“In Korea, the applicant must file an examination request separately from the patent application, and the request must be filed in Korean. KIPO will not begin its official examination until this request is received.”
As one of the world’s most vibrant markets, the number of patents granted in South Korea by the Korean Industrial Property Office (KIPO) has been steadily rising. In just a single year, 2018, patent filings increased by nearly 5% over the previous year – and 3.6% of these (47,410 applications) were filed by international claimants.
As with any country, South Korea has its own intellectual property standards and requirements. Here’s what you need to know to extend protection of your IP to South Korea.
Patentability in South Korea
Patents may be granted in South Korea for devices, methods, processes, and material inventions. Software is a bit more complicated. When a program is stored in a physical medium (e.g. CD-ROM, disc, etc.) and operates by using the hardware, a patent may be granted for the method of the functioning of the hardware and the physical medium which stores the program. A downloadable app, on the other hand, would not qualify on its own for a patent. You can, however, seek copyright protection for software under Korea’s Copyright Act.
KIPO will reject patents for inventions that cover laws of nature or natural phenomena, or inventions that are contrary to laws of nature. Likewise, patents won’t be awarded for personal skills that can be developed with practice, new presentations of existing information, aesthetic creations, or inventions that conflict with public order, morality, or public health.
Available Filing Methods
Since 1984, South Korea has been a member of the Patent Cooperation Treaty (PCT). This treaty allows you to file an initial priority application in one country and then follow up with a national-phase filing in any of the other 153 PCT member states, so long as you meet the 30 or 31-month deadline from the date of your priority application. The deadline for entering the national phase in South Korea is 31 months. Participation in the PCT system makes the most sense when you’re seeking protection in many different countries.
If your needs are limited to just one or two countries, you can file in each jurisdiction separately according to the Paris Convention. It’s important to note, however, that this method requires you to file in South Korea no later than 12 months after your priority application (compared to the 31 months you have with the PCT filing method).
Either way, filing in South Korea requires local representation, so plan on hiring a registered South Korean patent attorney or agent. One perk of having a local representative is that they can help facilitate timely communication with KIPO, which is important given the two-month time limit in South Korea for responding to official actions or requests.
Whether you’re filing for a Korean patent under the PCT framework or the Paris Convention, you are allowed to submit your initial application in English. After that, however, you’ll need to engage a patent translation service to submit a Korean translation. Translations are due within a set time limit from the priority date:
- If you’re filing a PCT application, you must submit a Korean translation within 31 months from the earliest priority date. (Note: It is possible to request a one-month extension, if necessary.)
- If you’re using the Paris Convention route, you must submit a Korean translation within 14 months of your priority filing – no exceptions.
How Long Does It Take?
Getting a patent granted in South Korea is an extended process that can take up to one and half or two years after filing an examination request. Much of that time is spent reviewing the application’s claims – KIPO performs a thorough, formal and substantive examination. Once granted, a South Korean patent lasts 20 years from the filing date of the application.
It’s important to note that, in Korea, the applicant must file an examination request separately from the patent application, and the request must be filed in Korean. KIPO will not begin its official examination until this request is received. You have three years from the date of filing a patent application in Korea (if filed on or after March 1, 2017) to submit an examination request to KIPO.
As an alternative, utility models are also available. These so-called “small patents” last for 10 years and many applicants rely on them for less fundamentally inventive claims. Aside from the shorter protection period, utility models are treated similarly to patents in terms of exercising IP rights and they can be even more resistant to invalidation efforts than patents. Note: Process inventions and substance inventions are not covered by utility models. Such inventions can only be protected with a patent.
How Much Will It Cost?
The fee for a patent in Korea depends on its complexity, the number of KIPO office actions required, and whether there is any dispute involved. In all cases, a yearly fee should be expected.
The initial payment for the first three years is due upon granting of the patent, followed by yearly payments after that. In total, fees can range from the Korean won equivalent of a few thousand U.S. dollars to several thousand U.S. dollars.
Benefits of Filing in South Korea
South Korea is one of the world’s leading economies and a tech and innovation powerhouse, so we expect international patent filing to continue to increase in this key jurisdiction. While filing and maintaining a patent in South Korea is not inexpensive, the ROI is substantial, and Korea is considered one of the top 10 easiest jurisdictions for doing business. Whether you are filing via the PCT or Paris Convention route, it makes sense to include South Korea in any global patent filing strategy.
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