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Patent Law of the People's Republic of China

 

(Adopted at the 4th Meeting of the Standing Committee of the Sixth National People's Congress on March 12,1984, amended for the first time in accordance with the Decision of the Standing Committee of the Seventh National People's Congress on Amending the Patent Law of the People's Republic of China at its 27th Meeting on September 4,1992, amended for the second time in accordance with the Decision of the Standing Committee of the Ninth National People's Congress on Amending the Patent Law of the People's Republic of China adopted at its 17th Meeting on August 25, 2000, and amended for the third time in accordance with the Decision of the Standing Committee of the Eleventh National People's Congress on Amending the Patent Law of the People's Republic of China at its 6th Meeting on December 27, 2008)

Contents

Chapter I General Provisions
Chapter II Conditions for Granting Patent Rights
Chapter III Patent Application
Chapter IV Examination and Approval of Patent Applications
Chapter V Duration, Termination and Invalidation of Patent Rights
Chapter VI Compulsory License for Exploitation of a Patent 
Chapter VII Protection of Patent Rights
Chapter VIII Supplementary Provisions


Chapter I  General Provisions


Article 1 This Law is enacted for the purpose of protecting the lawful rights and interests of patentees, encouraging invention-creation, promoting the application of invention-creation, enhancing innovation capability, promoting the advancement of science and technology and the economic and social development.

Article 2 For the purposes of this Law, invention-creations mean inventions, utility models and designs.
Inventions mean new technical solutions proposed for a product, a process or the improvement thereof.
Utility models mean new technical solutions proposed for the shape and structure of a product, or the combination thereof, which are fit for practical use.
Designs mean, with respect to a product, new designs of the shape, pattern, or the combination thereof, or the combination of the color with shape and pattern, which are rich in an aesthetic appeal and are fit for industrial application.

Article 3 The Patent Administration Department under the State Council shall be responsible for the administration of patent-related work nationwide. It shall accept and examine patent applications in a uniform way and grant patent rights in accordance with law.
The departments in charge of patent-related work of the people's governments of provinces, autonomous regions and municipalities directly under the Central Government shall be responsible for patent administration within their respective administrative areas.

Article 4 Where an invention-creation for the patent of which an application is filed involves national security or other major interests of the State and confidentiality needs to be maintained, the application shall be handled in accordance with the relevant regulations of the State.

Article 5 Patent rights shall not be granted for invention-creations that violate the law or social ethics, or harm public interests.
Patent rights shall not be granted for inventions that are accomplished by relying on genetic resources which are obtained or used in violation of the provisions of laws and administrative regulations.

Article 6 An invention-creation that is accomplished in the course of performing the duties of an employee, or mainly by using the material and technical conditions of an employer shall be deemed an employment invention-creation. For an employment invention-creation, the employer has the right to apply for a patent. After such application is granted, the employer shall be the patentee.
For a non-employment invention-creation, the inventor or designer has the right to apply for a patent. After such application is granted, the said inventor or designer shall be the patentee.
For an invention-creation that is accomplished by using the material and technical conditions of an employer, if the employer has concluded a contract with the inventor or designer providing the ownership of the right to apply for the patent or the ownership of the patent right, such provision shall prevail.

Article 7 No unit or individual shall prevent the inventor or designer from filing a patent application for a non-employment invention.

Article 8 With regard to an invention-creation accomplished by two or more units or individuals in collaboration, or an invention-creation accomplished by an unit or individual under the entrustment of another unit or individual, the right to apply for a patent shall be vested in the units or individuals that have accomplished the invention-creation in collaboration or in the unit or individual that has done so under entrustment, unless it is otherwise agreed upon. After the application is granted, the applying unit(s) or individual(s) shall be deemed the patentee(s).

Article 9 Only one patent can be granted for the same invention. However, where the same applicant applies for a utility model patent and an invention patent with regard to the same invention on the same day, if the utility model patent acquired earlier is not terminated yet and the applicant declares his waiver of the same, the invention patent may be granted.
If two or more applicants apply for a patent for the same invention separately, the patent right shall be granted to the first applicant.

Article 10 The right to apply for a patent and patent rights may be transferred.
If a Chinese unit or individual intends to transfer the right to apply for a patent or patent rights to a foreigner, foreign enterprise or other foreign organization, it or he shall perform the procedures in accordance with the provisions of relevant laws and administrative regulations.
For the transfer of the right to apply for a patent or of patent rights, the parties concerned shall conclude a written contract and file for registration at the patent administration department under the State Council, and the latter shall make an announcement thereof. The transfer of the right to apply for a patent or of patent rights shall become effective as of the registration date.

Article 11 After the patent right is granted for an invention or a utility model, unless otherwise provided for in this Law, no unit or individual may exploit the patent without permission of the patentee, i.e., it or he may not, for production or business purposes, manufacture, use, offer to sell, sell, or import the patented products, use the patented method, or use, offer to sell, sell or import the products that are developed directly through the use of the patented method.
After a design patent right is granted, no unit or individual may exploit the patent without permission of the patentee, i.e., it or he may not, for production or business purposes, manufacture, offer to sell, sell or import the design patent products.

Article 12 Any unit or individual that intends to exploit the patent of another unit or individual shall conclude a contract with the patentee for permitted exploitation and pay the royalties. The permittee shall not have the right to allow any unit or individual not specified in the contract to exploit the said patent.

Article 13 After the application for an invention patent is published, the applicant may require the unit or individual that exploits the said patent to pay an appropriate amount of royalties.

Article 14 If an invention patent of a State-owned enterprise or institution is of great significance to national or public interests, upon approval by the State Council, the relevant competent department under the State Council or the people's government of the province, autonomous region, or municipality directly under the Central Government may decide to have the patent widely applied within an approved scope and allow the designated units to exploit the patent, and the said units shall pay royalties to the patentee in accordance with the regulations of the State.

Article 15 If there are agreements regarding the exercise of rights by the co-owners of the right to apply for the patent or of the patent right, the agreements shall prevail. In the absence of such agreements, the co-owners may separately exploit the patent or may, in an ordinary manner, permit others to exploit the said patent. Where others are permitted to exploit the patent, the royalties received shall be distributed among the co-owners.
Except under the circumstances specified in the preceding paragraph, exercise of the co-owned right to apply for patent or of the co-owned patent right shall be subject to the consent of all the co-owners.

Article 16 The unit that is granted the patent right shall reward the inventor or designer of an employment invention-creation. After such patent is exploited, the inventor or designer shall be given a reasonable amount of remuneration according to the scope of application and the economic results.

Article 17 An inventor or designer shall have the right to state in the patent documents that he is the inventor or designer.
The patentee shall have the right to have his patent mark displayed on the patented products or the package of such products.

Article 18 Where a foreigner, foreign enterprise or other foreign organization without a regular residence or business site in China applies for a patent in China, the application shall be handled in accordance with the agreements concluded by the country he or it belongs to and China or the international treaties to which both the countries have acceded or in accordance with this Law on the principle of reciprocity.

Article 19 If a foreigner, foreign enterprise, or other foreign organization without a regular residence or business site in China intends to apply for a patent or handle other patent-related matters in China, he or it shall entrust a legally established patent agency with the application and such matters.
If a Chinese unit or individual intends to apply for a patent or handle other patent-related matters in China, it or he may entrust a legally established patent agency with the application and such matters.
A patent agency shall abide by laws and administrative regulations and handle patent applications or other patent-related matters as entrusted by its principals. It shall also be obligated to keep confidential the contents of the inventions of its principals, unless the patent applications have been published or announced. The specific measures for administration of the patent agencies shall be formulated by the State Council.

Article 20 Any unit or individual that intends to apply for patent in a foreign country for an invention or utility model accomplished in China shall submit the matter to the patent administration department under the State Council for confidentiality examination. Such examination shall be conducted in conformity with the procedures, time limit, etc. prescribed by the State Council.
A Chinese unit or individual may file for international patent applications in accordance with the relevant international treaties to which China has acceded. The applicant for such patent shall comply with the provisions of the preceding paragraph.
The patent administration department under the State Council shall handle international patent applications in accordance with the relevant international treaties to which China has acceded and the relevant provisions of this Law and regulations of the State Council.
With regard to an invention or utility model for which an application is filed for a patent in a foreign country in violation of the provisions of the first paragraph of this Article, if an application is also filed for the patent in China, patent right shall not be granted.

Article 21 The patent administration department under the State Council and its Patent Review Board shall, according to the requirements of objectivity, fairness, accuracy and timeliness, handle patent applications and requests in accordance with law.
The patent administration department under the State Council shall release patent-related information in a complete, accurate and timely manner, and publish patent gazettes on a regular basis.
Before a patent application is published or announced, the staff members of the patent administration department under the State Council and the persons concerned shall be obligated to keep such application confidential.


Chapter II  Conditions for Granting Patent Rights


Article 22 Inventions and utility models for which patent rights are to be granted shall be ones which are novel, creative and of practical use.
Novelty means that the invention or utility model concerned is not an existing technology; no patent application is filed by any unit or individual for any identical invention or utility model with the patent administration department under the State Council before the date of application for patent right, and no identical invention or utility model is recorded in the patent application documents or the patent documentations which are published or announced after the date of application.
Creativity means that, compared with the existing technologies, the invention possesses prominent substantive features and indicates remarkable advancements, and the utility model possesses substantive features and indicates advancements. 
Practical use means that the said invention or utility model can be used for production or be utilized, and may produce positive results.
For the purposes of this Law, existing technologies mean the technologies known to the public both domestically and abroad before the date of application.

