What are the main laws regulating IP in Korea?
The laws regulating IP in Korea include the Patent Act,
Utility Model Act, Design Act, Trade Mark Act, Copyright Act
and Unfair-Competition Prevention Act.
Which international IP agreements is Korea a party to? Are
there any notable omissions?
The international IP agreements or treaties that Korea is a
party to include: Paris Convention, Patent Cooperation Treaty,
WTO, Madrid Protocol, Budapest Treaty, Berne Convention, Hague
Agreement, Strasbourg Agreement, Trade Mark Treaty and UPOV.
Korea is not a member of the Patent Law Treaty, Madrid
Agreement: Indications of Source or Madrid Agreement:
Have there been any recent significant changes to the
Effective as of March 1 2017, the Korean Patent Act (KPA)
has been changed to: shorten the period of deferring the
substantive examination of a patent application from five years
to three years; allow the examiner to reopen the examination of
a patent application even after the issuance of a notice of
allowance; and allow a third party to have a patent invalidated
through an ex parte proceeding.
Further, the KPA has been revised to expand, effective from
June 30 2016, the scope of a court order to submit evidentiary
materials necessary for the proof of patent infringement; and
to allow one party's claim on the contents of a material to be
deemed true if the other party does not comply with the
submission order without a good cause.
Under the revised Korean Trade Mark Act (KTA) which became
effective as of September 1 2016, anybody can bring a non-use
cancellation action and the effect of a cancellation decision
is retroactive to the date of instituting the cancellation
action. Further, protection for trade marks eligible under
Article 6 septies of the Paris Convention against an
unauthorised filing has become strengthened.
Are there any other IP rights that are available in Korea?
And what do international rights owners need to know about
In addition to patents and trade marks, utility models,
designs, plant varieties, computer programs, copyrights, trade
secrets and semiconductor integrated circuit layout designs can
be protected under each relevant law in Korea. Salient features
of the utility models and designs, inter alia, are as
An invention relating to a shape or structure of an article
or a combination of articles may be protected as a registered
utility model. The protection term is 10 years from the filing
date. Under the old utility model system, a utility model was
registered without any substantive examination to alleviate the
burden of examination and to encourage the development and
working of the so-called petty inventions. However, since the
average waiting period of substantive examination of a patent
application was reduced to less than one year, allowing the
registration of a utility model without substantive examination
became less advantageous.
In addition, the lack of substantive examination was likely
to produce unstable rights as well as wasteful disputes to
nullify such rights. Accordingly, the Korean Utility Model Act
(KUMA) has abolished the registration with no substantive
examination, and revived the substantive examination
A design right is protected in Korea as an independent IP
regime rather than as a type of patent. With respect to certain
pre-designated articles such as clothing, fashion accessories,
textiles or stationery goods, design protection is allowed
after conducting a partial examination only. In conducting a
partial examination, novelty and creativity on the basis of
prior art is not reviewed. Upon filing, applicants are entitled
to enjoy a six-month grace period of being exempted from loss
of novelty. The term of protection is 20 years from the filing
A graphical user interface (GUI) can be registered as a
design in Korea, provided that the GUI is depicted in an
article and the title is not identified as a GUI per
se. Other notable systems of design protection in Korea
include protection of partial design and related design system.
It is possible to claim only a certain part of an article by
depicting the claimed portion in solid lines and leaving the
unclaimed portion in broken lines. A design that is similar
only to the same applicant's prior design (basic design) can be
registered only as a "related design" of the basic design. A
related design has to be filed within one year from the filing
date of its basic design and the term of protection is limited
to the life of the basic design. However, a related design is
recognised of its own independent scope of right and,
therefore, is not affected by the invalidation or abandonment
of the basic design.
What is the body responsible for granting IP rights and how
is it structured?
It is the Korean Intellectual Property Office (KIPO) that
administers the examination, registration and maintenance of
patents, utility models, trade marks and designs. The KIPO has
several bureaus for conducting or supporting the examination of
such IP applications, and the total number of examiners in the
KIPO is around 1,000.
Appeals against final rejection of patent applications
issued by the examiner may be brought only before the Board of
Trials (BOT) established within the KIPO. Each case is heard by
a panel of three or five trial examiners. There are 11
divisions in the BOT, and each division has seven to 12 trial
Are there inter partes or ex parte
proceedings either pre- or post-grant for patents? If so, how
do these work?
Since March 1 2017, the KPA provides both post-grant patent
revocation (ex parte proceeding) and invalidation
trial (inter partes proceeding) to challenge a
For a patent registered on or after March 1 2017, anyone may
file a petition seeking for cancellation of a patent claim(s)
within six months from the date of patent publication. The
grounds for such petition are limited to (i) lack of
novelty/inventiveness only, based on printed publications that
have not been cited by the examiner during the prosecution of
the patent; and (ii) violation of the first-to-file rule.
The ex parte procedure for patent cancellation is
conducted through written arguments only. Before the BOT
renders a decision to revoke the challenged claim(s), the
patentee shall be notified of the reason(s) for revocation and
given an opportunity to submit a response thereto (possibly
together with a correction or amendment to the specification,
claims and/or drawings) within a designated period.
The final decision rendered by the BOT to cancel any of the
challenged claims may be appealed to the Patent Court, and then
to the Supreme Court, while an appeal against the final
decision to maintain the challenged claims is not allowed.
Patent invalidation trial
Effective as of March 1 2017, only an interested party may
initiate a patent invalidation trial anytime during or even
after the life term of a patent, while the old KPA allowed any
person, even anonymously, to request a trial to invalidate a
patent as long as the request is made within three months from
the issuance of the patent.
