Korea Support Station

Our firm always strives to protect our clients' intellectual property with a forward-thinking and forward-looking mindset.

Based on this corporate spirit, the ``Korea Support Office'' aims to fulfill the role of supporting Korean clients who wish to expand into Japan and Japanese clients who wish to expand into Korea. I'm here.

We are extremely happy to be able to provide high-quality patent services and help our customers succeed in their business. If you need any help with all patent work, including all representation from application to patent acquisition, prior art search, license agreement, patent evaluation, and litigation, please feel free to call the Korea Support Office. please do it.

I promise to work tirelessly with my Korean staff and Japanese staff to provide the best information to our customers.

Korea Support Office Director Jang Yu-hyun

 

Comparison of Japanese and Korean trademark systems

  South Korea Japan
treaty of paris
madpro
nice agreement
international classification
Examination system
Multi-class application
Application publication system ×
Type of trademark

symbols, letters, shapes, sounds, smells, stands
physical shape, hologram/movement or
Color, etc. (used to indicate the origin of the product)
(all displays used)

Characters, figures, symbols, three-dimensional shapes
or color or combination of these, sound
Wait

trademark law
Protection target

Goods, services, collective marks, geographical tables
indication, certification mark, business mark
Goods, services, collective trademarks, regional organizations
Trademarks, defensive marks
Grant of rights
principles of
First-to-file principle First-to-file principle
Applicant is overseas
The current situation in the case of
Land agent's requirements
necessity
必要 必要
power of attorney 必要
*Can be submitted after application
*Comprehensive power of attorney system available
Not required (necessary at trial stage)
Application language Korean (Hangul) 日本語
Duration 10 years from the date of registration
*Can be updated
10 years from the date of registration
*Can be updated
Cancellation of non-use
period
3
*Any number of people can request
3
*Any number of people can request
Opposition period February from the date of public announcement (before registration)
*Anyone can file an objection.
February from the publication date of the gazette (after registration)
*Anyone can file an objection.
Invalidation trial system
*Only requested by interested parties and examiners.
Can be requested

*Only interested parties can request
Partial rejection system
*Effective from February 2023, 2
×
Request for reexamination
system

*Effective from February 2023, 2
×

Others

・Korea has an additional registration system for designated goods, and if you wish to add designated goods or designated services to a registered trademark or trademark for which you are applying, you can apply for additional registration.

 

 

Comparison of Japanese and Korean design systems

  South Korea Japan
treaty of paris
hague agreement
Locarno Agreement
Main registration requirements Novelty
difficulty of creation
Industrial applicability
Novelty
difficulty of creation
Industrial applicability
Novelty judgment
Standards of
Domestic and foreign publications/domestic and foreign publications Domestic and foreign public knowledge/
Domestic and foreign publications
substantive examination
*However, for some items,
Only partial substantive examination will be conducted
(“Application for Partial Design Examination Registration”)
)
Multiple design applications Design registration application: One design, one application
Multiple design registration application: same item
Articles belonging to the same classification shall be filed in one application.
It is possible to apply for up to 100 designs.
One design, one application
Possibility to apply for multiple designs at once
partial design
Loss of novelty
exception to

*Applicable period: 6 months before application
*Not applicable to public notices

*Applicable period: 6 months before application
*Not applicable to public notices
secret design system
*Secret period: Up to 3 years from the registration date

*Secret period: From the registration date
up to 3 years
Related design system
*Application period: Basic design application
Within 1 year from date
*Duration expiration date: Basic design
The expiration date of the design right term of

*Application date: Original design
Within 10 years from the filing date
*Duration expiration date: of the original design
25 years from the filing date
Grant of rights
principles of
First-to-file principle First-to-file principle

The applicant is an overseas resident
local agent in case of
the need for

必要 必要
power of attorney 必要
*Can be submitted after application
*Comprehensive power of attorney system available
Not required (necessary at trial stage)
Application language Korean (Hangul) 日本語
Duration 20 years from the filing date 25 years from the filing date
Objection system Design registration application: ×
“Application for partial design examination registration: 〇
*Objection period: March from the date of public notice
*Anyone can file an objection.”
×
Invalidation trial system
*Only requested by interested parties and examiners.
Can be requested

*Any number of people can request (with some exceptions)

 

 

 

Differences between the patent systems of Japan and Korea

  South Korea Japan
power of attorney Required Not required (necessary at trial stage)
foreign language documents
system
×
Domestic document submission
period
31 months from the priority date 30 months from priority date
loss of novelty
exception
No restrictions on applicable public acts Limited
(Document presentations at academic organizations, exhibition appearances)
products, etc.)
computer
Program
invention
“Program” is not included in the scope of things. Contains “program”
Multi circle
Chikreme
Illegal No limit
scope of claim
Submission postponement
×
Examination request period Within 5 years from the filing date XNUMX years
First screening
Processing period
9.8 months from the date of request for review 26 months
Priority review
(Korea-Japan patent examination
highway
system introduction)
Commonly known as priority examination Priority examination system and accelerated examination system
Classification
(Take advantage of the expedited examination system with simple procedures.
used in many cases)
Judgment of technical scope
against
Administrative response
Judgment to confirm the scope of rights Judgment system
Designated period ・Can be extended or shortened
・Can be extended for one month as many times as you like
・Only extension possible
・There is a limit to the extension of the designated period.
correction Other than the content on the right, the timing and range of corrections are based on days.
substantially similar to the book
・Things stated in claims before and after amendment
The paragraph should satisfy “unity of invention”
・The invention related to the divisional application is the original application
Explain the reasons for refusal pointed out.
If not erased, it will be applied to the divisional application.
In response to the first notification of reasons for refusal
correction is limited.
(Same supplement as when receiving the final reason for refusal)
(needs correct)
segmentation ・Divisional application is not possible after the certified copy of the patent decision is delivered.
・If it is outside the division range, it will be rejected or ignored.
Reason for effectiveness
Within 30 days from the date of delivery of a certified copy of the grant of patent
It is also possible to file divisional applications within
Change ・No application for change between design and patent
・First refusal of utility model registration application
After 30 days have elapsed from the date of delivery of the final certified copy
cannot be changed to
・Once a right is registered, it cannot be changed to a patent.
Possible
・It is possible to apply for a change between a design and a patent.
・3 years from the date of application for utility model registration
Cannot be changed if it has passed
・Issuance of patent based on utility model registration
Request possible
Type of referee Appeal against decision of refusal, invalidation trial, request for correction
Request and correction trial, extension registration invalidation trial,
Trial for invalidation of correction, trial for confirmation of scope of rights
trial, non-exclusive license grant trial
Appeal against decision of refusal, invalidation trial, revision
Correct request and correction trial, no extension registration
Judgment of effectiveness
Invalidation trial
Claimant eligibility
Anyone can make a request within 3 months from the date of public notice of registration.
Yes, but after that, the “interested party” or
Only available to examiners
Anyone can claim
(However, joint applications and unauthorized parties
When alleging grounds for violation of an application,
(possible only for “person in charge”)
Reason for invalidity
(Basic invalidity theory
The reason is the same)
・Divisional applications with new matters added and
Change application
・Corrections that are outside the scope of correction will be rejected.
The correction was invalidated by the invalidation trial.
Become
・Invalidity regarding foreign language written application
There is a reason for the correction and the scope of the correction.
In case of violation of the provisions of the patent
body becomes disabled
Invalidation trial procedure
of billing at
Correction of reasons and
Request for correction
(Scope of request for correction
and invalidation trial
in court proceedings
Correction request possible
The period is actually
(identical)
・Amendment of reason for request: No limit ・Amendment of reason for request: No change to the gist
Possible (with permission from the chief judge)
(Can be corrected to)
・In a lawsuit to revoke a trial decision, there is a revocation judgment.
and will be reexamined by the Board of Appeal of the Patent Office.
Corrections can be requested in certain cases.
Deadline for requesting correction trial
limit between
・An invalidation trial is pending at the Patent Trial and Appeal Board.
A request for trial for correction cannot be made if
・Invalidation trial procedure is carried out by the patent court (court) or
is a matter pending before the Supreme Court (Supreme Court).
possible if
・Corrections made before the invalidation trial decision is finalized
Appeal cannot be filed
・However, if you appeal against the invalidation trial decision,
Within 90 days from the date of filing
is possible

 

Comparison of “Support measures for small and medium-sized enterprises” in Japan and South Korea

(1) According to the "Intellectual Property Promotion Plan 2007" of Japan's Intellectual Property Strategy Headquarters, 1) strengthening of consultation functions and information provision for SMEs and venture companies; 2) creation of intellectual property for SMEs and venture companies; We are strengthening support measures to support the protection and utilization of intellectual property, and (3) to enhance the intellectual property capabilities of small and medium-sized enterprises and venture companies.
(2) The Korean Intellectual Property Office has launched the “Small and Medium Enterprise Patent Management Support Group” in order to (1) more effectively support the patent management of small and medium enterprises. The support team will build a human resource pool of 40 to 50 people for patent management consulting, including excellent examiners in various technical fields, and will utilize them as specialized consulting personnel. The support group visits small and medium-sized enterprises that are not practicing patent management due to lack of budget and manpower, and provides general advice on patent management, such as patent analysis at the R&D stage, securing domestic and foreign patents, countermeasures against counterfeit products, and employee invention system. "Patent Consulting Service". (2) While regularly holding policy meetings with small and medium-sized enterprises to identify policy demands, promote patent management in small and medium-sized enterprises by discovering and disseminating excellent examples of patent management by small and medium-sized enterprises.

