COMPARATIVE GUIDE
17 December 2024

Patents Comparative Guide

Patents Comparative Guide for the jurisdiction of South Korea, check out our comparative guides section to compare across multiple countries
South Korea Intellectual Property

1 Legal framework

1.1 What are the sources of patent law in your jurisdiction?

In South Korea, patent law is primarily governed by the Patent Act. Additionally, international agreements such as the Paris Convention and the Patent Cooperation Treaty influence patent law in the country. Furthermore, rules and guidelines issued by the Korean Intellectual Property Office play a critical role in interpreting and applying the patent laws.

1.2 Who can register a patent?

A patent can be filed by:

  • the inventor; or
  • an individual or entity authorised by the inventor.

Joint inventors can also apply for a patent together.

2 Rights

2.1 What rights are obtained when a patent is registered?

Once a patent is registered, the patent holder gains the exclusive right to use, produce, sell or license the patented invention. The patent holder can prevent others from commercially using the invention without permission.

2.2 How can a patent owner enforce its rights?

A patent holder can enforce its rights by filing a civil lawsuit to stop infringement and claim damages. Additionally, patent holders can pursue criminal action if the infringement is wilful. By registering the patent with Customs, the patent holder can also block the import of infringing products.

2.3 For how long are patents enforceable?

In South Korea, a patent is enforceable for 20 years from the filing date. However, the patent holder must pay annual maintenance fees to maintain the validity of the patent. If the fees are not paid, the patent may expire before the 20-year period ends.

3 Obtaining a patent

3.1 Which governing body controls the registration procedure?

In South Korea, the Korean Intellectual Property Office (KIPO) is the governing body responsible for managing the patent registration process.

3.2 What is the cost of registration?

  • Filing fee (online): The basic filing fee is KRW 46,000 for electronic submissions.
  • Examination request fee: The basic examination request fee is KRW 166,000, with an additional KRW 51,000 for each claim beyond the first.
  • Registration fee: The registration fee for the first three years is KRW 13,000 (basic) plus KRW 12,000 for each additional claim.

3.3 What are the grounds to reject a patent application?

A patent application may be rejected for the following reasons:

  • The invention lacks novelty or inventive step;
  • The invention is not industrially applicable;
  • The invention violates public order or morality; or
  • The specification is unclear or insufficient to describe the invention.

3.4 What programmes or initiatives are available to accelerate or fast track examination of patent applications?

South Korea offers a priority examination programme for urgent patent applications. Additionally, the Patent Prosecution Highway allows applicants to request accelerated examination based on a favourable examination outcome in another participating country, such as those under the Patent Cooperation Treaty.

3.5 Are there any types of claims or claiming formats that are not permissible in your jurisdiction (eg, medical method claims)?

In South Korea, claims directed at medical methods (eg, surgical methods on the human body) are not patentable. However, inventions related to medical devices or pharmaceuticals are eligible for patent protection.

3.6 Are any procedural or legal mechanisms available to extend patent term (eg, adjustments for patent office delays, pharmaceutical patent term extension or supplementary protection certificates)?

Yes, South Korea has mechanisms to extend the patent term:

  • Patent term extension for pharmaceuticals and pesticides: Patents related to pharmaceuticals or agricultural chemicals can be extended to compensate for delays in regulatory approval or testing:
    • Eligibility: Patents for inventions that require government approval before commercial use (eg, pharmaceuticals, pesticides).
    • Application: Patent holders must apply for an extension within three months of receiving government approval. The extension corresponds to the length of the regulatory approval process and can be up to five years.
  • Patent term adjustment: If there is an excessive delay in the patent examination process by KIPO, the patent holder can request a term adjustment to account for the delay.

3.7 What subject matter is patent eligible?

In South Korea, an invention must meet the following criteria to be patentable:

  • Novelty: The invention must be new.
  • Inventive step: It must involve an inventive step that is not obvious.
  • Industrial applicability: It must be capable of being used in an industry.
    However, natural laws, mathematical methods and mental activities cannot be patented.

3.8 If the patent office does not grant a patent, is an appeal available and to whom?

If a patent application is rejected, the applicant may file an appeal with the Intellectual Property Trial and Appeal Board (IPTAB) under the KIPO. If the applicant disagrees with the decision of the IPTAB, it can appeal to the Patent Court.

