1. Patent Examination Standards in S. Korea
Chulhee LEE, Korean Patent Attorney
ABA 29th Annual Intellectual Property Law Conference
April 2-4, 2014, Arlington Virginia

2. Speaker Mr Chulhee Lee
Received BS in EE (Seoul National University, 1988) & MS in EE (KAIST, 1990)
Member of Technical Staff (Korea Telecom, )
Korean Patent/Trademark Attorney (KPAA, 1996)
Associate (First Law of Offices of Korea, )
Founder and Senior Partner (Veritas Patent and Law Office, 2001-present)
Speaker, ABA 28th Annual IP Law Conference 2013
Book Author “e-Attorney’s Patent Story,” 2000
Expert in business method patents & standard essential patents

3. Industrial Property Laws
Patent
First-to-file; Publication regardless of examination; Request for substantive examination; Application without claim
Utility Model
Apparatus only; Lower Inventive Step; 10 Year Protection
Design
Typeface, Partial Design, Secret Design, Similar Design; 15 Year Protection(from Registration)
Trademark
Shape(3D), Color, Sound, Hologram, Motion, Scent

4. Statistics 201,339 Patent Applications in 2012
CN 652K; US 542K; JP 342K; EPO 257K
Patent 188K Utility Model 12K
Korean 160K Foreign 41K
Foreign: JP 16K; US 11K;DE 3K; FR 1K; CN 1K
11,848 PCT Applications in 2012
Big 5 Country of Origin: US 51K; JP 43K; CN 18K; DE 18K (Total 194K)

5. Treaties Paris Convention 1980 WIPO 1979
PCT: Signed 1984; International Searching Authority 1997; Korean as a Language of Publication 2007
Budapest Treaty on Deposit of Microorganism 1988
GATT 1967; WTO 1995
KOR-US FTA: Effective
Trademark subject matter
Novelty grace period; Patent cancellation due to non-working; Patent term extension due to prosecution delay

6. Timeline 12 M (2-4 M for Prioritized Examination)
from Request for Examination
30 D from Decision of Refusal (30 D Extendible)
31 M from
US Application
PCT
Application
Response
to OA
Registration
Fee Due
Publication
First Office Action
Request for
Reexamination; Appeal
US Regular
Application
Korean
National Phase
1 Y from
US Application
(regarded as official
Korean filing date)
Immediately after 31 M from US Application or after Request for Examination
2 M
(4 M Extendible)
3 M from
Allowance
(6 M Grace Period)
Request for Substantive Examination
5 years from
- Korean filing date (non-PCT case)
- International filing date (PCT case)

7. Requirements for Patentability
Subject Matter §2①
Industrial Applicability §29①
Novelty §29①, §30
Inventive Step §29②
Unpatentable Invention §32
First-to-File Rule §36
Written Description Requirement
Specification §42③
Claim §42④, §42⑧
Unity of Invention §45

8. Subject Matter
“Invention" means the highly advanced creation of a technical idea using the rules of nature. §2①
Examples
Yes: Computer Software(Smartphone Apps); Business Method; e-Commerce * Computer program itself is allowed as a claim title: “Claim 1. A program for implementing…”
No: Scientific Theories; Mathematical Methods; Public Policy/Public Health

9. Industrial Applicability
Medical Practice
Surgical Operation, Therapy, Diagnostic Method * Veterinarian Practice
Non-commercializable Invention
Pure Experimental, Pure Academical
Non-implementable Invention
Ex) UV-absorbing Film Covering Earth

10. Novelty Publicly Known; or Publicly Worked
Described in Publication; or Publicly available through telecommunication line
Within or outside of Korea
Before the date of application
Novelty Grace
Made public/published by Inventor
Made public/published against Inventor
12 Months grace period
Indicate in the Request; Submit evidence within 30 days

11. Inventive Step
Inventions that could have been easily made by a person skilled in the art in view of prior arts
Factors for determining inventive step
Motivation: Suggestion; Similarity in problem to be solved; Similarity in function, work, operation; Close relation in technical fields
Mere exercise of ordinary creativity: Replacement with equivalents; Workshop modification of a design in applying a specific technology; Partial removal of technical features; Limitation of use
Advantageous effect; Commercial success

12. Office Action Pendency
First office action pendency: 11.7 M average.

13. Office Action
No separate rejections; all rejection grounds should be included
Rejection/Allowance by claims
Allowable claims indicated
Final Rejection
New rejection is based on the amendment
Prior art rejection on newly added claims
Prior art rejection on claim formerly rejected on grounds of new matter or description requirement

