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CHAPTER III :
Examination
Article
57 ーExamination by Examiner―
(1) The Commissioner of the Korean Industrial Property Office
shall have applications for patents and oppositions to the grant
of patents examined by an examiner.
(2) The qualifications for examiners shall be prescribed by Presidential
Decree.
Article
58 ーSearch of Prior Art, etc.―
(1) If it is deemed necessary for speeding up the process of examination,
the Commissioner of the Korean Industrial Property Office may
rely on a specialized search organization for searching documents
of prior art.
(2) If it is deemed necessary for the process of examination,
the Commissioner of the Korean Industrial Property Office may
request the cooperation of, or seek advice from, a government
agency, an organization specialized in the technology concerned
or an expert having profound knowledge and experience in patent
matters, and may, pay them allowances or expenses for such cooperation
or advice within the limits of the budget of the Korean Industrial
Property Office.
(3) Concerning the designation of specialized search organizations
and implementing procedures for searching documents under paragraph
(1), necessary matters shall be prescribed by Presidential Decree.
Article
59 ーRequest for Examination of Patent Application―
(1) A patent application shall be examined only upon the filing
of a request for examination.
(2) When a patent application has been filed, any person may make
a request for examination of the patent application to the Commissioner
of the Korean Industrial Property Office within five years from
the filing date thereof.
(3) With respect to a divisional application under Article 52(2),
or a dual application under Article 53, a request for examination
can be made even after the expiration of the period prescribed
in paragraph (2) within thirty days from the date of the division
or the dual application.
(4) A request for examination of an application shall not be withdrawn.
(5) If a request for examination has not been made within the
time limits prescribed in paragraph (2) or (3), the patent application
concerned shall be deemed to have been withdrawn.
Article
60 ーProcedure for a Request for Examination―
(1) Any person desiring to make a request for examination of an
application shall submit a written request for examination of
an application to the Commissioner of the Korean Industrial Property
Office, stating the following:
(ァ) the name and the domicile of the person making the request
(in case of a legal entity, the title, the place of business and
the name of its representative);
(ア) the date of submission of the request; and
(ィ) the identification of the patent application for which the
request for examination is made.
(2) The Commissioner of the Korean Industrial Property Office
shall, where a request for examination has been made prior to
the publication of an application, publish such fact in the Patent
Gazette at the time the application is laid open. Where a request
for examination has been made after the laying-open of the application,
the Commissioner shall publish such fact in the Patent Gazette
without delay.
(3) The Commissioner of the Korean Industrial Property Office
shall, where a request for examination of an application has been
made by a person other than the applicant, notify the applicant
of such fact.
Article
61 ーPreferential Examination―
When the Commissioner of the Korean Industrial Property Office
recognizes that a person, other than the applicant, is commercially
and industrially working the invention claimed in a patent application
after the laying-open of the application or with respect to a
patent application which he deems it necessary to settle urgently
and which is prescribed by Presidential Decree, he may direct
the examiner to examine the application in preference to other
patent applications.
Article
62 ーRuling of Refusal―
The examiner shall make a ruling of refusal to a patent application
where it falls under any of the following subparagraphs (hereinafter
referred to as "reason for refusal"):
(ァ) where it is not patentable under Articles 25, 29, 31 to 33,
36(1) to (3), or 44;
(ア) where it is filed by a person who is not entitled to obtain
a patent;
(ィ) where it is in violation of a treaty; or
(イ) where it has not satisfied the requirements prescribed under
Articles 42 (3) to (5) or 45.
Article
63 ーNotification of Reasons for Refusal―
An examiner shall, when intending to make a ruling of refusal
under Article 62, notify the applicant of the reasons and give
the applicant an opportunity to submit a written statement of
applicant's arguments, designating a time limit for such submission.
Article
64 ーLaying Open of Application―
(1) In accordance with the Ordinance of the Ministry of Commerce,
Industry and Energy, the Commissioner of the Korean Industrial
Property Office shall lay open the patent application in the Patent
Gazette; 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),
or upon the request by an applicant even before one year and six
months from the filing date of an application for a patent, however,
this provision shall not apply where the application has already
been published in accordance with Article 87(3).
(2) Any person may, at the time the application is laid open under
paragraph (1), furnish the Commissioner of the Korean Industrial
Property Office with information together with evidence, to the
effect that the invention concerned is unpatentable under Article
62. However, if the requirements prescribed in Article 42(5) and
45 mentioned in subparagraph (iv) of Article 62 are not complied
with, this provision shall not apply.
