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A leader in
the Internet era
The Korean Intellectual Property Office (KIPO) has been
a world leader in shortening the patent processing
period for patent investigations, mainly through
developing an internet based application service system
in 1991. This system - KIPOnet - placed online not only
the entire process of application, but also
investigation, registration, decisions and public
gazette IPR publications.
In 2005 KIPO went further by building a ubiquitous
patent system in which both patent application and
investigation could be made available 24 hours a day,
every day of the year.
This allowed inventors to apply whenever they had the
time. These developments have also been furthered by the
fact that South Koreans are the highest users of
broadband in the world, with both the very young and old
actively involved in broadband usage. By October 2006,
the e-filing rate for patent applications in Korea
reached 97.8 per cent.
Another key step taken by Korea in 2007 was
simplification of its investigative process through
creating an investigation highway with Japan and United
States. This highway is designed to accelerate the
patenting process in both South Korea and Japan, United
States: for applications submitted in both countries,
decisions made in one country will be used to accelerate
the grant process in the other.
KIPO has also built a patent information database that
by 2006 held 15 million bits of Korean patent data,
including four million bits of international patent
information. Combined with KIPOnet this has helped
improve substantively the quality of patent
investigation processes in Korean.
Most recent amendments to the
Korean Patent Act and implications
The dynamic nature of the Korean patent system is
illustrated by the fact that since 1961 the Patent Act
of Korea has been amended over 24 times. Some ground
breaking amendments have been enforced since 3 March
2006, including:
1. In Article 36(4) it states that the application which
had rejected patent registration before disclosure is no
longer seen to exist from the beginning of the
application and therefore does not qualify as prior art
to deny the patentability of other applications.
Technology content which was completely rejected or
waived prior to the disclosure of the application
constituted hitherto this amendment rejection of a
re-application.
2. In Article 30(1) all forms of voluntary disclosure
that had been made 6 months prior to the patent
application will be excluded from any grounds for patent
refusal.
3. In Article 201, (1), the filing period for
international patent application translations into
Korean has been extended from 30 months to 31 months.
Therefore, a Patent Cooperation Treaty (PCT) applicant
who wishes to obtain a patent in South Korea is able to
be incorporated into the national phase more smoothly.
● From 1 October 2006 another noteworthy amendment was
made.
In Article 53 a Convertible Application System was
introduced which allows the conversion of a patent
application to a utility model and vice versa. This new
system replaces the Dual Application System which was a
complicated bureaucratic process that was more likely
than not to limit the rights of the applicant. The
Convertible Application System simplifies and makes more
efficient the current patent application system while
reducing any unnecessary administrative fees.
● From 1 July 2007 three further significant changes
will come into effect:
1. In the newly created Article 42 (3), at the time of
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 need only follow
within 18 months of the priority set date or actual
filing date.
2. In Article 42(3) it will be no longer required to
describe separately the invention in sections in terms
of object, constitution and effect of invention.
3. To improve the quality of the service. KIPO examiners
will be required to state clearly the reason(s) in an
office action as to why and precisely which claims have
been rejected.
Streamlining the Patent Courts
The Korean Patent Court is highly specialised and was
established in 1998 before the establishment of similar
courts in both Japan and China. However, in the case of
patent litigation, interlinked categories cases are
heard by both the Patent Court and the Ordinary Civil
Court. This has led to a Bifurcation of Jurisdiction
over patent litigation which has had some undesirable
outcomes: for example Ordinary Courts may have to
suspend their proceedings to await the results of the
Patent Court in relation to a judgment on a possible
patent infringement. If this were not the case, there
could be two inconsistent decisions from the separate
courts.
The bifurcated system is also costly, as litigants have
to respond to both courts on a single issue. One
proposed solution for such problems is to incorporate
two separated jurisdictions under the uniformed
jurisdiction of the Patent Court that is currently
located in Daejon. The Daejon-based Patent Court hears
more than 80 per cent of patent infringement cases, but
is a two hour car drive from Seoul (capital of South
Korea).
Those unfortunate enough to have to make such a journey
by car, let alone during the rush hour, realise the
great inconvenience of this location. This problem may
be resolved by either splitting the cases between a
number of High Courts in the wider region, or possibly
by extending the Seoul High Court and locating a new
Patent Court there (as Seoul is from where most of the
infringement cases derive).
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