República de Corea

Patent Fees

(1)

A person who seeks to register establishment of a patent right under Article 87(1) shall pay a patent fee for a period of three years from the date sought for registration of establishment of a patent right (referred to as “registration date of establishment” , hereinafter), and a patentee shall pay every annual patent fee from the registration date of establishment of the patent right concerned every year.

(2)

Notwithstanding paragraph (1), a patentee may pay the patent fee for multiple years in the order of or for the entire term of the patent right.

(3)

The patent fees, method of payment, period for payment and other necessary matters under paragraph (1) and (2) are prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 80

Payment of Patent Fees by Interested Party

(1)

Regardless of the intent of a person liable to pay patent fees, any interested party may pay the patent fees.

(2)

An interested party who has paid the patent fees under paragraph (1) may demand reimbursement of the expenses to the extent that the person liable to pay is currently making a profit.

Article 81

Late Payment of Patent Fees etc.

(1)

A patentee or a person seeking to register establishment of a patent right has a period of six months after the expiry of the payment period prescribed under Article 79(3) to pay the patent fees late.

(2)

Where the patentee or the person seeking to register establishment of a patent right pays patent fees late under paragraph (1), the patentee or person must pay an amount prescribed by Ordinance of the Ministry of Knowledge Economy, but not more than twice the patent fees to be paid.

(3)

Where a patentee or a person seeking to register establishment of a patent right fails to pay the patent fees within the period under paragraph (1) (or fails to pay the remaining

portion within the period of remainder payment when the period for late payment has expired but the period of remainder payment designated in Article 81bis(2) has not expired), the patent application is deemed to have been abandoned, and the patent right concerned is deemed to have been extinguished retroactively from the next day of the expiry date of the period for the patent fees paid under Article 79(1) or (2).

Article 81bis

Remainder Payment of Patent Fees

(1)

Where a patentee or a person seeking to register establishment of a patent right fails to pay any portion of the patent fees within the period of payment under Articles 79(3) or 81(1), the Commissioner of the KIPO shall order payment of the remaining portion.

(2)

A person ordered to pay the remaining portion under paragraph (1) has a period of one month after the date on which the order was received to pay the remaining portion of the patent fees.

(3)

A person who pays the remaining portion under paragraph (2) shall pay an amount prescribed by Ordinance of the Ministry of Knowledge Economy, but not more than twice the remaining portion when the remainder payment falls under either of the following subparagraphs:

(i)

where the remaining portion of the patent fees is paid after the expiry of the payment period under Article 79(3); or

(ii)

where the remaining portion of the patent fees is paid after the expiry of the late payment period under Article 81(1).

Article 81ter

Restoration etc. of a Patent Application and Patent Right by Late Payment or Remainder Payment of Patent Fees

(1)

Where a patentee or a person seeking to register establishment of a patent right fails to pay the patent fees within the period of late payment under Article 81(1) or fails to pay the remaining portion within the period of remainder payment under Article 81bis(2) for non-attributable reasons, the patentee or the person may pay late patent fees or pay the remaining portion within fourteen days of the date on which the reasons cease to exist, but not later than six months after the expiry date for either the period of late payment or the period of remainder payment, whichever comes later.

(2)

Notwithstanding Article 81(3), a person who has paid late patent fees or paid the remaining portion under paragraph (1) is deemed not to have abandoned the patent application, and the patent right concerned is deemed to have continuously existed

(3)

Where the patent right of a patented invention that is being worked is extinguished because of a failure to pay the patent fees within the period of late payment under

Article 81(1) or the remaining portion of fees within the period of remainder payment under Article 81bis(2), the patentee may apply to restore the extinguished right by paying three times the patent fees referred to in Article 79 within three months of the expiry of the period of late payment or the period of remainder payment. In such cases, the patent right is deemed to have continuously existed.

(4)

The effects of a patent application or a patent right under paragraph (2) or paragraph

(3) do not extend to another person's working of the patented invention in the period from the date on which the period for late payment of the patent fees expires to the date of the payment or remainder payment of the patent fees (referred to as "the period of limited effect", hereinafter).

(5)

During the period of limited effect, where a person has been working as a business or making preparations to work an invention in good faith in the Republic of Korea and the invention pertains to a patent application or patent right referred to in paragraph (2) or paragraph (3), the person is entitled to have a non-exclusive license for the patent that pertains to the invention of the patent application, within the scope of the objective of the invention or the business related to the invention that the person is working or making preparations to work.

(6)

A person granted a non-exclusive license under paragraph (5) shall pay reasonable remuneration to the patentee or exclusive licensee.

Article 82

Official Fees

(1)

A person undertaking a patent-related procedure shall pay the official fees.

(2)

Where the number of claims is increased because of amendments to the description attached to the written patent application after a request for examination made by a person other than the applicant, the applicant shall pay the fees for the request for examination corresponding to the increased number of claims.

(3)

The official fees under paragraph (1), the method and period for payment and other necessary matters are prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 83

Reduction or Exemption of Patent Fees or Official Fees

(1)

Notwithstanding Articles 79 and 82, the Commissioner of the KIPO shall grant an exemption from the payment of patent fees or official fees in the following cases:

(i)

official fees or patent fees that correspond to patent applications or patent rights belonging to the State; or

(ii)

fees related to requests for an invalidation trial made by an examiner under Articles 133(1), 134(1) or 137(1).

(2)

Notwithstanding Articles 79 and 82, where a patent application related to the invention of an entitled person under Article 5 of the National Basic Livelihood Security Law or a person prescribed by Ordinance of the Ministry of Knowledge Economy has been filed, the Commissioner of the KIPO may reduce or exempt from payment the fees prescribed by Ordinance of the Ministry of Knowledge Economy and the patent fees for the first three years.

(3)

A person taking advantage of the reduction or exemption of patent fees or official fees under paragraph (2) shall submit the documents prescribed by Ordinance of the Ministry of Knowledge Economy to the Commissioner of the KIPO.

Article 84

Refund of Patent Fees etc.

(1)

Patent fees and official fees that have been paid may not be refunded unless requested by a person who has paid the fees in any of the following cases:

(i)

the patent fees or official fees paid by mistake;

(ii)

a portion corresponding to the patent fees for the years after the year in which a trial decision to invalidate the patent became final and binding;

(iii) a portion corresponding to the patent fees for the years after the year in which a trial decision to invalidate the registration of extension of the term of a patent right became final and binding; or (iv) the patent application fees and the fees for requesting an examination for a patent application that was withdrawn or abandoned within one month from the filing of the patent application (excluding a divisional application, a converted application and a patent application with a request for an accelerated examination).

(2)

Where there is a case which falls under any subparagraph of paragraph (1), the Commissioner of the KIPO shall issue a notification to the person who has made the payment.

(3)

A person may not request a refund under the proviso of paragraph (1) of this Article if more than three years have elapsed since the person received the notification referred to in paragraph (2) of this Article.

Article 85

Patent Register

(1)

The Commissioner of the KIPO shall keep the Patent Register at the KIPO and shall register the following matters:

(i)

the establishment, transfer, extinguishment, restoration, restriction on disposal or extension of the term of a patent right;

(ii)

the establishment, maintenance, transfer, modification, extinguishment, or restriction on disposal of an exclusive or non-exclusive license; and

(iii) the establishment, transfer, modification, extinguishment or restriction on the disposal of a pledge on a patent right or on an exclusive or non-exclusive license.

(2)

All or parts of the Patent Register under paragraph (1) may be stored on magnetic tapes etc..

(3)

Necessary matters concerning the items, procedures etc. of registration not stipulated in paragraphs (1) or (2) are prescribed by Presidential Decree.

(4)

The description and drawing(s) of a patented invention and documents prescribed by Presidential Decree are deemed to be part of the Patent Register.

Article 86

Issuance of a Patent Registration Certificate

(1)

When a patent right has been registered, the Commissioner of the KIPO shall issue a patent registration certificate to the patentee.

(2)

Where a patent registration certificate does not coincide with the patent register or other documents, the Commissioner of the KIPO shall reissue the patent registration certificate with amendments, or issue new patent registration certificate upon request or ex officio.

(3)

When a trial decision for a correction under Article 136(1) has become final and binding, the Commissioner of the KIPO shall issue a new patent registration certificate in accordance with the trial decision.

Extension of the Term of a Patent Right

Notwithstanding Article 88(1), where authorization or registration under other laws or regulations is required to work a patented invention and an extended period has been taken to complete the activity tests, safety test etc. necessary to obtain the authorization or registration (referred to as "an authorization etc.", hereinafter), and where the patented invention is prescribed by Presidential Decree, the term of the patent right may be extended by a period up to five years during which the patented invention could not have been worked.

Article 90

Application to Register an Extension of the Term of a Patent Right

(1)

A person seeking to register an extension of the term of a patent right under Article 89 (referred to as "an applicant for registration of extension”, hereinafter) shall submit a written application to register an extension of the term of a patent right to the Commissioner of the KIPO, stating the following:

(i)

the name and residential address of the applicant for registration of extension (and, if the applicant is a juridical person, the name and business address);

(ii)

the name and residential or business address of the representative, if any (and, if the representative is a patent juridical person, the name and business address of the patent juridical person and the name of the designated patent attorney);

(iii) the patent number for which the extension is sought and the indication of the scope of claims of that patent;

(iv)

the term of extension sought;

(v)

the matters for authorization etc. under Article 89; and

(vi)

the grounds for extension as prescribed by Ordinance of the Ministry of Knowledge Economy (accompanied by materials substantiating the grounds).

(2)

An application to register an extension of the term of a patent right shall be filed within three months after the date on which the authorization etc. under Article 89 was obtained; however, the application may not be filed when the unexpired period of the

term prescribed in Article 88 is less than six months.

(3)

Where a patent is jointly owned, an application to register an extension of the term of a patent right shall be jointly filed by all owners.

(4)

Where an application to register an extension of the term of a patent right has been filed, the term is deemed to have been extended, unless a decision to reject an application to register an extension of the term of a patent right under Article 91(1) has become final and binding.

(5)

Where an application to register an extension of the term of a patent right has been filed, the Commissioner of the KIPO shall publish the matters prescribed in paragraph (1) in the Patent Gazette.

(6)

An applicant for registration of extension may amend the matters of paragraph (1)(iii) to

(vi) in the written application to register an extension (except the patent number of the patent right to be extended, as referred to in subparagraph (iii)) if the amendment is made before the examiner delivers a certified copy of the decision of granting or rejecting of the application to register an extension. However, after receiving a notification of the grounds for rejection in which mutatis mutandis application results under Article 93, the applicant for registration of extension may only make amendment during the period for submitting arguments to the notification of the grounds for rejection.

Article 91

Decision to Reject an Application to Register an Extension of the Term of a Patent Right

(1)

An examiner shall reject an application to register an extension of the term of a patent right when it falls under any of the following subparagraphs:

(i)

where an authorization etc. under Article 89 is considered unnecessary for working a patented invention;

(ii)

where a patentee or a person who has an exclusive or registered non-exclusive license under the patent right has not obtained the authorization etc. under Article 89;

(iii) where the term of extension sought exceeds the period in which the patented invention could not have been worked;

(iv)

where the applicant for registration of extension is not the patentee; or

(v)

where the application to register an extension violates Article 90(3);

(vi)

deleted.

(2)

The period referred to in paragraph (1)(iii) does not include any period that has elapsed for reasons attributable to the patentee.

Article 92 Decision etc. to Register an Extension of the Term of a Patent Right

(1)

Where an examiner finds no grounds under any subparagraph of Article 91(1) to reject an application to register an extension of the term of a patent right, the examiner shall make a decision to register the extension.

(2)

Where a decision to register the extension has been made under paragraph (1), the Commissioner of the KIPO shall register the extension of the term of the patent right in the Patent Register.

(3)

Where the registration under paragraph (2) has been made, the matters prescribed in the following subparagraphs shall be published in the Patent Gazette:

(i)

the name and residential address of the patentee (if the patentee is a juridical person, the title and business address);

(ii)

the patent number;

(iii) the date of registration of the extension;

(iv)

the term of the extension; and

(v)

the matters for authorization etc. under Article 89.

