Advantages of PCT - Experiences of KIPO - 22 August 2008 Lee, Hyun-Song

1 Table of Contents Introduction of PCT PCT in KIPO KIPO as ISA/IPEA Overview of KIPO

Introduction of PCT

3 Introduction (1) International treaty: PCT –Concluded in June 1970 –Started in June 1978 With 18 contracting states and 500 applications –In June contracting states, more than 100 receiving offices 13 ISA/IPEA 158,400 applications (2007)

4 Introduction (2) PCT contracting states(139, June 2008)

5 Introduction (3) Patent cooperation treaty –A procedure for filing and processing of a single application for a patent which has legal effect in the countries which are treaty members –Simplifying the procedure of obtaining patent protection in many countries, make it more efficient and economical for; users of the patent system (applicants and inventors) Patent offices Decision on granting patent is made by national offices

6 Introduction (4) International phase procedures 1218 PCT filing PCT search & unilateral examination PCT publication 30 Optional PCT preliminary examination 1622

7 Introduction (5) Benefits of PCT for patent offices –Applications coming via PCT are easier to process: PCT formalities requirements already checked international publication may replace national publication international search report available international preliminary report on patentability –Reduces cost of publication –Access to a wealth of technical and scientific information full text of all published international applications (with DVD work station and DVD collections)

8 Introduction (6) Benefits of PCT users(1) –Delays the major costs associated with internationalizing a patent application Initial costs: –Translations of the patent applications (which are highly technical documents) into various national languages –Official fees for payment to national/regional patent offices –Fees for the services of local patent agents/attorneys in the designated states –Major cost occurs within 12 months in case of Paris route

9 Introduction (7) Benefits of PCT users(2) –PCT provides a strong basis for patenting decisions –Provide, together with the time gained, information about the potential patentability of the invention that is received during the PCT process –Patenting decisions: about whether and where to enter the national phase permits resources to be applied to new filings improves patent portfolio management

10 Filing Trend (1) PCT international application filings –158,400 in 2007, 5.9% increase from 2006

11 Filing Trend (2) Top 15 filing countries

12 Filing Trend (3) Top 20 PCT applicants(2007)

PCT in KIPO

14 Brief History History of PCT in Korea –Joined WIPO (March 1979) –Joined Paris Convention (May 1980) –Joined PCT (May 1984, 36th contracting State) –Started receiving PCT applications (August 1984) –KIPO was designated as an ISA/IPEA (Sep. 1997) –KIPO started its work as an ISA/IPEA (Dec. 1999) –Korean was adopted as an PCT publication language (Sep. 2007)

15 KIPO as a RO Role of KIPO as a receiving office –Filing language Korean, English or Japanese –Applicant Either Korean (nationality) or a resident of Korea –Competent ISAs/IPEAs: depending on language Korean: Korea English: Korea, Austria, Australia Japanese: Japan

16 KIPO’s Trend (1) No. of PCT applications is proportional to no. of resident patent applications

17 KIPO’s Trend (2) PCT applications by languages ∼ Korean--- ∼ 2,856 (60.9%) 3,714 (62.7%) 4,558 (64.5%) English61115 ∼ 1,8332,2042,505 Japanese4125 ∼ 11- Total ∼ 4,6905,9197,063

18 KIPO’s Trend (3) PCT applications by applicants –In case of patent applications, individuals cover only 15~ 18 % ∼ Individuals (Inventor) ∼ 1,207 (25.7%) 1,395 (23.6%) Legal entities (Company) 242 ∼ 3,4834,524 Total ∼ 4,6905,919

19 KIPO’s Trend (4) Patent and economic growth

KIPO as an ISA/IPEA

21 Brief History KIPO started to work as an ISA/IPEA on December 1, 1999 –Acceptable languages: Korean, English KIPO expanded it’s ISA/IPEA service to foreign applicants –PH(02), VN(02), IN(03), MN(04), SG(04), NZ(05), US(05), MY(06)

22 Current Status (1) PCT applications with KIPO as an ISA Number of PCT applications 3,1093,8705,8988,924 Rate of increase26.3 %24.5 %52.4 %51.3 %

23 Current Status (2) Request for ISA broken down by RO Rate of increase KR5,1636,071 (68%)17.6% US6902,735 (31%)296.4% Others45118 (1%)162.2% Total5,8988, %