(3) The provisions of Article 87(4) shall apply mutatis mutandis
to the laying-open of applications under paragraph (1).
(4) Matters to be published in the Patent Gazette with respect
to the laying-open of applications under paragraph (1) shall be
prescribed by the Presidential Decree.
Article
65 ーEffects of Laying Open of Application―
(1) After an application is laid open, an applicant may warn a
person who has commercially or industrially worked the filed invention,
in writing indicating that a patent application for the invention
has been filed.
(2) An applicant may demand a person who has commercially or industrially
worked the filed invention after being warned as provided in paragraph
(1) or knowing that the invention has been laid open, to pay compensation
in an amount equivalent to what he would have normally received
for the working of the invention from the date of warning or the
time when he/she knew that the patent application of the invention
had been laid open to the time of the registration of the establishment
of a patent right.
(3) The right to demand compensation as provided in paragraph
(2) shall be exercised only after the registration of the establishment
of a patent right.
(4) The exercise of the right to demand compensation under paragraph
(2) shall not preclude the exercise of the patent right.
(5) Articles 127, 129, and 132 of the Patent Law, or Articles
760 and 766 of the Civil Code shall apply mutatis mutandis
to the exercise of the right to demand compensation under paragraph
(3). In such case, "the time when the damaged party or his legal
representative became aware of such damage and of the identity
of the person causing it" in Article 766(1) of the Civil Code
shall read "the date of registration of the establishment of the
involved patent right."
(6) Where a patent application is abandoned, invalidated or withdrawn
after the laying-open of the application, or a ruling of refusal
to a patent application, a decision to revocate a patent under
Article 74(3) or a decision to invalidate a patent under Article
133 (except for the case prescribed under subparagraph (iv) of
Article 133 (1)) has become final and conclusive, the right under
paragraph (2) shall be deemed never to have arisen.
Article
66 ーDecision to Grant a Patent―
Where an examiner does not find any grounds for rejecting a patent
application, he shall render a decision to grant a patent.
Article
67 ーFormalities for Decision―
(1) The examiner's decision shall be made in writing and shall
state the reasons therefor.
(2) Where the examiner's decision has been rendered, the Commissioner
of the Korean Industrial Property Office shall transmit a certified
copy of the decision to the patent applicant.
Article
68 ーMutatis Mutandis Application of Provisions
Concerning
Trial to Examination―
The provisions of Article 148(i) to (v) and (vii) shall apply
mutatis mutandis to the examination of a patent application.
Article
69 ーOpposition to the Grant of a Patent―
(1) Within three months from the publication of the registration
of a patent, any person can file an opposition to the grant of
the patent with the Commissioner of the Korean Industrial Property
Office on the grounds that the patent falls under any one of the
following subparagraphs. Where the patent contains two or more
claims, an opposition may be filed for each claim:
(ァ) where the patent has been granted contrary to the provisions
of Article 25, 29, 31 to 33, 36(1) to (3) or 44;
(ア) where the patent has been granted to a person unentitled to
obtain the patent;
(ィ) where the patent has been granted in violation of a treaty;
(イ) where the patent has been granted contrary to the provision
of Article 42(3) or (4); or
(ゥ) where the establishment of the patent has been registered
in violation of the proviso of Article 87(2).
(2) When filing an opposition, the opponent shall submit a written
opposition together with the relevant evidence stating the following:
(ァ) the name and the domicile of the opponent and his agent (in
the case of a legal entity, its title, the place of business and
the name of its representative);
(ア) the identification of the patent to which the opposition is
made; and
(ィ) the grounds for the opposition and identification of the relevant
evidence.
(3) The provisions of Article 133(4) shall apply mutatis mutandis
to an opposition.
Article
70 ーAmendment of Grounds for Opposition, etc.―
(1) An opponent may amend the grounds and evidence set forth in
the written opposition within thirty days from the expiration
of the time limit for opposition.
(2) When an opposition to the grant of a patent is filed, the
presiding examiner of the collegial body (hereinafter referred
to as a "presiding examiner") shall transmit a copy of the written
opposition to the patentee and give him an opportunity to submit
a written response, designating a time limit for submitting such
a response.
Article
71 ーCollegial Body for Examination and Decision―
(1) Three examiners constituting a collegial body shall examine
and rule on the opposition.
(2) The Commissioner of the Korean Industrial Property Office
shall designate examiners constituting a collegial body for each
opposition.
