Transcript Korean Patent System and Recent Changes. Practices in

Korean Patent System and
Recent Changes.
Practices in Chemistry.
Bong Sig SONG
Korean Patent Attorney
Y. S. CHANG & ASSOCIATES
February 9th 2008
IPRs Protected in Korea
Industrial
Property
Patent
Utility Model
Design
Trademark
Intellectual
Property
Copyright
Semiconductor chip
Layout designs
Neo-IPRs
Computer Programs
Data Bases
Trade secrets
Undisclosed Information
Korean Intellectual Property Office(KIPO)
Approx. 800 Examiners
Located in Tae-Jeon city, 200 km south of SEOUL
Electronic Filing System
5 Examination Bureaus (Trademark/Design, Machinery,
Chemistry, Electric/Electronics and Telecommunication)
Intellectual Property Tribunal
Korean appls. Vs Foreign appls.
Korean
Classification
Foreign
Year
Total
Applications Proportion Applications Proportion
patent
applications
2000
2001
2002
2003
2004
2005
2006
72,831
73,714
76,570
90,313
105,250
122,188
125,476
71.4%
70.5%
72.1%
76.1%
75.1%
75.9%
75.5%
29,179
30,898
29,566
28,339
34,865
38,733
40,713
28.6%
29.5%
27.9%
23.9%
24.9%
24.1%
24.5%
102,010
104,612
106,136
118,652
140,115
160,921
166,189
Applications in 2006 by country of origin
Countries
Japan
U.S.A.
Germany
Netherlands
France
India
Utility
Patents models
17,604
10,368
3,284
2,059
1,402
83
Designs
Trademarks
Total
37 1,400 (1,404) 4,277 (7,392) 23,318 (26,437)
96 732 (795) 6,302 (10,345) 17,498 (21,604)
6 144 (163) 849 (1,428) 4,283 (4,881)
72 (73) 272 (421) 2,403 (2,553)
115 (118) 743 (1,242) 2,260 (2,762)
2 (2) 26 (32) 111 (117)
PCT applications
Receiving Office
Year
2000
2001
2002
2003
2004
2005
2006
Designated Office
Application language
Korean English Japanese
703
870
1,485
828
1
1,663
847
1
1,764
1,176
2
2,088
1,475
2
2,856
1,833
1
3,714
2,204
1
Total
1,573
2,314
2,511
2,942
3,565
4,690
5,919
Increasing
rate
#REF!
47.1%
8.5%
17.2%
21.2%
31.6%
26.2%
Translation for national phase
Patents Utility models
15,124
9
16,686
4
17,868
6
16,974
7
21,168
15
24,473
9
26,635
14
Total
15,133
16,690
17,874
16,981
21,183
24,482
26,649
Increasing
rate
#REF!
10.3%
7.1%
-5.0%
24.7%
15.6%
8.9%
Madrid Protocol Applications
Year
2003
2004
2005
2006
Office of Origin
108
141
154
208
Office of the Designated
Contracting Party
1,548
4,874
6,699
8,483
Main Characteristic of Korean Patent
Practice
First to File Rule

Grace Period of 6 months

Late filing of Claims
Publication of an Unexamined Application
Request for Examination
No Opposition
Invalidation Trial
Filing an Application
Applicant

Inventor or his assignee
Required Documents

An application, a specification, drawings, an
abstract, priority documents and POA
Priority Claim


1 year from the earliest filing date
The priority document must be submitted within 1
year and 4 months from the priority date
Publication of Unexamined application
18 months from the filing date
Can be made upon request
Temporary protection is provided to patent applications
that have been laid open
Request for Examination

Should be made within 5 years from the filing date
of the application

Deemed to have been withdrawn in case no request
is made

Substantial examination is commenced within 1
year from the filing date of the request for
examination
Expedited Examination
Request for expedited examination can be
made when:


An invention has been commercially worked by a
person who is not the applicant.
An invention has been commercialized or is about
to be commercialized by the applicant
Substantial examination is commenced and
the first office action will be issued within 2
months
Substantial Examination
Requirement for Registration





Novelty
Inventive Step
Industrial Applicability
Description Requirements
Unity of Invention
First Office Action



Response period : 2 months
Time extensions are available
Argument and/or Amendment
Final Office Action