4 Validity/post-grant review and/or opposition procedures

4.1 Where can the validity of an issued patent be challenged?

In South Korea, the validity of an issued patent can be challenged through the following procedures:

  • Patent cancellation request: A third party can request the cancellation of a patent within six months of the patent registration publication date. The Intellectual Property Trial and Appeal Board (IPTAB) reviews the patent and if deficiencies are found, it may be revoked.
  • Patent invalidation trial: After the six-month period, the patent's validity can be challenged through an invalidation trial, which can be filed with the IPTAB at any time during the enforceable period of the patent. This procedure examines whether the patent should not have been granted based on issues such as:
    • lack of novelty; or
    • non-compliance with legal standards.
  • Additionally, the patent's validity may be challenged in civil court during infringement litigation where invalidity is raised as a defence.

4.2 How can the validity of an issued patent be challenged?

The validity of a patent can be challenged by:

  • requesting a patent invalidation trial; or
  • asserting invalidity as a defence during patent infringement litigation.

4.3 What are the grounds to invalidate an issued patent?

The grounds for invalidating a patent include:

  • lack of novelty or lack of inventive step;
  • non-compliance with formal procedures (eg, improper or incomplete specifications); or
  • violation of laws or public order.

4.4 What is the evidentiary standard to invalidate an issued patent?

Clear and convincing evidence is required to invalidate a patent. The burden of proof is on the party challenging the patent and evidence may include:

  • documents;
  • witness testimony; and
  • other verifiable information.

4.5 What post-grant review or opposition procedures are available for third parties to challenge the validity of a patent?

In South Korea, third parties can:

  • file a patent invalidation trial at any time; or
  • submit a cancellation request within six months of patent registration.

An invalidity trial can be filed at any point during the enforceable period of the patent.

4.6 Who can oppose a granted patent?

Any interested third party, such as a competitor or a party with vested interests, can challenge the validity of a granted patent by filing for cancellation or invalidation.

4.7 What are the timing requirements for filing an opposition or post-grant review petition?

A cancellation request must be filed within six months of the patent registration. After this period, only a patent invalidation trial can be initiated, which can be filed at any time during the patent's enforceability.

4.8 What are the grounds to file an opposition?

The grounds for filing a cancellation request include the following:

  • The patent lacks novelty or inventive step;
  • The invention is contrary to law; or
  • There were procedural errors in the application or examination process.

4.9 What are the possible outcomes when an opposition is filed?

The outcomes of a cancellation request or invalidation trial include the following:

  • The patent is upheld;
  • The patent is invalidated; or
  • The applicant is requested to amend the patent to rectify certain deficiencies.

4.10 What legal standards will the tribunal apply to resolve the opposition or challenge, and which party bears the burden of proof?

The tribunal will apply legal standards such as:

  • novelty;
  • inventive step; and
  • industrial applicability.

The burden of proof rests with the party filing the opposition or invalidation request.

4.11 Can a post-grant review decision be appealed and what are the grounds to appeal?

Yes, decisions made in post-grant reviews can be appealed to the Patent Court. The grounds for appeal include:

  • procedural errors during the post-grant review process;
  • errors in fact finding, such as misinterpretation of evidence or technical assessments; and
  • errors in legal interpretation, such as incorrect application or misinterpretation of patent law.

5 Patent enforceability

5.1 What makes a patent unenforceable?

Several factors can make a patent unenforceable in South Korea:

  • Expiration of the patent: In South Korea, a patent is valid for 20 years from the filing date. After this period, the patent expires automatically and is no longer enforceable.
  • Failure to pay maintenance fees: Patent holders must pay annual maintenance fees. If these fees are not paid, the patent can be invalidated, making it unenforceable.
  • Patent invalidation: If a patent invalidation trial results in the patent being revoked, it is no longer enforceable.
  • Public disclosure before filing: If the patent holder publicly discloses the invention before filing the patent application:
    • the invention may lose its novelty; and
    • the patent may not be enforceable if the court deems the patent invalid.

5.2 What are the inequitable conduct standards?

Although the term 'inequitable conduct' is not explicitly used in South Korean patent law, the principle of good faith applies. This principle requires that the patent applicant truthfully and accurately provide all relevant information during the application process. If the applicant intentionally withholds important information or includes false details in the specification, the patent can be invalidated through a patent invalidation trial. Additionally, if the specification is insufficient or unclear, the patent may be deemed invalid.

