Firstlaw P.C Q&A
1. What are the main laws regulating IP in Korea?
The laws regulating IP in Korea include Patent Act, Utility Model Act, Design Act, Trademark Act, Copyright Act and Unfair-Competition Prevention Act.
2. 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 Convention, WTO, Madrid Protocol, Budapest Treaty, Berne Convention, Hague Agreement, Strasbourg Agreement, Trade Mark Treaty and UPOV. Korea is not a member of Patent Law Treaty, Madrid Agreement: Indications of Source and Madrid Agreement: Marks.
3. What is the body responsible for granting IP rights and how is it structured?
It is Korean Intellectual Property Office ("KIPO") that administers the examination, registration and maintenance of patents, utility models, trademarks, 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 3 or 5 trial examiners. There are 11 divisions in the BOT, and each division has 7 to 12 trial examiners.
4. 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 patent.
For a patent registered on or after March 1, 2017, anyone may file a petition seeking for cancellation of a patent claim(s) within 6 months from the issuance of the patent. 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 3 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.
5. Are there inter partes or ex parte proceedings either pre- or post-grant for trademarks? If so, how do they work?
Trademark opposition (pre-grant inter partes proceeding)
When a trademark application is published, anyone can file an opposition seeking for rejection of the application within 2 months from the date of publication. The grounds for such opposition are same as those for rejecting a trademark 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 trademark has finally matured to registration.
Trademark invalidation trial (post-grant inter partes proceeding)
Only interested party may lodge a trademark invalidation trial with the BOT. The grounds for invalidation are broader than those for rejecting a trademark application. When invalidation is sought on the basis of similarity to a prior filed or registered mark, the invalidation trial should be filed within 5 years from the registration date of the mark against which invalidation is sought.
Trademark cancellation trial (post-grant inter partes proceeding)
Anybody can file a non-use cancellation trial against a registered trademark which has not been used for 3 consecutive years. The effect of a decision to cancel is retroactive to the date when the cancellation action was instituted.
6. Are there any other IP rights that are available in Korea? And what do international rights owners need to know about these?
In addition to patents and trademarks, utility models, designs, plant varieties, computer programs, copyrights, trade secrets, 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 follows.
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 patent 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 1 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 system.
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 stationary 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 date.
GUI can be registered as a design in Korea, provided that GUI is depicted in an article and the title is not identified as GUI per se. Other notable systems of design protection in Korea include, among others, 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 1 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 recognized of its own independent scope of right and, therefore, is not affected by the invalidation or abandonment of the basic design.
7. 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, trademarks, designs, and plant variety rights) can be brought to only one of the 5 designated District Courts that has personal jurisdiction over the defendant. Regardless of the personal jurisdiction, theplaintiff may also choose to bring their cases before Seoul Central District Court which has been the most frequently used court for litigating IP matters than any other district courts in Korea. All the District Courts should follow the same substantive and procedural laws.
The number of judges of a court varies: in case of Seoul Central District Court, the court's Civil Division includes 105 divisions each comprising a single judge, 36 panels each comprising 3 judges, 9 appellate boards each comprising three judges. The court also has Criminal Division and 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 3 appellate court judges. The Patent Court has 17 appellate court judges and 22 technical advisors for assisting the patent court judges.
8. How common is IP litigation? How many patent/trademark cases in a typical year?
According to the statistics published by the Ministry of Court Administration, during the period of 5 years from 2013 to 2017, 796 patent infringement injunctive actions (inclusive of permanent and preliminary injunction) were newly brought, and 489 trademark infringement injunctive actions were filed. Meanwhile, 1,755 main actions for damages were filed in 2017, for infringement of intellectual property rights including patents, trademarks, design rights and copyrights, etc.