Patents, trade marks, copyright and designs in South Korea: overview

A guide to intellectual property law in South Korea. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.

To compare answers across multiple jurisdictions, visit the Patents, trade marks, copyright and designs Country Q&A tool.

This Q&A is part of the PLC multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.

Contents

Patents

1. What are the legal requirements to obtain a patent?

The major patentability requirements are the:

  • First-to-file rule.

  • Novelty or inventive step.

  • Industrial applicability.

  • Description requirements, that is, the claims are clear and are supported by the specification, and the specification contains enabling disclosure of the claimed invention.

  • Unity of invention (the application relates to only one invention or a group of inventions that share a single inventive concept improved over the prior art).

 
2. What categories are excluded from patent protection?

Categories excluded from patent protection include:

  • Ideas using the laws of nature.

  • Process claims involving human treatments.

  • Processes for replicating human beings.

  • Processes for modifying the germ line genetic identity of human beings and products obtained by the same process.

 
3. Which authority registers patents? Does its website provide guidance on the application procedure?

The Korean Intellectual Property Office (KIPO) (see box, The regulatory authority). Its website (www.kipo.go.kr) sets out detailed application procedures.

 
4. On what grounds and when can third parties oppose a patent application?

Any person can submit information and evidence to KIPO that a patent application fails to meet the substantive patentability requirements, including those set out in Question 1, except for the unity of invention requirement.

 
5. When does patent protection start and how long does it last?

Patent protection starts on registration and lasts for 20 years from the effective filing date.

 
6. On what grounds can a patent infringement action be made?

Patent infringement actions can be either:

  • Direct infringement actions, based on a third party's business act of producing, using, transferring, leasing, importing or offering for the sale or lease (including displaying for the sale or lease) of a patented article or an article manufactured by a patented process, or using a patented process.

  • Indirect infringement actions, based on a third party's business act of producing articles used exclusively to produce the patented article, and so on.

 
7. Which courts deal with patent infringement actions?

The District Courts (the Seoul Central District Court and a few other District Courts which have panels specialising in IP cases).

 
8. What are the defences to patent infringement actions?

The main defences are:

  • Non-infringement.

  • Nullity of the patent or any claim.

  • Experimental use exception (that is, using a patented invention for research and experimental purpose, including testing for the purpose of obtaining regulatory approval).

  • Prior use right. If a person is engaged in the business of using (or preparing to use) a patented invention, without knowing the content of the invention, at the time of filing of the patent application at issue, the person will have a non-exclusive licence for the patent at issue, within the scope of that business.

 
9. What are the remedies in patent infringement actions?

Remedies include:

  • Civil remedies, such as injunctive relief (both preliminary and permanent injunctions), damages (punitive damages are not allowed) and restoration of injured business goodwill or reputation.

  • Criminal sanctions.

 
10. Is there a fast-track and/or a small-claims procedure for patent infringement actions?

No.

 

Trade marks

11. What are the legal requirements to obtain a trade mark?

The trade mark must be:

  • Capable of distinguishing goods from the goods of others.

  • Distinctive in relation to the goods.

 
12. Is it necessary or advisable to register trade marks?

South Korea has a registration-based (not use) system to protect trade marks. It is therefore advisable to register a trade mark so that it is protected. The Unfair Competition Prevention Act (UCPA) may also protect unregistered marks, but protection under the UCPA is only given to well-known, unregistered marks in Korea.

 
13. Which authority registers trade marks? Does its website provide guidance on the application procedure?

KIPO registers trade marks. Guidance is available on its website (www.kipo.go.kr).

 
14. On what grounds can the regulatory authority refuse to register a trade mark?

The grounds include the mark being:

  • Generic.

  • Descriptive or otherwise not distinctive.

  • Similar to a third party's senior registered or well-known mark.

 
15. On what grounds and when can third parties oppose a trade mark application?

The opposition grounds are substantially the same as those barring registration (see Question 14).

 
16. When does trade mark protection start and how long does it last?

Trade mark protection starts from its registration, and the term of protection is ten years from the registration date, renewable indefinitely if the renewal fees are paid.

 
17. On what grounds can a trade mark infringement action be made?

The grounds include:

  • Sale or delivery of products bearing a mark identical or similar to a registered trade mark.

  • Displaying, exporting or importing such products for the purpose of selling or delivering.

  • Inducing or contributing to trade mark infringement.

 
18. Which courts deal with trade mark infringement actions?

Trade mark infringement actions are handled by the civil and criminal courts. The Seoul Central District Court has panels specialising in IP cases.

 
19. What are the defences to trade mark infringement actions?

Defences include:

  • Disputing the similarity of the marks or goods at issue.

  • The trade mark owner is not the rightful owner, and the trade mark was obtained in bad faith.

  • Prior user rights, if the prior user was using its mark before the later mark's filing date without any bad faith intent and the prior user's mark is recognised as a source identifier by South Korean consumers through the prior use.

 
20. What are the remedies in trade mark infringement actions?

Remedies include:

  • Criminal proceedings.