Article 93 Mutatis Mutandis Application of Provisions

Articles 57(1), 63, 67 and 148(i) to (v) and (vii) apply mutatis mutandis to the examination of an application to register an extension of the term of a patent right.

Article 94 Effects of Patent Right

A patentee shall have the exclusive right to work the patented invention as a business; provided, however, that where an exclusive license regarding the patent right is granted to a licensee, this shall not apply to the extent that the exclusive licensee is licensed to exclusively work the patented invention under Article 100(2).

Article 95 Effects of Patent Right with an Extended Term

The effects of a patent right whose term has been extended do not extend to any other acts except working the patented invention for products whose authorization etc. was the basis for registering the extension (where the authorization etc. was obtained for a specific use of the product, for products applied to the specific use).

Article 96

Limitations on a Patent Right

(1)

The effect of a patent right does not extend to any of the following subparagraphs:

(i)

working a patented invention for research or experimental purposes (including researches and experiments for item permits and reports of medical supplies under the Pharmaceutical Affairs Act and for registration of agrochemicals under the Agrochemical Management Act);

(ii)

vessels, aircraft or vehicles merely passing through the Republic of Korea, or machinery, instruments, equipment or other accessories used thereon; or

(iii) products existing in the Republic of Korea prior to the time of filing of the patent application.

(2)

The effects of a patent right for the invention of medicines used for diagnosis, therapy, alleviation, medical treatment or prevention of human disease (referred to as "medicines", hereinafter) that are manufactured by mixing two or more medicines, or for the invention of processes for manufacturing medicines by mixing two or more medicines, do not extend to acts of dispensing medicines under the Pharmaceutical Affairs Act or to medicines manufactured by such acts.

Article 97

Scope of Protection of Patented Invention

The scope of protection conferred by a patented invention shall be determined by the subject matter described in the scope of claims.

Article 98

Relation to Patented Invention etc. of Another Person

Where a patented invention would use another person's patented invention, registered utility model or registered design or similar design derived from an application filed before the filing date of the patent application concerned, or where a patent right conflicts with another person's design right or trademark right derived from an application filed before the filing date of the patent application concerned, the patentee, exclusive licensee or non-exclusive licensee may not work the patented invention as a business without a permission from the owner of the patent right, utility model right, design right or trademark right.

Article 99 Transfer and Joint Ownership of a Patent Right

(1)

A patent right may be transferred.

(2)

Where a patent right is jointly owned, the owners may not transfer or establish a pledge their individual share without the consent of the other owners.

(3)

Where a patent right is jointly owned, and unless otherwise agreed in a contract of the owners, each owner may individually work the patented invention without the consent of the other owners.

(4)

Where a patent right is jointly owned, an owner may not grant an exclusive license or a non-exclusive license of the patent right without the consent of the other owners.

Article 100 Exclusive License

(1)

A patentee may grant an exclusive license on the patent right to others.

(2)

An exclusive licensee to whom an exclusive license under paragraph (1) is granted, has the exclusive right to work the patented invention as a business to the extent allowed in the license contract.

(3)

Except when an exclusive license is transferred with the underlying business or by inheritance or other general succession, an exclusive licensee may not transfer the license without the consent of the patentee.

(4)

An exclusive licensee may not establish a pledge or grant a non-exclusive license on an exclusive license without the consent of the patentee.

(5)

Article 99(2) to (4) applies mutatis mutandis to an exclusive license.

Article 101 Effects of Registration of a Patent Right and an Exclusive License

(1)

Unless registered, the following patent-related matters have no effect:

(i)

the transfer (except through inheritance or other general succession) or extinguishment by abandonment, or restriction on disposal of a patent right;

(ii)

the establishment, transfer (except through inheritance or other general succession), modification, extinguishment (except through confusion) or restriction on disposal of a exclusive license; or

(iii) the establishment, transfer (except through inheritance or other general succession), modification, extinguishment (except through confusion) or restriction on disposal of a pledge on a patent right or exclusive license.

(2)

An inheritor or a general successor shall immediately notify The Commissioner of the KIPO of the inheritance or other general succession related to a patent right, an exclusive license or a pledge under paragraph (1).

Article 102

Non-exclusive License

(1)

A patentee may grant to others a non-exclusive patent license on the patent right.

(2)

A non-exclusive licensee is entitled to work the patented invention as a business to the extent prescribed in this Act or allowed in the license contract.

(3)

A non-exclusive license granted under Article 107 shall be transferred with the underlying business.

(4)

A non-exclusive license under Article 138 of this Act, Article 32 of the Utility Model Act or Article 70 of the Industrial Design Act shall be transferred with the patent right, utility model right or design right concerned and is extinguished when the concerned patent, utility model or design right concerned is extinguished.

(5)

A non-exclusive license other than those described in paragraphs (3) and (4) may not be transferred without the consent of the patentee (or the patentee and the exclusive licensee for a non-exclusive license on an exclusive license), unless the transfer is made with the underlying business or through inheritance or other general succession.

(6)

A pledge may not be established on a non-exclusive license other than those under paragraphs (3) and (4) without the consent of the patentee (or the patentee and the exclusive licensee for a non-exclusive license on an exclusive license).

(7)

Article 99(2) and (3) applies mutatis mutandis to a non-exclusive license.

Article 103

Non-exclusive License by Prior Use

A person who, without knowledge of the content of an invention claimed in a patent application, made an invention identical to the said invention or learned the invention from a person who made an invention identical to the said invention, and has been working the invention or making preparations to work the invention in the Republic of Korea at the time of the filing of the patent application, is entitled to have a non-exclusive license on the patent right for which the patent application was filed, within the scope of the objective of the invention or the business related to the invention that the person is working or making preparations to work.

Article 104

Non-exclusive License Due to Working before Registration of a Request for an Invalidation Trial

(1)

Where a person under any of the following subparagraphs has been working a patented invention as a business in the Republic of Korea, or has been making preparations to work the patented invention, before the registration of a request for an invalidation trial of the concerned patent or utility model, without knowing that the patented invention is subject to invalidation, the person is entitled to have a non-exclusive license on that patent right or a non-exclusive license on the exclusive license to the patent right existing when the patent or utility model registration was invalidated, within the scope of the objective of the invention or device and the business related to the invention that the person is working or making preparations to work:

(i)

the original patentee, where one of two or more patents granted for the same invention has been invalidated;

(ii)

the original owner of a utility model right, where a patented invention and a device registered as a utility model are the same and the utility model registration has been invalidated;

(iii) the original patentee, where the patent has been invalidated and a patent for the same invention has been granted to a lawful holder;

(iv)

the original owner of a utility model right, where the utility model registration has been invalidated and a patent for the same invention as the device has been granted to a lawful holder; or

(v)

in the cases referred to in subparagraphs (i) to (iv), a person who, at the time of registering a request for an invalidation trial of the invalidated patent right or utility model right, has been granted and registered an exclusive license, a non-exclusive license or a non-exclusive license on the exclusive license; however, a person falling under Article 118(2) is not required to register the license.

(2)

A person entitled to have a non-exclusive license under paragraph (1) shall pay reasonable remuneration to the patentee or exclusive licensee.

Article 105

Non-exclusive License after a Term of a Design Right Expires

(1)

Where a design right under an application that was filed prior to or on the filing date of a patent application and resulted in the granting of a registration conflicts with the patent right and the term of the design right has expired, the owner of the design right is entitled, to the extent of the design right, to have a non-exclusive license on the patent right concerned or the exclusive license existing at that time when the design right expired.

(2)

Where a design right under an application that was filed prior to or on the filing date of a patent application and resulted in the granting of a registration conflicts with the patent right and the term of the design right has expired, a person who has an exclusive license on the design right existing at the expiry or a non-exclusive license which is effective under Article 118(1) of this Act, which applies mutatis mutandis under Article 61 of the Design Law related with the design right or the exclusive license, is entitled to have a non-exclusive license on the patent right concerned or on the exclusive license existing at that time when the design right expired, to the extent of the expired right.

(3)

A person entitled to have a non-exclusive license under paragraph (2) shall pay reasonable remuneration to the patentee or exclusive licensee.

Article 106

Expropriation of Patent Right etc.

(1)

Where a patented invention falls under either of the following subparagraphs in time of war, uprising, or other similar emergency, the Government may expropriate the patent right (in the case of subparagraph (i) only), work the patented invention or require a person other than the Government to work the patented invention:

(i)

where the working of the patented invention is necessary for national defense; or

(ii)

where the noncommercial working of the patented invention is necessary for the public interest.

(2)

Where a patent right is expropriated, the rights to the patented invention other than the patent right are extinguished.

(3)

If the Government expropriates a patent right, or the Government or a person other than the Government works the patented invention under paragraph (1), the Government or that person shall pay reasonable remuneration to the patentee, exclusive licensee or non-exclusive licensee.

(4)

Matters necessary concerning expropriating and working a patent right as well as payment of remuneration are prescribed by Presidential Decree.

Article 107

Award for the Grant of a Non-exclusive License

(1) Where a patented invention falls under any of the following subparagraphs, a person who intends to work the patented invention may request the Commissioner of the KIPO to make an award (referred to as "an award", hereinafter) for the establishment of a non-exclusive license, provided no agreement is reached despite having a consultation (referred to as "a consultation" in this Article) under reasonable conditions with the patentee or exclusive licensee on the grant of a non-exclusive license for the patented invention or a consultation is impossible to arrange; however, the person may request an award even in the absence of a consultation if the patented invention is to be worked noncommercially for the interests of the public or in any case that falls under subparagraph (iv):

(i)

where the patented invention has not been worked for more than three consecutive years in the Republic of Korea, except for natural disasters, unavoidable circumstances or other justifiable reasons prescribed by Presidential Decree;

(ii)

where the patented invention has not continuously been worked commercially or industrially in the Republic of Korea on a substantial scale during a period of three years or more without justifiable reasons, or where the domestic demand for the patented invention has not been satisfied to an appropriate extent and under reasonable conditions;

(iii) where working the patented invention noncommercially is necessary for the interests of the public; or

(iv)

where working the patented invention is necessary to remedy a practice determined to be unfair by the judicial or administrative process;

(v)

where working the patented invention is necessary for the export of medicine to a country (referred to as "an importing country" in this article) that intends to import the medicine (including effective ingredients that are necessary for the production of the medicine and diagnostic kits necessary for the use of the medicine) in order to treat diseases that threaten the health of the majority of its citizens.

(2)

Paragraph (1)(i) and (ii) of this Article shall not apply unless a period of four years has elapsed after the filing date of the application for the patented invention.

(3)

In making an award, , the Commissioner of the KIPO shall consider the necessity of each request.

(4)

When the Commissioner of the KIPO makes an award under subparagraphs (i) to (iii) or

(v)

of paragraph (1), the following conditions apply to the person for whom the award was made:

(i)

where the award is made under subparagraphs (i) to (iii) of paragraph (1), the non-exclusive license must be implemented for the primary purpose of meeting domestic demand; and

(ii)

where the award is made under subparagraph (v) of paragraph (1), all the medicine produced under the terms of the award must be exported to importing countries.

(5)

The Commissioner of the KIPO shall ensure that reasonable remuneration is given to every award. When making an award under subparagraph (iv) or (v) of paragraph (1), the Commissioner of the KIPO may consider the factors in each of the following subparagraphs:

(i)

where an award is made under subparagraph (iv) of paragraph (1), the purport to rectify unfair transactions; and

(ii)

where an award is made under subparagraph (v) of paragraph (1), the economic

value generated in importing countries by the working of the patented invention.

(6)

For semiconductor technology, a request for award may be made only in the cases set forth in subparagraph (1)(iii) (where the noncommercial working of the patented invention is permitted in a limited way for the interests of the public) and (1)(iv).

(7)

An importing country is limited to a country which is either a World Trade Organization (WTO) member country that has notified the WTO of the following particulars or a non-WTO member country listed in a Presidential decree, and which has notified the Republic of Korea of the following particulars:

(i)

the name of the medicine and the quantity required by an importing country;

(ii)

where the importing country is not one of the least developed countries listed in a resolution of the General Assembly of the United Nations, confirmation by the importing country that it has insufficient or no manufacturing capability to produce the medicine concerned; and

(iii) where the medicine concerned is patented in the importing country, confirmation by the importing country that it has granted or intends to grant a compulsory license.