Article 23 A design for which the patent right is granted is not an existing design, and no application is filed by any unit or individual for any identical design with the patent administration department under the State Council before the date of application for patent right and no identical design is recorded in the patent documentations announced after the date of application.
Designs for which the patent right is to be granted shall be ones which are distinctly different from the existing designs or the combinations of the features of existing designs.
Designs for which a patent right is granted shall be ones which are not in conflict with the lawful rights acquired by others prior to the date of application.
For the purposes of this Law, existing designs mean designs that are known to the public both domestically and abroad before the date of application.

Article 24 Within six months before the date of application, an invention for which an application is filed for a patent does not lose its novelty under any of the following circumstances:
(1) It is exhibited for the first time at an international exhibition sponsored or recognized by the Chinese Government;
(2) It is published for the first time at a specified academic or technological conference; and
(3) Its contents are divulged by others without the consent of the applicant.

Article 25 Patent rights shall not be granted for any of the following:
(1) scientific discoveries;
(2) rules and methods for intellectual activities;
(3)methods for the diagnosis or treatment of diseases;
(4) animal or plant varieties;
(5) substances obtained by means of nuclear transformation; and
(6) designs that are mainly used for marking the pattern, color or the combination of the two of prints.
The patent right may, in accordance with the provisions of this Law, be granted for the production methods of the products specified in Subparagraph (4) of the preceding paragraph.


Chapter III  Patent Application


Article 26 When a person intends to apply for an invention or utility model patent, he shall submit the relevant documents, such as a written request, a written description and its abstract, and a written claim. 
In the written request shall be specified the name of the invention or utility model, the name of the inventor or designer, the name or title and the address of the applicant and other related matters.
The written description shall contain a clear and comprehensive description of the invention or utility model so that a technician in the field of the relevant technology can carry it out; when necessary, pictures shall be attached to it. The abstract shall contain a brief introduction to the main technical points of the invention or utility model.
The written claim shall, based on the written description, contain a clear and concise definition of the proposed scope of patent protection.
With regard to an invention-creation accomplished by relying on genetic resources, the applicant shall, in the patent application documents, indicate the direct and original source of the genetic resources. If the applicant cannot indicate the original source, he shall state the reasons.

Article 27 When a person intends to apply for a design patent, he shall submit a written request, drawings or pictures of the design, a brief description of the design, and other relevant documents.
In the relevant drawings or pictures submitted by the applicant shall clearly be shown the design of the products for which patent protection is requested.

Article 28 The date when the patent administration department under the State Council receives the patent application documents is the date of application. If the application documents are delivered by post, the date of the postmark is the date of application.

Article 29 If, within twelve months from the date the applicant first files an application for an invention or utility model patent in a foreign country, or within six months from the date the applicant first files an application for a design patent in a foreign country, he files an application for a patent in China for the same subject matter, he may enjoy the right of priority in accordance with the agreements concluded between the said foreign country and China, or in accordance with the international treaties to which both countries have acceded, or on the principle of mutual recognition of the right of priority.
If, within twelve months form the date the applicant first files an application for an invention or utility model patent in China, he files an application for a patent with the patent administration department under the State Council for the same subject matter, the applicant may enjoy the right of priority.

Article 30 An applicant who requests the right of priority shall submit a written declaration at the time of application and submit, within three months, duplicates of the patent application documents filed for the first time. Where no written declaration is submitted or no duplicates of the patent application documents are submitted at the expiration of the specified time limit, the applicant shall be deemed to have waived the right of priority.

Article 31 An application for an invention patent or utility model patent shall be limited to one invention or utility model. Two or more inventions or utility models embodied in a single general invention concept may be handled with one application.
An application for a design patent shall be limited to one design. Two or more similar designs of one and the same product or two or more designs of products of the same kind that are sold or used in sets may be handled with one application.

Article 32 An applicant may withdraw his patent application anytime before being granted the patent right.

Article 33 An applicant may amend his patent application documents, provided that the amendment to the invention or utility model patent application documents does not exceed the scope specified in the original written descriptions and claims, or that the amendment to the design patent application documents does not exceed the scope shown in the original drawings or pictures.


Chapter IV  Examination and Approval of Patent Applications


Article 34 Upon receipt of an invention patent application, if the patent administration department under the State Council, after preliminary examination, confirms that the application meets the requirements of this Law, it shall publish the application within 18 full months from the date of application. And it may do so at an earlier date upon request of the applicant.

Article 35 Within three years from the date an invention patent application is filed, the patent administration department under the State Council may, upon request made by the applicant at any time, carry out substantive examination of the application. If the applicant, without legitimate reasons, fails to request substantive examination at the expiration of the time limit, such application shall be deemed to have been withdrawn.
The patent administration department under the State Council may carry out substantive examination of its own accord, as it deems it necessary.

Article 36 When an applicant for an invention patent requests substantive examination, he shall submit the reference materials relating to the invention existing prior to the date of application.
If an application has been filed for an invention patent in a foreign country, the patent administration department under the State Council may require the applicant to submit, within a specified time limit, materials concerning any search made for the purpose of examining the application in that country, or materials concerning the results of any examination made in the country. In the event of the applicant's failure to comply at the expiration of the specified time limit without legitimate reasons, the application shall be deemed to be withdrawn.

Article 37 After the patent administration department under the State Council has made the substantive examination of the invention patent application, if it finds that the application does not conform to the provisions of this Law, it shall notify the applicant of the need to state its opinions within a specified time limit or to make amendment to the application. In the event of the applicant's failure to comply at the expiration of the specified time limit without legitimate reasons, the application shall be deemed to be withdrawn.

Article 38 After the applicant states his opinions on or makes amendment to the invention patent application, if the patent administration department under the State Council still believes the application does not conform to the provisions of this Law, it shall reject the application.

Article 39 If no reason for rejection is discerned after an invention patent application is substantively examined, the patent administration department under the State Council shall make a decision on granting of the invention patent right, issue an invention patent certificate, and meanwhile register and announce the same. The invention patent right shall become effective as of the date of announcement.

Article 40 If no reason for rejection is discerned after preliminary examination of a utility model or design patent application, the patent administration department under the State Council shall make a decision on granting of the utility model or design patent right, issue a corresponding patent certificate, and meanwhile register and announce the same. The utility model patent right and the design patent right shall become effective as of the date of announcement.

Article 41 The patent administration department under the State Council shall establish a patent review board. If a patent applicant is dissatisfied with the decision made by the Patent Administration Department under the State Council on rejecting of the application, he may, within three months from the date of receipt of the notification, file a request with the patent review board for review. After review, the Patent Review Board shall make a decision and notify the patent applicant of the same.
If the patent applicant is dissatisfied with the review decision made by the patent review board, he may take legal action before the people's court within three months from the date of receipt of the notification.


Chapter V  Duration, Termination and Invalidation of Patent Rights


Article 42 The duration of the invention patent right shall be 20 years and that of the utility model patent right and of the design patent right shall be ten years respectively, all commencing from the date of application.

Article 43 The patentee shall pay annual fees commencing from the year when the patent right is granted.

Article 44 Under any of the following circumstances, the patent right shall be terminated before the expiration of the duration:
(1) failure to pay the annual fee as required; or
(2) the patentee waiving of the patent right by a written declaration;
If a patent right is terminated before the duration expires, the patent administration department under the State Council shall register and announce such termination.

Article 45 Beginning from the date the patent administration department under the State Council announces the grant of a patent right, if a unit or individual believes that such grant does not conform to the relevant provisions of this Law, it or he may request that the patent review board declare the said patent right invalid.

Article 46 The patent review board shall examine the request for declaring a patent right invalid and make a decision in a timely manner and notify the requesting person and the patentee of its decision. The decision on declaring a patent right invalid shall be registered and announced by the patent administration department under the State Council.
A person that is dissatisfied with the patent review board's decision on declaring a patent right invalid or its decision on affirming the patent right may take legal action before a people's court, within three months from the date of receipt of the notification. The people's court shall notify the opposite party in the invalidation procedure to participate in the litigation as a third party.

Article 47 Any patent right that has been declared invalid shall be deemed to be non-existent from the beginning.
The decision on declaring a patent right invalid shall have no retroactive effect on any written judgment or written mediation on patent infringement that has been made and enforced by the people's court, or on any decision concerning the handling of a dispute over the patent infringement that has been performed or compulsively executed, or on any contract for permitted exploitation of the patent or for transfer of patent rights that has been performed--prior to the invalidation declaration of the patent right. However, compensation shall be made for the losses caused to another person mala fides by the patentee.
Where the patent infringement compensation, royalties, and patent right transfer fees are not refunded pursuant to the provisions of the preceding paragraph, which constitutes a blatant violation of the principle of fairness, refund shall be made fully or partly.


Chapter VI  Compulsory License for Exploitation of a Patent


Article 48 Under any of the following circumstances, the patent administration department under the State Council may, upon application made by any unit or individual that possesses the conditions for exploitation, grant a compulsory license for exploitation of an invention patent or utility model patent:
(1) When it has been three years since the date the patent right is granted and four years since the date the patent application is submitted, the patentee, without legitimate reasons, fails to have the patent exploited or fully exploited; or
(2) The patentee's exercise of the patent right is in accordance with law, confirmed as monopoly and its negative impact on competition needs to be eliminated or reduced.

Article 49 Where a national emergency or any extraordinary state of affairs occurs, or public interests so require, the patent administration department under the State Council may grant a compulsory license for exploitation of an invention patent or utility model patent.

Article 50 For the benefit of public health, the patent administration department under the State Council may grant a compulsory license for manufacture of the drug, for which a patent right has been obtained, and for its export to the countries or regions that conform to the provisions of the relevant international treaties to which the People's Republic of China has acceded.

