to seek protection in member countries. However, this does not grant an internationally recognize trademark as that does not exist. It merely provides a mean for member countries to apply their respective laws to consider if the mark may be protected.
  5. Rule of Priority
    Korea practices a ‘First-to-file’ system, which recognizes the first person to file the invention which is not necessarily the first inventor
  6. Duration and Renewal
    A trademark once granted is valid for 10 years and can be renewed for an extended 10 years at the end of the term.
Procedure/Timeline
  1. Application
    A complete application with all relevant documents to the Korean Intellectual Property Office
  2. Formality Examination
    Once the application has been submitted, it is examined to ensure that the applicant fulfills all the necessary requirements to obtain a filing date.
    If the examiner finds certain documents missing or invalid, the applicant is to obtain and submit the relevant documents
  3. Substantive Examination
    A patent application will not be examined unless the formal request for examination is made within 5 years from the filing date. Failing to do so will render the application been withdrawn
    The examiner when conducting the substantive examination will consider if the invention meets the requirements of the Patent Act and the criteria to have it patented
    Should the examiner find any objection or issues which arose from the application, a notification of reason for refusal will be issued to the applicant. The applicant then has the responsibility to respond with either a written opinion or make amendments to the application. Failure to respond will result in the application deemed withdrawn.
    If the examiner still deems the opinion or amendments unsatisfactory, the application will be given a decision of refusal. However, should the applicant still want to prosecute for the invention, the applicant can appeal against the decision, further on to the Patent Court and further still to the Supreme Court.
  4. Publication
    If the examiner finds no grounds for rejection, or the applicant has overcome the objections raised, a decision shall be made by the applicant to publish the trademark in the “Trademark Publication Gazette”
  5. Opposition
    After the application has been published, any individual can make an opposition to the registration within 2 months of the publication date.
  6. Registration
    The applicant will receive a decision to grant of protection, the applicant then has to pay the registered fee within the specific period.
    Once the stipulated fee has been paid, the trademark is registered.
Requirements/ Documents
The following information/documents are required for a trademark application in Korea:

  1. Name and address of the applicant
  2. Designated goods and classes
  3. Specimens of the trademark
  4. Priority documents
  5. Power of attorney (if necessary)
Documents
Downloadable Forms
Agents
Fee

Patent

Summary
  1. Legislation
    Patent in Korea is governed under the Patent Act 1961
  2. Definition
    A patent is used to accelerate the development of technology throught protection, encouragement, promotion and utilization of invention.
  3. Criteria
    An invention must consist of the following to be patented:

      1. Novel
      2. Have an Inventive Step
      3. Industrial Applicable

    However, if the invention is feared to have risk to disrupt public order or morality or to injure public health shall not be patentable.

  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    The Republic of Korea is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, Korea is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist.
  5. Rule of Priority
    Korea practices a ‘First-to-file’ system, which recognizes the first person to file the invention which is not necessarily the first inventor
  6. Duration and Renewal
    A patent once granted will be available for 20 years with an annuity to be paid
Procedure/Timeline
  1. Application
    A complete application with all relevant documents to the Korean Intellectual Property Office
  2. Formality Examination
    Once the application has been submitted, it is examined to ensure that the applicant fulfills all the necessary requirements to obtain a filing date.
    If the examiner finds certain documents missing or invalid, the applicant is to obtain and submit the relevant documents
  3. Publication
    An application if has not been published, will be published in the ‘Patent Laid –open Gazette’ after 18 months from filing date
    Once the document has been laid open, any documents related to the application will be made available to the public for inspection
  4. Substantive Examination
    A patent application will not be examined unless the formal request for examination is made within 5 years from the filing date. Failing to do so will render the application been withdrawn
    The examiner when conducting the substantive examination will consider if the invention meets the requirements of the Patent Act and the criteria to have it patented
    Should the examiner find any objection or issues which arose from the application, a notification of reason for refusal will be issued to the applicant. The applicant then has the responsibility to respond with either a written opinion or make amendments to the application. Failure to respond will result in the application deemed withdrawn.
    If the examiner still deems the opinion or amendments unsatisfactory, the application will be given a decision of refusal. However, should the applicant still want to prosecute for the invention, the applicant can appeal against the decision, further on to the Patent Court and further still to the Supreme Court.
  5. Registration
    Once all objections have been addressed, the applicant will receive a notice of decision to grant a patent. Hence the applicant is to pay the stipulated fee within 3 months from the date of receipt of the notice.
  6. Publication
    Once the examiner finds no grounds for rejection, the invention will then be published after the registration fee has been paid. Once the application has been published, any individual can file an opposition against the registration of the patent within 3 months of the publication date.
Requirements/ Documents
The following information/documents must be submitted to obtain a patent in Korea