  • Civil remedies including injunctive relief (preliminary or permanent injunction), monetary compensation and border measures.

 
21. Is there a fast-track and/or a small-claims procedure for trade mark infringement actions?

No.

 

Copyright

22. What are the legal requirements to obtain copyright protection?

Copyright arises the moment a work of authorship is created. Neither registration nor fixation in a tangible medium is required.

 
23. Can copyright be registered?

Copyright can be registered with the Copyright Commission designated by the Minister of Culture, Sports and Tourism. The Copyright Commission's website (www.copyright.or.kr) provides guidance on the application procedure.

 
24. When does copyright protection start and how long does it last?

Copyright protection starts from the moment a work of authorship is completed, and lasts 50 years after the author's death or publication (or creation) of the work.

Pursuant to the European Union – South Korea Free Trade Agreement, the Copyright Act has been amended to extend the copyright protection term to 70 years, with effect from 2 July 2013.

 
25. On what grounds can a copyright infringement action be made?

Copyright infringement occurs when works of authorship are used in various ways (for example, reproduction, public performance, broadcasting, online transmission, exhibition, distribution, or production of derivative works) without consent or beyond the scope of rights granted by contract or beyond statutory exceptions.

 
26. Which courts deal with copyright infringement actions?
 
27. What are the defences to copyright infringement actions?

The main defences include:

  • Statutory exceptions such as reproduction for private use and quotations from works made public.

  • Innocent infringement.

  • Public property.

  • Invalid copyright.

  • De minimis use.

  • Fair use.

 
28. What are the remedies in copyright infringement actions?
 
29. Is there a fast-track and/or a small-claims procedure for copyright infringement actions?

No.

 

Registered designs

30. What are the legal conditions to obtain a registered design right?

Korea adopts a parallel system for design registrations:

  • Substantive examination system. A design should have industrial applicability, novelty and creativity.

  • Non-substantive examination system. A design should have industrial applicability and creativity to some extent.

Goods subject to non-examination are included on a list in the Regulation of the Design Protection Act. Goods on this list are registered after inspection of only the very basic and perfunctory matters. The goods on this list, such as fashion items, are subject to rapidly changing trends. The goods on this list include:

  • Processed foods.

  • Clothing.

  • Fashion accessories.

  • Personal adornment articles.

  • Bags or portable wallets and so on.

  • Footwear.

  • General parts and accessories for clothing and personal adornment articles.

  • Bedclothes, curtains and so on.

  • Health and sanitary articles for household purposes.

  • Articles for congratulations and condolence.

  • Indoor small organising articles.

  • Training supplies, painting and calligraphy supplies.

  • Writing supplies, office supplies.

  • Office paper, printed matter and so on.

  • Labels, packaging papers, packaging containers and so on.

  • Advertising articles, indicating articles and goods displaying articles.

  • Electronic calculators and so on.

  • Textiles, boards, strings and so on.

  • Image designs.

 
31. Which authority registers designs?

KIPO registers designs. Guidance is available on its website (www.kipo.go.kr).

 
32. On what grounds and when can third parties oppose a registered design application?

The opposition or invalidation grounds are substantially the same as those barring registration of a design application under substantive examination, for example:

  • Lack of industrial applicability.

  • Lack of novelty.

  • Lack of creativity.

  • Similarity to a third party's senior registered design.

  • Likelihood of confusion with a third party's business.

 
33. When does registered design protection start and how long does it last?

Design protection starts from registration, and the term of protection is 15 years from the registration date.

 
34. On what grounds can a registered design infringement action be made?

Grounds include producing, using, transferring, leasing, importing or offering for sale or lease (including displaying for sale or lease) of an article relating to the registered design.

 
35. Which courts deal with registered design infringement actions?
 
36. What are the defences to registered design infringement actions?

Possible defences include:

  • Lack of novelty of the design registration.

  • The design registration has a narrow scope of protection.

  • A part of the design is essential to serve a certain function of a product.

  • The alleged infringing design can be easily created by any person having ordinary skill in the art.

 
37. What are the remedies in registered design infringement actions?
 
38. Is there a fast-track and/or a small-claims procedure for registered design infringement actions?

No.

 

Unregistered designs

39. What are the legal conditions for unregistered design rights to arise?

Unregistered designs can be protected under the UCPA if both the:

  • Imitation product is made within three years from the date the original product was made.

  • Product shape is not a commonly used form for such goods.

In addition, an unregistered design may be protected under the Copyright Act if the artistic value of the design can be independently recognised from the combined article.

 
40. When does unregistered design protection start and how long does it last?

Protection starts from the moment of creation and lasts for three years.

 
41. On what grounds can an unregistered design infringement action be made?

Assigning, renting, displaying, importing, or exporting a product which imitates the appearance of another person's product (the product's shape, pattern, colour, gloss, or a combination of these) is prohibited.

 
42. What are the defences to unregistered design infringement actions?

The main defence used is that the product shape is a commonly used form for the relevant goods.

 
43. What are the remedies in unregistered design infringement actions?

Civil remedies including injunctive relief and damages are available, but criminal actions are not available.