(8)

The term medicine in paragraph (1)(v) of this Article refers to any of the definitions in the following subparagraphs:

(i)

patented medicine;

(ii)

medicine manufactured by means of a patented process ;

(iii) patented effective ingredients necessary for the production of the medicine; or (iv) patented diagnostic kits necessary for the production of the medicine.

(9)

The documents for submission and other necessary matters concerning a request for award are prescribed by Presidential Decree.

Article 108

Submission of Response

Where a request for an award has been made, the Commissioner of the KIPO shall delivers a copy of the written request to the patentee or exclusive licensee mentioned in the request and to any other persons with a registered right related to the patent, and shall give them an opportunity to submit a response within a designated period.

Article 109

Hearing of Opinion of the Intellectual Property Rights Dispute Committee and the Heads of Relevant Authorities

Before making an award, the Commissioner of the KIPO may hear an opinion of the Intellectual Property Rights Dispute Committee established under Article 41 of the Invention Promotion Act and the heads of relevant authorities and seek assistance from relevant administrative authorities or interested parties.

Article 110

Formalities etc. of Award

(1)

An award must be in writing and must state the reasons for the award.

(2)

The following matters must be specified in an award under paragraph (1):

(i)

the scope and duration of the non-exclusive license; and

(ii)

the remuneration for the license and the method and time of payment

(iii) where the award is made under Article 107(1)(v), the address of a Web site that publishes information on the following: the patented invention the medicine supplied by the patentee, exclusive licensee, or non-exclusive licensee (unless the license is granted by an award) any externally discernable packaging and markings and any other matters decided in the award; and (iv) where a person who is the subject of an award works the patented invention, any other matters of compliance with laws or treaties.

(3)

Except in justifiable circumstances, the Commissioner of the KIPO shall decide on an award within six months of the request date for an award.

(4)

Except for justifiable reasons, where a request for award under Article 107(1)(v) falls under paragraphs (7) and (8) of Article 107 and all the documents stipulated in Article 107(9) have been submitted, the Commissioner of the KIPO shall make an award for the establishment of a non-exclusive license.

Article 111

Delivery of Certified Copies of Award

(1)

Where an award is made, the Commissioner of the KIPO shall deliver a certified copy of the award to the parties and to any other persons with a registered right related to the patent.

(2)

Where a certified copy of an award has been delivered to the parties under paragraph (1), a consultation on the terms as specified in the award is deemed to have been held by the parties.

Article 111bis Changes of the Award Document

(1)

Where any change is required in the award document regarding the matters referred to in Article 110(2)(iii), the person who requested the award may submit to the Commissioner of the KIPO a request for the change and any evidentiary documents that confirm the reasons for the change.

(2)

Where the Commissioner of the KIPO acknowledges the reasonableness of a request made under paragraph (1) for a change in the award document, the Commissioner may change the matter specified in the award document. In such cases, the Commissioner shall hear the opinions of the interested parties.

(3)

Article 111 of this Act applies mutatis mutandis to paragraph (2) of this Article.

Article 112

Deposit of Remuneration

Under any of the following circumstances, a party obligated to pay remuneration under Article 110(2)(ii) shall deposit the remuneration:

(i)

where the party entitled to receive the remuneration refuses the remuneration or is unable to receive it;

(ii)

where an action under Article 190(1) has been brought concerning the remuneration; or

(iii) where the patent right or exclusive license is the subject of a pledge, unless the pledgee has consented.

Article 113

Lapse of Award

Where a person granted an award on an authorization fails to pay or deposit the remuneration (or the first installment of the payment, if the payment is to be made periodically or by installments) under Article 110(2)(ii) by the time the payment is due, the award loses its effect.

Article 114

Cancellation of an Award

(1)

Where a person who is granted an award falls under any of the following subparagraphs, the Commissioner of the KIPO may cancel the award ex officio or upon the request of any interested party. However, for subparagraph (ii), such action must protect the non-exclusive licensee’s lawful interests:

(i)

where working the patented invention is not within the purpose of the award;

(ii)

where the grounds for granting the award of a non-exclusive license disappear and are considered unlikely to reoccur ; or

(iii) where the matters stated in the award document under Article 110(2)(iii) or (iv) are violated without justifiable reasons.

(2)

Articles 108, 109, 110(1) and 111(1) apply mutatis mutandis to paragraph (1) of this Article.

(3)

Where the award is canceled under paragraph (1) of this Article, the non-exclusive license shall be extinguished from the time of cancellation.

Article 115 Restriction on Reasons for Objections to an Award

Where a request for an administrative trial has been filed under the Administrative Trial Act or a revocation action has been brought under the Administration Litigation Act for an award, the remuneration determined in the award shall not be a basis for objection.

Article 116 Cancellation of a Patent Right

(1)

Where a patented invention has not been continuously worked in the Republic of Korea for a period of two years or more from the date of the award under Article 107(1)(i), the Commissioner of the KIPO may cancel the patent right, ex officio, or upon the request of any interested party.

(2)

Articles 108, 109, 110(1) and 111(1) apply mutatis mutandis to paragraph (1) of this Article.

(3)

When a patent right is cancelled under paragraph (1) of this Article, the patent right is extinguished from the time of cancellation.

Article 117 Deleted

Article 118 Effects of Registration of a Non-exclusive License

(1)

When a non-exclusive license has been registered, it is also effective against any person who acquires the patent right or an exclusive license after the registration.

(2)

A non-exclusive license granted under Articles 81ter(5), 103 to 105, 122, 182 and 183 of this Act and Article 10(1) of the Invention Promotion Act has the same effect as prescribed under paragraph (1) of this Article even if it has not been registered.

(3)

The transfer, modification, extinguishment or restriction on disposal of a non-exclusive license or the establishment, transfer, modification, extinguishment or restriction on disposal of a pledge related to a non-exclusive license is not effective against a third party unless it is registered.

Article 119

Restriction on Abandonment of a Patent Right etc.

(1)

A patentee shall not abandon a patent right without the consent of the exclusive licensee, pledgee or non-exclusive licensee under Articles 100(4) or 102(1) of this Act and Article 10(1) of the Invention Promotion Act.

(2)

An exclusive licensee shall not abandon an exclusive license without the consent of the pledgee or non-exclusive licensee under Article 100(4).

(3)

A non-exclusive licensee shall not abandon a non-exclusive license without the consent of the pledgee.

Article 120

Effects of Abandonment

When a patent right or an exclusive or non-exclusive license is abandoned, the patent right or the license is extinguished from the time of abandonment.

Article 121

Pledge

Where a patent right or an exclusive or non-exclusive license is the subject of a pledge, the pledgee may not work the patented invention except as otherwise provided by a contract.

Article 122

Non-exclusive License Incidental to Transfer of Patent Right by Exercise of a Pledge

If a patentee works a patented invention before the establishment of a pledge on the patent right, the patentee is entitled to have a non-exclusive license on the patented invention even if the patent right is transferred by an auction etc.; in such a case, the patentee shall pay reasonable remuneration to the person to whom the patent right is transferred by the auction etc.

Article 123

Subrogation of Pledge

A pledge may be exercised against the remuneration under this Act or against remuneration or goods to be received for working the patented invention; however, a pledgee shall attach the remuneration or goods before the payment or delivery of the remuneration or goods.

Article 124

Extinguishment of a Patent Right in the Absence of a Successor

A patent right shall be extinguished if no successor exists at the time of succession.

Article 125

Report on Working a Patent

The Commissioner of the KIPO may require a patentee, exclusive licensee or non-exclusive licensee to report whether the patented invention has been worked, the extent of such working etc..

Article 125bis

The Title of Execution on Amount of Compensation and Remuneration

A final and binding ruling by the Commissioner of the KIPO on the amount of the compensation or remuneration to be paid under this Act has the same effect as an enforceable title of execution. In such a case, a public official of the KIPO shall give the enforceable writ, which has the force of execution.

Submission of Documents

In litigation related to the infringement of a patent right or exclusive license, the court may, upon the request of a party, order the other party to submit documents necessary for assessing the damages caused by the infringement, unless the person possessing the documents has a justifiable reason for refusing to submit the documents.

The Intellectual Property Tribunal

(1)

The IPT is established under the jurisdiction of the Commissioner of the KIPO to be responsible for trials and retrials for patents, utility models, designs and trademarks as well as the investigation and research for the trials and retrials.

(2)

The IPT is composed of the President and administrative judges.

(3)

Necessary matters concerning the organization, personnel and operation of the IPT are determined by Presidential Decree.

Article 132ter

Trial against a Decision to Reject a Patent Application etc.

Where a person has received a decision to reject a patent application or a decision to reject an application to register an extension of the term of a patent right under Article 91, the person may request a trial within 30 days from the date of receipt of the certified copy of the decision.

Article 132quater

Deleted

Article 133

Invalidation Trial of a Patent

(1)

Where a patent falls under any of the following subparagraphs, an interested party or an examiner may request a trial to invalidate the patent. In such a case, if the patent contains two or more claims in the scope of claims, a request for an invalidation trial may be made for each claim. However, any person may request an invalidation trial on the grounds that the patent falls under any of the following subparagraphs (except subparagraph (ii)), provided the request is made after the registration date of establishment of the patent right and not more than three months after the publication date of the registration of the patent right:

(i)

where the patent has been granted in violation of Articles 25, 29, 32, 36(1) to (3), 42(3), (4);

(ii)

where the patent has been granted to a person who is not entitled to obtain the patent under the main sentence of Article 33(1), or in violation of Article 44;

(iii) where the patent has been granted to a person who is unable to obtain the patent under the proviso of Article 33(1);

(iv)

where, after the grant of a patent, the patentee is no longer capable of enjoying the patent right under Article 25, or the patent no longer complies with a treaty;

(v)

where the patent cannot be granted in violation of a treaty;

(vi)

where the patent application related with the patent has been amended beyond the scope of Article 47(2);

(vii) where the patent application related with the patent has been a divisional application beyond the scope of Article 52(1); or (viii) where the patent application has been a converted application beyond the scope of Article 53(1).

(2)

A trial under paragraph (1) of this Article may be requested even after the patent right is extinguished.

(3)

Where a trial decision invalidating a patent has become final and binding, the patent right shall be deemed never to have existed; however, where a patent falls under paragraph (1)(iv) of this Article and a trial decision invalidating the patent has become final and binding, the patent right shall be deemed not to have existed from the time when the patent became subject to paragraph (1)(iv) of this Article.

(4)

Where a trial under paragraph (1) of this Article has been requested, the presiding administrative patent judge shall notify the exclusive licensee of the patent right and any other persons with registered rights related to the patent accordingly.

Article 133bis

Correction of a Patent during an Invalidation Trial

(1)

A defendant under Article 133(1) may request a correction to the description or drawing(s) of a patented invention during the course of an invalidation trial, provided that the correction falls under any of the subparagraphs under Article 136(1), within the period designated under Article 147(1) or the latter sentence of Article 159(1). Where a presiding administrative patent judge acknowledges the need to approve a request for the correction due to the evidentiary documents submitted by the requester, the presiding administrative patent judge may, even after the elapse of the period designated in Article 147(1), designate another time period and approve the request for correction within the period.

(2)

Where there is a request for correction under paragraph (1), earlier request(s) for correction submitted in the course of the validation trial concerned is deemed to have been withdrawn.

(3)

When a correction has been requested under paragraph (1), the presiding administrative patent judge shall deliver a copy of the written request to the requester under Article 133(1).

(4)

Articles 136(2) to (5), (7) to (11), 139(3) and 140(1), (2), (5) apply mutatis mutandis to a request for a correction under paragraph (1). In their application, the provision "before issuance of a notification of closure of the trial proceedings under Article 162(3) (where the trial proceedings is reopened under Article 162(4), before a subsequent notification of the closure of the trial proceedings is issued under Article 162(3))" in Article 136(9) shall read "within the designated period where it would be noticed under Article 136(5)".

(5)

Where paragraph (4) applies, Article 136(4) shall not apply mutatis mutandis to the correction of a claim for which a patent invalidation trial has been requested under Article 133(1).

