Patent & Utility Model Lawyer
Patent & Utility Model Lawyer | Understanding Applications, Infringement, and Invalidation in One Place
A patent protects a technical invention that is novel and involves an inventive step, while a utility model protects a smaller-scale improvement to the shape or structure of an existing device (특허법 제2조, 실용신안법 제2조). Disputes typically arise in three forms: KIPO rejects or grants an application, a rival tries to invalidate a granted right, or one party accuses another of infringement and seeks an injunction and damages. Because the scope of protection is defined by the claims of the patent specification, how those claims are drafted and interpreted often determines the outcome before any court appearance happens (특허법 제97조).
Patent & Utility Model | Application Rejection, Invalidation Trial, or Infringement Action?
Patent and utility model matters branch into distinct procedural tracks depending on what problem you are trying to solve. Picking the wrong track wastes time, since each has its own forum, evidence standard, and appeal path.
| Forum | Patent Trial and Appeal Board (KIPO) |
| Trigger | Notice of grounds for rejection, then final rejection |
| Typical duration | Roughly 6-12 months for the trial decision |
| Further appeal | Patent Court, then Supreme Court |
An appeal against a final rejection must be filed within 3 months of receiving the decision (특허법 제132조의17, 제186조).
| Forum | Patent Trial and Appeal Board (KIPO) |
| Who can file | Any interested party, or anyone for certain grounds |
| Core issue | Lack of novelty, inventive step, or defective disclosure |
| Effect if successful | Right treated as if it never existed (특허법 제133조) |
Invalidation trials are frequently filed as a defensive counter-move once an infringement warning or lawsuit has been received.
| Forum | Civil court (district court, then Patent Court on appeal) |
| Remedies sought | Injunction, damages, disposal of infringing goods |
| Key evidence | Claim chart comparing product to each claim element |
| Common defense | Invalidity of the patent, or non-infringement of claim scope |
An injunction can be sought to stop the infringing act and to have infringing products destroyed (특허법 제126조), and damages can be claimed separately (특허법 제128조).
| Forum | Korea Customs Service (application for suspension) |
| Speed | Faster than litigation, but interim measure only |
| Follow-up | Usually paired with a separate infringement claim |
| Best fit | Repeated import of counterfeit goods bearing your patent |
Customs measures address the specific shipment; they do not resolve the underlying dispute over validity or scope, which still has to go through the Patent Trial and Appeal Board or the courts.
Patent & Utility Model | What Counts as a Patent or Utility Model, and What Protection Gives You
Before any dispute strategy makes sense, it helps to understand what is actually being protected and through which right. The two systems overlap in purpose but differ in requirements and scope.
A patentable invention must be a technical idea using laws of nature, and it must be new and involve an inventive step over existing technology (특허법 제2조, 제29조). Examiners at KIPO compare the application against prior art disclosed anywhere in the world before the filing date, so a search of existing patents and publications is usually the first real test of viability.
A utility model protects a device improvement relating to shape, structure, or combination of parts, and cannot cover a pure method or a substance (실용신안법 제2조, 제4조). The bar for inventive step is generally treated as somewhat lower in practice, which is why utility models are often used for incremental mechanical improvements rather than breakthrough technology.
The scope of a patent right is determined by the claims stated in the patent specification, not by the written description or drawings alone (특허법 제97조). In an infringement dispute, the accused product or process is compared element-by-element against each claim, so ambiguous or overly narrow claim drafting at the application stage can limit what can be enforced later.
A patent right lasts 20 years from the filing date, and a utility model right lasts 10 years from the filing date, both subject to payment of annual registration fees (특허법 제88조, 실용신안법 제22조). Missing an annual fee payment deadline can cause the right to lapse even though the technology itself is still valid.
Employee Inventions and Joint Applications
If the invention was made by an employee in the course of their duties, the employer may hold a non-exclusive license or, if there was a prior agreement, the right may be assigned to the employer with the employee entitled to reasonable compensation (발명진흥법 제10조, 제15조). Disputes over what counts as fair compensation for an employee inventor are common and are assessed separately from the patent application itself.
Patent & Utility Model | Was Your Patent Actually Infringed?
Most infringement disputes turn on a technical comparison, not a general sense that 'this looks similar.' Understanding how that comparison is done helps you assess your own position realistically before spending on litigation.
Element-by-element comparison against the claims
Korean courts apply the 'all elements rule': every element recited in a patent claim must be found in the accused product or process for literal infringement to exist. If even one claimed element is missing, literal infringement generally fails, which is why claim drafting quality matters so much at the application stage.
The doctrine of equivalents
Even where a literal element is missing, infringement may still be found if the accused product achieves substantially the same function and result through a substitution that would have been obvious to a person skilled in the art at the time. Korean courts apply this doctrine cautiously, and it typically requires expert technical analysis to establish.
Direct versus indirect infringement
Beyond directly making or selling the patented product, supplying a component that is exclusively used to produce the patented invention can itself be treated as infringement (특허법 제127조). This matters for suppliers and component manufacturers who may not realize their upstream sales expose them to liability.
Patent & Utility Model | Defending or Attacking Whether the Right Should Exist at All
In practice, an accused infringer's strongest move is often not to argue non-infringement but to attack the validity of the patent itself. If the right is invalidated, the infringement claim built on it collapses.
