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CHAPTER IX INTERNATIONAL
APPLICATIONS UNDER THE PATENT COOPERATION TREATY
Article 57 ¡¼Utility Model Application
Based on International Application¡½
(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 utility
model registration, shall be considered to be
a
utility model application filed on its international
filing date.
(2) Article 54 of the Patent Law as applied
mutatis mutandis under Article 20 of this Law
shall not apply to an international application
considered to be a utility model application
filed on its international filing date under
paragraph (1) (hereinafter referred to as an
"international utility model application").
Article 58 ¡¼Special Provision on Devices
Deemed to be Novel¡½
Notwithstanding the provisions of Article
6(2), any person desiring to apply Articles
6(1)(i)
and 6(1)(iii) to the device claimed in an
international utility model application, may
submit a
written statement to that effect and documents
substantiating that the device falls under
Articles 6(1)(i) and 6(1)(iii), to the Commissioner
of the Korean Industrial Property Office
within the time limit prescribed by the Ordinance
of the Ministry of Industry and Energy.
Article 59 ¡¼Translation of International
Utility Model Application¡½
(1) An applicant for an international utility
model application filed in a foreign language,
shall
submit to the Commissioner of the Korean
Industrial Property Office, a Korean translation
of
the description, claims, drawings (only the
textual 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 the "priority
date"), or
two years and six months from the priority
date if 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 Article 31(4)(a) of the
Patent Cooperation Treaty (hereinafter referred
to
as the "domestic time limit for submitting
documents"). However, in case where the
claims
have been amended under Article 19(1) of
the Patent Cooperation Treaty, an applicant
for an
international utility model application need
only submit a Korean translation of the amended
claims.
(2) If the Korean translation of the description
and claims under paragraph (1) have not been
submitted within the domestic time limit
for submitting documents, the international
utility
model application shall be deemed to have
been withdrawn.
(3) An applicant who has submitted the Korean
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 under Article
23(2) or 40(2) of Patent Cooperation Treaty
(hereinafter referred to as "request
for domestic treatment").
(4) Matters which were disclosed in the description,
claims and textual matter of the
drawings of an international utility model
application filed on the international filing
date, but
which were not disclosed in the translation
under paragraph (1) or (3) (hereinafter referred
to
as "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 appropriate time limit, hereinafter
referred to as the "relevant date"),
shall be
deemed not to have been disclosed in the
description, claims and textual matter of the
drawings of said international utility model
application filed on the international filing
date.
(5) An application submitted on the international
filing date of an international utility model
application shall be deemed to be an application
submitted under Article 9(1).
(6) The translated version of the description,
claims, drawings and abstract of an
international utility model application (or
the description, claims, drawings and abstract
submitted on the international filing date
if the international utility model application
is filed in
the Korean language) shall be deemed to be
the description, claims, drawings and abstract
submitted under Article 9(2).
(7) Articles 63(1) and 63(2) shall not apply
where a Korean translation of the amended
claims has been submitted pursuant to the
proviso of paragraph (1).
(8) Where a Korean translation for only the
amended claims has been submitted pursuant to
the proviso of paragraph (1), the claims
submitted on the international filing date shall
not be
recognized.
Article 60 ¡¼Special Provisions on Claim
of Priority¡½
(1) Articles 18(2) and 19(2) shall not apply
to an international utility model application.
(2) For purposes of Article 18(4) regarding
an international utility model application,
"specification or drawings originally
attached to the earlier application" shall
read
"description, claims and drawings (only
the textual matter thereof) submitted on the
international filing date under Article 59(1),
and the translated version of said documents
or
drawings (except the text matter thereof)
of the international application submitted on
the
international filing date" and "laying
open for public inspection" shall read
"laying open for
public inspection or international publication
under Article 21 of the Patent Cooperation
Treaty."
