CHAPTER X : International Applications under the Patent Cooperation Treaty
Part I.
International Application Procedure
Article
192 ーPersons Capable of International Application―
Any person who falls under any of the following subparagraphs
may file an international application with the Commissioner of
the Korean Industrial Property Office:
(ァ) a national of the Republic of Korea;
(ア) a foreigner who has a residence or place of business in the
Republic of Korea;
(ィ) a person who does not fall under subparagraph (i) or (ii)
but who files an international application under the name of a
representative falling under subparagraph (i) or (ii); or
(イ) a person who meets the requirements prescribed by the Ordinance
of the Ministry of Commerce, Industry and Energy.
Article
193 ーInternational Application―
(1) A person desiring to file an international application shall
submit to the Commissioner of the Korean Industrial Property Office
a request, description, claims, drawings (where required) and
an abstract prepared in the Korean language or any language prescribed
by the Ordinance of the Ministry of Commerce, Industry and Energy.
(2) The request shall contain:
(ァ) a petition to the effect that the international application
be processed according to the Patent Cooperation Treaty;
(ア) the designation of the contracting States in which protection
for the invention is desired on the basis of the international
application;
(ィ) if the applicant wishes to obtain a regional patent referred
to in Article 2(iv) of the Patent Cooperation Treaty, an indication
to that effect;
(イ) the name, or title, and the domicile, or place of business,
and the nationality, of the applicant;
(ゥ) the name and domicile or place of business of the agent (if
any);
(ウ) the title of the invention; and
(ェ) the name and domicile, or place of business, of the inventor
(where the national law of a designated State requires that these
indications be furnished).
(3) The description under paragraph (1) shall disclose the invention
in a manner sufficiently clear and complete for the invention
to be carried out easily by a person skilled in the art to which
the invention pertains.
(4) The claims under paragraph (1) shall clearly and concisely
define the matter for which protection is sought and be fully
supported by the description.
(5) Other necessary matters which are not prescribed in paragraphs
(1) to (4) concerning an international application shall be prescribed
by the Ordinance of the Ministry of Commerce, Industry and Energy.
Article
194 ーRecognition, etc. of Filing Date of International Application―
(1) The Commissioner of the Korean Industrial Property Office
shall deem the date of receipt of the international application
as the international filing date under Article 11 of the Patent
Cooperation Treaty (hereinafter referred to as an "international
filing date"), unless:
(ァ) the applicant does not meet the requirements prescribed in
Article 192;
(ア) the international application is not in the language prescribed
under Article 193(1);
(ィ) the international application does not contain a description
or claim(s); or
(イ) the elements listed in Article 193(2)(i) and (ii) or the name
or title of the applicant are not indicated.
(2) If an international application falls under any of the subparagraphs
of paragraph (1), the Commissioner of the Korean Industrial Property
Office shall invite the applicant to amend the defect, in writing,
within a designated time limit.
(3) If an international application refers to a drawing or drawings
which is or are not included in that application, the Commissioner
of the Korean Industrial Property Office shall notify the applicant
accordingly.
(4) The Commissioner of the Korean Industrial Property Office
shall deem the international filing date as the date of receipt
of the amendment in writing when the invited applicant under paragraph
(2) has complied with the invitation within the designated time
limit, or the date of receipt of the drawings when the invited
applicant under paragraph (3) has furnished the drawings within
the time limit prescribed by the Ordinance of the Ministry of
Commerce, Industry and Energy. If the invited applicant under
paragraph (3) has not furnished the drawings within the time limit
prescribed by the Ordinance of the Ministry of Commerce, Industry
and Energy then reference to the said drawings shall be considered
nonexistent.
Article
195 ーInvitation to Amendment―
The Commissioner of the Korean Industrial Property Office shall
invite the applicant to make amendments, in writing, within a
designated time limit, if the international application does not:
(ァ) contain the title of the invention;
(ア) contain an abstract;
(ィ) comply with Articles 3 or 197(3); or
(イ) comply with the requirements prescribed by the Ordinance of
the Ministry of Commerce, Industry and Energy.
Article
196 ーInternational Application Considered to Have Been Withdrawn―
(1) An international application shall be considered to have been
withdrawn if:
(ァ) the applicant has failed to make an amendment within the time
limit designated under Article 195;
(ア) a fee has not been paid within the time limit prescribed by
the Ordinance of the Ministry of Commerce, Industry and Energy,
and Article 14(3)(a) of the Patent Cooperation Treaty therefore
becomes applicable; or
(ィ) with regard to an international application to which an international
filing date has been recognized under Article 194, the said application
is found to fall under any of the subparagraphs of the provisions
under Article 194(1), within the time limit prescribed by the
Ordinance of the Ministry of Commerce, Industry and Energy.