Article 51 If an invention or utility model, for which the patent right has been obtained, represents a major technological advancement of remarkable economic significance, compared with an earlier invention or utility model for which the patent right has already been obtained, and exploitation of the former relies on exploitation of the latter, the patent administration department under the State Council may, upon application made by the latter, grant it a compulsory license to exploit the earlier invention or utility model.
Under the circumstance where a compulsory license for exploitation is granted in accordance with the provisions of the preceding paragraph, the patent administration department under the State Council may, upon application made by the earlier patentee, grant it a compulsory license to exploit the later invention or utility model.

Article 52 If an invention involved in a compulsory license is a semi-conductor technology, the exploitation thereof shall be limited to the purpose of public interests and to the circumstances as provided for in Subparagraph (2) of Article 48 of this Law.

Article 53 Except for the compulsory license granted in accordance with the provisions of Subparagraph (2) of Article 48 or Article 50 of this Law, compulsory license shall mainly be exercised for the supply to the domestic market.

Article 54 A unit or individual that applies for a compulsory license in accordance with the provisions of Subparagraph (1) of Article 48 or Article 51 of this Law shall provide evidence to show that it or he has, under reasonable terms, requests the patentee's permission for exploitation of the patent, but fails to obtain such permission within a reasonable period of time.

Article 55 The decision made by the patent administration department under the State Council on granting of a compulsory license for exploitation shall be notified to the patentee in a timely manner and shall be registered and announced.
In a decision on granting of the compulsory license for exploitation shall, according to the reasons justifying the compulsory license, be specified the scope and duration for exploitation. When such reasons cease to exist and are unlikely to recur, the patent administration department under the State Council shall, upon request by the patentee, make a decision to terminate the compulsory license after examination.

Article 56 Any unit or individual that is granted a compulsory license for exploitation shall not have an exclusive right to exploitation and shall not have the right to allow exploitation by others.

Article 57 The unit or individual that is granted a compulsory license for exploitation shall pay reasonable royalties to the patentee, or handle the issue of royalties in accordance with the provisions of the relevant international treaties to which the People's Republic of China has acceded. The amount of royalties to be paid shall be subject to consultation between the two parties. In the event of failure to reach an agreement between the two parties, the patent administration department under the State Council shall make a ruling.

Article 58 If a patentee is dissatisfied with the decision made by the patent administration department under the State Council -on granting of the compulsory license for exploitation, or if the patentee, or the unit or individual that has obtained the compulsory license for exploitation is dissatisfied with the ruling made by the patent administration department under the State Council regarding the royalties for the compulsorily licensed exploitation, it or he may take legal action before the people's court within three months from the date of receipt of the notification of the ruling.


Chapter VII  Protection of Patent Rights


Article 59 For the patent right of an invention or a utility model, the scope of protection shall be confined to what is claimed, and the written description and the pictures attached may be used to explain what is claimed.
For the design patent right, the scope of protection shall be confined to the design of the product as shown in the drawings or pictures, and the brief description may be used to explain the said design as shown in the drawings or pictures.

Article 60 If a dispute arises as a result of exploitation of a patent without permission of the patentee, that is, the patent right of the patentee is infringed, the dispute shall be settled through consultation between the parties. If the parties are not willing to consult or if consultation fails, the patentee or interested party may take legal action before a people's court, and may also request the administration department for patent-related work to handle the dispute. If, when handling the dispute, the said department believes the infringement is established, it may order the infringer to cease the infringement immediately; if the infringer is dissatisfied with the order, he may, within 15 days from the date of receipt of the notification of the order, take legal action before a people's court in accordance with the Administrative Procedure Law of the People's Republic of China. If the infringer neither takes legal action at the expiration of the time limit nor ceases the infringement, the said department may file an application with the people's court for compulsory enforcement. The administration department for patent-related work that handles the call shall, upon request of the parties, carry out mediation concerning the amount of compensation for the patent right infringement. If mediation fails, the parties may take legal action before the people's court in accordance with the Civil Procedure Law of the People's Republic of China.

Article 61 If a dispute over patent infringement involves an invention patent for the method of manufacturing a new product, the unit or individual manufacturing the same product shall provide evidence to show that the manufacturing method of their own product is different from the patented method.
If a dispute over patent infringement involves a utility model patent or a design patent, the people's court or the administration department for patent-related work may require the patentee or the interested parties to present a patent right assessment report prepared by the patent administration department under the State Council through searching, analyzing, and assessing the relevant utility model or design, which shall serve as evidence for trying or handling the patent infringement dispute.

Article 62 In a patent infringement dispute, if the accused infringer has evidence to prove that the technology or design exploited is an existing technology or design, the exploitation shall not constitute a patent right infringement.

Article 63 A person who counterfeits the patent of another person shall, in addition to bearing civil liabilities in accordance with law, be ordered by the administration department for patent-related work to put it right, and the department shall make the matter known to the public, confiscate his unlawful gains and, in addition, impose on him a fine of not more than four times the unlawful gain; if there are no unlawful gains, a fine of not more than RMB 200,000 may be imposed on him; and if a crime is constituted, criminal responsibility shall be pursued in accordance with law.

Article 64 When the administration department for patent-related work investigates and handles the suspected counterfeiting of a patent, it may, based on evidence obtained, inquire the parties concerned, and investigate the circumstances related to the suspected illegal act; it may conduct on-the-spot inspection of the places where the suspected illegal act is committed; consult and duplicate the relevant contracts, invoices, account books and other related materials; and check the products related to the suspected illegal act and seal or detain the products that are proved to be produced by the counterfeited patent.
When the administration department for patent-related work performs its duties as prescribed in the preceding paragraph, the parties concerned shall provide assistance and cooperation, instead of refusing to do so or creating obstacles.

Article 65 The amount of compensation for patent right infringement shall be determined according to the patentee's actual losses caused by the infringement. If it is hard to determine the actual losses, the amount of compensation may be determined according to the benefits acquired by the infringer through the infringement. If it is hard to determine the losses of the patentee or the benefits acquired by the infringer, the amount of compensation may be determined according to the reasonably multiplied amount of the royalties of that patent. The amount of compensation shall include the reasonable expenses paid by the patentee for putting an end to the infringement.
If the losses of the patentee, benefits of the infringer, or royalties of the patent are all hard to determine, the people's court may, on the basis of the factors such as the type of patent right, nature of the infringement, and seriousness of the case, determine the amount of compensation within the range from 10,000 yuan to 1,000,000 yuan.

Article 66 If the patentee or interested party has evidence to prove that another person is committing or is about to commit a patent infringement, which, unless being checked in time, may cause irreparable harm to his lawful rights and interests, he may, before taking legal action, file an application to request that the people's court order to have such act ceased.
When filing such an application, the applicant shall provide guarantee. In the event of failure to provide guarantee, the application shall be rejected.
The people's court shall make a ruling within 48 hours from the time of its acceptance of the application. If an extension is needed under special circumstances, a 48-hour extension may be allowed. If a ruling is made to order to have the relevant act ceased, it shall be enforced immediately. The party that is dissatisfied with the ruling may file once for review, and the enforcement shall not be suspended during the period of review.
If the applicant does not take legal action within 15 days from the date the people's court takes measures to have the relevant act ceased, the people's court shall lift such measures.
If the application is wrong, the applicant shall compensate the losses suffered by respondent due to ceasing of the relevant act.

Article 67 To check a patent infringement, when evidence might be lost or might be hard to acquire thereafter, the patentee or interested party may, before taking legal action, file an application with the people's court for evidence preservation.
If the people's court takes preservation measures, it may order the applicant to provide guarantee. If the applicant fails to provide guarantee, the application shall be rejected.
The people's court shall make a ruling within 48 hours from the time of its acceptance of the application. If it rules to take preservation measures, such a ruling shall be enforced immediately.
If the applicant does not take legal action within 15 days from the date the people's court takes preservation measures, the people's court shall lift such measures.

Article 68 The period of limitation for action against patent right infringement shall be two years, commencing from the date when the patentee or interested party knows or should have known of the infringement.
If an appropriate royalty is not paid for using an invention during the period from the publication of the invention patent application to the grant of the patent right, the period of limitation for taking legal action by the patentee for requesting payment of royalties shall be two years, commencing from the date when the patentee knows or should have known of the use of that patent by another person. However, the period of limitation for action shall commence from the date when the patent right is granted, if the patentee knows or should have known of the use before the patent right is granted.

Article 69 The following shall not be deemed to be patent right infringement:
(1) After a patented product or a product directly obtained by using the patented method is sold by the patentee or sold by any unit or individual with the permission of the patentee, any other person uses, offers to sell, sells or imports that product;
(2) Before the date of patent application, any other person has already manufactured identical products, used identical method or has made necessary preparations for the manufacture or use and continues to manufacture the products or use the method within the original scope;
(3) With respect to any foreign means of transportation that temporarily passes through the territory, territorial waters, or territorial airspace of China, the relevant patent is used in the devices and installations for its own needs, in accordance with the agreement concluded between the country it belong to and China, or in accordance with any international treaty to which both countries have acceded, or on the principle of mutual benefit;
(4) Any person uses the relevant patent specially for the purpose of scientific research and experimentation; and
(5) Any person produces, uses, or imports patented drugs or patented medical apparatus and instruments, for the purpose of providing information required for administrative examination and approval, or produces or any other person imports patented drugs or patented medical apparatus and instruments especially for that person.

Article 70 Where any person, for the purpose of production and business operation, uses, offers to sell or sells a patent-infringing product without knowing that such product is produced and sold without permission of the patentee, he shall not be liable for compensation provided that the legitimate source of the product can be proved.

Article 71 If, in violation of the provisions of Article 20 of this Law, a person files an application for patent in a foreign country, thereby divulging national secrets, the unit where he works or the competent authority at a higher level shall impose on him an administrative sanction. If a crime is constituted, he shall be investigated for criminal responsibility according to law.