(3) For purposes of Articles 18(1), 18(3),
18(4) and 19(1), where the earlier application
under
Article 18(1) is the international utility
model application or international patent application
under Article 199(2) of the Patent Law, "specification
or drawings originally attached to a
model application" in Articles 18(1)
and 18(3) shall read "description, claims
and drawings of
an international application submitted on
the international filing date under Article
59(1) of
this Law or Article 201(1) of the Patent
Law"; "specification or drawings originally
attached to
the earlier application" in Article
18(4) shall read "description, claims or
drawings of an
international application concerning an earlier
application submitted on the international filing
date under Article 59(1) of this Law or Article
201(1) of the Patent Law"; "laying
open of the
earlier application for public inspection"
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 19(1) shall read "at
the relevant
date under Article 59(4) of this Law or Article
201(4) of the Patent Law or at the expiration
of
one year and three months from the international
filing date under Article 59(1) of this Law
or
Article 201(1) of the Patent Law, whichever
date expires later," respectively.
(4) For purposes of Articles 18(1), 18(3)
and 18(4) or 19(1), where the earlier application
under Article 18(1) is an international utility
model application recognized as a utility model
application or a patent application under
Article 71(4) of this Law or Article 214(4)
of the
Patent Law, "specification or drawings
originally attached to the application"
in Articles 18(1)
and 18(3) shall read "description, claims
or drawings of an international application
as of the
date regarded as the international filing
date under Article 71(4) of this Law or Article
214(4)
of the Patent Law" and "specification
or drawings originally attached to the earlier
application" in Article 18(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 71(4) of this Law or Article
214(4) of the Patent Law" and "at
the expiration
of one year and three months from the filing
date of that earlier application" in Article
19(1)
shall read "within one year and three
months from the date regarded as the international
filing date under Article 71(4) of this Law
or Article 214(4) of the Patent Law or at the
time of
making a decision under Article 71(4) of
this Law or Article 214(4) of the Patent Law,
whichever date expires later," respectively.
Article 61 ¡¼Submission of Identifying
Document¡½
An applicant for an international utility
model application may submit to the Commissioner
of
the Korean Industrial Property Office within
the designated domestic time limit for submitting
documents, a document stating:
(¥¡) the name and domicile of the applicant
(its title, place of business and name of its
representative, in the case of a legal entity);
(¥¢) the name and domicile or place of business
of the agent, if any;
(¥£) the date of submission;
(¥¤) the title of the device;
(¥¥) the name and domicile or place of business
of the deviser; and
(¥¦) the international filing date and the
international application number.
Article 62 ¡¼Submission of Drawings¡½
(1) An applicant for an international utility
model application shall submit drawings (including
brief text thereof) to the Commissioner of
the Korean Industrial Property Office no later
than
the relevant date if the international application
submitted on the international filing date does
not include the drawings.
(2) The Commissioner of the Korean Industrial
Property Office may require the applicant for
an international utility model application
to submit the drawings within a designated time
limit when the drawings under paragraph (1)
have not been submitted prior to or on the
relevant date. The same procedure shall apply
where the Korean translation of the textual
matter of the drawings under Article 59(1)
or 59(3) has not been submitted by the relevant
date.
(3) The Commissioner of the Korean Industrial
Property Office may invalidate an international
utility model application where the applicant
who was required to submit the drawings under
paragraph (2) has failed to do so within
the designated time limit.
(4) Drawings submitted under paragraph (1)
or (2) shall be deemed to be an amendment
under Article 13(1) of this Law. However,
the period allowed for amendment under Article
13(1) of this Law shall not apply to such
drawing submissions.
Article 63 ¡¼Amendment after Receipt of
the International Search Report¡½
(1) If the claims of an international utility
model 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 utility model
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 Korean translation of the amendment
has been submitted under paragraph (1),
the claims shall be deemed to have been amended
under Article 13(1) by the Korean
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 said Treaty (hereinafter referred
to as the "International Bureau"),
the applicant of an international utility model
application
shall submit to the Commissioner of the Korean
Industrial Property Office a Korean
translation of such statement.