*Fees reduction/exemption provisions in both countries for small and medium-sized enterprises
Furthermore, the patent laws of both countries provide for exemption or reduction of patent fees and examination fees for patent applications by small and medium-sized enterprises.
1 South Korea: Application fees, examination request fees, and registration fees for the first three years are exempted for patent, utility model, and design applications (however, there is no examination request system for design applications)
2 Japan: Reduction of patent fees and examination request fees for the first three years for patent applications

 

Regarding measures against counterfeit products

Businesses related to counterfeit products are recognized as high value-added and profitable businesses around the world, and are rapidly expanding.According to statistics in 2004, the amount of counterfeit products in circulation was 512 billion dollars, or 7% of the global trade volume. Estimated. Looking at the current state of distribution of counterfeit goods in South Korea, sales networks have expanded to include online shopping malls, and goods have diversified from traditional fashion-related goods (clothing, watches, etc.) to pharmaceuticals, cigarettes, automobile parts, etc.
 Measures against counterfeit products in both countries are as follows.

  South Korea Japan
administrative relief ① Trial for confirmation of scope of rights, patent invalidation trial, no trademark registration
Judgment of validity.
② (Customs Law) Customs clearance suspension measures as border measures
[Customs suspension measures for trademark/copyright infringing goods]
- Take both imports and exports.
*Korea Customs Service: Established “Counterfeit Products Special Enforcement Headquarters”
foot.
③ Remedies by the Trade Commission for unfair trade practices
system
[Regulations under the Foreign Trade Law].
① Judgment, patent invalidation trial, trademark registration invalidation trial.
② (Customs Law) Patent rights, utility model rights, trademark rights, copyrights
rights, neighboring rights, circuit layout utilization rights, breeder's rights and
and interests protected by the Unfair Competition Prevention Act.
Border measures for infringement of rights, etc.
- Regulations regarding import and export.
*Intellectual property investigators assigned to each headquarters
ADR ①Dispute Mediation Committee
(Patents, utility models, trademarks, designs)
②Domain name dispute mediation system
③Copyright dispute mediation system.
Japan Intellectual Property Arbitration Center
(Consultation, mediation, arbitration, center judgment, center
Necessity determination, dispute resolution regarding JP domain name)
civil remedies If there is a patent infringement,
① Right to claim prohibition/prevention
② Right to claim compensation for damages
③Right to request credit restoration
④Right to claim return of unjust enrichment
(In the case of infringement of trademark rights, copyrights, and acts of unfair competition)
are also the same).
If there is a patent infringement,
① Right to request an injunction
② Right to claim compensation for damages
③Right to request credit restoration
④Right to claim return of unjust enrichment
(In the case of infringement of trademark rights, copyrights, and acts of unfair competition)
are also the same).
criminal remedies ①Patent Law: Patent infringement, perjury, and fraud
crimes, misrepresentation crimes, leakage of secrets, false statements by parties
A system of fines for failure to submit statements, documents, etc., absences, etc.

(Trademark law is the same except for the crime of leaking secrets).
②Unfair Competition Prevention Act: Unfair competition and trade secret infringement
Penalties for harmful acts.
③ Investigation of unfair trade practices and relief for industrial damage
Laws governing the import, export, and domestic sales of goods that infringe on intellectual property rights
In response to a correction order from the Trade Commission regarding sales, manufacturing activities, etc.
Penalties in case of violation.
④Copyright Law: Crimes of copyright infringement, crimes of unauthorized publication, etc., source
Provides for crimes such as explicit violation.
*Private complaint crime (infringement of trademark rights is a non-private crime),
Dual penalty provisions (punishment for patent infringement and trademark infringement against corporations)
The maximum amount is 3 million won)
①Patent Law: Patent infringement, perjury, and fraud
crimes, misrepresentation crimes, leakage of secrets, and falsification of parties.
Fines for failure to submit statements, documents, etc., absences, etc.
sanctions
(Trademark law is the same except for the crime of leaking secrets)
②Unfair Competition Prevention Act: Unfair Competition Act and Trade Secrets
Penalties for infringement.

 

 

 

Comparison of fee reduction/exemption standards

(1) According to Article 2 of the Korean Small and Medium Enterprise Basic Act, the following provisions provide for reduction or exemption of fees for small and medium enterprises.

[Small businesses eligible for 70% reduction]
1Companies with fewer than XNUMX employees whose main business is mining, manufacturing, construction, or transportation.
2 If the main business is in a type of industry other than ①, the company has fewer than XNUMX employees.

[Medium-sized companies eligible for 50% reduction/exemption]
1 Manufacturing industry: Companies with less than XNUMX employees or capital of XNUMX billion won or less
2 Mining, construction, and transportation: Companies with fewer than XNUMX employees or capital of XNUMX billion won or less
3Large general retail industry, hotel industry, welfare facility management industry, communications industry, information processing and other computer operation related industry, engineering service industry, hospital, broadcasting industry: Companies with less than XNUMX employees or sales of XNUMX billion won or less
4 Seed and seedling production, fishing, electricity, wastewater and water supply, pharmaceutical and orthopedic supplies wholesale, mail order, door-to-door sales, travel brokerage, warehousing and transportation-related services, specialized scientific and technical services. Business, business support service industry, movie industry, amusement park and theme park management industry: Companies with less than XNUMX employees or sales of XNUMX billion won or less
5 Wholesale and product brokerage, industrial machinery and equipment rental, natural science research and development, performance industry, news provision, botanical gardens, zoological gardens, and natural parks, sewage treatment, waste treatment, and cleaning-related services: Number of employees Companies with fewer than XNUMX employees or sales of XNUMX billion won or less
6 All other industries: Companies with fewer than XNUMX employees or sales of XNUMX billion won or less

[50% reduction/exemption target - joint research between large companies and SMEs]
 When a large company and a medium or small company carry out joint research under a contract and jointly file a patent or utility model registration application for the research results.
 *When filing an application or requesting examination after May 1, 2006, the application fee or examination request fee is limited.

 

(2) Regarding the expansion of Japan's "examination request fee refund system" and the expansion of the scope of "patent fee reduction/exemption measures for corporations with poor financial resources"

 We have recently amended a portion of the Patent Act Enforcement Order and the Patent Act Related Fees Order to provisionally provide for a full refund of examination request fees when a patent application is abandoned or withdrawn. We have decided to expand the scope of the "patent fee reduction/exemption system for small and medium-sized enterprises that lack financial resources."
① Implementation of “full refund of examination request fees” (for one year from August 9, 2006)
From April 1, 2004, for patent applications for which a request for examination has already been filed, if the application is withdrawn or abandoned before the examination begins (Note), the fee will be paid by requesting a refund (specifying the return destination). We have introduced a system in which 1/2 of the examination request fee paid will be refunded.
 Due to the recent amendments to the Cabinet Order, the examination request fee will be refunded only if the application is withdrawn or abandoned within one year from August 9, 2006 to August 8, 2007. We have decided to refund the entire fee.

(Note) The situation before the first notification, such as a notice of reasons for refusal, arrives from the Patent Office examiner.

② Expansion of “patent fee reduction/exemption system for small and medium-sized enterprises with limited financial resources”
One of the requirements for the system to be applied is the "system for reducing examination request fees and deferring payment of patent fees (for the first to third years) for three years for small and medium-sized enterprises with limited financial resources." The requirement that "10 years have not passed since the date of establishment" has been abolished.
 With the recent amendments to the regulations, small and medium-sized enterprises with limited financial resources will be able to use this system regardless of the date of establishment.
The requirements and documents to be submitted for the procedure for 1/2 reduction of examination request fees and 3-year grace period of patent fees for the first to third years for corporations with limited financial resources are as follows.

 

Application for reduction/exemption

When applying for a reduction or exemption, you must submit an application for reduction or exemption of examination fees or an application for grace of patent fees at the same time as the procedure for receiving the reduction (request for examination), as well as the attached documents that meet the following requirements. (As for attached documents, it is necessary to submit the latest documents available on the application date.)

Corporations that meet all of the requirements listed below are eligible.

(i) Requirements and attached documents that must be met regardless of the type of corporation

Requirement ①: The invention is a service invention.
Attached documents: Employee invention certificate

Requirement ②: The applicant must be an employer, etc. who inherited the employee invention by reservation.
Attached documents: Copies of contracts, work rules, and other provisions stipulating in advance that the right to obtain a patent for employee inventions will be inherited by the employer, etc.

(ii) Requirements and attached documents that must be met by type of corporation, etc.

  business
Type of corporation Capital must be 300 million yen or less No corporate tax imposed
(Note XNUMX)
Not controlled by another corporation
(Note XNUMX)

sole proprietor
(Note 3)

(unnecessary) Business tax payment certificate (copy accepted)
(Note 4)
(unnecessary)
Company
(Co., Ltd·
membership company, etc.)
Articles of incorporation or corporate registration certificate or
is the balance sheet of the previous fiscal year
Corporate tax return
Copy of attached table 1
Or tax payment certificate (a copy is also acceptable)
Copy of attached table 2 of corporate tax return
Or shareholder list/investor list
Cooperative
(have investment)
)
Copy of attached table 2 of corporate tax return
or list of investors
capital or investment
does not have
Corporation
(Foundation·
(incorporated association, etc.)
Balance sheet for the previous fiscal year
(Note 5)
(unnecessary)

(Note 1) In the case of a corporation whose filing deadline for the business year in which the date of establishment falls has not yet passed, filing is not required. If there is a correction notice or amendment notice, these documents are also included.