Article 72 If a person usurps the right of an inventor or designer to apply for a non-employment invention patent, or usurps any other rights and interests of an inventor or designer specified in this Law, he shall be given an administrative sanction by the unit where he works or the competent authority at a higher level.

Article 73 The administration department for patent-related work shall not be involved in recommending patented products to the public or engage in any other similar business activities.
If the administration department for patent-related work violates the provisions of the preceding paragraph, its immediate superior or the supervisory authority shall order it to rectify, and confiscate its unlawful gains, if any; if the circumstances are serious, the principal leading person directly in charge and the other persons directly responsible shall be given administrative sanctions in accordance with law.

Article 74 Where a staff member of the government department engaged in administration of patent-related work or of a relevant department neglects his duty, abuses his power, or commits irregularities for personal gain, which constitutes a crime, he shall be pursued for criminal responsibility in accordance with law. If the case is not serious enough to constitute a crime, he shall be given an administrative sanction in accordance with law.


Chapter VIII  Supplementary Provisions


Article 75 To apply for patent at the patent administrative department under the State Council or go through other formalities, fees shall be paid in accordance with relevant regulations.

Article 76 This Law shall go into effect on April 1, 1985. 

 

Reproduced from Statutes of the Republic of Korea Copyright Ⓒ 1997 by the Korea Legislation Research Institute, Seoul, Korea

PATENT ACT

Note: The Acts and subordinate statutes translated into English herein shall not be construed as having official authority, the Korea Legislation Research Institute and the Korean Intellectual Property Office shall bear no legal responsibility for the accuracy of such translation, and in case of any divergence of interpretation of the Korean and English version thereof, the Korean version shall apply.

Wholly Amended by Act No. 4207, Jan. 13, 1990 Amended by Act No. 4541, Mar. 6, 1993 Act No. 4594, Dec. 10, 1993 Act No. 4757, Mar. 24, 1994 Act No. 4892, Jan. 5, 1995 Act No. 5080, Dec. 29, 1995 Act No. 5329, Apr. 10, 1997 Act No. 5576, Sep. 23, 1998 Act No. 6024, Sep. 7, 1999 Act No. 6411, Feb. 3, 2001 Act No. 6582, Dec. 31, 2001 Act No. 6626, Jan. 26, 2002 Act No. 6768, Dec. 11, 2002 Act No. 7289, Dec. 31, 2004 Act No. 7427, Mar. 31, 2005 Act No. 7554, May31, 2005 Act No. 7869, Mar. 3, 2006 Act No. 7871, Mar. 3, 2006 Act No. 8171, Jan. 3, 2007 Act No. 8197, Jan. 3, 2007 Act No. 8357, Apr. 11, 2007 Act No. 8462, May17, 2007 Act No. 8852, Mar. 29, 2008 Act No. 9249, Dec. 26, 2008 Act No. 9381, Jan. 30, 2009 Act No. 9985, Jan. 27, 2010 Act No. 10012, Feb. 4, 2010 Act No. 10716, May 24, 2011 Act No. 11117, Dec. 2, 2011 CHAPTER Ⅰ GENERAL PROVISIONS Article 1 (Purpose) The purpose of this Act is to encourage, protect and utilize inventions, thereby promoting the development of technology, and to contribute to the development of industry.

Article 2 (Definitions) The terms used in this Act shall be defined as follows: <Amended by Act No. 5080, Dec. 29, 1995> 1. The term "invention" means the highly advanced creation of technical ideas utilizing laws of nature; 2. The term "patented invention" means an invention for which a patent has been granted; 3. The term "working" means any of the following acts: (a) In cases of an invention of a product, acts of manufacturing, using, assigning, leasing, importing, or offering for assigning or leasing (including displaying for the purpose of assignment or lease; hereinafter the same shall apply) the product; (b) In cases of an invention of a process, acts of using the process; (c) In cases of an invention of a process of manufacturing a product, acts of using, assigning, leasing, importing, or offering for assigning or leasing the product manufactured by the process, in addition to the acts mentioned in item (b). Article 3 (Capacity of Minors, etc.) (1) Minors, quasi-incompetents and incompetents shall not initiate the procedure for filing an application, requesting an examination, or any other patent-related procedure (hereinafter referred to as "patent-related procedure") unless represented by their legal representatives: Provided, That this shall not apply where a minor or a quasi-incompetent may perform a legal act independently. (2) The legal representative as referred to in paragraph (1) may, without the consent of the family council, act in any trial or retrial procedures initiated by another party. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 5329, Apr. 10, 1997; Act No. 7871, Mar. 3, 2006> (3) Deleted. <by Act No. 7871, Mar. 3, 2006> Article 4 (Associations, etc. which are not Juristic Persons) A representative or an administrator, who has been so designated by an association or a foundation which is not a juristic person, may request the examination of a patent application or appear as a plaintiff or defendant in a trial or a retrial in its association or foundation name. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> Article 5 (Patent Administrators for Overseas Residents) (1) A person who has neither an address nor a place of business in the

Republic of Korea (hereinafter referred to as "overseas resident") may not, except in cases where an overseas resident (or a representative thereof if a juristic person) is sojourning in the Republic of Korea, initiate any patent-related procedure, nor appeal any decision taken by an administrative agency in accordance with this Act or any order thereunder, unless he/she is represented by an agent with respect to his/her patent, who has an address or a place of business in the Republic of Korea (hereinafter referred to as "patent administrator"). <Amended by Act No. 6411, Feb. 3, 2001> (2) A patent administrator shall, within the scope of powers conferred on him/her, represent the principal in all procedures relating to a patent and in any appeal against a decision taken by an administrative agency in accordance with this Act or any order thereunder. <Amended by Act No. 6411, Feb. 3, 2001> (3) and (4) Deleted. <by Act No. 6411, Feb. 3, 2001> Article 6 (Scope of Authority of Representative) An agent who is instructed to initiate a patent-related procedure before the Korean Intellectual Property Office by a person who has an address or a place of business in the Republic of Korea shall not, unless expressly so empowered, convert, abandon or withdraw an application for a patent, withdraw an application to register an extension of the term of a patent right, abandon a patent right, withdraw a petition, withdraw a request, make or withdraw a priority claim under Article 55 (1), request a trial under Article 132-3, or appoint a sub-agent. <Amended by Act No. 4594, Dec. 10, 1993; Act No. 4892, Jan. 5, 1995; Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> Article 7 (Proof of Authority of Representative) An agent (including a patent administrator; hereinafter the same shall apply) of a person who is initiating a patent-related procedure before the Korean Intellectual Property Office shall present written proof of his/her authority of representative. <Amended by Act No. 6411, Feb. 3, 2001> Article 7-2 (Ratification of Acts of Persons Lacking Capacity, etc.) Patent-related procedures, initiated by a person who lacks capacity, the power of legal representation or the authorization necessary to initiate any such procedures, shall have effect retroactively to the time when such procedures are performed if the procedures are ratified by the principal when he/she has gained capacity to proceed.

[This Article Newly Inserted by Act No. 7871, Mar. 3, 2006] Article 8 (Non-extinction of Authority of Representative) No authority of a representative delegated by a person initiating a patent-related procedure shall be extinguished upon the decease or loss of legal capacity of the principal, the extinction of a juristic person of the principal due to a merger, the termination of the duty of trust of the principal, the decease or loss of legal capacity of the legal representative, or the modification or extinction of his/her authority of representative. Article 9 (Independence of Representation) Where two or more representatives of a person initiating a patent-related procedure have been designated, each of them shall independently represent the principal before the Korean Intellectual Property Office or the Intellectual Property Tribunal. <Amended by Act No. 4892, Jan. 5, 1995> Article 10 (Replacement of Representative, etc.) (1) When the Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge considers that a person initiating a patent-related procedure is not qualified to conduct such procedure without difficulties or make oral statements, etc., he/she may order the appointment of an representative to conduct the procedure. <Amended by Act No. 6411, Feb. 3, 2001> (2) When the Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge considers that the representative of a person initiating a patent-related procedure is not qualified to conduct such procedure without difficulties or make oral statements, etc., he/she may order the replacement of the representative. <Amended by Act No. 6411, Feb. 3, 2001> (3) The Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge may order the appointment of a patent attorney to conduct the procedure, in cases referred to in paragraph (1) or (2). (4) The Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge may invalidate any action taken before the Korean Intellectual Property Office or the Intellectual Property Tribunal by the person initiating the patent-related procedure referred to in paragraph (1) or by the representative referred to in paragraph (2) prior to the appointment or replacement of the representative under paragraph (1) or (2), respectively, after the issuance of an order under paragraph (1) or

(2). <Amended by Act No. 4892, Jan. 5, 1995> Article 11 (Representation of Two or More Persons) (1) Where two or more persons jointly initiate a patent-related procedure, each of them shall represent the joint initiators except for actions falling under any of the following subparagraphs: Provided, That this shall not apply where those persons have appointed a common representative and have notified the Korean Intellectual Property Office or the Intellectual Property Tribunal thereof: <Amended by Act No. 4892, Jan. 5, 1995; Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> 1. Conversion, abandonment or withdrawal of a patent application or withdrawal of an application to register an extension of term of a patent right; 2. Withdrawal of a petition, claim or withdrawal of a priority claim under Article 55 (1); 3. Withdrawal of a request; 4. Request for a trial under Article 132-3. (2) Where the common representative has been appointed and notified under the proviso to paragraph (1), written proof indicating that the representative has been appointed shall be presented. Article 12 (Mutatis Mutandis Application of the Civil Procedure Act) Except as specially provided for in this Act, the provisions of Section 4 of Chapter II of Part I of the Civil Procedure Act shall apply mutatis mutandis to representatives under this Act. <Amended by Act No. 7871, Mar. 3, 2006> Article 13 (Venue of Overseas Residents) If an overseas resident has appointed a patent administrator with respect to his/her patent right or other rights relating to a patent, the domicile or place of business of the patent administrator shall be deemed that of the overseas resident. Where there is no such patent administrator, the location of the Korean Intellectual Property Office shall be deemed the seat of property under Article 11 of the Civil Procedure Act. <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> Article 14 (Calculation of Periods) The periods provided for in this Act or any orders thereunder shall be calculated as follows: <Amended by Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> 1. The first day of the period shall not be counted: Provided, That this shall not apply to cases where the period starts at midnight;