Prior art searches decide most invalidation trials
An invalidation trial usually stands or falls on whether the petitioner can locate a prior publication, patent, or public use that discloses the same or an obvious variant of the claimed invention before the filing date. This is a document-intensive process, often involving searches across Korean, Japanese, US, and European patent databases.
Correction of claims during the trial
A patent holder facing an invalidation trial can request correction of the claims to narrow their scope and avoid the cited prior art, provided the correction does not add new matter or broaden the claims (특허법 제136조). This is a common defensive tactic, though it can also narrow what the patent holder can later assert against an infringer.
Effect of a final invalidation decision
Once an invalidation decision becomes final, the patent right is treated as if it never existed from the outset, except in limited situations involving specific later-arising grounds (특허법 제133조 제3항). Any pending infringement lawsuit relying on that patent will generally be dismissed or need to be withdrawn once invalidation is confirmed.
Patent & Utility Model | Calculating Damages and Stopping Ongoing Infringement
Winning on infringement is only half the case; the harder part is often proving how much the infringement actually cost you, or persuading a court to grant an immediate injunction before trial concludes.
Methods for calculating damages
The Patent Act provides several ways to establish damages, including the infringer's profit from the infringing acts, a reasonable royalty rate, and a statutory presumption based on the patent holder's lost sales (특허법 제128조). Courts have discretion to determine a reasonable amount even where exact proof of damages is difficult, which can help patent holders who lack complete sales data.
Preliminary injunctions before final judgment
Where waiting for a full trial would cause irreparable harm, a patent holder can apply for a preliminary injunction to stop the infringing activity immediately, but this generally requires demonstrating a strong likelihood of success on both infringement and validity (민사집행법 제300조). Because a wrongly granted injunction can be costly to the other side, courts scrutinize these applications closely.
Criminal liability for infringement
Patent infringement can also constitute a criminal offense punishable by imprisonment or a fine, and prosecution cannot proceed against the express wishes of the patent holder (특허법 제225조). A criminal complaint is sometimes used strategically alongside a civil claim to create pressure for settlement, though the outcome still depends on the same infringement and validity issues.
Patent & Utility Model | From Initial Consultation to Resolution
Before deciding on a strategy, the invention or accused product needs to be mapped against the claims of the relevant patent and against existing prior art. This step often determines whether litigation, an invalidation trial, or a license negotiation is the realistic path forward.
Depending on the situation, this may mean filing a patent or utility model application, responding to a rejection notice from KIPO, filing an invalidation petition, or responding to a warning letter alleging infringement.
Application and invalidation matters proceed through the examiner and then the Patent Trial and Appeal Board, while infringement disputes proceed through the district court. Expert opinions and technical claim charts are usually submitted as the core evidence in either track.
Decisions of the Patent Trial and Appeal Board can be appealed to the Patent Court and, in limited circumstances, further to the Supreme Court; civil infringement judgments follow the ordinary appellate structure through the Patent Court as the specialized appellate division.
A favorable result may lead to an injunction being enforced, damages being collected, or a license agreement being negotiated with the other side, depending on what best serves the client's commercial position.
Patent & Utility Model | How Fees Are Typically Set
Usually set according to the complexity of the technology involved and the forum (KIPO trial versus civil litigation), since technical analysis and expert coordination require significantly more work than a standard civil case.
In infringement or invalidation matters, a success fee is often tied to the outcome achieved, such as the amount of damages recovered or whether an injunction was obtained, and is agreed separately from the retainer.
Prior art searches, technical expert opinions, and sometimes independent testing or claim analysis are billed separately as actual expenses, since these are typically outsourced to patent attorneys or technical specialists.
Filing fees, trial fees before the Patent Trial and Appeal Board, and court filing fees are set by statute and regulation and are paid in addition to legal fees.
Because patent prosecution itself is handled by a patent attorney (변리사) rather than a lawyer, litigation involving a co-pending application or amendment may involve a coordination fee if both professionals are engaged jointly.
※ Costs vary depending on case complexity and specific circumstances; exact fees will be provided during consultation. No specific outcome is guaranteed.
Patent & Utility Model | Self-Check Before You Move Forward
1️⃣ If you received a rejection notice from KIPO
- Does the rejection cite specific prior art, and have you actually read those documents yourself?
- Is the 3-month deadline for filing an appeal or amendment still open?
- Could narrowing or amending your claims get around the cited prior art without gutting your protection?
- Have you checked whether a divisional application could preserve broader claims separately?
2️⃣ If you received a warning letter alleging infringement
- Have you obtained and read the full claims of the patent being asserted against you, not just the letter's summary?
- Does your product actually contain every element listed in at least one claim?
- Could the asserted patent be vulnerable to an invalidation petition based on prior art?
- Have you preserved records showing when you started making or selling your product?
3️⃣ If you are considering suing for infringement
- Have you prepared a claim chart mapping your patent's claims against the accused product?
- Is your patent currently in force, with annual fees paid up to date?
- Have you calculated potential damages using at least one of the statutory methods?
- Are you prepared for the other side to file an invalidation trial as a counter-move?
4️⃣ If you are an inventor employed by a company
- Was the invention made in the course of your assigned duties, or on your own time and resources?
- Did you sign any prior agreement assigning inventions to your employer?
- Has your employer notified you of its intent to take over the right, and within what timeframe?
- Have you documented what you consider reasonable compensation for the invention?