(Note 2) If the corporation does not have capital or investment, it is not required to submit.
Not being controlled by another corporation means a. and a. It means that it corresponds to.

a. No single corporation other than the applicant owns more than 1/2 of the total number of shares or capital investment.

stomach. Multiple corporations other than the applicant do not have shares or investments that account for 2/3 or more of the total number of shares or total investment.

(Note 3) In the case where the applicant is a sole proprietor, the applicant is a corporation, etc., and is limited to the sole proprietor who has inherited an employee invention by reservation.

(Note 4) In the case of a sole proprietorship, business tax is not imposed.

(Note 5) For corporations without capital or investment, the book value of total liabilities recorded on the balance sheet is deducted from the book value of total assets recorded on the balance sheet at the end of the previous business year. (If the amount of profit for the relevant business year is recorded in the balance sheet, the amount will be deducted from that amount, and if the amount of loss for the relevant business year is recorded, The amount equivalent to 60% of the amount added (this amount shall be the amount added) is 300 million yen or less.

 

 

Japan's "accelerated examination system" and
Comparison of South Korea's "priority examination system"

Comparison of Japan's "accelerated examination system" and South Korea's "priority examination system"

Examples of systems that speed up examination include Japan's "accelerated examination system" and South Korea's "priority examination system." Both systems have in common that they allow quick examination, but as you can see from the "Eligible Patent Applications" below, there are some differences in the specific content.

Comparison details
Furthermore, among the "targets of prioritized examination" in Korea, the procedure for applying for the Patent Examination Highway at each office related to the above-mentioned "(12) patent application for which the Korean Patent Office Commissioner has agreed with the Japanese Patent Office Commissioner for priority examination" For more information, see below.“[3] About Japan-Korea Patent Prosecution Highway”You can check from.

'Patent Prosecution Highway' means that patent applications commonly filed in both Japan and South Korea are subject to priority examination, while the documents required to apply for priority examination are for common applications that have been registered as patents in the first country. This is a system for expedited examination through simple procedures by exempting the middle part.

Once the Patent Prosecution Highway comes into effect, applicants from both countries will be exempted from submitting a ``statement of comparison between the claimed invention and the prior art'' by submitting the examination results of the other country when applying for priority examination. can minimize the cost and effort required to file an application.

According to the consensus document regarding the Japan-Korea Patent Prosecution Highway adopted at the 2006th Japan-Korea Patent Office Commissioners Meeting on November 11, 30, the Korean Patent Office filed an application regarding amendments to the Patent Act Enforcement Ordinance and priority examination in September 17. Through the revision of the notification, ``cases where a patent application for the same invention is filed in South Korea after first filing a patent application in Japan, and the prescribed documentary evidence is attached'' are now eligible for priority examination. It came into effect from October 2006st.

Currently, Korea and Japan are conducting priority examination or accelerated examination of their common patent applications. However, at the time of application, a ``prior art search result report'', ``copy of the prior art'', and ``comparison statement between the claimed invention and the prior art'' must be submitted.

However, from April 2007, 4, when the Patent Prosecution Highway came into effect, if a patent is registered in the first country and the claims filed in both countries are the same, the patent claim registered in the first country If you submit a copy of the scope, a translation, all examination-related documents from the first country of application, and a translation, you will be exempted from the obligation to submit the above-mentioned ``Explanation of comparison between the claimed invention and the prior art''.

 

Specific details of the Ryogoku system

[1] About South Korea's "priority examination system"

1. System overview
The priority examination system is a patent application that meets certain requirements, '06. This is a system that allows applications to be examined preferentially over other applications, regardless of their ranking.
If you apply for priority examination and are eligible for priority examination, you can receive priority examination over general applications.

2. Need for system
– In principle, patent examinations are conducted according to the order of requests for examination.
– However, if such a principle is applied to all applications without exception, it may not be possible to adequately protect the public interest or the rights of applicants.
– As a result, the Patent Act and the Utility Model Act provide for a priority examination system in which applications that meet certain requirements are examined before other applications, regardless of the order of requests for examination.
– Priority examination systems exist not only in Korea, but also in the United States, Europe, Japan, and other countries.

3. General application requirements
① Priority examination applicant
Anyone, including the applicant, can apply for priority examination. However, for applications related to national or local government duties, only the national or local government may apply for priority examination.
②The application must have a request for examination.
An application that is eligible for priority examination should have a request for examination filed, and it is possible to request priority examination at the same time as filing a request for examination.
  · Therefore, it is possible to file a request for application and a request for priority examination at the same time as filing.
1.The invention described in the scope of claims is subject to priority examination.
-The invention (including a device; the same shall apply hereinafter) for which a priority examination has been applied for should be stated in the scope of claims, and if it is stated only in the detailed description of the invention and not stated in the scope of claims, Not subject to priority examination.
– If there are many claims in the scope of claims and one of the claims is recognized as subject to prioritized examination, the entire application will be recognized as subject to prioritized examination.
④Application procedure and application form
– An applicant for prioritized examination should submit a priority examination application form that specifically describes the reasons for the priority examination application, as well as documents and items if necessary, to the Japan Patent Office, and pay the priority examination application fee to the Japan Patent Office. It should be paid to
– In the case of a venture company application, if it is possible to prove this by simply submitting the venture company confirmation form without the priority examination application explanation, it is possible to not attach the priority examination application explanation.
– In the case of a utility model registration application in which a request for examination is filed at the same time as the filing and a request for priority examination is filed within two months after the filing, if the reason for requesting priority examination is specified in the explanatory document for priority examination, separate supporting documents may be submitted. You do not need to submit it.

4. Subject of priority examination
 *Please refer to the table above.

 

[2] About Japan's "accelerated examination system"

 Below, we will give an overview of the operation of accelerated examination and accelerated trial (patent applications), B. Overview of the trademark accelerated examination and accelerated trial system, and C. Overview of the design accelerated examination and accelerated trial system. .

A. Overview of the operation of accelerated examination/accelerated trial (patent application)
The operation of the accelerated examination/accelerated trial system, which began operation in February 1986, has been reviewed several times, but this time, we will focus on the accelerated examination system to further improve its convenience and popularize its use. In order to achieve this, the guidelines have been revised from the viewpoints of reviewing the overall structure, reducing the burden of prior art searches when small and medium-sized enterprises apply, and reviewing the requirements for prior art searches when filing jointly with large companies. Regarding operational changes due to guideline revisions (there are no operational changes regarding accelerated examinations), please refer to the "Explanation of Circumstances Regarding Accelerated Examinations" submitted after July 1, 2006. Apply.

 The main changes in the revised accelerated examination/accelerated trial guidelines are as follows.

(1) Regarding accelerated examination
① Review of overall structure
 In particular, the overall structure has been significantly revised to make it easier to understand so that applicants, such as individuals and small and medium-sized enterprises, can prepare their own "Explanation of Circumstances Regarding Accelerated Examination." In particular, we have made it easier to understand the overall flow by explaining each application condition (small and medium-sized enterprises, etc., foreign-related applications, implementation-related applications), and we have added examples to make it more useful when preparing. .

②Reducing the burden of prior art searches when small and medium-sized enterprises apply
 For small and medium-sized enterprises, etc., it is not necessary to conduct a prior art search when disclosing prior art, and it is sufficient to list the documents known at the time of application for accelerated examination.

③Revision of prior art search requirements for joint applications between small and medium-sized enterprises, etc. and large enterprises
 In the case of a joint application with a large company, a prior art search is in principle conducted, but for small and medium-sized enterprises, if it falls under "special exceptions*", it is sufficient to describe the documents that are known, as in ②. It was made.

*Inventions related to the results of specific research and development conducted in accordance with the certification plan based on the "Act on the Advancement of Basic Manufacturing Technology for Small and Medium-sized Enterprises" and where the ownership ratio of the rights of small and medium-sized enterprises is 50% or more. In this case, the application must be filed within two years from the end of the specific research and development implementation period in the certified plan.

(2) Regarding early hearing
Matters related to "cooperation of the petitioner (representative)" clarified in "Clarification of the operation of patent expedited examination" (posted on the Japan Patent Office website on September 26, 2005) have been added to the guidelines. .
 Therefore, there are no particular operational changes at this time.

B. Overview of trademark accelerated examination/accelerated trial system
From September 1, 1997, we introduced an accelerated examination and expedited trial system for trademark registration applications. This system is implemented in light of the need for early processing of applications involving counterfeiting and infringement, and the globalization of economic activities.
 In addition, with the start of online trademark/trial procedures in January 12, the format for requesting accelerated examination/accelerated trial procedures was changed, but further changes were made as of September 1, XNUMX. In light of the enactment of the revised Trademark Law that revises the definition of the use of chapters, we have decided to revise the accelerated examination/accelerated trial guidelines.