2. When the period is expressed in months or years, it shall be counted according to the calendar; 3. When the start of the period does not coincide with the beginning of a month or year, the period shall expire on the day preceding the date in the last month or year of the period corresponding to the date on which the period started: Provided, That where a month or year is used and there is no corresponding day in the last month, the period shall expire on the last day of that month; 4. If the last day of the period for executing a patent-related procedure falls on an official holiday (including the Workers' Day designated by the Designation of Workers' Day Act and Saturdays), the said period shall expire on the working day following such holiday. Article 15 (Extension, etc. of Periods) (1) The Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may, upon request or ex officio, extend the period of request for trial referred to in Article 132-3 only once up to 30 days: Provided, That he/she may additionally extend the number and period of such request for the benefit of a person residing in an area with poor transportation. <Amended by Act No. 9381, Jan. 30, 2009> (2) When the Commissioner of the Korean Intellectual Property Office, the President of the Intellectual Property Tribunal, a presiding administrative patent judge or an examiner has designated a period for a patent-related procedure under this Act, he/she may extend or reduce such period upon request or may extend such period ex officio. In such cases, the Commissioner of the Korean Intellectual Property Office, etc. shall decide to extend or reduce such period so that any interest of an interested person for the relevant procedure is unduly violated. <Amended by Act No. 8197, Jan. 3, 2007> (3) When a presiding administrative patent judge or an examiner has designated a date for initiating a patent-related procedure under this Act, he/she may change the date upon request or ex officio. Article 16 (Invalidation of Procedure) (1) When a person who has been ordered to make an amendment in accordance with Article 46 fails to do so within the designated period, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may invalidate the patent-related

procedure: where a person who has been ordered to make an amendment for not paying the fees for a request for examination under Article 82 (2) fails to pay the said fees within the designated period, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may invalidate the amendment to the specification attached to the patent application. (2) When a patent-related procedure has been invalidated under paragraph (1), if a failure to amend within the designated period is deemed to have been caused by reasons not imputable to a person ordered to amend, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may revoke a disposition of invalidation, at the request of a person ordered to amend, within 14 days from the date on which the reasons for the delay cease to exist: Provided, That this shall not apply where one year has elapsed after the designated period expires. (3) When the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal takes a disposition of invalidation under the main sentence of and proviso to paragraph (1) or revokes a disposition of invalidation under the main sentence of paragraph (2), he/she shall send a notification of such measure to a person who has been ordered to make an amendment. <Newly Inserted by Act No. 8197, Jan. 3, 2007> [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 17 (Subsequent Completion of Procedure) If a person who initiated a patent-related procedure has failed to comply with the period for requesting a trial under Article 132-3 or the period for demanding a retrial under Article 180 (1) due to a cause not imputable to the person, he/she may subsequently complete the procedure that he/she failed to conduct within 14 days after the said reason ceases to exist: Provided, That this shall not apply where one year has elapsed after the said period expires. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001> Article 18 (Succession of Procedural Effects) The effects of a procedure taken in relation to a patent or other rights relating to a patent shall extend to the successor in title. Article 19 (Continuation of Procedure) Where a patent right or other rights relating to a patent is transferred while a

patent-related procedure is pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal, the Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge may require the successor in title to continue the patent-related procedure. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> Article 20 (Interruption of Procedure) If any patent-related procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal falls under any of the following subparagraphs, it shall be interrupted: Provided, That this shall not apply where there is a representative authorized to conduct the procedure: <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> 1. When the party involved is deceased; 2. When the juristic person involved ceases to exist by merger; 3. When the party involved loses the ability to conduct the procedure; 4. When the legal representative of the party involved is deceased or loses his/her authority; 5. When the commission of a trustee given by the trust of the party involved terminates; 6. When the representative as provided for in the proviso to Article 11 (1) is deceased or loses his/her qualification; 7. When the trustee in bankruptcy, etc. who acted on behalf of the party involved in his/her own name under a certain qualification loses his/her qualification or is deceased. Article 21 (Resumption of Interrupted Procedure) When a procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal has been interrupted pursuant to Article 20, any person who falls under any of the following subparagraphs shall resume the procedure: <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> 1. In cases of subparagraph 1 of Article 20, the deceased person's successor, administrator of inheritance, or any other person authorized to pursue the procedure under other Acts: Provided, That the deceased person's successor may not resume the procedure until his/her right to succession is subject to renunciation; 2. In cases of subparagraph 2 of Article 20, the juristic person established by a merger or survived a merger;

3. In cases of subparagraphs 3 and 4 of Article 20, the party whose ability to take necessary procedure has been restored or any person who becomes the legal representative of the party; 4. In cases of subparagraph 5 of Article 20, a new trustee; 5. In cases of subparagraph 6 of Article 20, a new representative or each party; 6. In cases of subparagraph 7 of Article 20, a new trustee in bankruptcy, etc. holding the same qualification. Article 22 (Request for Resumption) (1) A request to resume a procedure interrupted under Article 20 may be made by an opposing party. (2) When a request to resume a procedure interrupted under Article 20 is made, the Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge shall notify the opposite party thereof. (3) If the Commissioner of the Korean Intellectual Property Office or the administrative patent judge deems that no grounds exist to accept a request to resume the procedure interrupted under Article 20, after examining the request ex officio, he/she shall dismiss the request by decision. <Amended by Act No. 4892, Jan. 5, 1995> (4) The Commissioner of the Korean Intellectual Property Office or the administrative patent judge shall decide, upon request to resume, whether to permit resumption of the interrupted procedure after a certified copy of the decision or trial decision was sent. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> (5) If a person referred to in Article 21 fails to resume the interrupted procedure, the Commissioner of the Korean Intellectual Property Office or the administrative patent judge shall, ex officio, designate a period and order to resume such procedure within the period. <Amended by Act No. 4892, Jan. 5, 1995> (6) If the procedure has not been resumed within the designated period provided for in paragraph (5), it is considered that the procedure has been resumed on the day following the expiration of such designated period. (7) If the Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge deems that the procedure has been resumed in accordance with paragraph (6), he/she shall notify the parties involved thereof.

Article 23 (Suspension of Procedure) (1) If the Commissioner of the Korean Intellectual Property Office or the administrative patent judge is unable to carry out his/her duties due to a natural disaster or other extenuating circumstances, the procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal shall be suspended until such impediments cease to exist. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> (2) If a party involved is unable to pursue a procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal on account of impediments of indefinite duration, the Commissioner of the Korean Intellectual Property Office or the administrative patent judge may order its suspension by decision. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> (3) The Commissioner of the Korean Intellectual Property Office or the administrative patent judge may cancel the decision issued under paragraph (2). <Amended by Act No. 4892, Jan. 5, 1995> (4) If a procedure is suspended under paragraphs (1) and (2), or a decision is canceled under paragraph (3), the Commissioner of the Korean Intellectual Property Office or the presiding administrative patent judge shall notify the parties involved thereof. <Amended by Act No. 6411, Feb. 3, 2001> Article 24 (Effects of Interruption or Suspension) The interruption or suspension of a patent-related procedure pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal shall suspend the running of a term and the entire term shall start to run again from the time of the notification of the continuation or resumption or pursuit of the procedure. <Amended by Act No. 4594, Dec. 10, 1993> Article 25 (Capacity of Foreigners) Foreigners who have neither an address nor a place of business in the Republic of Korea shall not enjoy patent rights or other rights relating to a patent, except as provided for in any of the following subparagraphs: 1. Where their countries allow nationals of the Republic of Korea to en joy patent rights or other rights relating to a patent under the same conditions as their own nationals; 2. Where their countries allow nationals of the Republic of Korea to enjoy patent rights or other rights relating to a patent under the same conditions as their own nationals in cases where the Republic of Korea allows their countries' nationals to enjoy patent rights or other rights

relating to a patent; 3. Where they may enjoy patent rights or other rights relating to a patent according to a treaty or equivalents to a treaty (hereinafter referred to as "treaty"). Article 26 Deleted. <by Act No. 11117, Dec. 2, 2011> Article 27 Deleted. <by Act No. 6411, Feb. 3, 2001> Article 28 (Effective Date of Submission of Documents) (1) Written applications, written requests or other documents (including articles; hereafter the same shall apply in this Article) submitted to the Korean Intellectual Property Office or the Intellectual Property Tribunal under this Act or any order thereunder, shall be effective as of the date on which they are delivered to the Korean Intellectual Property Office or the Intellectual Property Tribunal. <Amended by Act No. 4892, Jan. 5, 1995> (2) Where written applications, written requests or other documents under paragraph (1) are submitted by mail to the Korean Intellectual Property Office or the Intellectual Property Tribunal, they are deemed to be delivered to the Korean Intellectual Property Office or the Intellectual Property Tribunal on the date as stamped by the mail service if the stamped date is clear; however, if such stamped date is unclear they are deemed to be delivered on the date when the mail was submitted to a post office, which is proven by a receipt therefor: Provided, That this shall not apply where written applications for requesting registration of a patent right and other rights related thereto, and documents concerning an international application under Article 2 (vii) of the Patent Cooperation Treaty (hereinafter referred to as "international application") are submitted by mail. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 5576, Sep. 23, 1998; Act No. 7871, Mar. 3, 2006> (3) Deleted. <by Act No. 5576, Sep. 23, 1998> (4) Matters concerning the submission of documents with regard to the delay of mail, loss of mail, or interruption of the mail service, other than paragraphs (1) and (2), shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> Article 28-2 (Entry of Identification Number) (1) A person prescribed by Ordinance of the Ministry of Knowledge Economy among persons who initiate patent-related procedures (excluding