Article 134

Invalidation Trial of Registration of Extension of the Term of a Patent Right

(1)

Where a registration of extension of the term of a patent right falls under any of the following subparagraphs, an interested party or an examiner may request a trial to invalidate the registration of extension of the term of a patent right:

(i)

where the extension has been registered for an application that did not require any authorization etc. under Article 89 to work the patented invention;

(ii)

where the extension has been registered for an application, for which a patentee or a person who has an exclusive or registered non-exclusive license under the patent right has not obtained the authorization etc. under Article 89 ;

(iii) where the term extended by the registration of extension exceeds the period during which the patented invention could not be worked;

(iv)

where the registration of an extension has been effected on an application made by a person other than the patentee;

(v)

where the registration of an extension has been effected on an application that was in violation of Article 90(3); or

(vi)

deleted.

(2)

Articles 133(2) and (4) apply mutatis mutandis to a request for a trial under paragraph

(1) of this Article.

(3)

Where a trial decision invalidating the registration of extension has become final and binding, the registration of extension of the term shall be deemed to have never existed. However, where the registration of extension falls under paragraph (1)(iii), an extension of the term exceeding the period during which the patented invention could not be worked shall be deemed to be not effective.

Article 135

Trial to Confirm the Scope of a Patent Right

(1)

A patentee, an exclusive licensee or an interested party may request a trial to confirm the scope of a patent right.

(2)

When requesting a trial under paragraph (1) to confirm the scope of a patent right, if the patent right contains two or more claims in the scope of claims, a request for a trial to confirm the scope of a patent right may be made for each claim.

Article 136

Trial for a Correction

(1)

A patentee may request a trial to correct the description or drawing(s) of a patented invention in cases falling under any of the following subparagraphs. However, this shall not apply when an invalidation trial against the patent is pending in the IPT.

(i)

where the scope of claims is narrowed;

(ii)

where a clerical error is corrected;

(iii) where an ambiguous description is clarified.

(2)

A correction to the description or drawing(s) under paragraph (1) shall be made within the scope of the matters disclosed in the description or drawing(s) of the patented invention. However, where a clerical error is corrected under subparagraph (1)(ii), the correction shall be made within the scope of the matters of the description or drawing(s) originally attached to a written application.

(3)

The scope of claims shall neither be substantially extended nor modified by a correction of the description or drawing(s) under paragraph (1).

(4)

Corrections under subparagraph (1)(i) or (ii) may only be made when the matters described in the scope of claims after the correction are patentable at the time of filing.

(5)

Where a request for a trial for a correction under paragraph (1) does not fall under any of subparagraphs of paragraph (1), extends beyond the scope under paragraph (2) or violates paragraphs (3) or (4), the administrative patent judge shall notify the requester of the reasons for dismissing the request and give the requester an opportunity to submit written arguments within a designated period.

(6)

A trial for a correction under paragraph (1) may be requested even after a patent right has been extinguished, unless the patent has been invalidated by a trial decision.

(7)

A patentee may not request a trial for a correction under paragraph (1) without the consent of an exclusive licensee, a pledgee or a non-exclusive licensee under Articles 100(4) or 102(1) of this Act and Article 10(1) of the Invention Promotion Act.

(8)

Where a trial decision allowing the description or drawing(s) of a patented invention to

be corrected becomes final and binding, the patent application, the laying open of the application, the decision to grant the patent or trial decision, and the registration for establishment of the patent right are deemed to have been made on the basis of the corrected description or drawing(s).

(9)

A requester may amend the corrected description or drawing attached to the request for a trial prescribed in Article 140(5) only before issuance of a notification of closure of the trial proceedings under Article 162(3) (where the trial proceedings are reopened under Article 162(4) before a subsequent notification of closure of the trial proceedings is issued under Article 162(3)).

(10)

Where a trial decision has been made to accept the correction of the description or drawing(s) of a patented invention, the President of the IPT shall notify the Commissioner of KIPO of the trial decision.

(11)

Where there is the notification under paragraph (10), the Commissioner of KIPO shall publish it in the Patent Gazette.

Article 137

Trial for Invalidation of Correction

(1)

An interested party or an examiner may request a trial for an invalidation of a correction, where the correction of the description or drawing(s) of a patented invention under Articles 133bis(1) or 136(1) has violated any of the following subparagraphs:

(i)

any of the subparagraphs of Article 136(1); or

(ii)

Article 136(2) to (4) (including a mutatis mutandis application under Articles 133bis(4)).

(2)

Article 133(2) and (4) applies mutatis mutandis to a request for a trial under paragraph

(1) of this Article.

(3)

A defendant in an invalidation trial under paragraph (1) may request a correction to the description or drawing(s) of a patented invention under any of the subparagraphs of Article 136(1) within the period designated under Article 147(1) or the latter sentence of Article 159(1).

(4)

Article 133bis(3) and (4) applies mutatis mutandis to a request for a correction under paragraph (3). In such cases, "Article 133(1)" in Article 133bis(3) shall read "Article 137(1).”

(5)

Where a trial decision to invalidate a correction under paragraph (1) has become final and binding, the correction is deemed never to have been made.

Article 138

Trial for Granting a Non-exclusive License

(1)

where a patentee, exclusive licensee or non-exclusive licensee seeks permission to work the patented invention according to Article 98, if the other party concerned refuses permission without justifiable reasons or it is impossible to obtain such permission, the patentee, exclusive licensee or non-exclusive licensee may request a trial for the grant of a non-exclusive license within the scope necessary to work the patented invention.

(2)

Where the request under paragraph (1) has been made, a non-exclusive license shall be granted only where the patented invention of the later application constitutes an important technical advance with substantial economical value in comparison with the other party's patented invention or registered utility model for which an application was filed before the filing date of the later application.

(3)

If a person who has granted a non-exclusive license under paragraph (1) needs to work the patented invention of the person who has been granted the non-exclusive license, and if the latter refuses to give permission or if it is impossible to obtain such permission, the former may request a trial for the grant of a non-exclusive license within the scope of the patented invention to be worked.

(4)

A non-exclusive licensee who was granted a non-exclusive license under paragraphs (1) or (3) of this Article shall remunerate the patentee, the owner of the utility model right, the owner of the design right or the exclusive licensee. In the case where payment is not possible for non-attributable reasons, the remuneration shall be deposited.

(5)

A non-exclusive licensee under paragraph (4) shall not work a patented invention, registered utility model, registered design or similar design without paying remuneration or depositing the payment.

Article 139

Request for a Joint Trial etc.

(1)

Where two or more persons request an invalidation trial under Articles 133(1), 134(1) or 137(1) or a trial to confirm the scope of a patent right under Article 135(1), all persons may jointly make the request.

(2)

Where a trial is requested against any of the joint owners of a patent right, the request shall be made against all the joint owners.

(3)

Where the joint owners of a patent right or of a right to obtain a patent request a trial concerning the right under joint ownership, all of the owners shall jointly make the request.

(4)

Where there are grounds for the interruption or suspension of trial proceedings that apply to one of the requesters under paragraphs (1) or (3) or one of the defendants under paragraph (2), the interruption or suspension is effective against all of them.

Article 140 Formal Requirements of a Request for a Trial

(1)

A person requesting a trial shall submit a written request to the President of the IPT, stating the following:

(i)

the names and residential addresses of the party (and, if the party is a juridical person, the name and business address);

(ibis) the name and residential or business address of the representative, if any (and, if the representative is a patent juridical person, the name and business address of the patent juridical person and the name of the designated patent attorney);

(ii)

the indication of the trial case; and

(iii) the purport and grounds of the request.

(2)

The gist of a written request for a trial submitted under paragraph (1) may not be changed with amendment; however, this provision shall not apply when such amendment falls under any of the following subparagraphs;

(i)

where an amendment (including addition of a patentee) is made to correct the stated matter of the patentee among parties under subparagraph (1)(i);

(ii)

where the grounds of the request under paragraph (1)(iii) is amended; or

(iii) where, in the case of a trial to confirm the scope of a patent right requested by a patentee or an exclusive licensee, the requester amends the description and drawing(s) of the invention specified in the written request (the invention of the defendant which is contended by the requester) in order to make the invention to be identical to the invention being worked by the defendant if the defendant argues, on the basis of a comparison, that the invention specified in the written request differs from the invention being worked by the defendant.

(3)

When a trial to confirm the scope of a patent right is requested under Article 135(1), the description and the necessary drawing(s) that can be compared with the patented invention shall be attached to the written request.

(4)

In addition to stating the particulars referred to in paragraph (1), a written request for a trial under Article 138(1) must state the following:

(i)

the number and title of his patent required to be worked;

(ii)

the number, title and date of registration of the other party's patent, registered utility model or registered design to be worked; and

(iii) the scope, duration and remuneration for the non-exclusive license on a patented invention, a registered utility model or a registered design.

(5)

When a trial for correction under Article 136(1) is requested, the corrected description or drawing(s) shall be attached to the written request for a trial.

Article 140bis

Formal Requirements of a Request for a Trial against a Decision to Reject a Patent Application

(1)

Notwithstanding Article 140(1), a person who requests a trial against a decision to reject a patent application under Article 132ter shall submit a written request to the President of the IPT stating the following:

(i)

the name and residential address of the requester (if the requester is a juridical person, the name and business address);

(ibis) the name and residential or business address of the representative, if any (and, if the representative is a patent juridical person, the name and business address of the patent juridical person and the name of the designated patent attorney);

(ii)

the filing date and application number of the application;

(iii) the title of the invention;

(iv)

the date of the decision;

(v)

the indication of the trial case; and

(vi)

the purport and grounds of the request.

(2)

Where a request for a trial under paragraph (1) is amended, the gist of the request shall not be changed. However, this shall not apply under either of the following subparagraphs:

(i)

where an amendment (including addition of a requester) is made to correct the stated matter of requester under subparagraph (1)(i); or

(ii)

where the grounds of the request under subparagraph (1)(vi) are amended.

Article 141 Dismissal of a Request for a Trial by a Ruling

(1)

A presiding administrative patent judge shall order the requester to make an amendment within a designated period in either case of the following subparagraphs:

(i)

where the written request for a trial does not comply with Articles 140(1) and (3) to

(5) or 140bis(1);

(ii)

where a trial-related procedure falls under any of the following items:

(a)

where the procedure does not comply with Articles 3(1) or 6;

(b)

where the fees under Article 82 have not been paid; or

(c)

where the procedure does not comply with the formalities prescribed in this Act or Presidential Decree.

(2)

Where a person ordered to make an amendment under paragraph (1) fails to do so within the designated period, the presiding administrative patent judge shall dismiss the written request for a trial by a ruling.

(3)

A ruling to dismiss a request for a trial under paragraph (2) shall be in writing and shall state the reasons for the ruling.

(4)

Deleted.

(5)

Deleted.

(6)

Deleted.

Article 142 Dismissal of a Request for a Trial Containing Incurable Defects by a Trial Decision

Where a request for a trial contains unlawful defects that cannot be corrected by amendment, the request may be dismissed by a trial decision without giving the defendant an opportunity to submit a written response.

Article 143 Administrative Patent Judges

(1)

When a trial is requested, the President of the IPT shall direct the administrative patent judges to handle the trial.

(2)

The qualifications of administrative patent judges shall be prescribed by Presidential Decree.

(3)

An administrative patent judge shall conduct official trial duties for a trial in an independent manner.

Article 144 Designation of Administrative Patent Judges

(1)

For each trial, the President of the IPT shall designate administrative patent judges to constitute a board under Article 146.

(2)

Where an administrative patent judge designated under paragraph (1) is ineligible to handle a trial, the President of the IPT may appoint another administrative patent judge to replace the designated administrative patent judge.

Article 145 Presiding Administrative Patent Judge

(1)

The President of the IPT shall select one of the administrative patent judges designated under Article 144(1) as the presiding administrative patent judge.

(2)

A presiding administrative patent judge shall preside over all matters related to the trial.

Article 146 Board for a Trial

(1)

A trial must be conducted by a board of three or five administrative patent judges.

(2)

The board referred to in paragraph (1) shall make its decisions by a majority vote.

(3)

The consultations of administrative patent judges shall not be open to the public.

Article 147
Submission of a Written Response etc.

(1)

When a trial has been requested, the presiding administrative patent judge shall deliver a copy of the written request to the defendant and shall give the defendant an opportunity to submit a written response within a designated period.

