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

Speaker Mr Chulhee Lee Received BS in EE (Seoul National University, 1988) & MS in EE (KAIST, 1990) Member of Technical Staff (Korea Telecom, 1990-1995) Korean Patent/Trademark Attorney (KPAA, 1996) Associate (First Law of Offices of Korea, 1996-2001) 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 chlee@veritaspatent.com

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

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)

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 2012.3 Trademark subject matter Novelty grace period; Patent cancellation due to non-working; Patent term extension due to prosecution delay

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)

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

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

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

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

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

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

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

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

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

Patent Prosecution Highway Bilateral PPH: JP 2007, US 2008, DK 2009, CN 2012 PCT-PPH: US 2011, CN 2012 IP5-PPH from 2014.1 Global PPH from 2014.1 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

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

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: “120-200℃” or “more appropriately 150-180℃” And/or

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

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

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

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.

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? http://www.kipris.or.kr; http://www.epo.org/searching/asian/korea/search.html Where can I get an English machine translation of a Korean patent? http://www.kipris.or.kr

FAQ_3 Where can I find legal-status information on Korean patents in English? http://www.kipris.or.kr/enghome/main.jsp Where can I find official information about fees in Korea? http://www.kipo.go.kr/kpo/user.tdf?a=user.english.html.HtmlApp&c=92004&catmenu=ek03_04_01 Can I access the documents in the file of a Korean patent application? Yes. Where can I find information about patent agents in Korea? http://www.kpaa.or.kr/kpaa/eng/index.do

Thank You!