The grounds for nullification are broader than those for
patent revocation, including most of the reasons for rejecting
a patent application except for violation of the unity of
invention requirement. In response to an invalidation petition,
the patentee may file a request for correction of the
specification/claims within the designated time period for
submitting an answer to the petition.
Are there inter partes or ex parte
proceedings either pre- or post-grant for trade marks? If so,
how do they work?
Trade mark opposition (pre-grant inter partes
When a trade mark application is published, anyone can file
an opposition seeking rejection of the application within two
months from the date of publication. The grounds for such
opposition are same as those for rejecting a trade mark
application in examination. The opposer cannot appeal against
the decision to dismiss the opposition but may later file an
invalidation action with the BOT after the opposed trade mark
has finally matured to registration.
Trade mark invalidation trial (post-grant inter
Only an interested party may lodge a trade mark invalidation
trial with the BOT. The grounds for invalidation are broader
than those for rejecting a trade mark application. When
invalidation is sought on the basis of similarity to a prior
filed or registered mark, the invalidation trial should be
filed within five years from the registration date of the mark
against which invalidation is sought.
Trade mark cancellation trial (post-grant inter
Anybody can file a non-use cancellation trial against a
registered trade mark which has not been used for three
consecutive years. The effect of a decision to cancel is
retroactive to the date when the cancellation action was
Which courts have jurisdiction in IP cases in Korea, at
first instance and appeal? How are they structured?
Among the 18 district courts in Korea, first instance
infringement cases involving IP rights (patents, utility
models, trade marks, designs and plant variety rights) can be
brought only to one of the five designated district courts that
has personal jurisdiction over the defendant. Regardless of the
personal jurisdiction, the plaintiff may also
choose to bring their cases before Seoul Central District Court
which has been the most frequently used court for litigating IP
matters in Korea. All the district courts should follow the
same substantive and procedural laws.
The number of judges of a court varies – in the
case of the Seoul Central District Court, the Court's Civil
Division includes 105 divisions each comprising a single judge,
36 panels each comprising three judges and nine appellate
boards each comprising three judges. The court also has a
Criminal Division and a Bankruptcy Division.
For the district court decisions on IP rendered after
January 1 2016, all appeals are exclusively heard by the Patent
Court. An appeal before the Patent Court will be reviewed by a
panel of three appellate court judges. The Patent Court has 17
appellate court judges and 22 technical advisers to assist the
Patent Court judges.
What have been the most significant patent cases in recent
years, and why?
Denial of prior art presumption of background
In an en banc decision rendered on January 19 2017,
the Supreme Court held that an element described in the
preamble of a claim may be presumed to have been publicly known
prior to the filing date only under the circumstances
where the entire disclosures of the specification and the
prosecution history show that the applicant described the
element in the preamble as part of prior art, rather than a
background or conventional technology (Supreme Court Case No
2013 Hu 37).
The Supreme Court also noted that such prior art presumption
can be overcome by a showing of exceptional circumstances, for
example where the applicant mistakenly described a certain
element as prior art although the element was in fact disclosed
in an earlier filed application which has not been laid open or
was kept as a proprietary technology of the applicant as of the
The case is significant in that the Supreme Court departed
from its previous position that a background technology
described in a patent specification should be recognised as
prior art, absent special circumstances.
No indirect infringement if direct infringement occurs
Until 2015, the Korean Supreme Court had never reviewed on
the following question: if the act of direct infringement (for
example, the act of producing the patented product by
using the component which has no other use than producing the
patented product) takes place outside Korea, should the Korean
court still find an indirect infringement for the act of making
or selling such component in Korea?
Through Case No 2014 Da 42110, the Court held, for the first
time, that an act (or a likely act) of direct infringement
must take place in Korea in order for indirect
infringement to be found.
||Hyoun Ja Park is a
partner and patent attorney at FirstLaw P.C., which she
joined in 1997. She received her bachelor’s
and master’s degrees in control and
instrumentation engineering (majoring in robotics and
intelligent systems) from Seoul National University in
1995 and 1997, respectively. Park also got her JD degree
(cum laude) at the Ohio State University, Moritz College
of Law in 2012.
Being admitted to the Korean Patent Bar and the Ohio
State Bar, Hyoun Ja Park has been actively involved not
only in many important prosecution cases but also
high-profile trial/litigation cases on behalf of domestic
and multi-national corporations. Her practice also
encompasses IP due diligence, evaluation, licensing,
portfolio development/management, and other areas
pertinent to intellectual property.
Her area of technical expertise covers various aspects of
electrical engineering including wireless communication,
artificial intelligence, electronic transaction, computer
software and semiconductors.
||Hyun Sil Lee is a Korean
patent attorney and partner at FirstLaw P.C. She
graduated from Seoul National University, college of
pharmacy in 1994 and received a JD degree (cum laude)
from Seattle University School of Law in 2010.
Since joining FirstLaw in 1997, she has gained extensive
experience handling patent prosecution and litigation
cases in the field of pharmaceuticals, chemicals and
biotechnology on behalf of both multinational and
domestic companies. In particular, she is specialised in
patent litigation including patent infringement actions,
invalidation trials and scope confirmation trials and
opinion work in the pharmaceutical and biotechnology
Hyun Sil Lee often gives lectures at conferences
sponsored by the Korea Drug Research Association, the
Korea Biotechnology Industry Organization, etc. She
served the Korea Patent Attorneys Association as a
director, and is now serving as a member of the Central
Pharmaceutical Affairs Council of the Ministry of the
Food and Drug Safety.