1. PCT international application
What is the most appropriate way to obtain a patent in other countries?
- When applying for a patent directly to a foreign patent office (including priority claim)
- In Europe, when applying to the European Patent Office EPO
- If filing a PCT application
- If you want to apply for a patent only in the United States, it is most appropriate to apply directly to the US Patent Office, and if you want to apply in many countries, PCT is appropriate
How is the legal treatment different in the international application process?
: Failure to submit a specification, failure to submit a translation, or an international application under the Patent Cooperation Treaty are all subject to an order to supplement the international application, and the date of the international application itself is not recognized. If the fee is not paid, it is subject to an amendment order, and in case of non-payment, the international application is considered withdrawn.
1) Method of overseas application
- Determining Factors for Foreign Applications: Market, Country of Manufacture, Time and Cost, Validity of Rights and Effectiveness of Remedies
- Specific path of overseas application: Direct application to foreign patent office, EPO application, PCT international application
2) PCT International Application Procedure
- Submission of application form, specification, claims, drawings, abstract
- Recognition of international filing date: The Commissioner of the Korean Intellectual Property Office recognizes the international application date as the international filing date (principle)
- In the following cases, the Commissioner of the Korean Intellectual Property Office issues an order for amendment within a fixed period, and if the amendment is not made, the international application is considered withdrawn
: If the name of the invention is not described, if a summary is not submitted, an application by a person with incapacity to act, 2 In the case of a joint application by more than one person, in the case of not appointing an attorney as an agent, or in violation of the rules
3) Planets of the solar system
- Translation submission: 2 years and 7 months from the priority date (domestic document submission period)
- In order for an international patent application to be subject to the exemption from public notice, documents to that effect and supporting documents must be submitted within 30 days after the standard date.
- If an applicant for an international patent application submits a translation (except for international patent applications filed in Korean) and pays the patent fee, a request for examination can be made even before the expiration of the domestic document submission period. A request for examination can only be made after the expiration of the period.
2. Utility model law
- Is it possible to apply for a material invention as a design subject to protection under the Utility Model Act?
Material inventions are not subject to protection under the Utility Model Act, as design under the Utility Model Act is based on the shape, structure, and combination of an article. Material inventions must be protected by patent law.
1) Invention under the Utility Model Act
- Under the Utility Model Act, the subject of protection is a design related to the shape, structure, and combination of an article, and design refers to the creation of a technical idea using natural laws.
- Items that are not inventions under the Utility Model Act are:
methods, manufacturing methods, those described only with functional expressions, those related to materials such as composition-compounds-alloys, those that are not three-dimensional, sequences, functions, games, certain shapes or structures what you don't have
2) Difference between patent and utility model
- Patents are subject to protection of inventions, and utility models are subject to protection of inventions, and the duration differs from 20 years to 10 years. .In addition, in the judgment of inventive step, patents are divided into whether they are easily invented or extremely easily devised, but there is no difference in practice.
3. Understanding the Trademark System
- Can a trademark related to sound (sound trademark) be protected under the Trademark Act: After the Korea-US FTA, Korea also recognizes sound and smell trademarks.
- Among the items that can be recognized as goods under the Trademark Act, there are medical drugs. General drugs are not recognized as commodities.
1) Legal relationship between trademark and trade name
- If the trade name of another person already exists, if the trade name is not well-known, trademark registration is possible unless a third party applies for trademark registration and there are no other reasons for refusal
- If the trade name of another person already exists, if the trade name is well-known/famous, a third party cannot apply for trademark registration.
- If a third party’s trade name already exists, if a third party who has registered a trademark for another person’s trade name exercises its rights, the use of the trade name by the owner of the trade name is an act of using his or her trade name according to commercial practice, so the trademark right does not have effect. Instead, the effect of the trademark right is limited as it falls under the legal right of use of the prior user.
- If another person's trademark rights already exist and a third party applies for registration of another person's registered trademark as their own trade name, the Korean registration official does not have the right to substantive examination (right to formal examination), so it is possible to register a company name if it has not been registered.
- If another person's trademark right already exists and a third party uses another person's registered trademark as his/her own trade name, the act of using his/her trade name according to commercial practice shall not have the effect of the trademark right.
: However, in this case, if a trade name is used for the purpose of unfair competition after registration of establishment of trademark rights, trademark rights shall take effect.
- Corporate identity unification strategy (Corporate identification program, CIP): To minimize adverse effects caused by the separation of trademark and trade name, to make the trademark and trade name the same
2) Purpose of the Trademark Act
- Protection of Trademarks
- Maintaining business credit of trademark holders
- Contributing to industrial development: the basic purpose of industrial property rights
- Protection of consumers' interests: strong public interest factor
3) Trademark
- A mark used to identify one's own goods or services and others' goods or services (the revised Trademark Act deletes the definition of service mark and unifies it as a trademark)
- Goods: tangible goods that can be transported independently and subject to repeated transactions
- Intention to identify one's own products: To use one's products or services to identify others' products or services
- Use: Any aspect used to commend the product and to indicate the identity of the product
- Mark: Any sign used to indicate the origin of a product, regardless of its composition or mode of expression.
4. Application for trademark registration
l What happens to the application for trademark registration if the fee is not paid when applying for trademark registration: If the applicant does not pay the fee at the time of filing the application for trademark registration, the Commissioner of the Korean Intellectual Property Office orders amendments, and if amendments are not made, the application can be invalidated.
l Reasons for invalidation of trademark law procedures include violation of legal capacity, violation of the scope of agency authority when appointing an agent (when an agent makes amendments to a trademark registration application), violation of method, and failure to pay fees and trademark registration applications that are not written in the Korean language are grounds for rejection, not grounds for invalidation of the procedure.
1) Application for trademark registration
- A person who intends to register a trademark must submit an application for trademark registration stating the following to the Commissioner of the Korean Intellectual Property Office
: Name and address of the applicant (name and address of business office in case of a corporation)
: Name and address of the agent of the applicant, if any B Location of business office (if the agent is a patent corporation, its name, location of office, and name of designated patent attorney)
: Trademark
: designated product and its classification, etc.
2) Return of illegal documents
- In the case of returning illegal application documents, the Commissioner of the Korean Intellectual Property Office sends a notice stating the purpose of returning the application documents, the reason for return, and the explanatory period to the applicant who submitted the application documents
- The Commissioner of the Korean Intellectual Property Office immediately returns the application documents if the applicant does not submit a statement of explanation or request for return of documents within the explanation period, or if the details of the submitted explanation are deemed groundless.
3) Invalidity of Procedure
- If an application for trademark registration falls under any of the following cases, the Commissioner of the Korean Intellectual Property Office orders correction by setting a period
capacity: In case
of violating the scope of agency authority when appointing an agent: In case
of violating the method:
of not paying a fee
- If the person who has received the above correction order does not make the correction within the specified period, the Commissioner of the Korean Intellectual Property Office shall nullify the procedures pertaining to the trademark.
* I am not an IP expert, I am a student learning IP. Translation is also Google translator and my poor English skills. I would like to tell you about IP from the point of view of a person learning IP. I hope this helps people who are in a similar situation to me.
* The above is what I saw and learned from Professor Gu's intellectual property lecture. “https://cb.ipacademy.net/main.do”. It is accessible through You may not be able to see it without logging in
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