(4) If an applicant for an international
utility model application has not submitted
the Korean
translation of the amendment or statement
under paragraph (1) or (3) on or before the
relevant date, the amendment or statement
under Article 19(1) of the Patent Cooperation
Treaty shall be deemed not to have been submitted.
(5) The time limit for an amendment prescribed
in Article 13(1) shall not apply to an
amendment under paragraph (2).
Article 64 ¡¼Amendment Before Establishment
of the International Preliminary Examination
Report¡½
(1) If the description, claims and drawings
of an international utility model application
have
been amended before the establishment of
the International Preliminary Examination Report
under Article 34(2)(b) of the Patent Cooperation
Treaty, the applicant of an international
utility model 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) Where a Korean translation of the amendment
has been submitted under paragraph (1),
the description and drawings shall be deemed
to have been amended under Article 13(1) by
the Korean translation.
(3) If an applicant for an international
utility model application has not followed the
procedure
under paragraph (1) on or before the relevant
date, the amendment under Article 34(2)(b) of
the Patent Cooperation Treaty shall be deemed
not to have been submitted.
Article 65 ¡¼Special Provision on Amendments¡½
(1) Notwithstanding the provisions of Article
13(1), no amendment to an international utility
model application (except an amendment under
Articles 63(2) and 64(2)) may be made until
the registration fees prescribed under Article
29(1) and the official fees prescribed under
Article 30(1) have been paid, a Korean translation
of the application under Article 59(1)
(except the case of an international utility
model application made in the Korean language)
has been submitted, and the relevant date
has passed.
(2) The proviso of Article 13(1) shall not
apply to an amendment of an international utility
model application under Article 28(1) or
41(1) of the Patent Cooperation Treaty.
(3) With regard to the scope of the amendment
to an international utility model application,
"the specification or drawings originally
attached to the utility model application"
in Article
13(2) shall read "the features disclosed
both in the description, claims or drawings
(only
textual matter thereof) of the international
utility model application submitted on the
international filing date and in the translated
version thereof, or the drawings (except text
matter thereof) of the international utility
model application submitted on the international
filing date."
Article 66 ¡¼Time Restrictions on Filing
of dual Application¡½
Notwithstanding Article 17(1), a co-filing
of a utility model application based on an
international application considered to be
a patent application filed on its international
filing
date under Article 199(1) of the Patent Law,
may not be filed until the official fees prescribed
under Article 82(1) of the Patent Law have
been paid, and a translation (except in cases
where the international patent application
has been filed in the Korean language) under
Article 201(1) of the Patent Law has been
submitted (for a co-filing of a utility model
application based on an international application
which is considered to have been filed on
the date recognized as the international
filing date under Article 214(4) of the Patent
Law,
not until the decision under Article 214(4)
of the Patent Law has been made).
Article 67 ¡¼Special Provision on Decision
of Revocation¡½
(1) With regard to a request for a technical
evaluation for an international utility model
application, "on the ground that the
utility model falls under any of the following
subparagraphs" in Article 25(1) shall
read "on the ground that the international
utility model
application has been registered with respect
to a device other than that disclosed both in
the
description, claims or drawings (only the
textual matter thereof) of an international
application submitted on the international
filing date and in the translated version thereof,
or
in the drawings (except text matter thereof)
submitted on the international filing date,
or on
the ground that the utility model falls under
any of the following subparagraphs"; and
"on the
ground that the utility model falls under
any of the subparagraphs in paragraph (1)"
in Article
25(2) shall read "on the ground that
the international utility model application
has been
registered with respect to a device other
than that disclosed both in the description,
claims
or drawings (only text matter thereof) of
an international application submitted on the
international filing date and in the translated
version thereof, or in the drawings (except
text
matter thereof) submitted on the international
filing date, or on the ground that falls under
any
of the subparagraphs in paragraph (1)."