At the Japan Patent Office, for the following trademark registration applications, if a "statement of circumstances regarding accelerated examination" containing the prescribed matters is submitted, the examination will be started promptly in priority to regular applications, and no delays will be allowed thereafter. We will proceed with the examination procedure so that the disposition is completed without any problems.
1-1. Applications eligible for accelerated examination
 Trademark registration applications that meet the following requirements can be eligible for accelerated examination.
``An application in which the applicant or a licensee is using the applied trademark for designated goods or designated services (including some goods or services) or is preparing to use it to a considerable extent, and is not concerned about obtaining rights. Applications requiring urgency. ”
 An application that requires urgency for obtaining rights shall fall under any of the following.
1.A third party is using or using the applied trademark or a trademark similar to the applied trademark in connection with the designated goods or designated services used or prepared for use by the applicant or the licensee, or goods or services similar thereto, without permission. If it is clear that the preparations for
2If you have received a warning from a third party regarding the use of the applied trademark
3If a third party requests permission to use the applied trademark
4If the applicant has also filed an application with a patent office or intergovernmental organization other than the Japan Patent Office regarding the applied trademark.
5Other cases where it is recognized that there is an urgency to acquire rights in the relationship with a third party
1-2. Procedures for requesting accelerated examination
In order to apply for accelerated examination, it is necessary to submit a ``Explanation of Circumstances Regarding Accelerated Examination''.
2 Submitted by: Applicant
②Main items to be included in the “Explanation of Circumstances Regarding Accelerated Examination”
(a) Explanation of usage status by applicant, etc.
(b) Description of the situation requiring urgency.
Furthermore, from applications filed after April 1999, it is no longer necessary to submit a "prior trademark search."
③ Fee: Not required 

C. Overview of the accelerated design examination/accelerated trial system
The accelerated examination and early trial system for design registration applications was introduced on December 15, 1988, and has since been operated to accurately respond to social needs for early protection of designs. (January 1993, partially revised September 1997)
 The "Guidelines for Accelerated Examination and Early Trial of Design Registration Applications" were published in May 2000 in accordance with the revision of the Design Act in 1998 and the start of accepting online design procedures in January 2000. Although we have made some changes to the format, etc., we have made changes to be consistent with the abolishment of stamps on explanatory documents, etc., which has already been started, with the aim of further simplifying the procedures for requesting accelerated examination and hearing, and to make other changes as necessary. We have decided to republish the guidelines (revised version in September 2002) with some modifications.


 If a "statement of circumstances concerning accelerated examination" containing the prescribed matters has been submitted for a design registration application, and as a result of selection, the examiner is eligible for accelerated examination, the examiner will promptly begin the examination and will not delay any further delays. We will proceed with the examination procedure so that the disposition is completed without any problems.
1. Applications eligible for accelerated examination
(1) Implementation-related applications that require urgent rights acquisition
 An application for design registration in which the applicant or a person who has received a license from the applicant (licensee) for the design in the application is working the design in the application or is making considerable progress in preparing for the implementation, and the following: It falls under any of the following, and there is an urgent need to obtain rights.
1When it is clear that a third party is working the design in the application or a design similar to the design in the application without permission, or is making considerable progress in preparing for the implementation.
2If you have received a warning from a third party regarding the act of implementing the design of the application (act of preparing for implementation)
3If a third party has requested a license for the design in the application.
(2) Foreign-related applications
 The applicant must have filed an application for design registration with a patent office or intergovernmental organization other than the Japan Patent Office.

2. Procedures for requesting accelerated examination
In order to apply for accelerated examination, it is necessary to submit a ``Explanation of Circumstances Regarding Accelerated Examination''.
(1) Submitter: Applicant
(2) Submission period: Can be submitted at any time after the date of application for design registration
(3) Submission method: online or in writing
(4) Main items to be included in the “Explanation of Circumstances Regarding Accelerated Examination”:
① When attempting to apply for expedited examination because the application is an implementation-related application that requires an urgent need for obtaining rights.
  ・Explanation of implementation status
  ・Explanation of the emergency situation
  ・Prior design search 
② When attempting to apply for accelerated examination because it is a foreign-related application
  ・Indication of applications filed with patent offices other than the Japan Patent Office
  ・Prior design search
(5) Fee: Not required

 

[3] About the Japan-Korea Patent Prosecution Highway

 The Japan Patent Office and the Korean Patent Office began accepting applications for the Patent Prosecution Highway in April 2007, as agreed at the Directors' Meeting in November 2006.
 For details on the application procedures at each office, please refer to the following materials.

 

☆ Regarding the application to the Japan Patent Office (JPO) for the Japan-Korea Patent Prosecution Highway

1. How to submit a request to the Japan Patent Office
When filing an application for accelerated examination with the Japan Patent Office based on the Japan-Korea Patent Prosecution Highway,
Similar to a normal application for accelerated examination, please submit the "Explanation of the circumstances regarding accelerated examination" based on the procedure shown in the "Accelerated Examination/Hearing Guidelines."
In the case of an application to the Japan Patent Office that satisfies the conditions listed in ① below, the conditions listed in ② below are applicable.
By attaching the relevant documents, it is possible to omit the description of "2. Disclosure of prior art and comparative explanation" in [Explanation of circumstances regarding accelerated examination].

① Conditions for an application to the Japan Patent Office to be approved for accelerated examination based on the Patent Prosecution Highway
a. The application (including the national phase application of the PCT application) legitimately claims priority under the Paris Convention based on the corresponding first country application, the Korean application.
*Even if the application is based on a Korean new utility model application (application under the new utility model system that is registered after substantive examination, effective October 2006, 10), it will not be recognized. You can In addition, even if the application has priority rights based on multiple Korean applications, or even if the application is a divisional application, the filing date must be retroactive to the original application and the priority right of the first office can be effectively claimed. If it is, it will be accepted.

b. The Korean application corresponding to the application has claims that have already been determined to be patentable.
The following claims are considered to be patentable:
・If there is a “patent decision”, all claims
- If there is no "written patent decision," claims that are clearly patentable in the latest "notice of opinion submission" or "letter of refusal decision" at the time of the Patent Prosecution Highway application.
*From January 2007, 1, the Korean Intellectual Property Office has begun to specify patentable claims in "notices of submission of opinions" and "letters of refusal decisions."

c. All claims of the application as filed are substantially the same (sufficiently correspond) to any of the claims determined to be allowable in the corresponding Korean application.
"Substantially the same as the claim determined to be patentable ((1) b. above)" means that the claim also has the features determined to be patentable. For example, if they are the same except for the description format, or if the claims filed by the First Office are limited by adding matters specifying the invention, they are considered to be substantially the same.
If the first office determines that a claim is patentable by amending it, a similar amendment is required at the second office in order for the claims to be deemed to be substantially the same. Please note that there are many cases.

d. Examination of the application has not yet been initiated by the Japan Patent Office.

②Documents to be submitted when applying for accelerated examination based on the Patent Prosecution Highway
a. Copies of all office actions issued by the Korean examiner for the corresponding Korean application and translations thereof (in Japanese or English);

b. A copy of the claims of the corresponding Korean application, including the claims determined to be patentable.
Shi and this translation (Japanese or English)

c. References cited by the examiner in the office action of the corresponding Korean application

d. Each current claim of the application is a claim that has been determined to be patentable in the corresponding Korean application.
A document (Japanese) showing that the request has been fully addressed.
Please submit a correspondence table showing the relationship between the claims of the application and the claims of the corresponding Korean application.
Please. Then, please state the grounds that are substantially the same for each claim. In cases where the claims are direct translations, it is necessary to simply state that they are the same, and in cases where there are differences beyond mere translation differences, it is necessary to provide grounds to show that they are substantially the same despite such differences. Please write it down.

*About cases where submission of required documents can be omitted
[Regarding a. and b. above] If the examiner is available through the network between patent offices, submission can be omitted. Specifically, regarding published Korean applications filed after 1999, the information is provided by the Korean Patent Office to the Japan Patent Office, so the examiner can basically obtain it and the submission is omitted. Yes, you can (no translation required). However, if the examiner is unable to obtain these documents through the network between patent offices due to reasons such as the application being unpublished or a technical problem occurring, these documents may be submitted at the request of the examiner. need to do it.

[Regarding c. above] If it is a patent document, the Japan Patent Office usually has it, so you can omit submitting it. However, if the Japan Patent Office does not have these documents, you will need to submit these documents at the request of the examiner. Additionally, submission of non-patent documents cannot be omitted. Furthermore, it is not necessary to submit translations of cited documents, whether they are patent documents or non-patent documents.

[Regarding d. above] There are no cases where submission can be omitted.

In addition, if the documents listed in a. to d. above have been submitted to the Japan Patent Office in other procedures that have been completed simultaneously or have already been completed, it is possible to omit attaching the documents by referring to a copy of the document. .

If the above conditions ① and ② are not met, the omission of "2. Disclosure of prior art and comparative explanation" will not be allowed, and the case will not be recognized as eligible for accelerated examination. In that case, the Patent Office will contact the applicant (agent) with the reasons.