any person to whom an identification number has already been granted under paragraph (2) or (3)), shall apply for identification number to the Korean Intellectual Property Office or the Intellectual Property Tribunal. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (2) Where any person files an application under paragraph (1), the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall grant an identification number and notify him/her thereof. (3) Where a person who initiates a patent-related procedure under paragraph (1) fails to apply for identification number, the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall, ex officio, grant an identification number and notify him/her thereof. (4) If a person to whom an identification number has been granted under paragraph (2) or (3) initiates a patent-related procedure, he/she shall enter his/her identification number in any document prescribed by Ordinance of the Ministry of Knowledge Economy. In such cases, notwithstanding the provisions of this Act or any order thereunder, a domicile (a place of business if a juristic person) may not be entered in the said document. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (5) Paragraphs (1) through (4) shall apply mutatis mutandis to a representative of a person who initiates a patent-related procedure. (6) An application for identification number, the grant and notification thereof or other necessary matters therefor shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 8852, Feb. 29, 2008> [This Article Newly Inserted by Act No. 5576, Sep. 23, 1998] Article 28-3 (Procedure for Filing Patent Applications by Electronic Documents) (1) A person who initiates a patent-related procedure may, pursuant to the means prescribed by Ordinance of the Ministry of Knowledge Economy, convert a written application for a patent or other documents to be presented to the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal under this Act into electronic documents, and may present them by means of any information and communication networks or any electronic recording medium, such as a floppy disk or an optical disk. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008>

(2) Electronic documents presented under paragraph (1) shall have the same effect as other documents presented under this Act. (3) When a presenter thereof confirms a receipt number through an information and communication network, such electronic documents presented through an information and communication network under paragraph (1) shall be deemed to have been received as the details written in a file for receipt saved on a computer system operated by the Korean Intellectual Property Office or the Intellectual Property Tribunal. <Amended by Act No. 6411, Feb. 3, 2001> (4) The kinds of documents capable of being presented by means of electronic documents under paragraph (1) and the means of such presentation or other necessary matters therefor shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 8852, Feb. 29, 2008> [This Article Newly Inserted by Act No. 5576, Sep. 23, 1998] Article 28-4 (Report on Use of Electronic Documents and Electronic Signature) (1) A person who intends to initiate a patent-related procedure by electronic documents shall first report the use thereof to the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal, and shall affix his/her electronic signature so that the presenter may be discerned. (2) Electronic documents presented under Article 28-3 shall be deemed to have been filed by a person who affixes his/her electronic signature under paragraph (1). (3) Matters necessary for procedures of report on use of electronic documents and the methods of electronic signature under paragraph (1), shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 8852, Feb. 29, 2008> [This Article Newly Inserted by Act No. 5576, Sep. 23, 1998] Article 28-5 (Notification, etc. through Information and Communication Networks) (1) If the Commissioner of the Korean Intellectual Property Office, the President of the Intellectual Property Tribunal, a presiding administrative patent judge, an administrative patent judge, a presiding examiner, or an examiner intends to give notification and make transmission (hereinafter referred to as a "notification, etc.") of any pertinent documents to a person who reports the use of electronic documents under Article 28-4

(1), he/she may do so through information and communication networks. <Amended by Act No. 6411, Feb. 3, 2001> (2) The notification, etc. of any pertinent documents given through information and communication networks under paragraph (1) shall have the same effect as that given in writing. <Amended by Act No. 6411, Feb. 3, 2001> (3) The notification, etc. of any pertinent documents under paragraph (1) shall, if it is written in a file of a computer system operated by a person who receives the said notification, etc., be deemed to reach as the details written in a file of a computer system for transmission operated by the Korean Intellectual Property Office or the Intellectual Property Tribunal. <Amended by Act No. 6411, Feb. 3, 2001> (4) Matters necessary for the classification and the means of notification, etc. given through information and communication networks under paragraph (1) shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> [This Article Newly Inserted by Act No. 5576, Sep. 23, 1998] CHAPTER Ⅱ REQUIREMENTS FOR PATENT REGISTRATION AND PATENT APPLICATION Article 29 (Requirements for Patent Registration) (1) Inventions having industrial applicability may be patentable unless they fall under any of the following subparagraphs: <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> 1. Inventions publicly known or worked in the Republic of Korea or in a foreign country prior to the filing of the patent application; 2. Inventions described in a publication distributed in the Republic of Korea or in a foreign country prior to the filing of the patent application or inventions made accessible to the public through telecommunication lines prescribed by Presidential Decree. (2) Notwithstanding paragraph (1), where an invention could easily be made prior to the filing of the patent application by a person having ordinary skill in the art to which the invention pertains, on the basis of an

invention referred to in any subparagraph of paragraph (1), no patent shall be granted for such invention. <Amended by Act No. 6411, Feb. 3, 2001> (3) Notwithstanding paragraph (1), no patent shall be granted where the invention for which a patent application is filed is identical to an invention or device described in the specification or drawings initially attached to another patent application or a utility model registration application which is made prior to the date of filing the said patent application and laid open or published after grant for public inspection after the filing of the said patent application: Provided, That this shall not apply where an inventor of the relevant patent application and an inventor of another patent or utility model application are the same person or where an applicant of the patent application and an applicant of another patent or utility model application are the same person as at the time of filing. <Amended by Act No. 4594, Dec. 10, 1993; Act No. 5329, Apr. 10, 1997; Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (4) In applying paragraph (3), where another patent application or a utility model registration application falls under any of the following subparagraphs, "laid open" in paragraph (3) shall be construed as "laid open for public inspection or internationally published pursuant to Article 21 of the Patent Cooperation Treaty", and "invention or device described in the specification or drawings initially attached to another patent application or a utility model registration application" shall be construed as "invention or device described in the specification, claims or drawings submitted on the international filing date" if it is applied for in the Korean language, and shall be construed as an "invention or device described in the specification, claims or drawings submitted on the international filing date and the translated version of the said documents" if it is applied for in a foreign language: <Amended by Act No. 9381, Jan. 30, 2009> 1. Where another patent application is an international application which is deemed a patent application pursuant to Article 199 (1) (including an international application which becomes a patent application pursuant to Article 214 (4)); 2. Where a utility model registration application is an international application which is deemed a utility model registration application pursuant to Article 34 (1) of the Utility Model Act (including an

international application which becomes a utility model registration application pursuant to Article 40 (4) of the same Act). Article 30 (Inventions not Deemed to be Publicly Known, etc.) (1) If a patentable invention falls under any of the following subparagraphs, in applying Article 29 (1) or (2) to the invention claimed in the patent application, on condition that the patent application therefor is filed within 12 months from the applicable date, the patent shall not be deemed to fall under any subparagraph of Article 29 (1): <Amended by Act No. 4594, Dec. 10, 1993; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 11117, Dec. 2, 2011> 1. When a person having the right to obtain a patent has caused his/her invention to fall under any subparagraph of Article 29 (1): Provided, That this shall exclude cases where the relevant application is laid open, or the registration of a patent for the relevant invention is published in the Republic of Korea or a foreign country pursuant to any treaty or Act; 2. When the invention falls under any subparagraph of Article 29 (1) against the intention of the person having the right to obtain a patent; 3. Deleted. <by Act No. 7871, Mar. 3, 2006> (2) Any person intending to have paragraph (1) 1 applied shall file a patent application to that effect and then submit a document proving the relevant facts to the Commissioner of the Korean Intellectual Property Office within 30 days from the filing date of the patent application. <Amended by Act No. 7871, Mar. 3, 2006> Article 31 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 32 (Unpatentable Inventions) Inventions that are feared to have risks to contravene public order or morality or to injure public health shall not be patentable, notwithstanding Article 29 (1) and (2). [This Article Wholly Amended by Act No. 5080, Dec. 29, 1995] Article 33 (Persons Entitled to Obtain Patent) (1) Any person who makes a new invention or his/her successor shall be entitled to obtain a patent in accordance with this Act: Provided, That employees of the Korean Intellectual Property Office and the Intellectual Property Tribunal shall not obtain patents while in office, excluding cases of inheritance or bequest. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001>

