Kasan IP & Law Firm

About Us

Practice Areas

Members

Resources

Publications

What's New

Introduction to

Korean IP Law

Application

Requirements

Practical Guides

Enforcement

Forms

Fees

Introduction to Korean IP laws

1. Courts System and Legal Tradition

6. Copyright Commission

7. Domain Name Dispute

8. Korea Trade Commission

Courts System

There are three tiers of courts in Korea: the District Courts, the High Courts and the Supreme Court. The Supreme Court that is the highest court and judicial is located in Seoul and consists of a Chief Justice and 13 Justices. The grounds for appeal to the Supreme Court are limited: they are limited to the constitutional and legal questions of the judgments of lower courts.

Korea follows civil law tradition. Accordingly, a decision of the Supreme Court is not a binding precedent in theory. However, it is reality that the lower courts follow the Supreme Court's interpretation of a law and that the effect of a Supreme Court decision amounts to a binding force to the lower courts.

The High Courts are appellate courts. A panel of three judges hears cases before the High Court. The District Courts and its Branch Courts hear the first instance of cases. For example, any patentee should bring a patent infringement lawsuit before a District Court or a Branch Court of a District Court that has jurisdiction over the case.

Patent Court

Established in March, 1998, the Patent Court is located in Daejeon, within 1.5 hour drive distance or 200 kilometers from Seoul. Before the Patent Court was opened, appeals to final rejections by examiners were reviewed by two-tier administrative boards within the Korean Intellectual Property Office (KIPO) and the Supreme Court was responsible for the initial judicial review. Today, the IPT only handles single-step trials while the Patent Court is in charge of reviewing appeals to decisions rendered by the IPT at first hand. The Supreme Court takes on from there to review those appeals again.

The Patent Court has an exclusive jurisdiction over all appeals from the IPT, which means it handles all appeals to KIPO's decisions concerning examinations. As an appellate court, the Patent Court also reviews appeals de novo, where both parties may submit new arguments as well as new factual evidence. The Patent Court may not, however, review appeals from district courts' decisions on infringement issues.

Since the Patent Court took on the responsibility of reviewing cases, many IP cases have been settled and IP laws related to patents and trademark in Korea have become evermore predictable. Needless to say, the Court has been highly credited for its contribution to the development of IP laws.

The significance of the Patent Court's decisions cannot be overstressed in that the Patent Court reviews appeals for IPT's decisions on trials to confirm the scope of an IP right. The most difficult issues that must be dealt with in IP infringement cases is whether the act of practicing IP falls under the conduct of violating the scope of IP rights. With other courts often referring to its decisions, the Patent Court plays a pivotal role in resolving IP disputes.

Meanwhile, a majority of IP practitioners believe that the jurisdiction of appellate level on IP infringement cases should be concentrated at the Patent Court. They say the special panels within general courts that are responsible for handling infringement cases and the Patent Court that review appeals for the trial to determine the scope of a right are not sufficient in resolving IP cases with consistency and effectiveness.

Technical Experts as Law Clerks

Technical experts have emerged in recent years to assist judges at the Patent Court. A total of 9 technical experts, all of whom are equipped with different technical expertise and have at least 5 years of experience examining patent applications in KIPO, assist judges in covering a wide range of technology-related cases.

In essence, technical experts function as judicial clerks. They study filed cases, conduct researches and draft reports to explain technical issues. They also participate in hearings where they ask questions to parties at the permission of the presiding judge.

There are also 3 technical experts serving at the Supreme Court, of which, all of them function as law clerks. And recently, technical experts have been assigned in one of the most specialized divisions within general courts that handle IP infringement cases.

The Korean Intellectual Property Office (KIPO) and the Intellectual Property Tribunal (IPT)

KIPO is located in Daejeon near the Patent Court. The city is in southern part of the country within 1.5 hour drive distance or 200 kilometers from Seoul. KIPO has four examination bureaus: trademarks & Design examination bureau, Machinery & Metals examination bureau, Chemistry & Biotechnology examination bureau and Electric & Electronic examination bureau. In terms of designated responsibilities, KIPO examines and registers patents, utility models, industrial designs and trademarks applications and the Intellectual Property Tribunal (IPT) within KIPO handles trials to confirm the validity or scope of the registered IP rights. The IPT has an exclusive subject jurisdiction over the validity of a patent, utility model, industrial design and trademark.
IPT commenced their works concurrently with the Patent Court on March 1, 1998. The IPT has 13 panels, where each panel is composed of 3 trial examiners. A panel is designated to review each case before IPT.

Characteristics of Korean Patent Law

The Korean system is characterized by:
  (1) First-to File Rule,
  (2) Publication of an Unexamined Application,
  (3) Request for Examination of Application,
  (4) Post-grant Opposition, and
  (5) Separate Validity Trial.

All unexamined applications are automatically published in the name of "Patent Laid-open" after 18 months from the filing date in Korea or the earliest priority date in foreign country. In addition, after a patent application is granted and the patent is registered, the patented specification is published again in the name of "Patent Publication."

Once an unexamined patent application is laid open, the application is laid open to the public and any person may submit any relevant information relating to the patentability of the application to KIPO.

The Patent Act also offers a special legal effect upon a laid-open patent application. If the applicant sends a warning letter to an alleged infringer after his application has been laid-open, a reasonable amount of compensation will be reckoned from the date when the infringer receives the warning letter. The compensation, however, can be collected only after the registration of the patent application.

A patent application will be examined only when an applicant requests the examination of the application within 5 years from the filing date in Korea or the international filing date for a PCT route application. If no request for examination is made by the deadline, the application is deemed to have been withdrawn.