 

Confidential information

44. What are the legal conditions for rights in confidential information to arise?

The information must:

  • Be of a technical or managerial nature that can be used in business activities, including production or marketing methods.

  • Be secret, and the secrecy is maintained through substantial efforts.

  • Possess independent economic value.

 
45. On what grounds can an action for unauthorised use of confidential information be made?

Grounds for an action include:

  • Acquiring, using or revealing a trade secret through illegal acquisition.

  • Acquiring, using or revealing a trade secret knowingly or being grossly negligent in not knowing that the trade secret had been revealed through illegal acquisition.

  • Using or revealing a trade secret having learned or being grossly negligent in not learning that it was the subject of an illegal acquisition, after the acquisition of the trade secret.

  • Using or revealing a trade secret in breach of a contractual obligation.

  • Acquiring, using or revealing a trade secret knowingly or being grossly negligent in not knowing that the trade secret had been revealed in breach of a contractual obligation, or that the trade secret had otherwise been the subject of this revelation.

  • Using or revealing a trade secret having learned or being grossly negligent in not learning that it was the subject of revelation in breach of a contractual obligation, subsequent to the acquisition of the trade secret.

 
46. Which courts deal with actions for unauthorised use of confidential information?
 
47. What are the defences to actions for unauthorised use of confidential information?

The main defence is arguing that the alleged trade secret does not meet the requirements to qualify for protection (see Question 44). Other defences include:

  • No obligation to maintain confidence.

  • The person acquired the trade secret in good faith.

 
48. What are the remedies in actions for unauthorised use of confidential information?

Remedies include:

  • Criminal remedies.

  • Civil remedies, including preliminary and permanent injunction, damages, and measures to restore the business reputation of the trade secret owner.

 
49. Is there a fast-track and/or a small-claims procedure for actions for unauthorised use of confidential information?

No.

 

The regulatory authority

Korean Intellectual Property Office (KIPO)

W www.kipo.go.kr

Main areas of responsibility.

Patents, utility models, designs and trade marks.

Guidance on application procedure. Guidance is available on the following:

  • Registration of an applicant to obtain an application code.

  • Preparing and filing necessary forms such as a patent application (electronic filing system is available).

  • Receipt of the official filing receipt.

  • Paying prescribed official fees.



Contributor details

Song Dae Lim

Kim & Chang

T +822 3703 1088
F +822 723 3287
E sdlim@kimchang.com
W www.ip.kimchang.com

Professional qualifications. South Korean CPA, 1992

Areas of practice. Tax; international taxation related to cross-border transactions.

Recent transactions

  • Representing Synopsys in tax appeals on Korean taxation matters regarding BO (Beneficial Owner) on payment of royalty by Korean companies.

  • Advising multinational clients on (i) tax matters (including customs duty) in various IP transactions such as TP on IP transfer and payment of royalty and (ii)tax audit by Korean tax authority.

Jung Ae Suh

Kim & Chang

T +822 3703 1335
F +822 2122 3800
E jasuh@ip.kimchang.com
W www.ip.kimchang.com

Professional qualifications. South Korean Patent Bar 1998

Areas of practice. IP litigation; chemical practice; life sciences practice.

Sung Nam Kim

Kim & Chang

T +822 6488 4066
F +822 2122 3800
E
snkim@ip.kimchang.com
W
www.ip.kimchang.com

Professional qualifications. South Korean Patent Bar, 1998

Areas of practice. Trade marks; design; IP litigation.

Linda A. Park

Kim & Chang

T +82 2 6488 4047
F +82 2 2122 3800
E lapark@ip.kimchang.com
W www.ip.kimchang.com

Professional qualifications. Washington, US, 2005; US Patent and Trade mark Office 2008

Areas of practice. Strategic IP counselling; patent prosecution and procurement; licensing.

Non-professional qualifications. M.S. in Electrical Engineering, University of Washington; B.A. in History, Whitman College; Masters in Teaching, Seattle University

Languages. English, Korean

Professional associations/memberships. International Association of Korean Lawyers

Publications. "The USPTO's 21st Century Strategic Plan: What Does It Mean for American Innovation?" CASRIP Newsletter, Vol. 9, Issue 3 (Autumn 2002)

Alexandra Bélec

Kim & Chang

T +822 6488 4059
F +822 2122 3800
E abelec@ip.kimchang.com
W www.ip.kimchang.com

Professional qualifications. Quebec, Canada, 1999

Areas of practice. Trade marks; design; domain name; copyrights; IP litigation.

Jason J. Lee

Kim & Chang

T +822 6488 4060
F +822 2122 3800
E jlee4@ip.kimchang.com
W www.ip.kimchang.com

Professional qualifications. California Bar, 2005

Areas of practice. Copyright; designs; IP litigation; trade marks; unfair competition.

Languages. English and Korean.

Dae Hyun Seo

Kim & Chang

T +822 3703 1738
F +822 737 9091
E daehyun.seo@kimchang.com
W www.ip.kimchang.com

Professional qualifications. South Korean Bar, 2009

Areas of practice. IP Litigation and transaction.


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