Grant or Final Rejection
Registration
When an applicant receives a notice of
decision to grant a patent he should pay,
as a registration fee, the first 3 year’s
annuities within 3 months from the date
of receipt of such notice
6 months grace period is available
 Registration
fee doubles
Intellectual Property Tribunal
Handles trials against the final rejection
of an application; invalidation trials;
trials for correction, trials for confirming
the scope of a patent right, etc.
11 Boards, each board having 6 ~ 11
examiners
Experienced Examiners
New Amendments to the Korean Patent Act
(Effective as of July 1, 2007)
Requirements for specification
OLD PATENT ACT
AMENDED PATENT ACT
The detailed description of an
invention must provide the purpose,
technical constitution and effect of
the invention in such a manner that
it may be easily carried out by a
person of ordinary skill in the art to
The detailed description shall
provide the invention in a clear
and detailed manner such that
it may be easily carried out by a
person of ordinary skill in the art
to which the invention pertains
which the invention pertains
Claim drafting requirements
OLD PATENT ACT
AMENDED PATENT ACT
The claims must define only
The claims should describe
the features indispensable
all subject matters that are
to the technical constitution
necessary to define an
of the invention
invention
Adoption of late filing of claims
In the newly created Article 42 (3), at the time of filing
an application the applicant only needs to file a specification
that gives a full description of the invention.
A set of claims for the described invention in the already filed
specification should follow within 18 months of the priority
date or actual filing date
Examiners must examine and explain each
claim in detail
Until now, a Examiner would examine an application as a whole.
The rejection of even 1 claim meant the rejection of the entire a
pplication. Acceptable claims (if any)were not mentioned and de
tailed reasons for the rejections were not provided.
Changed
Examiners must now examine each claim and clearly explain each rejection ground
for a patent or utility model application. As a result, applicants will be better informed
as to the reasoning behind each rejection. In addition, Examiners must inform the
applicant of the acceptable claims in the application, if any
Shortening of designated periods
Any official designated periods set during the course of the
prosecution of a patent or utility model application may now be
shortened.
For example, in case of responding to an Office Action, the
applicant may submit a response at any time during the allowed
two month period and request the patent office to issue a decision
immediately thereafter rather than wait until the two months have
elapsed.
Korean Patent Practice
in the chemical field
Jong Hyeok PARK(Mr.)
Patent Attorney, Pharmacist
Y. S. CHANG & ASSOCIATES
Patentable Subject Matter
Same as those of other countries
However, medical treatment of a human
being is not allowed.
Medical Treatment Method
U.S.


Methods for treating human body
Therapeutic or diagnostic methods
Europe


Diagnostic Method : Patentable
Therapeutic Method : Non-patentable
Korea


Diagnostic Method : Patentable(effective of 2008)
Therapeutic Method :Non-patentable
Patentable Subject Matter
in the field of Biotechnology
Examples of patentable subject matter

Gene, DNA fragments, Vectors, Transformants

Proteins, Recombinant Proteins

Antibodies, Enzymes, Plants, Animal
Stem Cell relating Inventions

No established practices yet

Under discussion
Description Requirement for Claims
Statutory Categories
 Product
Claim
A
compound ~
 A pharmaceutical composition ~
 Process
A
Claim
preparation method of a pharmaceutical
composition comprising the use of ~
SWISS type Claim(Use format)
A use of a compound X for the preparation of
an anticancer agent.

EPO
: Allowable

USA
: Allowable

Korea
: Not allowable
Must be amended to a claim directed to a
pharmaceutical composition

A pharmaceutical composition for treating cancer
comprising X as a main ingredient.
Unclear language
About
Substantially
Essentially
Approximately
Relatively
Comparable
Particularly
Suitably
Preferably
Consisting essentially of
System
And/or
Mainly
At least(without upper
limitation)
Such as
Patent Practice
in the field of Biotechnology
Genes/DNA fragments/Proteins must be specified
by nucleotides or amino acid sequences
Recombinant vectors must be specified by the
inserted genes and the vector
Mutation type(insertion, substitution, deletion) and
position must be specified in claims
Patent Practice
in the field of Biotechnology
Nucleotide sequences must be submitted as a
Sequence Listing file
Microorganisms must be deposited before the
filing of an application
Patent Practice
in the field of Biotechnology
Transition phrase

Consisting of
: allowable

Comprising
: almost impossible

Consisting essentially of: not allowable
An isolated nucleic acid molecule which encodes a cancer
associated antigen, the complementary sequence of which,
hybridizes, under stringent conditions, to the nucleic acid
molecule comprising the nucleotide sequence set forth in
nucleotides 54-593 of SEQ ID NO:1.
Thank you