(2) If part of a fee has not been paid within the time limit prescribed
by the Ordinance of the Ministry of Commerce, Industry and Energy,
and Article 14(3)(b) of the Patent Cooperation Treaty therefore
becomes applicable, the designation of the State or States in
respect of which the fee has not been paid shall be considered
to have been withdrawn.
(3) If an international application, or part of the States designated,
is considered to have been withdrawn under paragraphs (1) or (2),
the Commissioner of the Korean Industrial Property Office shall
notify the applicant accordingly.
Article
197 ーRepresentative, etc.―
(1) Where two or more applicants jointly file an international
application, the procedure under Articles 192 to 196 and 198 may
be initiated by a common representative of the applicants.
(2) Where two or more applicants jointly file an international
application and do not designate a common representative, a representative
may be designated as their common representative as prescribed
in the Ordinance of the Ministry of Commerce, Industry and Energy.
(3) Where an applicant intends to allow an agent to initiate a
procedure for him under paragraph (1), he shall appoint a patent
attorney as his agent unless the procedure is initiated by a legal
representative under Article 3.
Article
198 ーFees―
(1) An applicant for an international application shall pay the
required fees.
(2) Fees, proceedings and time limits for payments under paragraph
(1) shall be prescribed by the Ordinance of the Ministry of Commerce,
Industry and Energy.
Article
198bis ーInternational Search and International
Preliminary Examination―
(1) The Korean Industrial Property Office shall perform duties
as an international searching authority and as an international
preliminary examining authority for an international application
in accordance with a convention concluded with the International
Bureau, as prescribed in Article 2(xix) of the Patent Cooperation
Treaty.
(2) Details concerning the performance of duties as prescribed
in paragraph (1) shall be prescribed by the Ordinance of Ministry
of Commerce, Industry and Energy.
Part II.
Special Provisions on International Patent Applications
Article
199 ーPatent Application Based on International Application―
(1) An international application for which an international filing
date has been recognized under the Patent Cooperation Treaty,
and which designates the Republic of Korea as a designated State
in order to obtain a patent, shall be considered to be a patent
application filed on its international filing date.
(2) Article 54 shall not apply to an international application
considered to be a patent application under paragraph (1) (hereinafter
referred to as an "international patent application").
Article
200 ーSpecial Provision Concerning Presumption of Novelty
of Inventions―
Notwithstanding Article 30(2), any person desiring application
of Article 30(1)(i) or (iii) to the invention claimed in an international
patent application may submit to the Commissioner of the Korean
Industrial Property Office a written statement to that effect
and a document proving that the invention falls under Article
30(1)(i) or (iii) within the time limit prescribed by the Ordinance
of the Ministry of Commerce, Industry and Energy.
Article
201 ーTranslation of International Patent Application―
(1) The applicant for an international patent applied in any foreign
language shall submit to the Commissioner of the Korean Industrial
Property Office a Korean translation of the description, claims,
drawings (only text matter thereof) and abstract filed on the
international filing date within one year and eight months from
the priority date as defined in Article 2(xi) of the Patent Cooperation
Treaty (hereinafter referred as "priority date") or two years
and six months from the priority date in case where the said applicant
has requested an International Preliminary Examination under Article
33 of the Patent Cooperation Treaty within one year and seven
months from the priority date and elected the Republic of Korea
as an elected State under the Article 31(4)(a) of the Patent Cooperation
Treaty (hereinafter referred to as "domestic time limit for submitting
documents"). However, in cases where an applicant for an international
patent has amended the claims under Article 19(1) of the Patent
Cooperation Treaty, only the Korean translation of the amended
claims need be submitted.
(2) If the translation of the description and claims under paragraph
(1) have not been submitted within the domestic time limit for
submitting documents, the international patent application shall
be deemed to be withdrawn.
(3) An applicant who has submitted the translation referred to
in paragraph (1) may submit a new translation to replace the prior
translation only within the designated domestic time limit for
submitting documents; however, this provision shall not apply
where the applicant has made a request for examination.
(4) Matters which were disclosed in the description, claims and
text matter of drawings of an international patent application
filed on the international filing date, but which were not disclosed
in the translation under paragraph (1) or (3) (hereinafter referred
to as a "translated version") submitted within the domestic time
limit for submitting documents (or the date of the request for
examination where the applicant has made such a request within
the said time limit; hereinafter referred to as "relevant date")
shall be deemed not to have been disclosed in the description,
claims and the text matter of the drawings of said international
patent application filed on the international filing date.