5.3 What duty of candour is required of the patent office?

In South Korean patent law, the 'duty of candour' refers to the applicant's obligation to submit accurate and truthful information throughout the patent application process. The applicant must ensure that the specification:

  • is clear;
  • is detailed; and
  • sufficiently describes the invention so that a person skilled in the relevant field can understand it.

Unlike the United States, South Korea does not impose a direct duty to disclose prior art or relevant information known to the applicant. However, if the applicant knowingly conceals prior art or submits misleading information, the patent can be invalidated. Therefore, while there is no formal requirement to voluntarily disclose prior art, any attempt to deceive the patent office can lead to the patent being nullified.

6 Patent infringement

6.1 What Constitutes Patent Infringement?

Patent infringement occurs when a party makes, uses, sells or imports the patented invention without the patent holder's authorisation. Infringement encompasses any action that violates the exclusive rights granted to the patent holder under the patent.

6.2 Does your jurisdiction apply the doctrine of equivalents?

Yes, South Korea applies the doctrine of equivalents. This allows a finding of patent infringement even where the accused product or process does not exactly match the patented invention but performs substantially the same function in substantially the same way to achieve substantially the same result. Even if the invention appears different on the surface, infringement can still be recognised if the underlying technology or method is essentially the same.

6.3 Can a party be liable if the patent infringement takes place outside the jurisdiction?

Generally, South Korean patent law applies only to infringement occurring within South Korea. However, if infringing products are imported into South Korea, liability can be imposed under Korean patent law. The law does not cover acts of infringement that occur entirely outside the country unless they result in infringements within South Korea.

6.4 What are the standards for wilful infringement?

Wilful infringement occurs when an infringer knowingly and intentionally violates a patent. If the court finds that the infringement was wilful, it may impose higher damages on the infringer. Wilful infringement typically involves situations where the infringer knew about the patent and still chose to infringe it.

6.5 Which parties can bring an infringement action?

The patent holder and an exclusive licensee have the right to bring an action for patent infringement. These parties can file a lawsuit to seek remedies such as:

  • damages; or
  • an injunction to stop the infringing activities.

6.6 How soon after learning of infringing activity must an infringement action be brought?

Under South Korean law, an infringement lawsuit must be filed within the statute of limitations, which is the first of:

  • three years from the date on which the patent holder becomes aware of the infringement; or
  • 10 years from the date on which the infringing act occurred.

6.7 What are the pleading standards to initiate a suit?

To initiate a patent infringement suit, the plaintiff must:

  • clearly assert the patent rights that have been infringed;
  • provide evidence supporting the infringement claim; and
  • demonstrate how the accused activity relates to the specific claims of the patent.

6.8 In which venues may a patent infringement action be brought?

Patent infringement actions in South Korea are initially heard in the district courts. These courts have jurisdiction to handle infringement cases; and cases are often filed where the infringement occurred or where the defendant is based.

6.9 What are the jurisdictional requirements for each venue?

At first instance, patent infringement cases are typically handled by a district court. Appeals are heard by the Patent Court in Daejeon, a specialised court for IP matters. Further appeals can be brought to the Supreme Court, which primarily reviews legal and procedural issues rather than factual issues.

6.10 Who is the fact finder in an infringement action?

In South Korea, judges serve as the fact-finders in patent infringement cases. There is no jury system for civil cases, including patent infringement, meaning that judges determine both legal and factual issues.

6.11 Does the fact finder change based on venue?

No, the fact finder does not change. In all venues – including the district courts, the Patent Court and the Supreme Court – the judge is responsible for evaluating the facts and making legal determinations.

6.12 What are the steps leading up to a trial?

The key steps in a South Korean patent infringement case include the following:

  • Filing a complaint: The patent holder files a lawsuit with the court, alleging infringement.
  • Filing a defence: The defendant responds to the complaint, either disputing the infringement or challenging the validity of the patent.
  • Pre-trial hearings: The court schedules hearings at which both sides present evidence and arguments.
  • Evidence submission and witness testimony: Both sides provide additional evidence, which may include expert testimony.
  • Judgment: The court reviews the evidence and issues a decision on:
    • infringement;
    • potential remedies; and
    • any damages.
  • Appeal: The losing party can appeal the decision to the Patent Court or, in some cases, the Supreme Court.