(2)

Upon receipt of the written response under paragraph (1), the presiding administrative patent judge shall deliver a copy of the written response to the requester.

(3)

The presiding administrative patent judge may directly interrogate the parties in relation to the trial.

Article 148 Exclusion of an Administrative Patent Judge

An administrative patent judge shall be excluded from exercising his functions in a trial where the administrative patent judge falls under any of the following subparagraphs:

(i)

the administrative patent judge or the present or former spouse of the administrative patent judge is a party or intervener;

(ii)

the administrative patent judge is or was a blood relative of a party or intervener;

(iii) the administrative patent judge is or was a legal representative of a party or intervener;

(iv)

the administrative patent judge has become a witness or expert witness or was an expert witness;

(v)

the administrative patent judge is or was a representative of a party or intervener;

(vi)

the administrative patent judge participated as an examiner or administrative patent judge in a decision to grant a patent or a trial decision related to the case; or

(vii) the administrative patent judge has a direct interest.

Article 149 Request for Exclusion

Where there are grounds for exclusion under Article 148, a party or intervener may request that an administrative patent judge be excluded.

Article 150 Recusation of an Administrative Patent Judge

(1)

In circumstances where the participation of an administrative patent judge would prejudice the fairness of a trial, a party or intervener may present a petition to recuse the administrative patent judge.

(2)

After a party or intervener has made a written or oral statement with regard to a case before an administrative patent judge, the party or intervener may not present a petition to recuse the administrative patent judge, except when the party or intervener did not know grounds for recusation existed or the grounds for recusation arose later.

Article 151 Indication of Grounds for Exclusion or Recusation

(1)

A person who presents a petition for exclusion or recusation under Articles 149 or 150 shall submit a document to the President of the IPT stating the grounds for the petition. However, in oral proceedings, an oral statement may be made.

(2)

The underlying causes for exclusion or recusation must be substantiated within three days from the date on which the petition was presented.

Article 152

Ruling on a Petition for Exclusion or Recusation

(1)

A ruling on a petition for exclusion or recusation shall be made by trial.

(2)

An administrative patent judge subject to a petition for exclusion or recusation may not participate in the trial of the petition. However, he/she may state an opinion.

(3)

A ruling made under paragraph (1) shall be in writing and shall state the grounds for the ruling.

(4)

An appeal may not be made against a ruling made under paragraph (1) of this Article.

Article 153 Suspension of Trial proceedings

When a petition for exclusion or recusation has been presented, trial proceedings shall be suspended until a ruling has been made, except when the trial requires urgent attention.

Article 153bis Administrative patent judges Recusing Themselves

Where Articles 148 or 150 apply to administrative patent judges, the administrative patent judges may recuse themselves from trial proceedings related to the case with the consent of the President of the IPT.

Article 154
Trial Proceedings etc.

(1)

Trial proceedings are conducted by oral proceedings or documentary proceedings. However, when a concerned party requests oral proceedings, the trial proceedings must be conducted by oral proceedings unless a trial decision can obviously be made by documentary proceedings alone.

(2)

deleted.

(3)

Except when public order or morality is likely to be injured, oral proceedings are conducted in public.

(4)

Where trial proceedings are conducted by oral proceedings in accordance with paragraph (1), the presiding administrative patent judge shall designate the date and place of the hearings and deliver a document containing such information to the parties and interveners of the case unless the parties or interveners have already been notified.

(5)

Where trial proceedings are conducted by oral proceedings under paragraph (1), an

official designated by the President of the IPT shall, under the direction of the presiding administrative patent judge, prepare a protocol setting forth the gist of the proceedings and other necessary matters for every designated date.

(6)

The presiding administrative patent judge and the official who has prepared the protocol under paragraph (5) shall sign the protocol and affix their seals to the protocol.

(7)

Articles 153, 154 and 156 to 160 of the Civil Procedure Act apply mutatis mutandis to the protocol under paragraph (5).

(8)

Articles 143, 259, 299 and 367 of the Civil Procedure Act apply mutatis mutandis to a trial.

Article 155 Intervention

(1)

A person with the right to request a trial under Article 139(1) may intervene in the trial before the closure of the trial proceedings.

(2)

An intervener under paragraph (1) may continue a trial even after the request for the trial has been withdrawn by the original party.

(3)

A person with an interest in the result of a trial may intervene in the trial before the closure of the trial proceedings to assist one of the parties.

(4)

An intervener under paragraph (3) may undertake every trial-related procedure.

(5)

Where grounds for suspending a trial proceeding apply to an intervener under paragraphs (1) or (3), the suspension is also effective against the original party.

Article 156 Request for an Intervention and Ruling thereon

(1)

To intervene in a trial, a person shall submit a request for an intervention to the presiding administrative patent judge.

(2)

The presiding administrative patent judge shall deliver the copy of a request for an intervention to the parties and other interveners and give them an opportunity to submit arguments within a designated period.

(3)

Where a request for an intervention is made, the ruling shall be made by a trial.

(4)

The ruling under paragraph (3) shall be in writing and shall state the grounds for the ruling.

(5)

An appeal may not be made against the ruling under paragraph (3).

Article 157

Taking and Preserving Evidence

(1)

For a trial, evidence may be taken or preserved upon a petition of a party, intervener, interested party or ex officio.

(2)

The provisions of the Civil Procedure Act related to taking and preserving evidence apply mutatis mutandis to any taking and preserving of evidence under paragraph (1). However, the administrative patent judge may not impose a fine for negligence, or order a person to appear or require the deposit of money as security.

(3)

A request to preserve evidence must be made to the President of the IPT before a request for a trial and to the presiding administrative patent judge of the case while the trial is pending.

(4)

Where the petition for preservation of evidence has been made under paragraph (1) before a request for a trial, the President of the IPT designates an administrative patent judge to be responsible for the petition.

(5)

Where evidence has been taken or preserved ex officio under paragraph (1), the presiding administrative patent judge shall notify the parties, interveners and interested parties accordingly and shall give them an opportunity to submit written arguments within a designated period.

Article 158

Continuation of Trial Proceedings

Notwithstanding the failure of a party or intervener to take any proceedings within the period prescribed by law or designated under this Act, or the failure to appear on the date designated under Article 154(4), the presiding administrative patent judge may proceed with the trial proceedings.

Article 159

Ex officio Trial Proceedings

(1)

Grounds that have not been pleaded by a party or intervener in a trial may be reviewed; however, in such cases, the parties and interveners shall be given an opportunity within a designated period to state their opinions regarding the grounds.

(2)

In a trial, a review may not be made on the purport of a request which is not requested by the requester.

Article 160

Joint or Separate conduct of Trial Proceedings or Trial Decisions

When reviewing two or more trial proceedings where one or both parties are the same, an administrative patent judge may either conduct the proceedings or make trial decisions jointly or separately.

Article 161 Withdrawal of a Request for a Trial

(1)

A request for a trial may be withdrawn by the requester before the trial decision has become final and binding; however, the consent of the defendant for the withdrawal shall be obtained where a response has already been submitted.

(2)

Where a request for a trial for invalidating a patent under Article 133(1) or for confirming the scope of a patent right under Article 135 has been made with regard to two or more claims, the request may be withdrawn for each of the claims.

(3)

Where a request for a trial or a request for a trial for each claim is withdrawn under paragraphs (1) or (2), the request is deemed never to have been made.

Article 162 Trial Decision

(1)

Except as otherwise stipulated, a trial is concluded by a trial decision.

(2)

A trial decision under paragraph (1) shall be in writing, and it shall be signed and sealed by the administrative patent judges who made the trial decision; the trial decision must state the following:

(i)

the number of the trial;

(ii)

the name and residential address of the parties and interveners (or, if the party or intervener is a juridical person, the name and business address);

(iibis) the name and residential or business address of the representative, if any (or, if the representative is a patent juridical person, the name and business address of the patent juridical person and the name of the designated patent attorney); (iii) the indication of the trial case;

(iv)

the text of the trial decision (including the scope, duration and remuneration in trial cases under Article 138);

(v)

the reasons for the trial decision (including the purport of the request and a gist of the grounds for the request); and

(vi)

the date of the trial decision.

(3)

When ready to make a trial decision after a thorough review of a case, the presiding administrative patent judge shall notify the parties and interveners of the closure of the trial proceedings.

(4)

After giving notification of the closure of trial proceedings under paragraph (3), if necessary, the presiding administrative patent judge may reopen the review upon the petition of a party or an intervener or ex officio.

(5)

A trial decision is made within twenty days of the date on which the notification of the closure of trial proceedings is served under paragraph (3).

(6)

When a trial decision or a ruling has been made, the presiding administrative patent judge shall deliver a certified copy of the trial decision or the ruling to the parties, interveners, and persons who have requested intervention to the trial but have been rejected.

Article 163

Res Judicata

Where a trial decision under this Act has become final and binding, a person may not request a trial on the basis of the same facts and evidence, unless the final and binding trial decision is a dismissal.

Article 164

Relation to Litigation

(1)

A trial proceedings may, if necessary, be suspended until a trial decision of another trial becomes final and binding or litigation procedures related are concluded.

(2)

The Court may, if considered necessary in the litigation procedures, suspend the litigation procedures until a trial decision on the patent becomes final and binding.

(3)

Where litigation related to the infringement of a patent right or exclusive license is filed and when litigation procedures have been terminated, the relevant Court must notify the President of the IPT accordingly.

(4)

Where an invalidation trial etc. of a patent is requested in response to a legal action against an infringement of a patent right or exclusive license under paragraph (3), the President of the IPT must notify the relevant Court under paragraph (3) accordingly. The same applies when a ruling to dismiss a request for a trial, a trial decision or a withdrawal of the request has occurred.

Article 165 Costs of a Trial

(1)

The imposition of costs of a trial under Articles 133(1), 134(1), 135 and 137(1) is decided either by a trial decision if a trial is terminated by a trial decision, or by a ruling if the trial is terminated in a manner other than by a trial decision.

(2)

Articles 98 to 103, 107(1) and (2), 108, 111, 112 and 116 of the Civil Procedure Act apply mutatis mutandis to the costs of trials under paragraph (1).

(3)

The requester shall bear the costs of trials under Article 132ter and 136 or 138.

(4)

Article 102 of the Civil Procedure Act applies mutatis mutandis to the costs borne by the requester under paragraph (3).

(5)

Upon the request of a concerned party, the President of the IPT shall determine the total costs of a trial after the trial decision or ruling has become final and binding.

(6)

The extent, amount and payment of the costs of a trial, as well as the payment of the costs for undertaking any procedural acts in the trial, are governed by the relevant provisions of the Act of Civil Procedure Costs, unless they are incompatible.

(7)

The payment that a party has paid or will pay to a patent attorney who represents the party in a trial is considered an element of the trial costs within the extent of the costs prescribed by the Commissioner of the KIPO. If two or more patent attorneys represent the party in a trial, the party is deemed to have been represented by a single patent attorney.

Article 166

Title of Enforcement of Costs or Remuneration

A final and binding ruling under this Act on the costs of a trial decided by the President of the IPT or on the remuneration decided by the administrative patent judge, has the same effect as an enforceable title of liability; an official of the IPT shall give the enforceable writ.

Article 167

Deleted

Article 168

Deleted

Article 169 Deleted

Article 170

Mutatis Mutandis Application of Provisions on Examination to Trial against a Decision to Reject a Patent Application

(1)

Articles 47(1)(i) and (ii), 51, 63 and 66 apply mutatis mutandis to a trial against a decision to reject a patent application . In such cases, in the main sentence of Article 51(1), the expression "Article 47(1)(ii) or (iii)" reads "Article 47(1)(ii)", and "an amendment" reads "an amendment (except an amendment filed before a request for a trial against a decision to reject a patent application under Article 132ter)".

(2)

Article 63, which applies mutatis mutandis under paragraph (1), applies only if new grounds for rejection have been found that differ from the original grounds for a decision of rejection.

Article 171

Special Provisions for a Trial against a Decision to Reject a Patent Application

Articles 147(1) and (2), 155 and 156 shall not apply to a trial against a decision to reject a patent application or a decision of reject an application to register an extension of the term of a patent right.

Article 172

Effects of Examination Proceedings

Proceedings previously undertaken during the course of an examination remain effective in a trial against a decision to reject a patent application or a decision to reject an application to register an extension of the term of a patent right.