(5) An application of an international patent application submitted
on the international filing date shall be deemed to be an application
submitted under Article 42(1).
(6) The translated version of the description, claims, drawings
and abstract of an international patent application (the description,
claims, drawings and abstract submitted on the international filing
date, in case of an international patent application made in the
Korean language) shall be deemed to be the description, claims,
drawings and abstract submitted under Article 42(2).
(7) Article 204(1) and (2) shall not apply in case where a Korean
translation of the amended claims has been submitted pursuant
to the provision of paragraph (1).
(8) Where the Korean translation for only the amended claims has
been submitted pursuant to the provision of paragraph (1), the
claims submitted at the international filing date shall not be
recognized.
Article
202 ーSpecial Provisions on Claim of Priority―
(1) Articles 55(2)
and 56(2) shall not apply to an international patent application.
(2) For the purpose of Article 55(4), "description or drawings
originally attached to the earlier application" shall read "description,
claims and drawings (only text matter thereof) submitted on the
international filing date under Article 201(1), and the translated
version of said documents under Article 201(4) or drawings (except
the text matter thereof) of the international application submitted
on the international text matter thereof) of the international
application submitted on the international filing date" and "laying
open for public inspection" shall read "international publication
under Article 21 of the Patent Cooperation Treaty."
(3) For the purposes of Articles 55(1), (3) and (4) and 56(1),
where the earlier application under Article 55(1) of the Patent
Law is the international patent application or international utility
model application under Article 57(2) of the Utility Model Law,
"description or drawings originally attached to a patent or utility
model application" in Article 55(1) and (3) shall read "description,
claims and drawings of an international application submitted
on the international filing date under Article 201(1) of the Patent
Law or Article 59(1) of the Utility Model Law," "description or
drawings originally attached to the earlier application" in Article
55(4) shall read "description, claims or drawings of an international
application concerning an earlier application submitted on the
international filing date under Article 201(1) or Article 59(1)
of the Utility Model Law," "laying open of the earlier application"
for public inspection in Article 55(4) shall read "international
publication concerning said earlier application under Article
21 of the Patent Cooperation Treaty" and "at the expiration of
one year and three months from the filing date" in Article 56(1)
shall read "at the relevant date under Article 201(4) of the Patent
Law or Article 59(4) of the Utility Model Law or at the expiration
of one year and three months from the international filing date
under Article 201(1) of the Patent Law or Article 59(1) of the
Utility Model Law, whichever date expires later," respectively.
(4) For the purposes of Articles 55(1), (3) and (4) or 56(1),
where the earlier application under Article 55(1) is an international
patent application recognized as a patent application or a utility
model application under Article 214(4) of the Patent Law or Article
71(4) of the Utility Model Law, "description or drawings originally
attached to the application" in Article 55(1) and (3) shall read
"description, claims or drawings of an international application
as of the date regarded as the international filing date under
Article 214(4) of the Patent Law or Article 71(4) of the Utility
Model Law" and "description or drawings originally attached to
the earlier application" in Article 55(4) shall read "description,
claims or drawings of an international application concerning
an earlier application as of the date regarded as the international
filing date under Article 214(4) of the Patent Law or Article
71(4) of the Utility Model Law" and "at the expiration of one
year and three months from the filing date of that earlier application"
in Article 56(1) shall read "within one year and three months
from the date regarded as the international filing date under
Article 214(4) of the Patent Law or Article 71(4) of the Utility
Model Law or at the time of making a decision under Article 214(4)
of the Patent Law or Article 71(4) of the Utility Model Law, whichever
date expires later," respectively.
Article
203 ーSubmission of Document―
An applicant for an international patent may submit, within the
designated domestic time limit for submitting documents to the
Commissioner of the Korean Industrial Property Office, a document
stating:
(ァ) the name and domicile of the applicant (the title, place of
business and name of its representative, in the case of a legal
entity);
(ア) the name and domicile or place of business of the agent, if
any;
(ィ) the date of submission;
(イ) the title of the invention;
(ゥ) the name and domicile, or place of business of the inventor;
and
(ウ) the international filing date and the international application
number.
Article
204 ーAmendment after Receipt of the International Search Report―
(1) If the claims of an international patent application have
been amended after receipt of the international search report
under Article 19(1) of the Patent Cooperation Treaty, the applicant
of the international patent application shall submit to the Commissioner
of the Korean Industrial Property Office a Korean translation
of such an amendment no later than the relevant date.
(2) Where a translation of the amendment has been submitted under
paragraph (1), the claims shall be deemed to have been amended
under Article 47(1) by the translation.
