More than 200,000 patent applications were filed with the Korean Intellectual Property Office (KIPO) during 2013, an 8.3 percent growth rate over 2012, according to KIPO’s annual report (released May 9). This positions the office as the firth largest volume of filings around the world after China, the United States, Europe and Japan. More than 44,600 of those applications came from companies outside of Korea, the greatest number from the Japan (16,297) followed by United States, Germany, France, Switzerland and China, all showing a significant growth rate over 2012.
With the increased interest in filing for patent protection in Korea comes an increased need for foreign patent filers especially to understand the unique challenges associated with filing patents with KIPO. This post finishes up my series with Adam Bigelow, who serves as the director of MultiLing’s Asia region and as a result, is highly knowledgeable about the legal and language issues in this region.
Adam, what are the most significant laws for filing patents in Korea?
Patent Agent: As in Japan, Korea does not allow foreign companies or individuals with addresses outside Korea to file patent applications to KIPO without being represented by a Korean attorney or agent.
Filing Process:As in China and Japan, foreign entities can choose to file via Patent Cooperation Treaty (PCT) or the Paris Convention, or if previously filed in other countries, additionally apply for participation in the Patent Prosecution Highway. If PCT is chosen, a Korean national phase application must be filed within 31 months of the PCT filing date (or 31 months of the earliest priority date, if priority is claimed), and a Korean translation should be submitted upon filing. Although allowed in China and other countries, Korean translations cannot be filed later. Accordingly, the system requires that the specification be translated into Korean efficiently and on time.
- Amendments: Unlike the universal process, where new matter should be avoided at all cost, Korea accepts an addition as a legal amendment. The new matter issue is not raised as long as the added limitation is deemed obvious from the specification teachings or drawing illustrations.
- Grace Period: As long as the invention is filed in Korea within one year from the date of public disclosure, the invention is not deprived of novelty or inventiveness. While certain countries accept the grace period for a PCT application based on the grounds that the basis application was filed within one year from disclosure, Korea does not.
- Requirements for Spec: Unlike in the United States, Korea does not impose a duty of disclosure (i.e., Information Disclosure Statement). However, the recent trend is that a specification lacking prior art patent data in the background section will be rejected and an office action issued for lack of clarity. However, the addition of prior art patent data is not deemed to be a new matter issue.
Substantive Examination: Like Japan, China and Europe, KIPO reviews patentability of an application only upon receipt of a request for substantive examination. The deadline for filing a request for substantive examination is five years from the patent filing date (or five years from a date of PCT filing in the case of a PCT national phase application).
How long are the terms of protection of Korean patents and utility models?
In Korea, for filings after July 1, 1999, patents run for up to 20 years from the date of filing, utility models for up to 10 years.
What are the translation issues specific to Korean?
Like Chinese or Japanese, Korean is a character-based language, and thus the risk of mistranslation is very likely. Different word order from that of English or Chinese also hinders translation technology and causes a higher likelihood of translations errors.
What are some of the unique challenges of filing in Korea?
One of the differences from USA is that Korea does not impose duty of disclosure (i.e., Information Disclosure Statement, IDS). However, recent trend is that a specification lacking prior art patent data (e.g., Patent No.) in the Background part is rejected and Notice of Preliminary Rejection or Decision of Rejection (‘Office Action’) is issued for lack of clarity.
However, addition of prior art patent data is not deemed to be a new matter issue.
So what can companies do to ensure their patents are properly translated into Korea?
While the number of patent applications filed in the Korean language is on the rise, access to and understanding of the Korean language have yet to improve. It is thus very imperative to have a professional Korean translation system in place. This means only working with translation providers that employ in-country native Korean-speaking linguists, scientists, engineers and legal specialists who interact through processes and technologies that increase quality, consistency and on-time delivery of the patent applications.
Any final words?
The rate of invalidation of granted Korean patents is as high as 71 percent (with 568 invalidated in 2013 alone, according to the KIPO report). When a patent holder sues a third party for possible infringements on its patent rights, the usual practice is that the third party responds by petitioning a trial to invalidate the patent. For incoming cases, translation errors or typographical errors made in the Korean translation of the specification are scrutinized during the invalidation trial proceeding, and quite often, the result even decides who wins the invalidation trial.