A registered patent may be invalidated only through an invalidation trial. Because the IPT has an exclusive jurisdiction on the invalidation trial, an infringement case court cannot invalidate the subject patent.

Trials in the IPT

Ex Parte Cases

An applicant requests a Trial to appeal a final rejection of an application by an Examiner before the IPT. The Trial must be demanded within 30 days from the receipt of the final rejection. The applicant requesting a Trial may amend the specification within the filing date of a written demand of a Trial. When it is the case, the application will be returned to the Examiner for further consideration based on the amendment. Because the Examiner may allow the application to grant when he finds the grounds for rejection solved, the Trial may end without examination of the IPT.

Inter Parte Case

Invalidation Trial
Any one having interest on validity of a registered IP right may demand a Trial to invalidate a registered IP right. The Invalidation Trial is possible even after the expiration of the subject IP right.

Trial to Confirm a Scope of an IP Right
An IP right owner or an interested person may demand a trial to confirm the scope of a registered IP right. When a trial is demanded to confirm the scope of a patent right, the confirmation shall apply to each claim if the patent has two or more claims. While a Court does not bind the decision of the IPT in this Trial, it plays the important role as strong persuasive evidence to the Court in finding whether or not the subject IP right is infringed.

Trial to Correct the Specification
A patentee may demand a Trial to correct a granted specification or drawing. The Trial is a patentee's defense to avoid an invalidation of a patent. However, in order to avoid unexpected results to any third party, the grounds for the Trial are limited to the following ranges:
① to narrow a claim, ③ to correct a clerical error, ③ to clarify an ambiguous description.

Authors may register their copyrighted works in the Copyright Commission. Further, the Copyright Commission provides ADR solutions regarding copyright disputes in Korea. The Copyright Commission employs conciliation for a settlement of copyright disputes. The Copyright Dispute Conciliation system is meant to efficiently resolve problems through the Copyright Commission established under the Copyright Act, with respect to disputes over rights protected by the Act. One can apply for conciliation for a small fee and the Commission shall reach conciliation within three months from the date of the application.

Confidentiality is assured in conciliation. Conciliation has binding effect to both parties as a judicial settlement. Under the Supreme Court Regulation, when a party does not follows the contents of the settlement, the counter party may enforce his rights through direct execution based the conciliation without bringing a separate lawsuit.

Program Deliberation and Mediation Committee (PDMC)

When any one creates a computer program, he can deposit a copy of a source code or object code of the program to register his program in the Committee. The deposit and registration will serve to clarify the priority to the later developers and the contents of the work. Further, the Committee provides ADR solutions in legal disputes regarding computer programs through mediation and conciliation. A mediation and conciliation board is consists of a panel 3 computer program specialists from legal, academic and industrial area. When both parties accept mediation, the mediation is binding and has identical effect to the judgment of a court.

The Korea Domain Name Dispute Resolution Committee (KDDRC)

There are three ways to resolve domain name disputes in Korea: the Uniform Domain Name Dispute Resolution Policy (UDRP) of ICANN, the Korea Domain Name Dispute Resolution Policy (KDRP) of the Korea Domain Name Dispute Resolution Committee (KDDRC), and the Court. The UDRP involves international proceedings and entails substantially similar contexts to other countries. And the KDRP, which has the most important practical meaning to [.kr] domain name, is essentially similar to the proceeding under the UDRP.

Commenced in January 2002, the Committee (KDDRC) plays a similar role on domain name disputes for international providers under the UDRP, such as Arbitration and Mediation Center of WIPO, NAF, CPR Institute for Dispute Resolution, and ADNDRC. According to the KDDRC, 64 cases were brought before the Committee between the period of January 2002 through March 2003. Of the total, the Committee transferred the domain name from the registrant to the requestor for 24 cases, and canceled the domain name registration for 16 cases. Nine cases have been settled, and the rest are pending.

The dispute resolution proceeding is initiated either by submitting a complaint in writing or in electronic form to the Committee with payment of the prescribed official fee. Once a complaint and supporting materials have been submitted and the fee has been paid, the Committee will forward a copy of the complaint and its supporting materials to the Respondent.

The Respondent shall submit a response and supporting materials within 14 days from the date of receipt of the complaint. However, the Respondent may request for an extension of period for submitting a response and the extended period shall not exceed one month.

The Panel shall render a decision within 14 days from the date of its organization. Provided that there is no objection raised within 14 days from the date of receipt of the Panel decision, the party may submit the Panel decision to the Authorized Agency and have it enforced.

The Korean Trade Commission

Recently, a new resolution method for IP disputes has emerged in Korea. In 2001, the Korean National Assembly passed a bill permitting the Korea Trade Commission (KTC) to suspend imports and exports of any goods infringing IP rights that are valid in Korea. This procedure is closely related to international trades, and therefore, is worth introducing to foreign readers.

The KTC has an authority to suspend imports and exports of products infringing IP rights, and impose fines. Anyone can request the KTC for investigation. The KTC can decide whether to open an investigation, investigate a matter within 30 days, take measures to correct it or impose fines at its discretion. Corrective measures may include bans on exports and imports of patent infringing products, bans on producing and selling those products, disposal of products, advertisements for correction and publication of notifications on violations. The KTC can notify the party about corrective measures in the form of a letter and suspend customs procedures by notifying the Customs Service. If the party violates the corrective measure, he may be sentenced to less than 3 years in prison or the KTC can impose fines of less than 2% of the average annual turnover for the past 3 consecutive years on charges of unfair trade. If the party appeals KTC's decision, he can request an administrative litigation within 30 days of receipt.

Disclaimer

Sitemap