(3) Where a statement under Article 19(1) of the Patent Cooperation
Treaty has been submitted to the International Bureau under Article
2(xix) of the said Treaty (hereinafter referred to as the "International
Bureau"), the applicant of an international patent application
shall submit to the Commissioner of the Korean Industrial Property
Office a Korean translation of such statement.
(4) If an applicant of an international patent application has
not followed the procedure under paragraph (1) or (3) before the
relevant date, the amendment or statement under Article 19(1)
of the Patent Cooperation Treaty shall be deemed not to have been
made.
(5) The time limit for an amendment prescribed in Article 47(1)
shall not apply to an amendment under paragraph (2).
Article
205 ーAmendment Before Establishment of the International Preliminary
Examination Report―
(1) If the description, claims and drawings of an international
patent application have been amended under Article 34(2) of the
Patent Cooperation Treaty, the applicant of an international patent
application shall submit to the Commissioner of the Korean Industrial
Property Office a Korean translation of such amendment no later
than the relevant date.
(2) When a translation of the amendment has been submitted under
paragraph (1), the description and drawings shall be deemed to
have been amended under Article 47(1) by the translation.
(3) If an applicant of an international patent application has
not followed the procedure under paragraph (1) prior to the relevant
date, the amendment under Article 34(2)(b) of the Patent Cooperation
Treaty shall be deemed not to have been made.
(4) The time limit for an amendment prescribed in Article 47(1)
shall not apply to an amendment under paragraph (2).
Article
206 ーSpecial Provision on Patent Administrator for Nonresidents―
(1) Notwithstanding the provisions of Article 5(1), a nonresident
applicant of an international patent application may, prior to
the relevant date, initiate a procedure relating to a patent application
without a patent administrator.
(2) Nonresidents who have submitted a translation of an application
under paragraph (1) shall appoint a patent administrator and report
that fact to the Commissioner of the Korean Industrial Property
Office within the time limit prescribed by the Ordinance of the
Ministry of Commerce, Industry and Energy.
(3) The international application shall be deemed to have been
withdrawn where the appointment of a patent administrator is not
reported within the time limit prescribed under paragraph (2).
Article
207 ーSpecial Provision on the Time and Effect of Laying-Open
of Application―
(1) In the case of the laying-open of an international patent
application, "after one year and six months from the filing date
of an application for a patent (from the date prescribed in Article
47(1)(ii) to (iv), if the application contains a priority claim)"
in Article 64(1) shall read "within the time limit under Article
201(1) (where the applicant has made a request for examination
of the international patent application within said period and
the international publication under Article 21 of the Patent Cooperation
Treaty has been made, within one year and six months from the
priority date or the date of the request for examination, whichever
date expires later)."
(2) The applicant of an international patent application may,
after the domestic laying open and after having given a warning
in the form of a document describing the contents of the invention
claimed in the international patent application, demand of a person
who has commercially or industrially worked the invention, after
the warning but before the registration of establishment of a
patent right, the payment of compensation in an amount equivalent
to what he would normally receive for the working of the invention.
Even in the absence of a warning, the same demand may be made
of a person who commercially or industrially worked the invention
before the domestic laying-open and who had known that the invention
was the one claimed in the international patent application. Provided,
however, that the applicant shall not claim the right for compensation
before the registration of the establishment of a patent right.
Article
208 ーSpecial Provision on Amendment―
(1) Notwithstanding the provisions of Article 47(1), no amendment
to an international patent application (except an amendment under
Article 204(2) and 205(2)) may be made until the fees prescribed
under Article 82(1) have been paid, a translation of the application
(except in the case of an international patent application
made in the Korean language) under Article 201(1) has been submitted,
and the relevant date has passed.
(2) With regard to an amendment to an international patent application,
"from the date specified in any of the following subparagraphs"
in Article 47(1) and "from any of the dates specified in any of
the subparagraphs of paragraph (1)" in Article 47(2) shall read
"from the priority date."
(3) With regard to the scope of the amendment to an international
patent application, "the features disclosed in the description
or drawing originally attached to the application" in Article
48 shall read "the features disclosed both in the description,
claims or drawings (only text matter thereof) of the international
patent application submitted in the international filing date
and in the translated version thereof or the features disclosed
in the drawings (except text matter thereof) of the international
patent application."
(4) Notwithstanding paragraph (3), in applying Article 51(1),
which concerns the rejection of an amendment to an international
patent application, an amendment enlarging, restricting or changing
the claims within the scope of the features disclosed in the translated
version of the description, claims or text matter of the drawings
of the international patent application, or in the drawings (except
text matter thereof) of the international patent application shall
be deemed not to change the intent or purpose of the specification.