2. Guidelines for filling out the “Explanation of circumstances regarding accelerated examination” when using the Patent Prosecution Highway
(1) Instructions for filling out “1. Circumstances” in [Explanation of circumstances regarding accelerated examination]
Please state that this application is based on priority based on the application filed with the Korean Intellectual Property Office under the Paris Convention, and that you are applying for expedited examination through the Patent Prosecution Highway. Also, please enter the application number, publication number, or patent number of the Korean application that is the basis for priority.
*If the corresponding Korean application with claims determined to be patentable is different from the basic application mentioned above (for example, if it is a divisional application of the basic application), the application number and publication number of the corresponding application. Or please also include the patent number.

(2) Instructions for describing attached items or items whose attachment is omitted
Please list the documents to be submitted as shown in ② above, categorized by item for each property. Even for documents that can be omitted, please list all documents that must be submitted in a form that can be identified by date etc. in the attached items section.

(3) About the entry form
The format of the “Explanation of Circumstances Regarding Accelerated Examination” differs depending on whether it is an online procedure or a paper procedure.
Therefore, please refer to each entry form when filling out the form.

☆ Priority examination application procedure through the Patent Prosecution Highway for mutual utilization of examination results between Korea and Japan

I. Purpose of the document
This document is based on the Korea-Japan Patent Prosecution Highway (Patent Prosecution Highway, mutual utilization of examination results between the two countries) that will come into effect from April 1, 2007, and will allow applicants to easily apply for priority examination to the Korean Patent Office. It was created for the purpose of providing guidance on application requirements, supporting documents (including the omission of submitting supporting documents), application methods, etc., so that you can do so.

Next II. In the case of a patent application that satisfies the "basic requirements listed in 1." in the specific priority examination application procedure, the applicant can receive the examination results of the Japan Patent Office by submitting "evidential documents listed in 2." You can receive priority screening based on the following.

II. Specific priority examination application procedure
1. Basic requirements for priority examination
(1) It must be a first country patent application, that is, a patent application with a priority claim under the Paris Convention (hereinafter referred to as "Treaty priority claim") based on a validly filed Japanese patent application, The following patent applications may also be covered.
1) Patent applications that are PCT applications based on treaty priority claims based on Japanese patent applications and have entered the Korean national phase;
2) Patent applications that claim multiple priority rights based on treaty priority claims from numerous Japanese patent applications;
3) Divisional application of a patent application based on a treaty priority claim based on a Japanese patent application
*Patent applications based on treaty priority claims based on Japanese utility model applications are not eligible.

(2) The Japanese patent application corresponding to the relevant patent application must have claims that the Japan Patent Office has determined to be patentable, and the claims that the Japan Patent Office has determined to be patentable and the claims that the Japan Patent Office has determined to be patentable. refers to the following claims:
1) If there is a “letter of decision to grant a patent,” the claims that were the subject of the decision to grant a patent;
2) If there is no “Written Decision to Patent”, the most recent “Rejection Decision” issued from the date of application for priority examination
Claims clearly stated as patentable in the “Notice of Reasons for Rejection” or “Decision of Refusal”
(3) All claims of the relevant patent application must be substantially the same as the claims determined to be patentable by the Japan Patent Office.
This also includes cases where the applicant adds specific matters to a claim that has been determined to be patentable by the Japan Patent Office. Please note that simple translation differences or claim description formats (e.g.
Even if there are differences between independent claims and dependent claims, they are considered to be substantially the same.
If, as a result of amending the claims of the Japanese patent application, the Japan Patent Office determines that the claims are patentable, the same content must be included in the Korean patent application in order for the claims to be substantially the same. Please pay particular attention to this point, as you will have to correct it.
(4) Whether or not examination of the relevant patent application can be started has nothing to do with whether or not it is eligible for priority examination. In other words, you can apply for priority examination via the Patent Prosecution Highway even if the patent application in question has not yet been examined at the time of applying for priority examination, or even if examination has already begun.

2. Evidence documents required for priority examination application
You must submit supporting documents that fall under (1), (2), (3), and (4) below.

(1) “Copy of the scope of patent claims that includes the claims that the Japan Patent Office has determined to be patentable”
and “its translation prepared in Korean or English”
(2) "Copy of the examination-related notification issued by the Japan Patent Office for the relevant Japanese patent application (limited to the decision to grant a patent, notice of reasons for refusal, and decision of refusal)" and "translation thereof prepared in Korean or English"
(3) Copy of the prior art cited in the examination-related notification (excluding cases where there is no cited prior art)
(4) Correspondence explanation table between “each claim of a patent application” and “claims determined to be patentable by the Japan Patent Office”

Substantially the same basis must be stated for each claim in this correspondence explanation table. For example, when the claims are translated directly, the explanation content indicates that they are simply the same, and when there is only a simple difference in translation, the explanation content indicates that they are substantially the same despite such differences. will be described.

*Important note: Cases where submission of documentary evidence can be omitted
[In relation to (1) and (2) above]
The examiner uses the computer network established between Korea and the Japanese Patent Office (1)
If it is possible to obtain documentary evidence that falls under (2) above, the applicant may omit the submission of the relevant type of evidence.
Specifically, for Japanese patent applications filed and published after December 1990, the Japan Patent Office provides the Korean Patent Office with information on the examination progress and related documents in Japanese and English translations. Since the examiner can basically obtain the documents at any time, applicants for priority examination can omit the submission of relevant supporting documents.
However, if the relevant Japanese patent application is unpublished, the relevant type must be submitted, and the examiner may obtain the type through the computer network between patent offices due to technical problems or other reasons. If this is not possible, you must submit the relevant documents in response to the examiner's request.

[In relation to (3) above]
If the prior art cited in the examination-related notice is a patent document, submission can be omitted since the Korean Patent Office almost always owns the relevant patent document. However, if the Korean Patent Office does not possess it and the examiner cannot easily obtain it, the relevant type must be submitted in response to the examiner's request.
If the prior art cited in the examination-related notice is a non-patent document, submission cannot be omitted and must be submitted.
On the other hand, it is not necessary to submit translations of prior art in any case.

[In relation to (4) above]
There are no cases where you can omit submission, so you must submit it.

3. Preparation of priority examination application manual and payment of application fee
The applicant must fill out the reasons for the application and the documents to be submitted in accordance with the separate priority examination application explanatory format established for the Korea-Japan Patent Prosecution Highway. You can check the specific items to be filled out and the guidelines for filling them out through the attached Priority Examination Application Explanation Form.
When applying for priority examination, applicants must pay the same amount of priority examination application fee as for other priority examination applications (167,000 won per application).

4. Other things to keep in mind
If all requirements are met, the application will be subject to priority examination, and a separate priority examination decision will not be notified in the case of Patent Prosecution Highway. If the requirements are not met, the application will be instructed to supplement the documents, and if the application is not met, the application will be rejected.
Even if all the requirements are met when filing a priority examination request, the specification is not substantially identical to a claim that the Japan Patent Office has determined to be patentable before the examination is initiated. When amending a claim, a written explanation of comparison with the prior art cited in the examination-related notice of the Japan Patent Office must be submitted for all claims, including the amended claim.

 

 

About the Japan-Korea FTA agreement

The Japan-Korea FTA negotiations have reached a stalemate after the sixth round of negotiations in November 2004, with issues related to measures to strengthen intellectual property enforcement, such as border measures and criminal remedies.
The positions of both countries are as follows.

important agenda Japan's position Korea's position Remarks
Most Favored Nation (MNF)
Treatment
Separate provisions required No separate provisions required Discussion later
Trademark application type
Judgment of whether or not it is similar
Time point
Registration criteria Legislative policies of each country Discussion later
English patent application
Certification of
Approved English application PLT and SPLT are concluded in Korea.
If so, plan to join these at the same time.
and in this case, in each country's language.
Since it is possible to apply, it will be handled under the FTA.
It is not a matter of
Discussion later
copyright related
Private reproduction prohibited
Strengthening
general ban Unless it is for commercial purpose or scale,
Requires finding of exception to prohibition
Discussion later
new plant varieties
Enhanced protection
Enhanced protection Adequate protection already at the level of international agreements
Therefore, the Japanese proposal
accept new duties and burdens
can't do it
Discussion later
border measures
Strengthening
Extending customs clearance suspension to intellectual property rights such as patent rights
expanded to
Excessive TRIPS-plus border measures impossible
It is necessary to prevent border measures from becoming trade barriers.
want
Discussion later
Civil/criminal relief Non-parents charged with infringement of intellectual property rights such as patent rights
Accusation
Not matters covered by the FTA, but each individual's own law.
It is a matter left to policy decisions.
Discussion later
PCT ISA/IPEA
mutual designation
Because the burden of examination is too heavy,
Currently not acceptable
The following is a proposal from the perspective of FTA negotiation strategy.
plan to propose
Discussion later
joint intellectual property rights
Establishment of a committee
This was followed by a discussion of the need for a joint committee. This was followed by a discussion of the need for a joint committee. Discussion later

 

Q & A

 

Patent infringement related

Q1. How do you deal with claims of patent infringement if they are legitimate?

A:
Suspension of exploitation: If a person who has received a warning from a patent holder determines that his or her exploitation infringes the patent right, he or she can avoid intentional liability by immediately discontinuing the manufacture, sale, or use of the product. Masu.

