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The Complexity of Patenting in South Korea

There are numerous ways to expand your business and have your inventions reach other places in the world. As ever, you have to keep in mind how to successfully navigate Intellectual Property (IP) laws. Today, IP is an international phenomenon: countries around the world are working together in order to synchronize their databases. So if you’ve been thinking about taking your business internationally, particularly South Korea, then keep reading for in-depth information about the ways to obtain a patent.

About the Patent System

The general purpose of the patent system is to facilitate the development of technology through the protection, encouragement, promotion, and utilization of inventions. The publication of inventions leads to the accumulation and utilization of technology and the advancement of industry. In other words, the dissemination of inventions into the market leads to their use and inspires even more new inventions which continue to further advancement – it’s cyclical.

The idea is that when you invent something and have secured a patent right, you’re protected from people stealing your idea and taking your profits. Therefore, it’s important to know the term of a patent right begins when it is officially registered. Patent right ends 20 years after the filing date of the patent application. Furthermore, the effect of a patent right is subject to the ‘principle of territoriality.’ To elaborate, it is valid only in the country where you obtained the right.

Requirements for Patent Rights

After you’ve sent in an application, the first step towards receiving a patent is passing an eligibility test. This is determined by applicable law in the submitted jurisdiction. If you want to do business and obtain a patent, you have to understand the specifications of the country where you submit the application. For most developed countries, including the U.S. and South Korea, it is as follows.

  • A patent must have industrial applicability; it must be usable in industry. In other words, a patent must have utility – function or use.
  • The technology must have novelty; it must not be known to the public (prior art) before an application is submitted.
  • The technology must produce advancement or have an inventive step; it must not be easily derivable from prior art.

Click here for detailed information on the prerequisites of patentability in South Korea.

If you intend on only keeping your business local, then you don’t have to concern yourself with how to obtain patents in other parts of the globe. However, if you want to expand your business opportunities elsewhere, continue reading to understand how the principle of territoriality impacts you.

Patent Coordination Treaty

At this point, if you’re looking to take your business international, you might consider this an extremely daunting procedure: having to submit numerous applications which all deal with the specificities under the principle of territoriality. Fortunately, numerous countries around the globe understood how this could negatively impact international business and worked together to create the Patent Cooperation Treaty (PCT).

The PCT is an international patent law treaty. It provides a unified procedure for filing patent applications to protect inventions in each of its contracting states. A patent application filed under the PCT is called an international application, or PCT application.

Thankfully, this makes things considerably easier for all parties involved.

PCT Procedure

When you file a PCT application, you only have to do so once, and it is made with a Receiving Office (RO) in one language. It then results in a search performed by an International Searching Authority (ISA), accompanied by a written opinion regarding the patentability of the invention – the subject of the application. You also have the option to choose a preliminary examination, performed by an International Preliminary Examining Authority (IPEA). Finally, the relevant national or regional authorities administer matters related to the examination of application (if provided by national law) and issuance of patent.

To be clear, a PCT application does not itself result in the grant of a patent, since there is no such thing as an “international patent”, and the grant of patent is decided by each national or regional authority. In other words, a PCT application, which establishes a filing date in all contracting states, must be followed up with the step of entering into national or regional phases to proceed towards grant of one or more patents.

As aforementioned, the PCT procedure essentially leads to a standard national or regional patent application. After this, each jurisdiction in which the patent is desired may choose to grant or deny the application according to applicable law.

The main advantages of the PCT procedure are the possibility to maximally delay:

  1. The national or regional procedures.
  2. The respective fees and translation costs.
  3. The unified filing procedure.

From a practical standpoint, this could allow new ventures more time to locate strategic partnerships, funding, and markets, before their technology becomes public.

More information on the PCT can be found here.

Complications of Patenting in South Korea

It’s clear that the PCT brings numerous benefits, but there is one major drawback. As aforementioned, your international patent application can be used in all member countries of the PCT union. However, whether you are granted or rejected a patent is ultimately decided according to applicable law in each jurisdiction.

What this suggests is the need to pay particular attention to idiosyncrasies in a jurisdiction’s law – the last thing you want is to get fined for infringing a patent. For more information on South Korean infringement guidelines, see here.

And of course, the total patent cost fees can quickly become overwhelming, especially for smaller businesses. These costs depend on factors such as:

  • The complexity of the case.
  • The number of office actions issued.
  • Whether the application was appealed.

In the end, these can cost you thousands to tens of thousands of dollars. To avoid unnecessary legal fees, it’s highly recommended to recruit a patent attorney.

Importance of a Patent Attorney

J.D. Houvener, a Washington DC patent attorney stresses the importance of consulting a patent attorney in all steps of the patent application process.

“A successful business begins by securing their intellectual property at the outset of all future plans. Especially in cases of handling international applications, you want to consult an experienced professional to get things done right the first time. Otherwise, you risk complicating and delaying an approval.”

Patent attorneys have experience in patent searching, writing patent applications, and in the final review process. Hopefully it’s clear that consulting with one is wise to avoid delays and legal battles. In the end, you exponentially increase the chances of receiving approval and the profits that come with it.

In Conclusion

Beginning a business is exciting, especially reaching out to work with international partners. Of course, it can also be difficult: juggling a business of your own, family, life, and also trying to figure out complicated steps to securing a patent. For the sake of your health, mind, and business, it’s much better to consult with a professional and avoid extensive legal battles. Ultimately, you’re much more likely to come out on top as a successful business owner and make a good deal of profit.

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