(5) Article 49 shall not apply to an amendment of an international
patent application.
Article
209 ーRestriction on Timing of Dual Application―
Notwithstanding the provisions of Article 53(1) of this Law, a
dual application as a patent application on the basis of an international
application is deemed to be a utility model registration
application filed on the international application date under
Article 57(1) of the Utility Model Law and may not be filed
until the fees under Article 30(1) of the Utility Model Law have
been paid, and a translation of the application under Article
59(1) of the Utility Model Law (except for the case of international
utility model registration application made in the Korean language)
has been submitted (with respect to an international application
considered to be a utility model application under Article 71(4)
of the Utility Model Law, until the decision under said provision
has been made).
Article
210 ーRestriction on Time of Request for Examination―
Notwithstanding Article 59(2), an applicant of an international
patent application may not make a request for examination of his
application until the proceedings (except for the case of international
patent application made in the Korean language) under Article
201(1) have been taken and the fees under Article 82(1) have been
paid. A person other than the applicant of an international patent
application may not make a request for examination of the international
patent application until the period under Article 201(1) has lapsed.
Article
211 ーRegulation Concerning Submission of Documents Cited in the International
Search Report, etc.―
The Commissioner of the Korean Industrial Property Office may
require an applicant of an international patent application to
submit copies of the references cited in the international search
report under Article 18 of the Patent Cooperation Treaty and the
International Preliminary Examination Report under Article 35
of said Treaty, designating a time limit therefor.
Article
212 ーSpecial Provision on Ruling of Revocation―
With regard to an opposition to the grant of a patent for an international
application, "on the ground that falls under any of the following
subparagraphs" in Article 69 shall read "on the ground that the
international patent application has been filed with respect to
an invention other than that disclosed both in the description,
claims or drawings (text matter thereof) of an international application
submitted on the international filing date and in the translated
version thereof, or disclosed in the drawings (except text matter
thereof) submitted on the international filing date, or that falls
under any of the following subparagraphs."
Article
213 ーSpecial Provision on Invalidation Trial of Patent―
With regard to an invalidation trial of an international patent
application, "in the following cases" in Article 133(1) shall
read "where a patent has been granted for an invention other than
that disclosed both in the description, claims or drawings (text
matter thereof) of an international application submitted on the
international filing date and in the translated version thereof,
or disclosed in the drawings (except text matter thereof) submitted
on the international filing date, or in the following cases."
Article
214 ーInternational Application Considered to be a Patent Application
by Decision―
(1) An applicant of an international application may, where the
receiving Office referred to in Article 2(xv) of the Patent Cooperation
Treaty has made a refusal referred to in Article 25(1)(a) of the
Treaty or has made a declaration referred to in Article 25(1)(a)
or (b) of the Treaty or the International Bureau has made a finding
referred to in Article 25(1)(a) of the Treaty with respect to
the international application (only in the case of a patent application)
which contains the designation of the Republic of Korea as a designated
State referred to in Article 4(1)(ii) of the Treaty, request the
Commissioner of the Korean Industrial Property Office as provided
in the Ordinance of the Ministry of Commerce, Industry and Energy
to make a decision referred to in Article 25(2)(a) of the Treaty
within the time limit prescribed by the Ordinance.
(2) A person who intends to make a request under paragraph (1)
shall submit to the Commissioner of the Korean Industrial Property
Office a Korean translation of the description, claims and drawings
(limited to the text matter thereof) as well as other documents
relating to the international application provided by the Ordinance
of the Ministry of Commerce, Industry and Energy.
(3) Where a request under paragraph (1) has been made, the Commissioner
of the Korean Industrial Property Office shall decide whether
the refusal, declaration or finding referred to therein was justified
under the provisions of the Patent Cooperation Treaty and the
Regulations thereunder.
(4) Where the Commissioner of the Korean Industrial Property Office
has made a decision under paragraph (3) to the effect that the
refusal, declaration or finding under paragraph (1) was not justified
under the provisions of the Patent Cooperation Treaty and the
Regulations thereunder, the international application concerned
shall be considered to be a patent application filed on the date
which would have been recognized as the international filing date
if the said refusal, declaration or finding had not been made
in respect of the said international application.
(5) The provisions of Articles 199(2), 200, 201(4) to (8), 202(1)
and (2), 208, 210, 212 and 213 shall apply mutatis mutandis
to an international application considered to be a patent application
under paragraph (4).
(6) In the case of the laying open of an international application
considered to be a patent application under paragraph (4), "filing
date of an application for a patent" in Article 64(1) shall read
"priority date referred to in Article 201(1)."
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