  1. Name and address of applicant
  2. Name and address of Inventor
  3. Title of invention
  4. Specification
  5. Claims
  6. Drawings
  7. Abstract
  8. Power of attorney (if Necessary)
  9. Priority Documents

PCT National Phase Application
The following information/documents together with the filing fee are required to be submitting a non-provisional utility provisional application:

  1. Receipt from the International Bureau of copies of international application with any amendments to the claims, international search reports, and international preliminary examination reports may be accepted
  2. Payment of national fee
  3. Furnishing of a translation if the international application was filed in any other language other than English
  4. A copy of international application, except where not required by that Office (if necessary)
  5. Amendments, if any, to the claims in the international application. (Unless such amendments have been informed to the Patent and Trademark Office by the International Bureau, where a translation in English is provided should the amendments be made in another language)
  6. An oath or declaration of the inventor
  7. A translation into the English Language of any annexes to the international preliminary report. (If the annexes were made in another language)
Documents
Downloadable Forms
Agents
Fee

Utility Model

Summary
  1. Legislation
    Utility Model in Korea is governed under the Utility Model Act 1961
  2. Definition
    A patent is used to accelerate the development of technology through protection, encouragement, promotion and utilization of invention.
  3. Criteria
    An invention must consist of the following to be patented:

      1. Novel
      2. Have an inventive step
      3. Industrial applicable
  4. Membership
    √ Paris Convention for the Protection of Industrial Property
    √ Patent Cooperation Treaty (PCT)
    The Republic of Korea is party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within twelve (12) months.
    Furthermore, Korea is a party in the Patent Cooperation Treaty which provides a unified procedure in filing patent application which can be filed to the World International Property Organization. The treaty allows for the applicant to extend its rights in patent application to other member country of the treaty. It is important to note that the an application under the PCT does not grant an international patent as that does not exist
  5. Rule of Priority
    Korea practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor
  6. Duration and Renewal
    A utility model once granted will be available for 10 years with an annuity to be paid
Procedure/Timeline
  1. Application
    A complete application with all relevant documents to the Korean Intellectual Property Office
  2. Formality Examination
    Once the application has been submitted, it is examined to ensure that the applicant fulfills all the necessary requirements to obtain a filing date.
    If the examiner finds certain documents missing or invalid, the applicant is to obtain and submit the relevant documents
  3. Publication
    An application if has not been published, will be published in the ‘Patent Laid –open Gazette’ after 18 months from filing date
    Once the document has been laid open, any documents related to the application will be made available to the public for inspection.
  4. Substantive Examination
    A patent application will not be examined unless the formal request for examination is made within 5 years from the filing date. Failing to do so will render the application been withdrawn
    The examiner when conducting the substantive examination will consider if the invention meets the requirements of the Patent Act and the criteria to have it patented
    Should the examiner find any objection or issues which arose from the application, a notification of reason for refusal will be issued to the applicant. The applicant then has the responsibility to respond with either a written opinion or make amendments to the application. Failure to respond will result in the application deemed withdrawn.
    If the examiner still deems the opinion or amendments unsatisfactory, the application will be given a decision of refusal. However, should the applicant still want to prosecute for the invention, the applicant can appeal against the decision, further on to the Patent Court and further still to the Supreme Court.
  5. Registration
    Once all objections have been addressed, the applicant will receive a notice of decision to grant a patent. Hence the applicant is to pay the stipulated fee within 3 months from the date of receipt of the notice.
  6. Publication
    Once the examiner finds no grounds for rejection, the invention will then be published after the registration fee has been paid. Once the application has been published, any individual can file an opposition against the registration of the patent within 3 months of the publication date.
Requirements/ Documents
The following information/documents must be submitted to obtain a patent in Korea

  1. Name and address of applicant
  2. Name and address of Inventor
  3. Title of invention
  4. Specification
  5. Claims
  6. Drawings
  7. Abstract
  8. Power of attorney (if Necessary)
  9. Priority Documents