(2) With regard to an opposition to the registration
of a utility model for an international utility
model application, "on the ground that
the registration of a utility model falls under
any of the
following subparagraphs" in paragraph
47(1) shall read "on the ground that the
international
utility model application has been registered
with respect to a device other than that
disclosed both in the description, claims
or drawings (only the textual matter thereof)
of an
international application submitted on the
international filing date and in the translated
version thereof, or in the drawings (except
the textual matter thereof) submitted on the
international filing date, or on the ground
that falls under any of the following subparagraphs."
Article 68 ¡¼Special Provision on Trial
for Invalidation of Utility Model Registration¡½
With regard to a trial for invalidation of
an international utility model application,
"when it falls
under any of the following paragraphs"
in Article 49(1) shall read "where a utility
model
registration has been granted for a device
other than that disclosed both in the description,
claims or drawings (only text matter thereof)
of an international application submitted on
the
international filing date and in the translated
version thereof, or in the drawings (except
the
textual matter thereof) filed on the international
filing date, or when it falls under any of the
following paragraphs."
Article 69 ¡¼Time Restriction on Request
for Technical Evaluation of Utility Model¡½
With regard to a request for a technical
evaluation of an international utility model
application, "any person" in Article
21(1) shall read "any person after the
relevant date."
Article 70 ¡¼Special Provisions on Payment
of Registration Fee¡½
With regard to the registration fees for
the first year for an international utility
model
application, "simultaneously with a
utility model application (divisional application
in case of
a divisional application under Article 16
of this Law or dual application in case of a
co-filed
application under Article 17 of this Law)"
in Article 29(2) shall read "within the
domestic time
limit for submitting documents under Article
59(1) (where a request for domestic treatment
under Article 59(3) has been made, until
the time of request for domestic treatment)."
Article 71 ¡¼International Application
Considered to be a Utility Model Application
by Decision¡½
(1) Where the Receiving Office referred to
in Article 2(xv) of the Patent Cooperation Treaty
has refused to recognize an international
filing date or a declaration of withdrawal of
an
international application under Article 25(1)(a)
or 25(1)(b) of the Patent Cooperation Treaty,
or
the International Bureau has made a finding
that the record copy under Article 25(1)(a)
has
not been received under Article 25(1)(a)
of the Patent Cooperation Treaty, with respect
to an
international application which designates
the Republic of Korea as a designated State,
an
applicant of the international application
may request the Commissioner of the Korean
Industrial Property Office, as provided in
the Ordinance of the Ministry of Industry and
Energy, to make a decision on whether the
refusal, declaration or finding is properly
made,
under Article 25(2)(a) of the Treaty.
(2) A person who intends to make a request
under paragraph (1) shall submit to the
Commissioner of the Korean Industrial Property
Office a petition with a Korean translation
of
the description, claims or drawings (only
the textual matter thereof) and other documents
relating to the international application
as prescribed by the Ordinance of the Ministry
of
Industry and Energy, attached to the petition.
(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 properly made 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 was not properly
made under the provisions of the Patent Cooperation
Treaty and the regulations thereunder,
the relevant international application shall
be considered to be a utility model application
filed
on the date which would have been recognized
as the international filing date if said refusal,
declaration or finding had not been made
with respect to said international application.
(5) Articles 57(2), 58, 59(4) to 59(8), 60(1),
60(2), 62, 65, and 67 to 70 shall apply mutatis
mutandis to an international application
considered to be a utility model application
filed on
the date which would have been recognized
as the international filing date under paragraph
(4).
(6) With regard to the amendment of an international
application considered to be a utility
model application under paragraph (4), "the
filing date of the utility model application"
in
Article 13(1) of this Law shall read "date
of decision that the refusal, declaration or
finding
was not properly made under Article 71(4)."
Article 72 ¡¼Mutatis Mutandis Application
of Provisions of the Patent Law¡½
The provisions of Articles 192 to 198bis,
206, 210 and 211 of the Patent Law shall apply
mutatis mutandis to international utility
model applications. In this situation, "a
request for
examination of application" in Article
210 of the Patent Law shall read "a request
for
domestic treatment."
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