Establishment of license or succession of patent rights: If a person who has received a challenge from a patent holder determines that there is a need to continue manufacturing and selling the product, he or she may negotiate with the patent holder and obtain a license. After establishing the patent or having the patent rights assigned to you, you should put the patented invention into practice.

Request for non-exclusive license grant trial: If the person who receives a patent infringement claim has a use or conflict with another person's patent right as stipulated in Article 98 of the Patent Law, the person who received the claim of patent infringement shall comply with the provisions of Article 138 of the Patent Law. After obtaining a non-exclusive license through a non-exclusive license trial, the project can be implemented.

Settlement/Arbitration: If a patent infringement lawsuit is pending, it is preferable for a party accused of patent infringement to reach an amicable settlement with the plaintiff patent holder.

Q2. How do you deal with claims of patent infringement that are unreasonable?

A:
Claim of patent invalidity: If a patent right is determined to be infringed, but a defect in the patent right is also found, a patent invalidation trial can be filed. If you argue by presenting concrete evidence that there are grounds for invalidation of the patent, and the invalidation trial decision becomes final, the patent right will be extinguished retroactively to the time of filing, so patent infringement will not be established.

Allegation that it does not fall within the scope of rights: If the person receiving the allegation of infringement claims that his/her exploited invention is a separate invention from the patented invention or is a publicly known invention, the exploited invention does not fall within the scope of rights for the patented invention. If a lawsuit is pending in court, you can cite such reasons and submit an expert's (patent attorney's) opinion to the court. Additionally, you can request a trial to confirm the scope of your rights to the Japan Patent Office and submit the results to the court.

Asserting the existence of a license: If a license exists, this is legitimate use and does not constitute patent infringement, so make a claim regarding this, and if the patented invention was already being worked before the patent application was filed. should claim that it has a non-exclusive license by prior use pursuant to Article 103 of the Act.

Q3. How should a person who receives a patent infringement warning respond?

A:
First, you should check the patent registry to see if the warning is from a legitimate right holder, whether the patent right has been transferred, and whether the patent right is still valid and has not been extinguished.
Also, confirm whether the infringement claim is a warning to exercise the right to claim compensation, or whether it is a warning or filing a lawsuit against infringement of a patent right, and identify the patent right that is the subject of the infringement. It is necessary to accurately understand the technical content (patent claim standards) of the right. Once the content of the infringement claim has been determined, research is conducted to determine whether the practiced invention is the same as the patented invention, whether the patented invention was publicly known before the application was filed, the state of the art at the time of the application, etc. through related documents, and to check the relevant laws. You should be fully aware of these issues and take appropriate measures, such as filing a patent invalidation claim or reaching a settlement.

Q4. Is there a way to confirm whether patent infringement is necessary through a patent trial?

A:
Determination as to whether or not a patent right is infringed is a specific form of litigation, and is carried out through civil/criminal litigation. However, as a type of patent trial, you can confirm whether or not another person's implementation activities fall within the scope of your own rights through a "trial to confirm the scope of rights" (Article 135 of the Patent Law). 
A trial to confirm the scope of a patent right is not simply a trial to determine the scope of a patent right; it is also a trial to determine which objects, centering on the patented invention, actively belong to the scope of the patent right, or passively determine which objects do not belong to the scope of the patent right. Tell the referee to confirm that.
 Types of trials for confirmation of the scope of rights include: 1) Proactive trial for confirmation of the scope of rights: The patentee makes a claim against the person who does not have the right to implement the "invention subject to confirmation," and therefore, the purpose of the trial is " 2) Negative trial to confirm the scope of rights: A non-proprietor implementer of the “invention subject to confirmation” makes a claim against the patentee as a counterparty. Therefore, the purpose of the request for appeal may be to request a trial decision stating that the "invention subject to confirmation" does not fall within the scope of the patented invention.

Q5. Should a complaint be filed in order to criminally punish a patent infringer?

A:
If a patent right or exclusive license is intentionally infringed, the patent holder can pursue criminal liability against the infringer. Patent infringement is a crime in which the patentee must file a complaint (Article 225 of the Patent Law), and the period for filing a complaint should be within six months from the day the person becomes aware of the culprit (Article 230 of the Criminal Procedure Law). 
 Patent infringers are punished with imprisonment for up to 225 years or a fine of up to 230 million yen (Patent Law Article 231), and representatives of corporations, agents of corporations or individuals, employees and other employees of the corporation Or, if an infringement is committed in relation to an individual's business, the relevant corporation or individual will also be subject to a certain fine (Article XNUMX of the Patent Law). In addition, the object that constituted the infringing act or the object resulting from the infringing act must be confiscated, or a declaration must be made that the object should be delivered to the victim at the request of the infringer (Patent Law Article XNUMX).

Q6.What are the requirements for claiming damages for patent infringement?

A:
The requirements for claiming damages for patent infringement are the same as those for general damages claims. First, there must be an illegal act by the infringer, and the infringer either knew that his act would infringe the patent right (intentionally) or did not take due care and did not know (negligently) that the infringer acted infringingly. Damage should be caused by Under the Patent Act, the infringer's negligence is presumed based on the fact that the patented invention is publicly announced through patent gazettes, etc. (Article 130 of the Patent Act), and when calculating the amount of damages, the amount of damages is estimated based on the sales volume. (Article 128 of the Patent Law).

Q7. Can a non-exclusive licensee of a patent right claim infringement if the patent right is infringed?

A:
A patentee or exclusive licensee can request that a person who has infringed or is likely to infringe their rights stop such infringement (Article 126 of the Patent Law). In addition, a company can claim compensation for damages from a person who intentionally or negligently infringes its own patent rights or exclusive license (Article 128 of the Patent Law). Therefore, the non-exclusive licensee cannot directly claim legal remedies, and the patentee or exclusive licensee must become the claimant.

Q8. Can a patentee enforce his rights against a person who infringes his patent right if he is not commercially using his patented invention? Also, what are the remedies available in the event of infringement?

A:
Since a patent right that has been established and registered has exclusive rights, it is possible to exercise the right even if the patentee has not implemented the patented invention. In the event of patent infringement, the legal remedies for the infringement are (1) civil remedies such as the right to claim non-infringement, the right to claim compensation for damages, the right to claim restoration of credit, and the right to claim restitution of unjust enrichment ( 2) As a criminal remedy, if a patent right is "intentionally" infringed, the patentee can "sue" and pursue the crime of infringement; in the case of a corporation, the "infringer (employee)" Both penalties apply to ``corporations (users), etc.,'' and the infringer will be sentenced to imprisonment for up to 7 years or a fine of up to 1 million won.

Q9. I am trying to send a warning letter because a third party is infringing my patented invention. What is the method and procedure for sending the warning letter?

A:
A warning letter can be sent directly by the right holder or applicant to the unauthorized infringer without going through a patent attorney.The warning letter can be sent directly to the infringer by informing the other party that the purpose of sending the warning letter is a patent application or a registered patented invention, and then receiving compensation. This is to provide a basis for filing a claim or claiming compensation for damages.
 Therefore, documents certifying that the act of another person infringes on one's own rights and that it is possible to claim a remedy according to the infringement of the patent application or a registered patented invention ( It is normal to attach documents such as published or registered gazettes, patent certificates, etc., and send them by certified mail from the post office.

 

Q&A regarding international applications

Q1: Can I withdraw my international application after entering the national phase?

A:
 An international application can be withdrawn after entering the national phase, but even if the international application is withdrawn, the case of the application that entered the national phase will be proceeded separately, so if the national phase has been completed, the application may be withdrawn from the national phase. In order to withdraw a transitioned application, the withdrawal procedure should be followed in accordance with the domestic law of each designated country.

Q2: What should an applicant do to withdraw the request for international preliminary examination or the election of selected countries?

A:
 The applicant may notify the International Bureau of withdrawal before the expiration of 30 months from the priority date. If a letter of withdrawal (Form No. 49 of the Korean Patent Law Enforcement Regulations) is submitted to the International Preliminary Examining Authority, the International Preliminary Examining Authority will indicate the date of receipt of the letter and immediately send the letter to the International Bureau. To do. The notification will be deemed to have been submitted to the International Bureau on the date of receipt stated in the notification.

Q3: Can the applicant amend the description etc. at any time?

A:
 Amendments at the international search stage can be made within the scope of the claims within two months from the sending date of the international search report or 2 months from the priority date, whichever comes later (Article 16 of the Convention, however, the claims only, submitted only once to the International Bureau).

 At the international preliminary examination stage, it is possible from the time of requesting the international preliminary examination to the time before starting the preparation of the international preliminary examination report (Article 34 of the Convention, where the specification, scope of claims, drawings, etc. (can be submitted without).

Q4: If I am unable to submit a translation for international publication by the deadline, what are the amendment procedures?

A:
 If you do not submit a translation within the submission period (within 14 months from the priority date), you will be required to submit a translation for international publication and pay an additional fee.
 After preparing and submitting a translation for international publication within 16 months from the priority date, you must pay the additional fee (25% of the international application fee) by the next day using the reception number assigned.

Q5: What should I do to get my PCT international application published early?

A:
 PCT international applications are published by the International Bureau of WIPO immediately after 18 months from the priority date. In order to publish this early, the applicant must apply directly to the International Bureau for early publication and must pay a fee.
 Once an application for early publication is received, the International Bureau of WIPO will electronically publish the international application documents and international search report in the form of a pamphlet, and will send the published facts to the applicant and each designated Office.