14. Response to OA Response(Written Opinion) period 2+4 Months
Prior request required for extension
Argument or Amendment or both
Examiner Interview
Face-to-face at KIPO
Request through the website of KIPO or telephone
No formal Interview Summary
Telephone communication
Allowance rate: 67.2% for Patent 48.0% for UM in 2012

15. Prioritized Examination
Person other than applicant works the applicant’s published invention
Others
Defense Industry; Green Technology(Less emission, Anti-pollution, etc.)
Certified Venture Business’s application
Applicant is or in preparation of working the invention
PPH; PCT-PPH
Prior-art Search Report by Applicant required
Normal Request for Substantive Examination required
24,205 requests in 2012

16. Patent Prosecution Highway
Bilateral PPH: JP 2007, US 2008, DK 2009, CN 2012
PCT-PPH: US 2011, CN 2012
IP5-PPH from
Global PPH from
Number of requests: 1,141 PPH; 181 PCT-PPH, 2012
USA
Japan
EPO
China
UK, Australia, Canada, Portugal, Russia, Spain, Nordic, Finland
Norway, Denmark
IP5 PPH
Global PPH
Germany, Mexico
Singapore, Israel
Sweden, Austria
Hungary
Korea
Bilateral PPH
Green: PPH+PCT-PPH
Black: only PPH

17. Amendment Voluntary: Anytime before issuance of Decision of Grant
After OA: Response period
No New Matter
Further restriction: After Final OA or upon requesting Reexamination
Further limitation, Correction, Clarification, Amendment deleting new matter, etc.
Refusal of Amendment
No appeal allowed against Refusal of Amendment; Arguable only in appeal against Final OA

18. Claim Language The following expressions are generally NOT accepted:
Approximation: consisting essentially of; substantially; generally; mainly; approximately; about; similar; sufficient; appropriate; proper; many; high; most of; almost
If necessary; in particular; for example; such as
Numerical limitation without maximum or minimum: more than 30 wt%; less than 120 g
Dual numerical limitations within a single claim: “ ℃” or “more appropriately ℃”
And/or

19. Divisional Application
Respond to rejection based on unity of invention
Secure allowed claims first and argue against rejected claims later
Secure more number of patents
Time limit: Same as amendment
* NoA issue time is unpredictable: ask the examiner to hold the issuance of Decision of Grant
Scope: No new matter allowed; Usually the same specification and partial set of original claims
Same application date with the original

20. After-Final Procedure
Reexamination (≒RCE, ≠Reexamination of US)
30 Days from receipt of Decision of Rejection
Amendment required; Scope strictly restricted
Same Examiner
Not compatible with Request for Appeal Trial
Same process with regular examination
Rejected in reexamination: only Appeal available
Appeal
Reviewed by 3/5 Trial Examiners in IP Tribunal
IP Tribunal(KIPO)  Patent Court(Appellate)  Supreme Court

21. New Developments Reduce examination period: 13.2  11.7 M
“Preliminary Examination”
Broaden PPH countries: 14  21 Countries
Extend subject matter: Smartphone app, Architecture design  Effective 2014
For the Convenience of Applicant: Idea description, Specification in foreign language  Submitted Congress 2013
Novelty Grace: Request at the time of application  Request later
More opportunity for Divisional Application: Allowed after Decision of Grant  Bill to be Introduced in 2014

22. FAQ_1
What language must I use for patent applications in Korea? Korean.
Does Korea allow divisional applications? Yes.
How soon after filing an application in Korea do I need to file a request for examination? 5 Years.
Can I present third-party observations on a Korean patent application? Yes.
What is the time limit for replying to official actions in Korea? 2 months.
Is there a grace period for paying annual fees in Korea? Yes, 6 months; 3 extra months for patent in work.

23. FAQ_2
Can a lapsed patent be restored in Korea? No, but with exception”.
Can I request a patent-term extension in Korea? Yes, up to 5 years.
How can I challenge a granted patent in Korea? Invalidation Trial.
Where can I search Korean patent information in English?
Where can I get an English machine translation of a Korean patent?

24. FAQ_3
Where can I find legal-status information on Korean patents in English?
Where can I find official information about fees in Korea?
Can I access the documents in the file of a Korean patent application? Yes.
Where can I find information about patent agents in Korea?

25. Thank You!