(2) If two or more persons jointly make an invention, the right to obtain a patent shall be jointly owned. Article 34 (Patent Application Filed by Unentitled Person and Protection of Lawful Holder of Right) If a patent cannot be granted because an application was filed by a person who is not the inventor or a successor to the right to obtain a patent (hereinafter referred to as "unentitled person") under the main sentence of Article 33 (1) falls under subparagraph 2 of Article 62, a subsequent application filed by a lawful holder of the right shall be deemed to have been filed on the date of filing of the initial application filed by the un entitled person: Provided, That this shall not apply where the subsequent application is filed by the lawful holder of the right more than 30 days after the date on which the application filed by the unentitled person was rejected. <Amended by Act No. 6411, Feb. 3, 2001> [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 35 (Patent Granted to Unentitled Person and Protection of Lawful Holder of Right) If a trial decision invalidating a patent has become final and conclusive due to the lack of entitlement under the main sentence of Article 33 (1) as prescribed in Article 133 (1) 2, a subsequent application filed by the lawful holder of the right shall be deemed to have been filed at the time the invalidated patent application was filed: Provided, That this shall not apply where the subsequent application is filed more than two years after the publication date of the first application or more than 30 days after the decision of invalidation becomes final and conclusive. [This Article Wholly Amended by Act No. 7871, Mar. 3, 2006] Article 36 (First-to-File Rule) (1) Where two or more applications relating to the same invention are filed on different dates, only the applicant of the application having the earlier filing date may obtain a patent for the invention. (2) Where two or more applications relating to the same invention are filed on the same date, only the person agreed upon by all the appli cants after consultation may obtain a patent for the invention. If no agreement is reached or no consultation is possible, none of the applicants shall obtain a patent for the invention. (3) Where a patent application has the same subject matter as a utility model registration application and the applications are filed on different dates,

paragraph (1) shall apply mutatis mutandis; whereas if they are filed on the same date, paragraph (2) shall apply mutatis mutandis. <Amended by Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (4) Where a patent application or utility model registration application is invalidated, withdrawn or abandoned, or a decision or trial decision to reject the application becomes final and conclusive, such application shall, in applying paragraphs (1) through (3), be deemed never to have been filed: Provided, That this shall not apply where a decision or trial decision to reject the patent application or utility model registration application becomes final and conclusive pursuant to the latter part of paragraph (2) (including cases where it applies mutatis mutandis under paragraph (3)). <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (5) A patent application or utility model registration application filed by a person who is not the inventor, creator, or successor in title to the right to obtain a patent or utility model registration shall, in applying paragraphs (1) through (3), be deemed never to have been filed. (6) In cases of paragraph (2), the Commissioner of the Korean Intellectual Property Office shall order the applicants to report the results of the consultation within a designated period. If such report is not submitted within the designated period, the applicants shall be deemed not to have reached agreement under paragraph (2). Article 37 (Transfer, etc. of Right to Obtain Patent) (1) The right to obtain a patent may be transferred. (2) The right to obtain a patent shall not be the subject of a pledge. (3) In cases of joint ownership of the right to obtain a patent, a joint owner shall not assign his/her share without the consent of all the joint owners. Article 38 (Succession to Right to Obtain Patent) (1) The succession to the right to obtain a patent before the filing of the patent application shall not be effective against third persons unless the successor in title files the patent application. (2) Where two or more applications for a patent are filed on the same date with respect to the right to obtain a patent for the same invention derived by succession from the same person, the succession to the right to obtain the patent by any person, other than the one agreed upon by all the patent applicants, shall not be effective.

(3) Paragraph (2) shall also apply where a patent application and a utility model registration application are filed on the same date, with respect to the right to obtain a patent and utility model registration for the same invention and device which has been derived by succession from the same person. (4) Succession to the right to obtain a patent after the filing of the patent application shall not be effective unless a notice of change of applicant is filed, except in cases of inheritance or other general succession. <Amended by Act No. 6411, Feb. 3, 2001> (5) Upon inheritance or other general succession with respect to the right to obtain a patent, the successor in title shall notify the Commissioner of the Korean Intellectual Property Office of such purport without delay. (6) Where two or more notifications of change of applicant are made on the same date, with respect to the right to obtain a patent for the same invention that has been derived by succession from the same person, a notification made by any person, other than the one agreed upon after consultations among all the persons who made notifications, shall not be effective. <Amended by Act No. 6411, Feb. 3, 2001> (7) Article 36 (6) shall apply mutatis mutandis to cases under paragraphs (2), (3) and (6). <Amended by Act No. 4594, Dec. 10, 1993> Article 39 Deleted. <by Act No. 7869, Mar. 3, 2006> Article 40 Deleted. <by Act No. 7869, Mar. 3, 2006> Article 41 (Inventions, etc. Necessary for National Defense) (1) If necessary for the national defense, the Government may order an inventor, an applicant, or a representative not to file a patent application for an invention in foreign patent offices concerned or to keep such invention confidential: Provided, That if such persons obtain permission from the Government, they may file an application therefor in foreign patent offices. (2) If an invention filed with the Korean Intellectual Property Office is considered necessary for national defense, the Government may refuse to grant a patent and, for reasons of national defense, such as in time of war, uprising or other similar emergency, may expropriate the right to obtain a patent therefor. <Amended by Act No. 5080, Dec. 29, 1995> (3) The Government shall pay reasonable compensation for losses arising from the prohibition of a patent application from being filed in a foreign patent office or from the maintenance of confidentiality under paragraph (1).

<Amended by Act No. 6411, Feb. 3, 2001> (4) The Government shall pay reasonable compensation in the event that a patent is not granted, or the right to obtain a patent is expropriated under paragraph (2). (5) If there has been a violation of an order to prohibit an application from being filed for an invention in a foreign patent office or of an order to maintain confidentiality under paragraph (1), the right to obtain a patent therefor shall be deemed abandoned. (6) If there has been a violation of an order to maintain confidentiality under paragraph (1), the right to request the payment of compensation for the loss arising from maintaining confidentiality shall be deemed abandoned. (7) Matters relating to the procedure for prohibiting an application from being filed in a foreign country, proceedings for maintaining confidentiality under paragraph (1), or for expropriation or payment of compensation under paragraphs (2) through (4) and other necessary matters shall be prescribed by Presidential Decree. Article 42 (Patent Applications) (1) Any person who intends to obtain a patent shall file a patent application stating the following with the Commissioner of the Korean Intellectual Property Office: <Amended by Act No. 6411, Feb. 3, 2001> 1. The name and domicile of an applicant (if a juristic person, its title and place of business); 2. The name and domicile, or place of business of a representative of the applicant, if any (the title, place of business and the name of the designated patent attorney if the representative is a patent corporation); 3. Deleted; <by Act No. 6411, Feb. 3, 2001> 4. The title of the invention; 5. The name and the domicile of an inventor; 6. Deleted. <by Act No. 6411, Feb. 3, 2001> (2) A patent application under paragraph (1) shall be accompanied by a specification stating the following and necessary drawings and abstracts: 1. The title of an invention; 2. Brief description of the drawings; 3. Detailed description of the invention; 4. The scope of claims. (3) Detailed descriptions of an invention under paragraph (2) 3 shall satisfy the following requirements: <Amended by Act No. 10716, May 24, 2011>

   1. Descriptions of an invention shall be provided in accordance with the methods prescribed by Ordinance of the Ministry of Knowledge Economy in a clear and detailed manner to ensure that any person with ordinary knowledge in the technology sector to which the relevant invention belongs can easily make an invention;    2. Technology used for the relevant innovation shall be stated. (4) The scope of claims under paragraph (2) 4 shall describe the matter for which protection is sought in one or more claims (hereinafter referred to as "claims") and the claims shall fall under any of the following subparagraphs: <Amended by Act No. 8197, Jan. 3, 2007> 1. The claims shall be supported by detailed description of the invention; 2. The claims shall define the invention clearly and in detail; 3. Deleted. <by Act No. 8197, Jan. 3, 2007> (5) When filing a patent application, any patent applicant may attach the specification not stating the scope of claims under paragraph (2) 4 to the patent application, notwithstanding paragraph (2). In such cases, the specification shall be amended so as to state the claims within the period classified under the following subparagraphs: <Newly Inserted by Act No. 8197, Jan. 3, 2007> 1. Until one and half years since the day falling under any subparagraph of Article 64 (1); 2. Until three months since the day of receiving the notification of the purport of a request of examination of the patent application under the provisions of Article 60 (3) within the period set forth in subparagraph 1 (until one and a half years since the day falling under any subparagraph of Article 64 (1), if such notification was received after one year and three months from the day falling under any subparagraph of the same paragraph). (6) The scope of claims under paragraph (2) 4 shall state such matters regarded necessary to specify an invention as structures, methods, functions and materials or combination thereof to clarify what to be protected. <Newly Inserted by Act No. 8197, Jan. 3, 2007> (7) Where a patent applicant fails to amend the specification until the period set forth in each subparagraph of paragraph (5) has passed after filing an application, the application concerned shall be deemed withdrawn on the day after the period expires. <Newly Inserted by Act No. 8197, Jan. 3, 2007> (8) Matters necessary for a method enter the scope of claims under paragraph

(2) 4 shall be prescribed by Presidential Decree. (9) Details concerning the description of an abstract under paragraph (2) shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> Article 43 (Abstract) An abstract under Article 42 (2) shall not be interpreted to define the scope of invention for which protection is sought, but rather shall serve as a technical information document. Article 44 (Joint Applications) Where the right to obtain a patent is jointly owned under Article 33 (2), all the owners shall apply for the patent application jointly. Article 45 (Scope of One Patent Application) (1) A patent application shall relate to one invention only: Provided, That a group of inventions so linked as to form a single general inventive concept may be the subject of one patent application. (2) The requirements for one patent application under paragraph (1) shall be prescribed by Presidential Decree. Article 46 (Amendment to Procedure) The Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall order to amend a patent-related procedure, designating a period if the procedure falls under any of the following subparagraphs: <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 6768, Dec. 11, 2002> 1. Where the procedure is in violation of Article 3 (1) or 6; 2. Where the procedure is in violation of the formalities specified in this Act or any order thereunder; 3. Where fees required in accordance with Article 82 have not been paid. Article 47 (Amendment to Patent Application) (1) A patent applicant may amend the specification or drawings attached to a patent application within the period prescribed by each subparagraph of Article 42 (5) or before delivering a certified copy of a decision to grant a patent pursuant to Article 66: Provided, That after receiving a notice of grounds for rejection pursuant to Article 63 (1) (hereinafter referred to as "notice of grounds for rejection"), a patent applicant may amend the specification or drawings during the period prescribed in the following subparagraphs only (in cases under subparagraph 3, referring to that time):

