INTRODUCTION
Korean patent law is fairly comprehensive, offering protection to most products and technologies. Still, despite legislative progress, deficiencies remain in the interpretation of claims and in the treatment of dominant and subservient patents. The Korean Intellectual Property Office (KIPO) has strengthened restrictions on patent term extensions for certain pharmaceuticals, agrochemicals and animal health products that are subject to lengthy clinical trials and domestic testing requirements, but problems still remain. Lack of coordination between Korean health and safety officials and IPR personnel sometimes results in market approval being granted for products that infringe on existing patents.
Korean laws on unfair competition and trade secrets provide a level of protection in Korea, but are sometimes insufficient. For example, some U.S. manufacturers report government regulations that require submission of very detailed information on sensitive products as part of registration procedures. The Korean Food and Drug Administration (KFDA) revised the Pharmaceutical Affairs Act implementing regulations to stipulate that submitted data must be protected from unauthorized disclosure when the submitting party requests protection. In 2004, the Unfair Competition and Trade Secrets Act was amended, strengthening penalties for disclosing trade secrets.
COVERAGE – WHAT IS PROTECTED.
The Patent, Utility Model, Design and Semiconductor Acts control what inventions are "patent"-able. Under the Patent Act, inventions that have industrial applicability are "patent"-able unless they fall under either of the following conditions:
(i) inventions publicly known or worked in the Republic of Korea
before the filing of the patent application; or
(ii) inventions described in a publication distributed in the
Republic of Korea or in a foreign country before the filing of
the patent application or inventions published through electric
telecommunications lines as prescribed by Presidential Decree.
Notwithstanding the above conditions, an invention likely to contravene public order or morality or to injure public health may not be patented.
The term of a patent right commences upon registration of the patent right under Article 87 of the Patent Act and ends twenty years after the filing date of the patent application. Where authorization or registration under other laws or regulations is required to work a patented invention and an extended period has been taken to complete the activity test, safety tests and so on necessary to obtain the authorization or registration, and where the authorization is prescribed by Presidential Decree, the term of the patent right may be extended by a period of up to five years during which the patented invention could not have been worked.
LEGISLATION
Download the files below to view patent related legislation.
Competition and Trade Secret Protection Act
PATENT REGISTRATION PROCEDURES
The Korea Intellectual Property Office (KIPO) is the agency that registers patents. Click "KIPOs patent registration procedures" to view steps on registering your patent in Korea.
KIPO has also introduced KIPOnet, the main purpose of which is to established a paper-less IPR administrative system for IP-related administrative procedures from filing to gazette publication. The site is in Korean. Download "here" to read details on the system below.
For list of major law firms in Korea, go to http://www.buyusa.gov/korea/en/lawfirmcontacts.html.
ENFORCEMENT APROACHES – HOW TO ADDRESS INFRINGEMENT?
Reporting an Infringement
KIPO has an anti-counterfeiting agency which investigates counterfeits in Korea. To report an infringement, contact the KIPO Anti-Counterfeiting Center at 82-42-472-0121 or fax at 82-42-472-3465. Click "here" for a list of IPR protection consulting firms in Korea.
"STOP!"(Strategy Targeting Organized Piracy) Program
"STOP!"(Strategy Targeting Organized Piracy) Program
Patent Dispute Resolution Process
(Source: U.S. Commercial Service, Korea)
For list of major law firms in Korea, go to http://www.buyusa.gov/korea/en/lawfirmcontacts.html.
U.S. Customs
U.S. Immigration and Customs Enforcement(ICE)/Department of Homeland Security (DHS)
MARKET ENTRY PLANNING
It is essential that any U.S. company considering introducing intellectual property into Korea should begin working with lawyers well in advance of market entry. Companies considering doing business in Korea or with Korean entities should consider making an inventory of their intellectual property, proprietary and other sensitive information (including that owned by affiliated companies) and developing plans for the protection of each type.
In addition to applying for patents, assigning any patent rights, and licensing technology as appropriate, companies should evaluate the risks posed by contractual relationships. A significant number of intellectual property disputes in Korea arise between companies doing business together. As a result, companies should utilize non-disclosure agreements in negotiations and contracts, identify and restrict disclosure of all technical data only to those who have a "need to know" and compartmentalize knowledge. Simply keeping proprietary information in a secure location or leaving it only with the most reliable employees may also safeguard some forms of information such as tools, dies, or formulae. Confidentiality obligations may also need to be extended to board members, employees, agents, and the like who have actual or potential access to marketing plans.
U.S. companies should also conduct an intellectual property "due diligence", by reviewing the Korean market for existing infringements of their rights and studying the experiences of similar companies in Korea. Moreover, companies should ensure that they are familiar with relevant Korean rules and regulations, especially those that may contrast with the U.S.. Licensors should consult qualified counsel to determine how much of a license must be recorded to ensure the licensor's rights are not compromised.