Industrial Design

Summary
  1. Legislation
    Industrial Design in Korea is governed under Industrial Design Act 1961
  2. Definition
    Design according to the legislation refers to shape , pattern, color or combination of these in an article which produces and aesthetic impression.
  3. Criteria
    A design should be

      1. Novel
      2. Creative
      3. Industrially Applicable
      4. Non- violation of the enlarged concept of novelty

    However, the following design cannot be registered:

      1. Design which is similar or identical to national flags, national emblems, military flags, decorations, order of merit, badges and medals of public Organisations
      2. Designs which infringe public order or morality
      3. Designs which create confusion as to articles connected to another person’s business
      4. Designs which include dispensable shape to secure the function of articles
  4. Membership
    √ Hague Agreement Concerning the International Deposit of Industrial Designs
    √ Paris Convention for the Protection of Industrial Property
    The Republic of Korea is part of Hague Agreement Concerning the International Deposit of Industrial Designs a treaty administered by the World Intellectual Property Organization. This allows for an international registration of Industrial design to exist. Which in this case allows for the applicant to file a single international deposit with WIPO or the national office of a country party to the treaty and it will be protected in as many member countries of the treaty.
    Besides that, the Republic of Korea is also party to the Paris Convention for the Protection of Industrial Property. This provides that an applicant from any State party to the treaty shall be able to use its first filing date as the effective filing date in another State. Provided that the subsequent application is submitted within six(6) months.
  5. Rule of Priority
    Korea practices a ‘First-to-file’ system, which recognizes the first person to file the design which is not necessarily the first inventor.
  6. Duration and Renewal
    An industrial design once granted is valid for 20 years
Procedure/Timeline
There Korean Intellectual Property Office is currently in the process of moving its application process from a Substantive Examination System (SES) to a Non-Substantive Examination System (NSES).

Substantive Examination System (SES)

  1. Application
    An application together with all the necessary documents and also the prescribed fee can be submitted to the Korean Intellectual Property Office.
  2. Formality Examination
    Once the design application is submitted, it will be examined so that the application complies with the formal requirements necessary according to the legislation. The application once approved of the formality examination, will be issues an application number
  3. Publication
    A design application may upon the request if the applicant be published in the ‘Design Laid-open Gazette’. The application once made to be public, can be challenged by any individual pertaining to the registrability of the design
    The application once made available to the public, the applicant may provide a written warning to the alleged infringers to inform them that an application for the design has been filed
  4. Substantive Examination
    The application will be examined according to filing date. An examiner will consider if the application meets the legislative requirements for design to be registered. However, should there be any issues.
    An applicant will be issued a Notification of reasons for refusal to detail the reasons as to why the application was rejected. The applicant then has the responsibility to either make a written opinion or make amendments to the application. Failure to respond within the time frame will render the application abandoned
    After the response provided by the applicant, should the examiner deem the response not sufficient, a decision of refusal will be issued to the applicant. However, the applicant can appeal to the Intellectual Property Trial and Appeal Board, a further appeal can be made to the Patent Court and further still the Supreme Court.
  5. Registration
    Once the examination has concluded and the examiner finds no ground for refusal or the argument or amendment presented by the applicant is sufficient, the applicantion will render a decision to grant registration. The design registration is then published on the official gazette, “Design Registration under the SES Gazette”

Non Substantive Examination System (NSES)

  1. Application
    An application together with all the necessary documents and also the prescribed fee can be submitted to the Korean Intellectual Property Office.
  2. Examination
    An examiner will consider if the design fulfills the legislative requirements. Should the examiner deem that the design has no flaws, a decision to grant registration will be issued.
  3. Publication of Registration
    Once the registration fee is paid, the design application will be published in the ‘Design Registration Gazette under the NSES’
  4. Opposition
    Once the application has been published, any individual may file an opposition against the registration of the design within 3 months from the publication date.
Requirements/ Documents
The following information/documents are required for an industrial design application in the Republic of Korea.

  1. Name and Address of creator
  2. Name and Address of applicant
  3. Date of submission
  4. Article that the object is of the design
  5. Number, country, filing date of the earlier application (if priority is claimed)
  6. Representations of the design
  7. Drawings
Documents
Downloadable Forms
Agents
Fee