(3) The Commissioner of the Korean Industrial Property Office
shall designate one examiner from the collegial body pursuant
to paragraph (2) as the presiding examiner.
(4) The provisions of Articles 144(2), 145(2) and 146 shall apply
mutatis mutandis to the collegial body and the presiding
examiner.
Article
72 ーExamination Ex Officio in Examination
of Opposition―
(1) In the examination of opposition, grounds which have not been
pleaded by the patentee or the opponent may also be considered;
however, in such cases, the patentee or the opponent shall be
given an opportunity to state his opinion within a designated
time limit.
(2) In the examination of opposition, no examination may be made
on the purpose of a claim not submitted by the opponent.
Article
73 ーConsolidation of Oppositions―
(1) Where two or more oppositions have been filed, the examiners
may examine or decide upon them jointly or separately.
(2) Where two or more oppositions are filed and one is deemed
to be well-grounded upon examination, the examiner need not make
any decision on the other opposition(s).
(3) The presiding examiner shall transmit a certified copy of
the decision to revocate a patent to the opponents whose oppositions
were not decided upon under paragraph (2) of this article.
Article
74 ーDecision on Opposition―
(1) After the expiration of the time limits provided for under
Article 70(1) and (2), the examiner shall render a decision on
the opposition.
(2) Notwithstanding the provision of Article 70, where the opponent
fails to submit the grounds and evidence within the time limit
for opposition, the opposition may be rejected by decision.
(3) Where it is deemed that the opposition has legitimate grounds,
a decision that the patent is to be revoked (hereinafter referred
to "decision of revocation") shall be made.
(4) Where a decision of revocation becomes conclusive, the patent
shall be deemed never to have existed.
(5) Where it is deemed that the opposition has no grounds, a decision
that the patent is to be maintained (hereinafter referred to "decision
of maintenance") shall be made.
(6) No appeal shall be made against the decision on the opposition.
Article
75 ーManner of Decision on Opposition―
(1) All decisions on patent opposition shall be made in writing
which shall include the following, and the examiner who has made
the decision shall sign and seal it:
(ァ) the case number of the opposition;
(ア) the name and the domicile of the patentee, opponent and agent
(in the case of a legal entity, its title, place of business and
the name of its representative);
(ィ) the identification of the patent related to the decision;
(イ) the conclusion and grounds of the decision; and
(ゥ) the date of the decision.
(2) Where a decision on an opposition is made, the presiding examiner
shall transmit a certified copy of the decision to the patentee
as well as the opponent.
Article
76 ーWithdrawal of Opposition―
(1) An opposition may not be withdrawn after a certified copy
of the decision under Article 75(2) has been delivered.
(2) The provisions of Article 161(2) and (3) shall apply mutatis
mutandis to a withdrawal of the opposition.
Article
77 ーCorrection of Patent―
(1) A patentee may make a request for correction of the specification
or drawings of a patented invention within the designated period
pursuant to Article 70(2) or 72(1) (the latter part) only to:
(ァ) narrow the claims;
(ア) correct typographical errors; or
(ィ) clarify ambiguous descriptions.
(2) Where a request for correction as referred to in paragraph
(1) has been made, the presiding examiner shall transmit a copy
of the request for correction to the opponent.
(3) The provisions of Articles 136(2) to (4), (8) and (9), 139(3)
and 140(1) and (5) shall apply mutatis mutandis to request
for correction under paragraph (1).
(4) Where a correction made pursuant to paragraph (1) falls under
any of the following subparagraphs after a decision of maintenance
has become conclusive, the request for correction shall be deemed
never to have existed:
(ァ) where it is in violation of the provisions of paragraph (1);
or
(ア) where it is in violation of the provisions of Article 136(2)
or (3) which apply mutatis mutandis under paragraph (3).
Article
78 ーSuspension of Examination or Litigation Proceedings―
(1) The examination procedure of a patent application or an opposition
to the grant of a patent may, if necessary, be suspended until
a decision on an opposition or a trial becomes conclusive or litigation
proceedings have been completed.
(2) The court may, if necessary, suspend the proceedings until
the examiner's decision on a patent application or an opposition
to the grant of a patent becomes final and conclusive.
(3) No appeal shall be made against the suspension under paragraphs
(1) and (2).
Article
78bis ーMutatis Mutandis Application
of Provisions
Concerning Trials to Opposition―
The provisions of Articles 141(1) to (3), 142, 154(8), 157, 165(3)
to (6) and 166 shall apply mutatis mutandis to the examination
and decision of oppositions.
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