Articles 173

Deleted

Articles 174

Deleted Articles 175

Deleted

Article 176

Cancellation of a Decision of Rejection etc.

(1)

Where an administrative patent judge considers that a request for a trial under Article 132ter is well grounded, the administrative patent judge shall cancel the examiner's decision to reject a patent application or an application to register an extension of the term of a patent right as a trial decision.

(2)

Where a decision to reject a patent application or an application to register an extension of the term of a patent right is cancelled in a trial, a trial decision that the issue shall be submitted for examination can be made.

(3)

In a trial decision under paragraphs (1) and (2) of this Article, the reasons constituting the basis for the cancellation are binding on the examiner in that specific case.

Article 177

Deleted

Exclusion or Recusation of a Technical Examiner

(1)

Article 148 of the Patent Act and Articles 42 to 45, 47 and 48 of the Civil Procedure Act apply mutatis mutandis to the exclusion or recusation of a technical examiner prescribed by Article 54bis of the Court Organization Act.

(2)

The court to which a technical examiner belongs shall decide on a petition for exclusion or recusation of the technical examiner under paragraph (1) as a ruling

(3)

Where grounds for exclusion or recusation exist, technical examiners may recuse themselves from conducting legal proceedings with the consent of the President of the Patent Court.

Article 189

Cancellation of a Trial Decision or Ruling

(1)

Where the Patent Court considers that an action under Article 186(1) is well grounded, the Patent Court shall cancel the trial decision or ruling by judgment.

(2)

Where the cancellation of a trial decision or ruling becomes final and binding under paragraph (1), the administrative patent judge shall review the case again and make a new trial decision or ruling.

(3)

The reasons for a judgment on an action under paragraph (1) that constitute the basis for a cancellation are binding on the IPT with respect to the case concerned.

Article 190

Action against Decision on Amount of Compensation or Remuneration

(1)

A person who is dissatisfied with a trial decision, ruling or award regarding the amount of compensation or remuneration under Articles 41(3) or (4), 106(3), 110(2)(ii) or 138(4) may bring an action before the court.

(2)

An action under paragraph (1) must be filed within thirty days from the date on which a certified copy of the trial decision, ruling or award was received.

(3) The period prescribed in paragraph (2) may not be changed.

Article 191 Defendant in an Action Related to Compensation or Remuneration

In an action under Article 190, the following persons are the defendants:

(i)

for compensation under Article 41(3) or (4), the government agency or applicant liable for payment of compensation;

(ii)

for compensation under Article 106(3), the government agency, patentee, exclusive licensee or non-exclusive licensee liable for payment of compensation; or

(iii) for remuneration under Articles 110(2)(ii) or 138(4), the non-exclusive licensee, exclusive licensee, patentee or owner of a utility model or design registration.

Article 191bis Compensation for Patent Attorneys and Costs of Litigation

Article 109 of the Civil Procedure Act applies mutatis mutandis to the compensation for patent attorneys who provide representation in litigations. In this case, “attorneys” are regarded as “patent attorneys”.

Article 192 Persons Capable of International Application

Any person who falls under any of the following subparagraphs may file an international application with the Commissioner of the KIPO:

(i)

a national of the Republic of Korea;

(ii)

a foreigner who has a residential or business address in the Republic of Korea;

(iii) a person who does not fall under subparagraph (i) or (ii) but who files an international application under the name of a representative falling under subparagraph (i) or (ii); or

(iv) a person who meets the requirements prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 193 International Application

(1)

A person filing an international application shall submit to the Commissioner of the KIPO a written application, description, claim(s), drawing(s) (if necessary), and abstract prepared in a language prescribed by Ordinance of the Ministry of Knowledge Economy.

(2)

A written application prescribed under paragraph (1) must contain the following:

(i)

an indication that the international application is to be processed according to the Patent Cooperation Treaty;

(ii)

the designation of the Contracting States in which protection for the invention of the international application is sought;

(iii) if the applicant is seeking a regional patent referred to in Article 2(iv) of the Patent Cooperation Treaty among the designated States designated under subparagraph (ii), a purport to that effect;

(iv)

the name or title, the residential or business address and the nationality of the

applicant;

(v)

the name and residential or business address of the representative (if any);

(vi)

the title of the invention; and

(vii) the name and residential or business address of the inventor (where the national law of a designated State requires that these indications be furnished).

(3)

The description under paragraph (1) shall describe the invention clearly and in detail so that a person with ordinary skill in the art to which the invention pertains may easily work the invention.

(4)

The claim(s) under paragraph (1) shall clearly and concisely describe the matters for which protection is sought and be sufficiently supported by the description.

(5)

Other necessary matters not prescribed in paragraphs (1) to (4) concerning an international application is prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 194

Establishment etc. of the Filing Date of an International Application

(1)

The Commissioner of the KIPO shall establish the date of receiving the international application as the international filing date under Article 11 of the Patent Cooperation Treaty (referred to as "an international filing date”, hereinafter); however, this provision shall not apply to any of the following cases:

(i)

the applicant does not meet the requirements prescribed in Article 192;

(ii)

the international application is not prepared in the language prescribed under Article 193(1);

(iii) the international application does not contain a description or claim(s) under Article 193(1); or (iv) the elements listed in Article 193(2)(i) and (ii) or the name or title of the applicant are not indicated.

(2)

Where an international application falls under the proviso of paragraph (1), the Commissioner of the KIPO shall order the applicant to amend the defect within a designated period in writing.

(3)

Where an international application refers to a drawing or drawings not included in the application, the Commissioner of the KIPO shall notify the applicant accordingly.

(4)

The Commissioner of the KIPO shall deem the international filing date as the date of receiving the document relating to an amendment when the applicant ordered under paragraph (2) has complied with the order within the designated period, or the date of receiving the drawing(s) when the notified applicant under paragraph (3) has furnished

the drawing(s) within the period prescribed by Ordinance of the Ministry of Knowledge Economy. If the notified applicant under paragraph (3) does not furnish the drawing(s) within the period prescribed by Ordinance of the Ministry of Knowledge Economy, reference to the drawing(s) is deemed to be nonexistent.

Article 195

Order to Amendment

The Commissioner of the KIPO shall order the applicant to make an amendment within a designated period if the international application does not:

(i)

contain the title of the invention;

(ii)

contain an abstract;

(iii) comply with Articles 3 or 197(3); or

(iv) comply with the requirements prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 196

International Application Deemed to have been Withdrawn

(1)

An international application is deemed to have been withdrawn if:

(i)

an applicant ordered to make an amendment under Article 195 fails to make an amendment within the designated period ;

(ii)

the official fees are not paid within the period prescribed by Ordinance of the Ministry of Knowledge Economy, and Article 14(3)(a) of the Patent Cooperation Treaty therefore applies; or

(iii) it is an international application with an international filing date established under Article 194, and it falls under any of subparagraphs of proviso of Article 194(1) within the period prescribed by Ordinance of the Ministry of Knowledge Economy.

(2)

If any portion of official fees to be paid related to an international application has not been paid within the period prescribed by Ordinance of the Ministry of Knowledge Economy, and Article 14(3)(b) of the Patent Cooperation Treaty therefore applies, the designation of the designate State for which the official fees have not been paid is deemed to have been withdrawn.

(3)

If an international application, or part of the designation of the states, is deemed to have been withdrawn under paragraphs (1) or (2), the Commissioner of the KIPO shall notify the applicant accordingly.

Article 197

Common Representative etc.

(1)

Where two or more applicants jointly file an international application, the procedure under Articles 192 to 196 and 198 may be undertaken by a common representative of the applicants.

(2)

Where two or more applicants jointly file an international application and do not designate a common representative, a common representative may be designated as prescribed by Ordinance of the Ministry of Knowledge Economy.

(3)

An applicant who intends to use a representative to undertake a procedure under paragraph (1) shall appoint a patent attorney as the representative unless the procedure is undertaken by a legal representative under Article 3.

Article 198

Official Fees

(1)

An applicant for an international application shall pay the required fees.

(2)

Necessary matters concerning official fees, proceedings and payment period under paragraph (1) are prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 198bis

International Search and International Preliminary Examination

(1)

The KIPO shall perform duties as an international searching authority and as an international preliminary examining authority for an international application in accordance with the convention concluded with the International Bureau as prescribed in Article 2(xix) of the Patent Cooperation Treaty.

(2)

Necessary matters concerning the performance of duties under paragraph (1) are prescribed by Ordinance of the Ministry of Knowledge Economy.

Part II. Special Provisions on International Patent Applications

Article 199

Patent Application Based on an International Application

(1)

Where the international filing date of an international application is established under the Patent Cooperation Treaty and the Republic of Korea is designated as a designated

State for obtaining a patent, the international application is deemed to be a patent application filed on its international filing date.

(2)

Article 54 shall not apply to an international application deemed to be a patent application under paragraph (1) (referred to as "an international patent application”, hereinafter).

Article 200

Special Provision Concerning Inventions Not Deemed to be Publicly Known etc.

Notwithstanding Article 30(2), a person intending to apply Article 30(1)(i) to the invention claimed in an international patent application may submit to the Commissioner of the KIPO a written statement stating purport of such intention and a document proving the relevant facts within the period prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 201

Translation of International Patent Applications

(1)

An applicant who has filed an international patent application in a foreign language shall submit to the Commissioner of the KIPO a Korean translation of the description, claim(s), drawing(s) (only the descriptive text of the drawing(s)) and abstract filed on the international filing date within two years and seven months (referred to as " period for submitting domestic documents", hereinafter) from the priority date as defined in Article 2(xi) of the Patent Cooperation Treaty (referred to as " priority date", hereinafter). However, when an applicant who has filed an international patent application in a foreign language amends the claim(s) under Article 19(1) of the Patent Cooperation Treaty, the Korean translation of the amended claim(s) may be submitted as a replacement for the Korean translation of the claim(s) submitted on the date of international application.

(2)

Where a translation of the description and claim(s) under paragraph (1) is not submitted within the period for submitting domestic documents, the international patent application is deemed to have been withdrawn.

(3)

An applicant who has submitted the translation referred to in paragraph (1) may submit a new translation to replace the earlier translation only within the period for submitting domestic documents, unless the applicant requested an examination.

(4)

Matters disclosed in the description, claim(s) and the descriptive text of the drawing(s) of an international patent application filed on the international filing date but not disclosed in the translation under paragraphs (1) or (3) (referred to as "the translated version", hereinafter) that was submitted within the period for submitting domestic documents (or the date of the request for an examination where the applicant has made the request within the period, which is referred to as "the reference date") are deemed not to have been disclosed in the description, claim(s) and the descriptive text of the drawing(s) of the international patent application filed on the international filing date.

(5)

A written application of an international patent application submitted on the international filing date is deemed to be a written patent application submitted under Article 42(1).

(6)

A translated version of the description, claim(s), drawing(s) and abstract of an international patent application (or the description, claim(s), drawing(s) and abstract submitted on the international filing date for an international patent application filed in Korean) is deemed to be the description, drawing(s) and abstract submitted under Article 42(2).

(7)

Article 204(1) and (2) shall not apply when a Korean translation of the amended claim(s) is submitted in accordance with the proviso of paragraph (1).

(8)

Where a Korean translation of the amended claim(s) has been submitted under the proviso of paragraph (1), the claim(s) submitted at the international filing date is not recognized.

Article 202

Special Provisions on Priority Claim

(1)

Articles 55(2) and 56(2) shall not apply to an international patent application.

(2)

In applying Article 55(4) to an international patent application, "the description or drawing(s) originally attached to a written application of a patent application" reads "the description, claim(s) and the drawing(s) (only the descriptive text of the drawing(s)) submitted on the international filing date under Article 201(1), and the translated version of the documents under Article 201(4) or the drawing(s) (excluding the descriptive text of the drawing(s)) of the international application submitted on the international filing date", and "laid open" reads "international publication under Article 21 of the Patent Cooperation Treaty".

(3)

Where an earlier application is an international patent application or international utility model registration application under Article 34(2) of the Utility Model Act, the following provisions shall apply when Article 55(1), (3)to (5) or Article 56(1) are applied:

(i)

“The description or drawing(s) originally attached to the written application” in the main sentence of Article 55(1) or (5) and Article (3) reads “the description, claim(s) or drawing(s) of an international application submitted on the international filing date.”