Q6: What international application language should I choose when filing an international application?

A:
 The international application language is determined by the receiving Office.
 The languages ​​accepted by the Korean Patent Office for international applications are English or Japanese for international applications, and Korean, English, and Japanese for specifications.

Q7: Are there any exemptions or support systems for international application fees?

A:
 At the Korean Patent Office, you can receive a partial exemption from the international application fee when filing a PCT electronic application.
  – For international applications using PCT-SAFE Easy Mode, CHF 100 of the basic fee will be exempted (2006 won for July 7)
  – For international applications using PCT-SAFE Full Electronic, 300CHF of the basic fee will be exempted (2006 won for July 7)

Q8: How do I submit a translation for international search?

A:
 The translation should be submitted as an attachment to the international search translation submission form within one month from the date of receipt of the international application. If the translation is not submitted within the submission period, the international application translation will be submitted and added. You will be required to pay the fee and must submit it by the later of January from the date of notification or February from the date of receipt of the international application.
 If not submitted, the international application will be considered withdrawn.

Q9: Is it possible to make amendments to the description or drawings pursuant to Article 19 of the Convention?

A:
 it's not. Amendments pursuant to the provisions of Article 19 of the Treaty can only be made to the claims, and cannot be made to the description or drawings. Additionally, it can be submitted to the International Bureau only once.

Q10: Can amendments pursuant to Article 19 of the Convention include new matters?

A:
 Amendments cannot include new matter that must be within the scope of the international application when it was originally filed.

Q11: How should applicants utilize the international search report?

A:
 Applicants can decide whether to withdraw the international application and whether to amend the international application by referring to the prior art cited in the international search report.
 There are two ways to amend an international application: After receiving the international search report, you can directly submit an amendment (Article 19 amendment) to the International Bureau, and if you request an international preliminary examination, you can submit it to the International Preliminary Examining Authority. There is a way to submit a written amendment (Article 34 amendment).

Q12: By what time can I make amendments to the international preliminary examination? Also, where should I submit the written amendment?

A:
PCT international phase amendments include PCT Article 19 amendments and PCT Article 34 amendments. Amendments under Article 19 are for the applicant who has received the international search report to make amendments limited to the scope of the claims, and amendments under Article 34 are for the applicant who has requested international preliminary examination to make amendments before the preparation of the international preliminary examination report. This is to make amendments to the description, claims, and drawings. Amendments should be within the scope of the international application as originally filed.
Applicants may also submit amendments at the international preliminary examination stage with the demand, and may submit amendments thereafter. Simply, in order for the amended contents to be reflected in the International Preliminary Examination Report, the amendments should be submitted to the International Preliminary Examining Authority before the International Preliminary Examining Authority starts preparing the International Preliminary Examining Report. If amendments or submissions are submitted after the preparation of the international preliminary examination report has begun, they will not be considered in the international preliminary examination report.
Substitute sheets for all pages that will be different from those already submitted due to the amendment should be submitted in the written amendment, and a letter should be submitted together with a letter calling attention to the differences between the substitute sheets and the replaced sheets. Have to. Amendments and letters should be drawn up in the language of international publication if the international application was drawn up in that language, or in the language of publication of the international application if it was drawn up in a language other than the language of international publication.
If you select South Korea as the International Preliminary Examining Authority, you can prepare an amendment (completion, correction request) (Form Attachment No. 39) and submit it directly to the International Preliminary Examining Authority.

Q13: Can amendments pursuant to Article 34 of the Convention include new matters?

A:
 The applicant may not amend the international application beyond the scope of the international application as stated in the original application. If the written amendment contains new matters, the International Preliminary Examining Authority will state the purpose in the written opinion or the international preliminary examination report, and will prepare the international preliminary examination report as if there were no amendments. .

Q14: What should an applicant do after receiving the written opinion of the International Preliminary Examining Authority?

A:
 When an applicant receives a written opinion from the International Preliminary Examining Authority, the applicant can respond by submitting an Article 34 amendment (amendment to the description, etc. at the international preliminary examination stage) or a written opinion submission. If the applicant takes no action on the written opinion, the international preliminary examination report will be drafted negatively.

Q15: After receiving the International Searching Authority's written opinion, is there an opportunity to exchange opinions with the applicant regarding how to respond and the content of the written opinion?

A:
Although there are no explicit rules regarding how to deal with international applicants, it is possible to submit informal comments.
There is no opportunity to exchange opinions with the applicant regarding the contents of the written opinion.

 

 

Q&A regarding Korean trademark system

Q1: What is a trademark? Also, what kinds of things are similar to trademarks?

A:
A trade mark is a symbol, character, or figure used by a person engaged in the business of producing, processing, certifying, or selling products to distinguish the products related to his/her business from those of others. , three-dimensional shape, color, hologram, movement, or a combination of these, or anything else that can be visually recognized (Article 2, Paragraph 1, Item 1 of the Korean Trademark Act).
Most things that can be recognized visually, such as symbol marks, word marks, figure marks, combined marks of these marks, color marks, and three-dimensional marks, are recognized as trademarks, but sound marks, odor marks, and taste marks are recognized as trademarks. Trademarks that can only be perceived by the senses of hearing, smell, or taste, such as trademarks, cannot be registered under the Korean Trademark Law.
A mark that is not used to distinguish your product from another person's product is not a trademark, so even if it is used on a product, it does not mean that it is simply a design or a mark used to enhance the beauty of the product. , price indications that have nothing to do with identifying one's own or other products are not trademarks under the Trademark Law.
In a broad sense, the concept of trademark includes service marks, collective marks (geographical indication collective marks), and business marks in addition to trademarks.

Q2: What is a service mark?

A:
A "service mark" is a mark used by people in the service industry (advertising, banking, restaurant, etc.) to distinguish their service business from those of others, and is a trademark concept in a broad sense. Included in In other words, a trademark can be said to be an identification mark for "goods," and a service mark can be said to be an identification mark for "services (services)" (Article 2, Paragraph 1, Item 2 of the Korean Trademark Act).
A business name or logo (shape) of a business operator (company) can be registered as a trademark or service mark under the Trademark Act. Therefore, if you are starting a manufacturing business and belong to a primary or secondary industry, you can decide on designated products, apply for a trade name as a trademark, get it registered, and use it. Additionally, if your company operates a service business, you must apply for and register a service mark to use it in order to distinguish your service business from those of others. If you wish to use both a trade name and a mark, you must apply for each separately, but it is also possible to combine the trade name and mark and file an application as a single service mark.

Q3: What is a business mark?

A:
"Business mark" refers to a mark (symbols, letters, figures, etc.) used by a person running a non-profit business, such as the Korean Red Cross Society, to represent the business (Korean Trademark Law Article 2, Paragraph 1, Item 4). Examples: Korea Consumer Protection Agency, YMCA, Rotary Club
If you wish to register a business mark, you will need to submit an application for trademark registration (with a sample of the business mark attached) attached with a document that proves the management facts of the business (e.g. 'Articles of Incorporation' in the case of a corporation). It must be submitted to the Commissioner of the Patent Office.

Q4: What is a collective mark?

A:
A "collective mark" is a mark used directly by a corporation jointly established by persons engaged in the business of producing, manufacturing, processing, certifying, or selling products or in the service industry, or by an affiliated organization under the supervision of the corporation. A mark is a mark that a person uses for goods or services related to his or her business (Article 2, Paragraph 1, Item 3 of the Korean Trademark Act).

Q5: Please explain how to register the name of an organization (collective mark, business mark)

A:
If you wish to register the name of an organization, you can register it as a collective mark or a business mark.
When attempting to register a collective mark or business mark, it is sufficient to use the trademark application form and enter "collective mark" or "business mark" in the [Category of rights] column.
For collective marks, as in the case of trademarks or service marks, it is sufficient to specify the class in the "Classification of goods" in [Appended Table 1] and the "Classification of service industry" in [Appended Table 2] of the Enforcement Regulations of the Korean Trademark Act. Masu. In addition, unlike trademarks and service marks, business marks are not classified by industry (there are no designated categories), so it is sufficient to specify the scope of business for which they are intended to be used for non-profit purposes.

Q6: What is the difference between a trademark and a trade name? Can a trade name be registered as a trademark?

A:
A trademark is a mark that is attached to a product to distinguish it from others, and has the function of displaying the identity of the product, whereas a trade name is a name used by merchants (corporations and individuals) to identify themselves for business purposes. There is a function to display sales identity as . Trademarks are protected by trademark law, and trade names are protected by commercial law. However, if you wish to use your own trade name as a trademark, you can obtain trademark registration if it meets the requirements for trademark registration. However, it is not possible to apply for and obtain registration of another person's trade name that is widely known in society as your own trademark (Article 7, Paragraph 1, Item 6 of the Korean Trademark Act).

Q7: Can a domain be registered as a trademark (trade name)?

