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 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.
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).
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.
The Korean Intellectual Property Office (KIPO) (see box, The regulatory authority). Its website (www.kipo.go.kr) sets out detailed application procedures.
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.
Patent protection starts on registration and lasts for 20 years from the effective filing date.
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.
The District Courts (the Seoul Central District Court and a few other District Courts which have panels specialising in IP cases).
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.
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.
No.
The trade mark must be:
Capable of distinguishing goods from the goods of others.
Distinctive in relation to the goods.
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.
KIPO registers trade marks. Guidance is available on its website (www.kipo.go.kr).
The grounds include the mark being:
Generic.
Descriptive or otherwise not distinctive.
Similar to a third party's senior registered or well-known mark.
The opposition grounds are substantially the same as those barring registration (see Question 14).
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.
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.
Trade mark infringement actions are handled by the civil and criminal courts. The Seoul Central District Court has panels specialising in IP cases.
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.
Remedies include:
Criminal proceedings.
Civil remedies including injunctive relief (preliminary or permanent injunction), monetary compensation and border measures.
No.
Copyright arises the moment a work of authorship is created. Neither registration nor fixation in a tangible medium is required.
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.
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.
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.
See Question 18.
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.
See Question 20.
No.
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.
KIPO registers designs. Guidance is available on its website (www.kipo.go.kr).
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.
Design protection starts from registration, and the term of protection is 15 years from the registration date.
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.
See Question 18.
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.
See Question 20.
No.
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.
Protection starts from the moment of creation and lasts for three years.
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.
The main defence used is that the product shape is a commonly used form for the relevant goods.
Civil remedies including injunctive relief and damages are available, but criminal actions are not available.
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.
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.
See Question 18.
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.
Remedies include:
Criminal remedies.
Civil remedies, including preliminary and permanent injunction, damages, and measures to restore the business reputation of the trade secret owner.
No.
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.
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.
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.
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.
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)
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.
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.
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.
