Patent Registration Procedure in South Korea:
* Patent filed at KIPO
* Formal Examination performed
* Substantive examination requested
* The office action is normally communicated after about a year or so, and the responding period is given for two months.
* Publication made.
* Grant and Registration.
A. Documents necessary for filing a regular patent application
(i) One set of English text (including specification, claims, abstract and, if exist, drawings): this is for use in our Korean translation and need not to be submitted to the Korean Intellectual Property Office ("KIPO").
(ii) A Simply signed Power of Attorney executed by the applicant(s).
(iii) A certified copy of the priority application: if the Korean application contains multiple priority claims, each of the priority applications needs a separate. certification.
(ⅳ) The name, address and nationality of the applicant(s) and inventor(s)
B. Documents necessary for entering the Korean national phase of a PCT application
(i) A pamphlet of the international application including the front page showing the title, inventors, applicant, etc. published by the WIPO/IB or WIPO publication number.
(ii) A copy of International Preliminary Examination Report (“IPER”) which indicates any amendment during the international phase in accordance with Article 19 or 34. of the PCT.
(iii) A copy of Form PCT/IB/306 issued by the WIPO/IB, in case the name, address and/or nationality of the applicant(s) and/or inventor(s) has been changed during the international stage under Chapter I or II.
(iv) A Simply signed Power of Attorney executed by the applicant(s).
* The timeframe of a patent application, it takes one and a half years to receive a first office action after requesting substantive examination thereof: If your response to the office action within two months is successful, you will receive a decision to grant for patent in several months.
* You should pay the issue fee (1st to 3rd annuities) within 3 months after you receive the decision.
* Therefore: After filing the patent application and the request for examination thereof, the timeframe of registration takes approximately two (2) years.
First Official Action issued:
From 10 to 14 months from filing date of Request for Examination.
From 12 to 16 months from filing date of Request for Examination if no objection is raised by the examiner
Trademark Law in South Korea:
Any person who uses or intends to use a trademark in the Republic of Korea may file an application for the registration of a trademark. Although the Korean Trademark Act has adopted a registration system, the applicant should have a bona fide intent to use his/her trademark in the Republic of Korea. Nonetheless, trademarks which are not used must also be registered. Such trademarks, however, will be subject to cancellation if they remain unused for three or more consecutive years after their registration.
Legal basis is the Trademark Act, last amended on February 29, 2016, and said amendments became effective on September 1, 2016. South Korea is a member of the Madrid Protocol. Trademark protection is obtained by registration. Unregistered marks are generally not protected under the Trademarks Act, although the owner of a well-known or famous mark is given some protection under the Trademark Act by way of preventing others from obtaining a trademark registration for an identical or similar mark. South Korea follows the first-to-file system.
For a trademark application, the following documents should be submitted to KIPO:
(a) an application stating the following: the name and address of the applicant (including the name of an executive officer, if the applicant is a juristic person); the trademark; the designated goods and class thereof; the date of submission; and the country and filing date of the priority application, if the right of priority is claimed;
(b) 10 specimens of the trademark (8cm x 8cm or smaller in size);
(c) the priority document if the right of priority is claimed; and
(d) a simply signed power of attorney.
Only document (a) must be submitted at the time of filing the trademark application. The name of an executive officer of the applicant may be added later on the applicant's own initiative or in response to a notice of amendment issued from KIPO.
If the applicant fails to submit specimens of the trademark or power of attorney at the time of filing the trademark application, KIPO will issue a notice of amendment with a designated time limit to the applicant. The priority document must be submitted within 3 months from the filing date of the trademark application in the Republic of Korea. This time limit cannot be extended.
Classification: Nice Classification. Multiple-class applications are possible.
A person who desires to file a trademark application must designate the goods/services for which the trademark is to be used in accordance with the Nice Classification of Goods or Services for the Purpose of Registration of Marks. The Republic of Korea adopted the Nice Classification on March 1, 1998.
A trademark application may be filed for the registration of a trademark for goods which fall under several classes in accordance with the Nice Classification. In this case, the applicant must pay additional fees for each classification.
Claim of Priority
The right of priority can be claimed in a trademark application for an applicant whose country of origin is part of the Paris Convention or under a bilateral agreement between the two relevant governments or on a reciprocal basis. In order to enjoy the priority right, an application should be filed in the Republic of Korea within 6 months from the filing date of the priority application. The priority document should be submitted to KIPO within 3 months from the filing date of his/her application.
Trademark Registration procedure in South Korea:
The application is filed at the Korean Intellectual Property Office (KIPO).
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The application will be returned to the submitter without an application number and will be treated as if it had never been submitted in any of the following circumstances:
(i) where the kind of the application is not clear;
(ii) where the name or address of a person (or juristic person) who takes the procedure (i.e. the applicant) is not described;
(iii) where the application is not written in Korean;
(iv) where a specimen of the trademark is not attached to the application paper;
(v) where the designated goods are not described in the application paper; or
(vi) where the application is submitted, by a person who has no address or place of business in the Republic of Korea, without coming through a patent agent in the Republic of Korea.
Once the application has satisfied such requirements, KIPO assigns an application number and examines it against the formality requirements of the Trademark Act. If anything is found missing or wrong, the commissioner of KIPO will issue a notice of amendment with a specified time limit to the applicant. If the applicant does not comply with the requests for amendment, the trademark application will be nullified.
(i) Initiation of Examination
Unlike patent or utility model applications, trademark applications are automatically examined in order of their filing date. However, under Article 53(2) of the Trademark Act, the commissioner of KIPO may grant priority to trademark applications which satisfy certain requirements. The examination of a trademark application generally takes about 5 months from its filing date.
(ii) Requirement for Registration
For a trademark to be registered under the Trademark Act, it should meet the following requirements:
(a) It should fall under the definition of a trademark prescribed in the Trademark Act;
(b) It should be distinctive so as to serve as an indication of goods or if it is not inherently distinctive, it should have acquired a secondary meaning;
(c) It should not fall into any of the categories of trademarks unable to be registered as prescribed in the Trademark Act.
If an examiner does not find any grounds for rejection of a trademark application, or he/she decides the rejection has been overcome by the applicant's response (argument and/or amendment), he/she shall render a decision to publish the trademark application.
Once a trademark application is published in the official gazette, the "Trademark Publication Gazette," any person may file an opposition within two (2) months (non-extendable). A notice of opposition containing a brief statement on the grounds for opposition must be submitted within the first thirty days. Then, the opponent may amend, add or supplement the grounds for opposition within the next thirty days.
Decision of grant of protection
Decision to register a trademark is the administrative measure which means that it has suitable requirements for a trademark registration as a result of the examination of the trademark application by the examiner, thus an applicant can receive establishment registration of a trademark right.
Upon decision of the trademark registration, an applicant can apply for establishment registration of the trademark right after paying the registration fee within the specified period.
The processing time from first filing to registration or first office action is approx. 12 months.
Protection begins from the date of registration. A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.