6.13 What remedies are available for patent infringement?

The remedies for patent infringement in South Korea include the following:

  • Civil remedies:
    • Injunction: The court may order the infringer to stop all infringing activities.
    • Damages: The patent holder may seek damages for economic losses suffered due to the infringement, calculated based on:
      • the actual damages;
      • the infringer's profits; or
      • reasonable royalties.
    • Destruction of infringing products: The court may order the destruction of products and materials involved in the infringement.
  • Criminal remedies: Criminal prosecution can be initiated for wilful infringement, leading to fines or imprisonment.
  • Customs actions: The patent holder can request customs authorities to block the import of infringing products by registering the patent with the Korean Customs Service.

6.14 Is an appeal available and what are the grounds to appeal?

Yes, an appeal can be filed in a patent infringement case. Grounds for appeal include:

  • legal interpretation errors;
  • factual errors; or
  • procedural mistakes in the lower court's decision.

Appeals are heard by the Patent Court and, in some cases, the Supreme Court if the case involves significant legal issues.

7 Discovery

7.1 Is discovery available during litigation?

In South Korea, the litigation process does not include a formal discovery process, as in the United States. Instead, parties can request or submit specific documents and evidence under court orders. The court can mandate the submission of necessary evidence when deemed crucial to the case.

7.2 What kinds of discovery are available?

The types of evidence collection available in South Korea include the following:

  • Document submission orders: The court can order the parties or third parties to submit relevant documents related to the case.
  • Witness examination: The court can gather testimony through the examination of witnesses.
  • Expert opinions: If the case involves technical issues, the court may request an expert opinion to evaluate these matters.
  • On-site inspection and experiments: The court may conduct an on-site inspection or experiment to determine the existence of patent infringement.

7.3 Are there any limitations to the amount of discovery allowed?

In South Korea, the scope of discovery is not as broad as in the United States. The court will only order the submission of evidence directly related to the case. Unnecessary or overly burdensome requests for evidence are limited by the court, ensuring that the discovery process remains efficient and focused on relevant materials.

8 Claim construction

8.1 When during a patent infringement action are claim terms defined by the tribunal?

In South Korea, claim terms are defined in the early stages of a patent infringement trial. The court first interprets the scope of the patent claims to assess whether the alleged infringement has occurred. This interpretation is crucial as it lays the groundwork for the entire case.

8.2 What is the legal standard used to define claim terms?

The legal standard for claim construction in South Korea includes the following:

  • Literal meaning of the claims: The court first seeks to interpret the claim terms based on their literal wording. If the wording is clear, the scope of the claims is determined by the exact language used.
  • Specification and drawings: If the claim wording is ambiguous or unclear, the court refers to the specification and drawings submitted with the patent application to understand the invention's scope and content.
  • Purpose of the invention: The court also considers the inventor's intent and the purpose of the invention to provide clarity on the claims.
  • Doctrine of equivalents: If there is ambiguity, the doctrine of equivalents may apply, allowing the court to extend the interpretation of the claims to cover acts that achieve the same results through equivalent means, even if they differ in form.

8.3 What evidence does the tribunal consider in defining claim terms?

The court may consider the following types of evidence when interpreting claim terms:

  • Patent specifications: The detailed description of the invention and the claims.
  • Drawings: Submitted during the patent application to illustrate the invention's structure and function.
  • Prior art: The court may review prior art to determine how the claimed invention differs from existing technologies.
  • Expert testimony: Technical experts may be called upon to provide insight into the technology and assist the court in understanding complex technical issues.

9 Remedies

9.1 Are injunctions available?

Yes, preliminary injunctions can be requested in South Korean patent infringement cases. This is a temporary legal measure aimed at stopping the infringing activities before the litigation concludes.

9.2 What is the standard to obtain an injunction?

To obtain a preliminary injunction for patent infringement in South Korea, the following criteria must be met:

  • Existence of infringement: The patent holder must provide clear evidence that the patent is being infringed, proving:
    • the patent's validity; and
    • that infringement is ongoing.
  • Irreparable harm: The patent holder must demonstrate that continuing infringement would result in irreparable harm that monetary compensation alone cannot remedy, such as permanent damage to market share or loss of commercial value.
  • Urgency: The court considers whether the matter is sufficiently urgent that waiting for a final decision would cause significant irreversible harm to the patent holder.
  • Security deposit: The court may require the patent holder to provide a security deposit to cover potential losses that the defendant may suffer if the injunction is later found unjustified.