(ii)

“The description or drawing(s) originally attached to a written application of the earlier application” in Article 55(4) reads “the description, claim(s) or drawing(s) of an international application submitted on the international filing date of the earlier application”, and “laid open with regard to the earlier application” reads “international publication of the earlier application under Article 21 of the PCT.”

(iii) “When more than one year and three months has elapsed after the filing date” in the main sentence of Article 56(1) reads “when more than one year and three months has elapsed after the international filing date or the reference date under Article 201(4) of this Act and Article 35(4) of the Utility Model Act, whichever is later”.

(4) Where the earlier application under Article 55(1) is an international application deemed as a patent application or a utility model registration application under Article 214(4) of this Act or Article 40(4) of the Utility Model Act, the following subparagraphs apply when Article 55(1), (3), (4), or (5) or Article 56(1) are applied:

(i)

“The description or drawing(s) originally attached to a written application” in the main sentence of Article 55(1) or (5) and Article (3) reads “the description, claim(s) or drawing(s) of an international application as of the date that could have been recognized as an international filing date under Article 214(4) of this Act or Article 40(4) of the Utility Model Act.”

(ii)

“The description or drawing(s) originally attached to a written application of the earlier application” in Article 55(4) reads “the description, claim(s) or drawing(s) of an international application of the earlier application as of the date that could have been recognized as an international filing date under Article 214(4) of this Act or Article 40(4) of the Utility Model Act.”

(iii) “When more than one year and three months have elapsed after the filing date” in the main sentence of Article 56(1) reads "when more than one year and three months have elapsed from the date that could have been recognized as the international filing date under Article 214(4) of this Act or Article 40(4) of the Utility Model Act or at the time a ruling is made under Article 214(4) of this Act or Article 40(4) of the Utility Model Act, whichever is later”.

Article 203

Submission of Documents

(1)

An applicant for an international patent application shall submit a document within the period for submitting domestic documents to the Commissioner of the KIPO, stating the items in the following subparagraphs; an applicant who has filed an international patent application in a foreign language shall submit the translated version in accordance with Article 201(1):

(i)

the name and residential address of the applicant (and, if the applicant is a juridical person, the name and business address);

(ii)

the name and residential or business address of the representative, if any (and, if the representative is a patent juridical person, the name and business address and the name of the appointed patent attorney);

(iii) deleted;

(iv)

the title of the invention;

(v)

the name and residential or business address of the inventor; and

(vi)

the international filing date and the international application number.

(2)

The Commissioner of the KIPO shall order an applicant to make amendments within a designated period under either of the following subparagraphs:

(i)

where the document prescribed in the former sentence of paragraph (1) was not submitted within the period for submitting domestic documents; or

(ii)

where the document prescribed in the former sentence of paragraph (1) violates the formalities prescribed in this Act or any order under this Act.

(3)

Where a person ordered to make an amendment under paragraph (2) fails to make an amendment within the designated period, the Commissioner of the KIPO may invalidate the international patent application.

Article 204

Amendment after Receipt of the International Search Report

(1)

Where an applicant amends the claim(s) of an international patent application after receiving an international search report under Article 19(1) of the Patent Cooperation Treaty, the applicant shall submit to the Commissioner of the KIPO, no later than the reference date (which, if the reference date is the date on which a request is made to examine the patent application, refers to the time at which the request to examine the patent application is made. The same applies to below of this Article and Article 205) one of the following:

(i)

in the case of an international patent application filed in a foreign language, a translated version of the amendment; or

(ii)

in the case of an international patent application filed in Korean, a copy of the amendment.

(2)

Where a translated version or copy of the amendment is submitted under paragraph (1), the scope of claim(s) under Article 47(1) is deemed to have been amended according to the translated version or copy of the amendment. However, when an amendment (only for international patent application filed in Korean) is delivered to the KIPO until the reference date according to Article 20 of the Patent Cooperation Treaty, the scope of claim(s) is deemed to have been amended according to the amendment.

(3)

Where an applicant of an international patent application submits a statement under Article 19(1) of the Patent Cooperation Treaty to the International Bureau, the applicant shall submit to the Commissioner of the KIPO one of the following document until the reference date:

(i)

in the case of an international patent application filed in a foreign language, a translated version of the statement; or

(ii)

in the case of an international patent application filed in Korean, a copy of the statement.

(4)

Where an applicant of an international patent application does not complete the

procedure under paragraphs (1) or (3) before the reference date, an amendment or statement under Article 19(1) of the Patent Cooperation Treaty is deemed to not have been submitted. However, in the case of an international patent application filed in Korean, the same shall not apply if an amendment or statement is delivered to the KIPO until the reference date according to Article 20 of the Patent Cooperation Treaty.

Article 205

Amendment before Establishment of the International Preliminary Examination Report

(1)

Where an applicant amends the description, claim(s) or drawing(s) of an international patent application under Article 34(2)(b) of the Patent Cooperation Treaty, the applicant shall submit to the Commissioner of the KIPO until the reference date one of the following:

(i)

in the case of an international patent application filed in a foreign language, a translated version the amendment; or

(ii)

in the case of an international patent application filed in Korean, a copy of the amendment.

(2)

Where a translated version or copy of an amendment is submitted under paragraph (1), the description and drawing(s) under Article 47(1) are deemed to have been amended according to the translated version or copy. However, when an amendment (only where the application is an international application filed in Korean) is delivered to the KIPO by the reference date according to Article 36(3)(a) of the Patent Cooperation Treaty, the description and drawing(s) are deemed to be amended according to the amendment.

(3)

Where an applicant of an international patent application has not completed the procedure under paragraph (1) by the reference date, the amendment under Article 34(2)(b) of the Patent Cooperation Treaty is deemed not to have been submitted. However, the amendment is deemed to have been submitted when the amendment (only where the application is an international application filed in Korean) is delivered to the KIPO by the reference date according to Article 36(3)(a) of the Patent Cooperation Treaty.

Article 206

Special Provision on Patent Administrator for Overseas Residents

(1)

Notwithstanding Article 5(1), an overseas applicant of an international patent application may, before the reference date, undertake a patent-related procedure without a patent administrator.

(2)

Overseas residents who have submitted a translated version of an international patent application under paragraph (1) shall appoint a patent administrator and report that fact to the Commissioner of the KIPO within the period prescribed by Ordinance of the

Ministry of Knowledge Economy.

(3)

An international application is deemed to have been withdrawn if the appointment of a patent administrator is not reported within the period prescribed under paragraph (2).

Article 207

Special Provision on the Time and Effect of Laying Open an Application

(1)

For the laying open of an international patent application, "more than one year and six months after the date prescribed in any of the following subparagraphs" in Article 64(1) is deemed "when the period for submitting domestic documents has elapsed (where the applicant made a request for examination within the period for submitting domestic documents and where the international application has been internationally laid open according to Article 21 of the Patent Cooperation Treaty, the time shall be more than one year and six months after the priority date or the date of request for examination, whichever is later)”.

(2)

Notwithstanding paragraph (1), with regard to an international application filed in Korean, when the international application is laid open according to Article 21 of the Patent Cooperation Treaty before the international application is laid open according to paragraph (1), the international application is deemed to have been laid open at the time of the laying open according to Article 21 of the Patent Cooperation Treaty.

(3)

The applicant of an international patent application may, after the domestic laying open (in the case of an international application filed in Korean, after an international laying open according to Article 21 of the Patent Cooperation Treaty, the same applies hereinafter in this paragraph) and after having given a warning in the form of a document describing the contents of the invention claimed in the international patent application, demand of a person who has worked the invention as a business, after the warning but before the registration of a patent right, the payment of compensation equivalent to what the applicant would normally receive for working the invention. Even in the absence of a warning, the same demand may be made of a person who worked the invention as a business before the registration of a patent right and who had known that the invention was the one claimed in the international patent application domestically laid open. However, the applicant may not exercise the right to demand compensation until the patent has been registered.

Article 208

Special Provision on Amendment

(1)

Notwithstanding Article 47(1), no amendment (excluding the amendments under Article 204(2) and 205(2)) to an international patent application may be made unless all of the following subparagraphs are satisfied:

(i)

the fees prescribed under Article 82(1) have been paid;

(ii)

a translated version of the application (except for an international patent application filed in Korean) under Article 201(1) has been submitted; and

(iii) the reference date (which, if the reference date is the date on which a request is made to examine the international patent application, refers to the time of day on which the request to examine the patent application is made) has passed.

(2)

Deleted.

(3)

With regard to the scope of an amendment made to an international patent application filed in foreign language, "the matters disclosed in the description or the drawing(s) originally attached to the written patent application" in Article 47(2) reads "the matters disclosed in a translated version of the description, claim(s) or the drawing(s) (only the descriptive text of the drawing(s)) of the international patent application submitted on the international filing date or the matters disclosed in the drawing(s) (except in the descriptive text of the drawing(s)) of the international patent application".

(4)

Deleted.

(5)

Deleted.

Article 209

Restriction on Time of Conversion of Application

Notwithstanding Article 53(1) of this Act, a person may not convert a international application, which is deemed to have been a utility model registration application under Article 34(1) of the Utility Model Act, to a patent application unless the person pays the official fees referred to in Article 17(1) of the Utility Model Act and submits a translated version of the international application in accordance with Article 35(1) of the Utility Model Act (except where the application for international utility model registration was filed in Korean); (in the case where the converted application is based on an international application deemed to have been filed on a date that can be recognized as the international application date under Article 40(4) of the Utility Model Act, after a ruling under Article 40(4) of the Utility Model Act has been made).

Article 210

Restriction on time of a Request for an Examination

Notwithstanding Article 59(2), an applicant of an international patent application may not request an examination of the application until the proceedings (except for international patent applications filed in Korean) under Article 201(1) have been taken and the fees under Article 82(1) have been paid. A person other than the applicant of an international patent application may not request an examination of the international patent application until the period under Article 201(1) has elapsed.

Article 211

Order Concerning Submission of Documents Cited in the International Search Report etc.

The Commissioner of the KIPO may require an applicant of an international patent application to submit, within a designated period, copies of the documents cited in the international search report under Article 18 of the Patent Cooperation Treaty or the International Preliminary Examination Report under Article 35 of the Patent Cooperation Treaty.

Article 212

Deleted

Article 213

Special Provisions on an Invalidation Trial of a Patent

A request of a trial may be made to invalidate a patent for an international patent application filed in a foreign language on the grounds that the patented invention does not fall under either of the following subparagraphs or under any subparagraph of Article 133(1):

(i)

the invention commonly disclosed in the description, claim(s) or the drawing(s) (only the descriptive text of the drawing(s)) of an international application submitted on the international filing date and in the translated version; or

(ii)

the invention disclosed in the drawing(s) (excluding the descriptive text of the drawing(s)) of an international application submitted on the international filing date.

Article 214

International Application Deemed to be a Patent Application by a Ruling

(1)

An applicant of an international application may request the Commissioner of the KIPO as provided by Ordinance of the Ministry of Knowledge Economy to make the decision referred to in Article 25(2)(a) of the Treaty within the period prescribed by the Ordinance of the Ministry of Knowledge Economy, if the international application (pertaining exclusively to a patent application) in which the Republic of Korea is a designated State referred to in Article 4(1)(ii) of the Patent Cooperation Treaty applies to any of the following:

(i)

where the receiving office referred to in Article 2(xv) of the Patent Cooperation Treaty has made a refusal referred to in Article 25(1)(a) of the Treaty;

(ii)

where the receiving office referred to in Article 2(xv) of the Patent Cooperation

Treaty has made a declaration referred to in Article 25(1)(a) or (b) of the Treaty; or (iii) the International Bureau has made a finding referred to in Article 25(1)(a) of the Treaty on an international patent application.

(2)

A person who makes a request under paragraph (1) shall submit, to the Commissioner of the KIPO, a translated version of the description, claim(s) and the drawing(s) (only the descriptive text of the drawing(s)) as well as other documents related to the international application prescribed by Ordinance of the Ministry of Knowledge Economy.

(3)

Where a request is made under paragraph (1), the Commissioner of the KIPO shall decide by a ruling whether the refusal, declaration or finding referred to in the request is justified under the Patent Cooperation Treaty and its Regulations.