24 Current Status (3) Request for ISA broken down by applicants (2007) 3M Innovative Property Company 636Henkel Corporation 24 Microsoft Corporation616Ceres Inc. 23 Intel Corporation279 University of Florida Research Foundation Inc. 23 Yahoo! Inc.37 Cabot Microelectronics Corporation 20 M-I LLC36Polyone Corporation 20

25 Strength of KIPO (1) It’s Quick! –The portion of international search reports completed within 18 months of the priority date (as of 2007) KIPOEPOUSPTO 96 %73.4 %10.4 %

26 Strength of KIPO (2) It’s Economical! –Search fees and preliminary examination fee KIPOEPOUSPTO Search fees2322,197 1,800 Preliminary examination fees 2322, * 750 * Payable when an international search has been conducted by the USPTO (Unit: USD)

27 Strength of KIPO (3) It’s High Quality –Qualified examiners Out of 660 patent examiners, 315 have Ph.D.s in various technical fields (47.7%) –Many have R&D experience at private companies such as Samsung Electronics, LG Electronics or Hyundai Motors –At KIPO, we designated a group of PCT specialists who examine PCT applications The PCT specialists are drawn from a pool of senior examiners who are all proficient in English with an excellent track-record in examinations PCT specialists: 295 (Oct. 2006) → 417 (Feb. 2008)

28 Strength of KIPO (4) Access to a broad range of prior art –KIPO examiners routinely search prior art in Korean, English and Japanese Prior art searches include Korean and Japanese documents as well as English documents (for US and European patents) The importance of Japanese and Korean prior art has elevated the importance of KIPO’s role as an ISA –The in-house database at KIPO includes 124 million patents granted by the patent offices of the US, Japan, Europe and elsewhere

Overview of KIPO

30 History of KIPO 1908: The Patent Decree was enacted 1949: The Patent Bureau was established under the Ministry of Commerce and Industry 1977: KIPO was established as an independent office under the Ministry of Commerce and Industry 1998: KIPO moved its headquarters from Seoul to Daejeon 2006: KIPO was transformed into an enterprise-style, performed-based government agency

31 Organization of KIPO Director General for Planning and Coordination Industrial Property Policy Bureau Information Policy Bureau Customer Support Bureau Trademark and Design Examination Bureau Machinery, Metals and Construction Examination Bureau Chemistry and Biotechnology Examination Bureau Electric and Electronic Examination Bureau Audit and Inspection Officer Spokesperson International Intellectual Property Training Institute Intellectual Property Tribunal Seoul Branch Office Commissioner Human Resource Development Division / General Service Division Spokesperson Examination Quality Assurance Officer Information and Communications Examination Bureau Commissioner Deputy Commissioner International Intellectual Property Training Institute Seoul Branch Office

32 Personnel Regular staff: 1,511 –Total examiners: for patents and utility models 124 for trademarks and industrial designs –Among the examiners, 346 have PhDs in various technical fields. –Total trial examiners: for patents and utility models 27 for trademarks and industrial designs –Policy and support: 603

33 IP Application ~ Cases (Thousands) Total Trademarks Patents Industrial designs Utility models

34 PCT Application ,147 27,732 17,889 7,066 6,523 5,610 5,470 4,165 3,728 3,646 USJPDEFRKRUKNLCNCHSE (Source : WIPO) PCT Application in 2007

35 Examination Period Patents & utility models Trademarks Industrial Designs Months

36 World-class IP Automation System Development of the KIPOnet system and ubiquitous IP offices –The launch of the KIPOnet system (1999) → enhancement of various features (2003–2005): KIPOnet II –In 2007 we achieved the world’s highest portion of online patent applications namely 97.2%. International use of the KIPOnet system –PCT ROAD (which stands for PCT Receiving Office Administration) is now a global standard used in 18 countries, including Singapore, Israel and Mexico. The online work-at-home system –At-home examinations raise the level of work satisfaction and efficiency, and overcome the problem of insufficient work space.

37 Support for Developing Countries Korea Funds-in-Trust –Purpose Modernization of IP offices in developing countries IP capacity-building in developing countries –Overview The fund was established in 2004 Donated funds: $3.1 million from 2004 to 2008 Overseer: WIPO, KIPO –Beneficiary Developing countries and LDCs

Thank you Lee, Hyun-Song Tel: +82-(42) Fax: +82-(42)