9.3 Are damages available?

Yes, the patent holder can claim damages in a patent infringement lawsuit. The damages are intended to compensate for the losses incurred due to the infringement.

9.4 What types of damages are available?

Three main types of damages can be awarded:

  • Actual losses: Compensation for direct economic losses suffered by the patent holder.
  • Infringer's profits: The infringer may be required to pay the profits gained from the infringement.
  • Reasonable royalties: Compensation based on what the infringer would have paid in royalties to legally use the patented invention.

9.5 What is the standard to obtain certain types of injunctions?

  • Preliminary injunction: The patent holder must demonstrate that the ongoing infringement is:
    • causing irreparable harm; and
    • likely to continue without immediate legal action.
  • Permanent injunction: Once the court has confirmed infringement, the patent holder may request a permanent injunction to prevent future infringements.
  • Destruction orders: The court can also order the destruction of infringing products if the infringement is proven.

9.6 Is it possible to increase or multiply damages due to a party's actions?

Yes, under Korean law, the court can increase the damages by up to three times if it is proven that the infringement was wilful or malicious. This is to deter intentional violations of patent rights.

9.7 Are sanctions available?

Yes, legal sanctions can be imposed – particularly if the infringer acts wilfully or fails to comply with court orders. These sanctions can include fines or other legal penalties.

9.8 What kinds of sanctions are available?

Sanctions may include monetary fines or legal penalties; and the court may also order the enforcement of the injunction through force if necessary.

9.9 Can a party obtain attorneys' fees?

In South Korea, recovery of attorneys' fees is limited. The prevailing party cannot claim the full amount of its legal costs, but the court may award a portion of the attorneys' fees based on statutory limits.

9.10 What is the standard to obtain attorneys' fees?

The key conditions for obtaining attorneys' fees in South Korea are as follows:

  • Winning the case: The party must win the lawsuit to be entitled to recover a portion of attorneys' fees.
  • Statutory limits: The fees awarded are calculated based on statutory guidelines and typically cover only a fraction of the actual legal costs.
  • Wilful infringement: In cases of wilful infringement, the court may be more inclined to award attorneys' fees as part of the damages to the prevailing party.

10 Licensing

10.1 What patent rights can a party obtain through a licence?

Through a patent licence, the licensee (the party using the patent) can acquire certain rights from the patent holder. These rights generally include the following:

  • Right to use: The licensee obtains the right to manufacture, use, sell or import the patented invention.
  • Exclusive licence: The licensee is granted exclusive rights to use the patent in a specific region or industry. In this case, the patent holder is prohibited from granting licences to any other party for the same invention in the agreed-upon area.
  • Non-exclusive licence: The licensee is allowed to use the patented invention, but the patent holder retains the right to grant licences to other third parties as well.

10.2 What limits can a patent owner impose on a licence?

A patent holder can impose several restrictions in a licensing agreement. These limits may vary depending on the agreement's scope and purpose, such as the following:

  • Geographical limits: The licence can be limited to specific regions or countries where the patented invention can be used.
  • Industry or use limits: The patent holder can restrict the use of the patent to particular industries or applications.
  • Duration: The licence may be valid for a specified time period only, after which the licensee's rights expire.
  • Sub-licence limits: The patent holder may restrict the licensee from granting a sub-licence to other third parties.
  • Improvements: The licence agreement may stipulate that any improvements made to the patented invention by the licensee must be shared with or revert to the patent holder.

11 Antitrust

11.1 Are there any limits on patent protection due to antitrust laws?

Yes, under the Monopoly Regulation and Fair Trade Act, certain limitations apply to patent rights to prevent anti-competitive behaviour. The key restrictions are as follows:

  • Prohibition of patent misuse: Patent holders must not abuse their patent rights to establish an unfair monopoly or inhibit fair trade. For example, if a patent holder uses its patent to exclude competitors or demand excessive royalties, this could be deemed a violation of antitrust laws.
  • Cartel prohibition: Patent holders are prohibited from using their patents to fix prices or divide markets among competitors, which would violate antitrust laws.
  • Restrictions on IP licensing: If a licence agreement imposes unfair terms that limit competition in the market:
    • such an agreement can be invalidated; and
    • fines can be imposed by the Korea Fair Trade Commission (KFTC).

The KFTC actively monitors for patent misuse that could hinder competition and imposes penalties when necessary.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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