(4)

Where the Commissioner of the KIPO decides that the refusal, declaration or finding under paragraph (3) is not justified under the Patent Cooperation Treaty and its Regulations, the international application concerned is Deemed to be a patent application filed on the date that would have been recognized as the international filing date if the refusal, declaration or finding had not been made.

(5)

Where a ruling is made under paragraph (3) as to whether a refusal, declaration or finding is justified, the Commissioner of the KIPO shall deliver a certified copy of the ruling to the applicant of an international application.

(6)

Articles 199(2), 200, 201(4) to (8), 202(1) and (2), 208, 210 and 213 apply mutatis mutandis to an international application deemed to be a patent application under paragraph (4).

(7)

For the laying open of an international application deemed to be a patent application under paragraph (4), "filing date of an application for a patent" in Article 64(1) reads "priority date referred to in Article 201(1).”

CHAPTER XI SUPPLEMENTARY PROVISIONS

Article 215

Special Provisions for a Patent or Patent Right with Two or More Claims

Where Articles 65(6), 84(1)(ii), 85(1)(i) (only for extinguishment), 101(1)(i), 104(1)(i), (iii) or (v), 119(1), 133(2) or (3), 136(6), 139(1), 181 and 182 of this Act and Article 26(1)(ii),

(iv) or (v) of the Utility Model Act apply to a patent or patent right with two or more claims, a patent is deemed to have been granted for each claim, and a patent right is deemed to have been established for each claim.

Article 215bis

Special Provisions for Registering a Patent Application with Two or More Claims

(1)

Where a person who has received a decision to grant a patent for a patent application with two or more claims pays the patent fees, the person may abandon the claims individually.

(2)

Necessary matters concerning abandoning the claim(s) under paragraph (1) are prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 216

Inspection of Documents etc.

(1)

A person may request the Commissioner of the KIPO or the President of the IPT for a certificate concerning a patent or a trial, a certified copy or extract of documents, or to inspect or copy the Patent Register or other documents.

(2)

The Commissioner of the KIPO or the President of the IPT may reject the request referred to in paragraph (1) if it relates to documents concerning a patent application that has not been registered or laid open, or if it relates to matters liable to contravene public order or virtuous manners and customs.

Article 217

Prohibition on Opening or Carrying out Documents Related to a Patent Application, Examination, Trial, Retrial or the Patent Register etc.

(1)

The documents related to a patent application, examination, trial, retrial or the Patent Register shall not be carried out except for any of the following cases:

(i)

where documents related to a patent application or examination are carried out for the purpose of prior art searches etc. under Article 58(1) or (2) ;

(ii)

where documents related to a patent application, examination, trial, retrial or the Patent Register are carried out for the purpose of commissioning the affairs of digitizing patent documents under Article 217bis(1) of this Act; or

(iii) where documents related to a patent application, examination, trial, retrial or the Patent Register are carried out for the purpose of on-line remote performance of duties under Article 30 of the Electronic Government Act.

(2) A response shall not be given to a request for an expert opinion, testimony or an inquiry on the contents of a patent application, examination, trial, or retrial that are pending, nor on the contents of a decision of patentability, trial decision or ruling.

Article 217bis

Agency for Digitizing Patent Documents

(1)

When considered necessary for dealing effectively with patent procedures, the Commissioner of the KIPO may entrust a juridical person that meets the standards of facilities and human resources as prescribed by Ordinance of the Ministry of Knowledge Economy with the affairs for digitizing documents related to patent applications, examinations, trials, retrials or the Patent Register through an electronic information processing system and the technology for using the electronic information processing system or the similar affairs concerned(referred to as “ the affairs for digitizing patent documents”, hereinafter).

(2)

Deleted.

(3)

Present or former officers or employees of a person entrusted with digitizing patent documents under paragraph (1) (referred to as "an agency for digitizing patent documents", hereinafter) may not divulge or appropriate an invention disclosed in a pending application about which they obtained knowledge during the course of their duties.

(4)

The Commissioner of the KIPO may, under paragraph (1), convert into electronic form a written patent application or other documents prescribed by Ordinance of the Ministry of Knowledge Economy that were not submitted as electronic documents as prescribed in Article 28ter (1), and may save them in a file of an electronic information processing system operated by the KIPO or the IPT.

(5)

The contents of a file under paragraph (4) of this Article are deemed to be the same as the contents of the documents concerned.

(6)

The method of digitizing patent documents under paragraph (1) and other matters necessary for digitizing patent documents are determined by Ordinance of the Ministry of Knowledge Economy.

(7)

Where an agency digitizing patent documents fails to meet the standards of facilities and human resources as prescribed by Ordinance of the Ministry of Knowledge Economy in accordance with paragraph (1) and fails to comply with a request from the Commissioner of the KIPO to take corrective action, the Commissioner may cancel the commission of the affairs for digitizing patent documents. In such cases, the Commissioner shall give the agency a prior opportunity to present its opinions.

Article 218

Delivery of Documents

Necessary matters concerning procedures etc. of the delivery of the documents under this Act are prescribed by Presidential Decree.

Article 219

Delivery by Public Notification

(1)

When documents cannot be delivered because the residential or business address of the addressee is unclear, the documents shall be delivered by public notification.

(2)

The public notification is conducted by publishing a notice in the Patent Gazette that the documents to be delivered are available at any time to the addressee.

(3)

The first public notification is effective after passing two weeks from the date on which the public notification is published in the Patent Gazette; however, a subsequent public notification for the same party is deemed to have been served on the day after its publication in the Patent Gazette.

Article 220

Delivery of Documents to Overseas Residents

(1)

Documents to be delivered to an overseas resident who has a patent administrator shall be delivered to the patent administrator.

(2)

Documents to be delivered to an overseas resident who does not have a patent administrator may be sent to the overseas resident by registered airmail.

(3)

When documents have been sent by registered airmail under paragraph (2), the documents are deemed to have been served on the mailing date.

Article 221

Patent Gazette

(1)

The KIPO shall publish the Patent Gazette.

(2)

The Patent Gazette may be published in electronic format under conditions determined by Ordinance of the Ministry of Knowledge Economy.

(3)

When publishing the Patent Gazette in electronic media, the Commissioner of the KIPO shall publicize on an information communication network matters regarding the Patent Gazette's publication, main contents and public notification.

Article 222

Submission of Documents etc.

The Commissioner of the KIPO or examiner may order a concerned party to submit documents and articles necessary for dealing with proceedings unrelated to the proceedings of a trial or retrial.

Article 223

Patent Indication

A patentee or an exclusive or non-exclusive licensee may put on a manufactured product an indication of the patent for an invention of either a product or a process. If the indication is not possible to be placed on the product, the indication may be put on the product's container or package.

Article 224

Prohibition of False Indication

A person may not perform any of the following acts:

(i)

the act of marking with an indication that a patent has been granted or a patent application has been filed or with any sign likely to cause easily confusion of the indication, a product that a patent has not been granted or that a patent application is not pending or manufactured by a process that a patent has not been granted or a patent application is not pending, or the product's container or package;

(ii)

the act of assigning, leasing or displaying a product that has been marked with an indication referred to in subparagraph (i);

(iii) for the purpose of manufacturing, using, assigning or leasing a product referred to in subparagraph (i), the act of marking advertisements, signboards or tags, with an indication that a patent has been granted or a patent application had been filed or manufactured by a process that a patent has been granted or a patent application is pending, or marking with any sign likely to cause easily confusion of the indication; or

(iv) for the purpose of using, assigning or leasing a process for which a patent has not been granted or a patent application is not pending, the act of marking advertisements, signboards or tags, with an indication that a patent has been granted or a patent application had been filed for the process, or marking with any sign likely to cause easily confusion of the indication.

Article 224bis

Restriction on Appeal

(1)

A ruling to dismiss an amendment, a decision of patentability, a trial decision or a ruling to dismiss a request for a trial or retrial may not be appealed under any other Act, and any measure against which an appeal is not permitted under this Act may not be appealed under any other Act.

(2)

Any appeal against measures other than those under paragraph (1) is subject to the Administrative Appeals Act or the Administrative Litigation Act.

Officers and Employees of Special Agency deemed to be Public Officials

When applying Article 226, a person who is a present or former officer or employee of a specialized organization prescribed under Article 58(1) or agency for digitizing patent documents is deemed to be a present or former employee of the KIPO.

Article 227

Offense of Perjury

(1)

A witness, expert witness or interpreter who, having taken an oath under the law, has made a false statement or given a false expert opinion or interpreted falsely before the IPT is liable to imprisonment with labor not exceeding five years or to a fine not exceeding 10 million won.

(2)

A person who has committed an offense under paragraph (1) and confesses it before the trial decision becomes final and binding may be partially or totally reduced the sentence.

Article 228

Offense of False Indication

A person who violates Article 224 is liable to imprisonment with labor not exceeding three years or to a fine not exceeding 20 million won.

Article 229 Offense of Fraud

A person who has obtained a patent, the registration of an extension of the patent term, or a trial decision by means of a fraudulent or any other unjust act is liable to imprisonment with labor not exceeding three years or to a fine not exceeding 20 million won.

Article 230 Dual Liability

Where a representative director of a juridical person or a representative, an employee or any other servant of a juridical person or natural person violates Articles 225(1), 228 or 229 with regard to the business of the juridical person or natural person, the juridical person is liable to a fine as prescribed in either of the following subparagraphs, and the natural person is liable to a fine prescribed in the relevant Article, in addition to the offender:

(i)

under Article 225(1), a fine not exceeding 300 million won;

(ii)

under Articles 228 or 229, a fine not exceeding 60 million won.

However, this provision shall not apply where the juridical person or natural person exercised reasonable care and supervision with regard to the business to prevent the acts of violation.

Article 231 Confiscation etc.

(1)

Any product that is the subject of an infringing act under Article 225(1) or any product arising out of the infringing act shall be confiscated or, upon request of the injured party, a judgment must be made requiring the article to be delivered to the injured party.

(2)

Where a product is delivered to an injured party under paragraph (1), the injured party may claim compensation for damages in excess of the value of the product.

Article 232

Administrative Fine

(1)

A person who commits any of the following acts is liable to an administrative fine not exceeding 500,000 won:

(i)

making a false statement before the IPT after having taken an oath under Articles 299(2) and 367 of the Civil Procedure Act;

(ii)

failing to comply, without justifiable reasons, with an order of the IPT to submit or show documents or other materials related to taking or preserving evidence;

(iii) deleted; or (iv) failing to comply, without justifiable reasons, with a subpoena of the IPT to appear as a witness, expert witness or interpreter, or refusing to take an oath, make a statement, testify, give an expert opinion or interpret.

(2)

The administrative fine referred to in paragraph (1) is imposed and collected by the Commissioner of the KIPO as prescribed by Presidential Decree.

(3)

Any person who objects to the imposition of an administrative fine under paragraph (2) may lodge a protest with the Commissioner of the KIPO within thirty days of the date of being notified of the imposition.

(4)

The Commissioner of the KIPO, upon receipt of a protest under paragraph (3) by a person who was fined under paragraph (2), shall immediately notify the competent court accordingly; the competent court shall adjudicate the case of the administrative fine under the Noncontentious Case Litigation Procedure Act.

(5)

Where no objection has been raised within the period prescribed in paragraph (3) and where the fine has not been paid, the Commissioner of the KIPO shall collect it in accordance with the rules of collecting national taxes in arrears through the head of the competent tax office.

ADDENDUM

<No. 4207, January 13, 1990>

ADDENDUM

<No. 4594, December 10, 1993>

ADDENDUM

<No. 4892, January 5, 1995>

ADDENDUM

<No. 5329, April 10, 1997>

ADDENDUM

<No. 5576, September 23, 1998>

ADDENDUM

<No. 6411, February 3, 2001>

ADDENDUM

<No. 6582, December 31, 2001>

ADDENDUM

<No. 7554, May 31, 2005>

This Act enters into force six months after its promulgation; however, the amended Article 81ter enters into force on September 1, 2005.

ADDENDUM

<No. 7871, March 3, 2006>

ADDENDUM

<No. 8197, January 3, 2007>

ADDENDUM

<No. 9381, January 30, 2009>