A:
A trademark is a mark attached to a product to distinguish one's own products from others, and a domain name is a combination of letters and numbers that corresponds to a numerical address (IP address) that corresponds to the address of a host computer on the Internet. Masu.
Domain names are also made up of alphabetic letters, numbers, and some special symbols, which are the constituent elements of trademarks, so if they meet the registration requirements under the Trademark Act, they can be registered as trademarks. However, you cannot simply register a domain name as a trademark without a specified product or industry.
The Korean Trademark Act stipulates various reasons why it cannot be registered as a trademark in Articles 6 and 7, so in order to be registered as a trademark, it must not conflict with these provisions. In particular, in the case of a domain name in the form of www.○○.com, “www” and “.com” are the parts that indicate the address of the domain name that anyone can use, so these parts should be taken into consideration during trademark examination. The remaining part (○○) will determine whether or not the trademark can be registered.

Q8: If a trademark is registered in Korea, will it be effective in other countries?

A:
Trademark registration is effective only in the country in which it is registered. Therefore, if you wish to receive protection in other countries (including North Korea), you must be separately registered under the laws of that country.

Q1: What is the one trademark/one application principle?

A:
A trademark registration application must be filed for each trademark by specifying one or more products that use the trademark within the product classification specified by the Ordinance of the Ministry of Commerce, Industry and Energy, and is based on the one trademark, one application principle. This principle means that it is not allowed to apply for more than one trademark at the same time in one application. To apply for two or more trademarks, you must file a separate trademark registration application for each (Article 1 of the Korean Trademark Act).
The principle of one trademark, one application is a basic principle that applies to new trademark registration applications, applications for additional registration of designated goods, and applications for renewal of the term of trademark rights.
The '97 Revised Korean Trademark Act' abolished the 98-trademark, 3-division, 1-application system from 1 and adopted the 1-trademark, multiple-division, 1-application system. It is now possible to specify and apply for both at the same time.

Q10: Can I register a trademark that is similar to an existing registered trademark?

A:
A trademark that is the same as or similar to another person's registered trademark (or service mark) and used for goods that are the same or similar to the designated goods (or service industry) cannot be registered as a trademark (Article 7, Section 1 of the Korean Trademark Act). Section No. 7).
However, if the trademark owner of an existing trademark and the applicant of a similar trademark are the same person, registration can be obtained for the same or similar products. However, even if it is the same/similar to another person's registered trademark (or service mark), the 'designated goods or designated service business' may be similar to the designated goods (or designated service business) of the registered trademark (or service mark). If not, trademark registration is permitted.

Q11: Is it possible to apply to change a business mark to a collective mark?

A:
Applications for conversion are only allowed between trademarks, service marks, and collective marks, so it is not possible to convert applications between collective marks and business mark registration applications (Article 19, Paragraph 5 of the Korean Trademark Act). Conversion applications are considered to have been filed when they were first filed, and are examined based on the original filing date, and applications must be filed until before a decision on whether or not to register the original application or a trial decision is finalized. (Article 19, Paragraph 3 of the Korean Trademark Act).

Q12: What should I do to register for trademark renewal?

A:
Trademark right renewal registration procedure
– In order to register for renewal of a trademark right, an application for renewal registration must be completed and submitted within one year before the expiration of the trademark right term. However, if you do not apply for renewal within this period, you can apply for renewal of the term within six months after the expiration of the term (Article 1 of the Korean Trademark Act).
– When submitting an application for trademark renewal registration, if the applicant's personal information on the applicant code is different from the personal information of the registrant in the registration register, then according to the Korean Trademark Law Enforcement Regulations, You must submit the "Registration Application Form for Change of Registered Name Display (Correction)" and carry out procedures for changing or correcting the registered name display. In other words, if the personal information on the applicant code does not match, you must submit an “Applicant Information Change (Correction) Request Form” and change (revise) the information so that it matches.

Trademark renewal registration application fee
– The fee for filing in writing is 1 won per product category (66,000 won online); if the renewal registration application fee is to be paid additionally after the expiration of the term of trademark right, the fee for filing in writing is 56,000 won for each product category. The price is 1 won (95,000 won online).

*The revised Korean Trademark Law, which came into effect on July 2001, 7, abolished the provision that forced the application to be rewritten to the International Classification of Goods when applying for renewal of a trademark registered under the old law. It is now possible to update by Korean classification as well. In addition, the above-mentioned revised law newly established a "product classification conversion (rewriting) registration system" that allows a product classification to be rewritten between one year before the expiration date of the trademark right and six months after the expiration date of the trademark right. Therefore, if you apply for renewal registration in the Korean classification but do not rewrite it, you must be aware that the trademark right will expire on the expiration date of the next term. Therefore, if you wish to renew the next term, you must apply for product classification conversion (rewriting) registration within the period.

Q13: When registering for conversion (rewriting) of product classification at the same time as applying for registration for renewal of duration, the application for registration of conversion (rewriting) of product classification will be examined after the application for registration for renewal of duration is examined. Will it be done?

A:
If a product classification conversion (rewriting) registration is to be made at the same time as a registration application for a renewal of the term, the current Korean examination practice is to first examine the registration application for a renewal of the term, and then apply for a product classification conversion (rewriting) registration. We will conduct an examination regarding.

Q14: Please explain how to apply for additional registration of designated products.

A:
Specifying the product used in the trademark
– When filing an application for trademark registration, you must specify one or more products that use the trademark within the classification of the trademark for which you want protection and the products specified by the Korean Ministry of Commerce, Industry and Energy Ordinance. (Article 1 of the Korean Trademark Act).
– The attached table of the Enforcement Regulations of the Korean Trademark Act clearly states the classification of 1 products from Class 34 to Class 34 and the classification of service industry into 35 classes from Class 45 to Class 11.
In the case of South Korea, since March 98, 3, the International Classification of Goods (NICE Classification) determined by the NICE Agreement on the International Classification of Goods and Services has been adopted for the purpose of registering marks.

Application for additional registration of designated products
– A trademark registration applicant can designate one or more products at the same time when filing a trademark registration application, but if it is necessary to add designated products after filing a trademark registration application or after trademark registration, a trademark registration applicant may designate one or more products at the same time. You can apply to add products.

* Due to the 'Multi-category 98 application system' that came into effect on March 3, 1, additional registration targets can be added not only within the same product category but also for other product categories. It is possible to apply and register.

a. How to register additional specified products
– Write (select) “Application for additional registration of designated goods” in the trademark registration application and submit it.

b. Additional registration fee for designated products
The application fee for additional registration of designated products is 1 won per product category when submitted in writing (66,000 won when submitted online), and the registration fee for an application for additional registration of designated products is per product category. The fee is 56,000 won (the registration fee for paper and online submissions is the same) (Article 1 of the Korean Patent Fee Collection Regulations).

Q15: What is the first-to-file principle?

A:
The first-to-file system means that only those who apply first based on the trademark filing date can receive trademark registration. (Korean Trademarks (Article 8, Paragraph 1 of the Act).

If there are two or more applications for trademark registration on the same date, only the applicant determined through consultation among the applicants can receive the registration. If the consultation is unsuccessful or impossible, the Commissioner of the Japan Patent Office Applicants eligible for trademark registration will be determined by lottery. Unlike the Korean Patent Act and Design Protection Act, the reason why one applicant is granted registration through a lottery is that applications that have been abandoned or rejected are not granted the status of first application, so competing applications This is because if both applications are rejected, a contradiction will occur in which the third-party applicant will be required to register the later applications.

Q16: Can I claim priority when filing a trademark application?

A:
The Trademark Law does not have a system for claiming domestic priority, and priority can only be claimed based on treaties (Paris Convention, etc.). The priority system based on a treaty under the Trademark Act (Article 20 of the Korean Trademark Act) is a system in which nationals of a country that has granted priority rights to trademark registration applications to South Korea under the treaty, ) in South Korea (hereinafter referred to as 'earlier application'), and then apply for trademark registration in South Korea (second country) (hereinafter referred to as 'later application') and claim priority, This is a system in which the application date of certain regulations under the Trademark Act (Article 1 First Application) is regarded as the earlier filing date. The same applies to cases where priority is claimed by filing a later application in Korea (Article 2, Paragraph 8 of the Korean Trademark Act).

A person seeking to claim priority must file an application within six months from the date of the first application on which the priority is being claimed; When filing an application for registration, the purpose of the trademark registration application, the name of the country where the first application was filed, and the date of application must be stated in the application form.

The person claiming priority must submit a document stating the date of the trademark registration application recognized by the government of the country where the first application was filed, as well as a certified copy of the trademark and designated product, to the Commissioner of the Japan Patent Office within three months from the date of the trademark registration application. If the above documents are not submitted within the specified period, the priority claim will become invalid.

Q17: Is it possible to apply for trademarks for holograms and movement trademarks?

A:
From July 2007, 7, hologram trademarks, movement trademarks, and trademarks consisting only of color will also be protected under the Korean Trademark Law. (Article 1, Paragraph 2, Item 1 of the Korean Trademark Act)

Q18: What will happen if I do not apply for product classification conversion (rewriting) within the registration period?

A:
Trademark rights will expire on the day following the expiration date of the next term following the end of the product category conversion (rewriting) registration application period.
If only some designated products are listed in the product category conversion (rewriting) registration application, the designated products that are not listed will disappear on the day of conversion (rewriting) registration. However, if a registration for conversion (rewriting) of product classification is approved before the expiration date of the trademark right, the registration will expire on the day after the expiration date of the trademark right. (Article 6-2 of the Korean Trademark Act)


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