<Amended by Act No. 8197, Jan. 3, 2007; Act No. 9381, Jan. 30, 2009> 1. Where an applicant receives a notice of grounds for rejection (excluding a notice of grounds for rejection with regard to a ground for rejection which has arisen according to the amendment following the notice of grounds for rejection) for the first time or receives a notice of grounds for rejection, other than that referred to in subparagraph 2, the period for presentation of a written opinion following the relevant notice of grounds for rejection; 2. Where an applicant receives a notice of grounds for rejection with regard to a ground for rejection which has arisen according to the amendment following the notice of grounds for rejection, the period for presentation of a written opinion following the relevant notice of grounds for rejection; 3. When an applicant requests a re-examination pursuant to Article 67-2. (2) An amendment to the specification or drawings under paragraph (1) shall be made within the scope of the features disclosed in the specification or drawings initially attached to the patent application. (3) An amendment to the scope of claims, from among amendments pursuant to paragraph (1) 2 and 3, may be made only where it falls under any of the following subparagraphs: <Amended by Act No. 9381, Jan. 30, 2009> 1. Where the scope of claims for a patent is reduced by limiting, deleting, adding claims; 2. Where wrong description is corrected; 3. Where ambiguous description is made clear; 4. With regard to an amendment beyond the scope referred to in paragraph (2), where returning to the scope of claims made prior to the amendment, or amending the scope of claims pursuant to subparagraphs 1 through 3 in the course of returning to the said scope of claims. (4) Deleted. <by Act No. 9381, Jan. 30, 2009> [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 48 Deleted. <by Act No. 6411, Feb. 3, 2001> Article 49 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 50 Deleted. <by Act No. 5329, Apr. 10, 1997> Article 51 (Dismissal of Amendment) (1) Where an examiner deems that an amendment pursuant to Article 47 (1) 2 and 3 has violated paragraphs (2) and (3) of the same Article or that a

new ground for rejection has arisen following the amendment (excluding an amendment deleting claims pursuant to paragraph (3) 1 and 4 of the same Article), he/she shall dismiss such amendment by decision: Provided, That where a request for re-examination is made pursuant to Article 67-2, this shall not apply to an amendment made prior to such request. <Amended by Act No. 9381, Jan. 30, 2009> (2) The decision to reject an amendment under paragraph (1) shall be made in writing and shall state the reasons therefor. (3) No appeal shall be made against a ruling of dismissal under paragraph (1): Provided, That this shall not apply to a dispute concerning the ruling of dismissal (where a request for re-examination is filed pursuant to Article 67-2, a ruling of dismissal made before such request is filed shall be excluded) in a trial on the decision of refusal of a patent pursuant to Article 132-3. <Amended by Act No. 9381, Jan. 30, 2009> [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 52 (Divisional Patent Application) (1) An applicant who has filed one patent application comprising of two or more inventions may divide such application into two or more applications within the limit of such matters as stated in the specification or drawings which are initially attached to the patent application, in accordance with a period falling under any of the following subparagraphs: <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 9381, Jan. 30, 2009> 1. A period in which an amendment can be made pursuant to Article 47 (1); 2. A period in which a request for trial can be made pursuant to Article 132-3 after the receipt of a certified copy of the ruling of dismissal of a patent. (2) A patent application divided under paragraph (1) (hereinafter referred to as "divisional application") shall be deemed to have been filed at the time of filing of the initial patent application: Provided, That in applying the provisions of the following subparagraphs to the said divisional application, such application shall be deemed to be made at the time when the divisional application was filed: <Amended by Act No. 4594, Dec. 10, 1993; Act No. 5576, Sep. 23, 1998; Act No. 7871, Mar. 3, 2006> 1. In cases where Article 29 (3) of this Act or Article 4 (3) of the Utility Model Act is applicable when the divisional application falls

under another patent application under Article 29 (3) of this Act or a patent application under Article 4 (3) of the Utility Model Act; 2. In cases where Article 30 (2) is applicable; 3. In cases where Article 54 (3) is applicable; 4. In cases where Article 55 (2) is applicable. (3) A person who files a divisional application under paragraph (1) shall indicate the purpose thereof and the patent application that forms the basis of the division in the divisional application. <Newly Inserted by Act No. 6411, Feb. 3, 2001> (4) In cases of a divisional application, any person claiming priority as prescribed in Article 54 shall file the documents as prescribed in paragraph (4) of the said Article with the Commissioner of the Korean Intellectual Property Office within three months after filing the divisional application, regardless of the period as prescribed in paragraph (5) of the said Article. <Newly Inserted by Act No. 4594, Dec. 10, 1993; Act No. 6768, Dec. 11, 2002> Article 53 (Converted Application) (1) A person who has filed a utility model registration application may convert the utility model registration application into a patent application within the limit of such matters as stated in the specification or drawings which are initially attached to the utility model registration application: Provided, That this shall not apply where 30 days have passed since he/she has received a certified copy of the first decision to reject the utility model registration application. (2) When there is a patent application made by converting from a utility model registration application pursuant to paragraph (1) (hereinafter referred to as "converted application"), the converted application shall be deemed to have been filed on the filing date of the utility model registration application: Provided, That this shall not apply where the converted application falls under any of the following subparagraphs: 1. In cases where Article 29 (3) of this Act or Article 4 (3) of the Utility Model Act is applicable when the patent application falls under another patent application under Article 29 (3) of this Act or a patent application under Article 4 (3) of the Utility Model Act; 2. In cases where Article 30 (2) is applicable; 3. In cases where Article 54 (3) is applicable; 4. In cases where Article 55 (2) is applicable.

(3) A person who makes a patent application converted under paragraph (1) shall indicate in a converted application its purport and the utility model registration application which forms the basis of the converted application. (4) When there is a converted application, the utility model registration application shall be deemed to be withdrawn. (5) When the period provided for in Article 132-3 is extended pursuant to Article 15 (1) of this Act which applies mutatis mutandis under Article 3 of the Utility Model Act, the period of 30 days referred to in the proviso to paragraph (1) shall be deemed to be extended accordingly. (6) In cases of any converted application, any person who claims a priority as prescribed in Article 54 shall, notwithstanding the period fixed in paragraph (5) of the said Article, submit such documents as prescribed in paragraph (4) of the said Article to the Commissioner of the Korean Intellectual Property Office within three months after he/she makes such converted application. [This Article Wholly Amended by Act No. 7871, Mar. 3, 2006] Article 54 (Priority Claim Under Treaty) (1) If a national of a country party which recognizes under a treaty a priority right to a patent application filed by a national of the Republic of Korea claims the priority right to a patent application in the Republic of Korea on the basis of the initial application for the same invention in his/her country or other country parties, the filing date of the initial application in the foreign country shall be deemed to be the filing date in the Republic of Korea for the purposes of Articles 29 and 36. This shall also apply where a national of the Republic of Korea has filed a patent application in a country which recognizes under a treaty a priority right to patent applications filed by nationals of the Republic of Korea, and claims the priority right to a patent application in the Republic of Korea on the basis of the initial application for the same invention in said country. (2) No person intending to claim a priority right in accordance with paragraph (1) may claim the priority right unless the person files a patent application claiming the priority right within one year from the filing date of the initial application. (3) A person intending to claim a priority right in accordance with paragraph (1) shall specify its purport, the name of the country in which the initial application was filed and the filing date of such application in the patent application which he/she files in the Republic of Korea.

(4) A person who has claimed a priority right under paragraph (3) shall submit to the Commissioner of the Korean Intellectual Property Office the documents prescribed in subparagraph 1 or the written statement prescribed in subparagraph 2: Provided, That the written statement referred to in subparagraph 2 shall be submitted only where the country is prescribed by Ordinance of the Ministry of Knowledge Economy: <Amended by Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> 1. A written statement with the filing date of the application and a copy of the specification and drawings certified by the government of the country where the initial application was filed; 2. A written statement with the file number of the application in the country where the initial application was filed. (5) Documents or written statements under paragraph (4) shall be submitted within one year and four months from the earliest among the dates prescribed in the following subparagraphs: <Newly Inserted by Act No. 6411, Feb. 3, 2001> 1. The date on which the application was first filed in a country that is a party to a treaty; 2. The filing date of the application which is to be the basis for the priority claim where a patent application contains other priority claims in accordance with Article 55 (1); 3. The filing date of the application that is to be the basis for the priority claim where a patent application contains other priority claims in accordance with paragraph (3). (6) Where a person who has claimed a priority right under paragraph (3) fails to submit the document prescribed in paragraph (4) within the period set under paragraph (5), the priority claim shall lose its effect. <Amended by Act No. 6768, Dec. 11, 2002> (7) A person who is eligible to claim the priority right under paragraph (1) and is in compliance with the requirements of paragraph (2) may amend or supplement the said priority claims within one year and four months from the earliest date prescribed under paragraph (5). <Newly Inserted by Act No. 6411, Feb. 3, 2001> Article 55 (Priority Claim Based on Patent Application, etc.) (1) Any person who intends to obtain a patent may claim the priority right for an invention for which a patent application has been made on the basis of an invention described in the specification or drawings initially

attached to an application filed in advance (hereinafter referred to as "earlier application") as a patent application or a utility model registration application, for which he/she has the right to obtain a patent or utility model registration: Provided, That this shall not apply to any of the following subparagraphs: 1. Where the patent application concerned is filed one year after the filing date of an earlier application; 2. Where an earlier application is a divisional application under Article 52 (2) (including such cases as applied mutatis mutandis under Article 11 of the Utility Model Act), or an amended application pursuant to Article 53 of this Act or Article 10 of the Utility Model Act; 3. Where an earlier application has been abandoned, invalidated, or withdrawn at the time of filing the patent application; 4. Where a decision or trial decision to grant or refuse a patent or a utility model registration for an earlier application has become final and conclusive at the time of filing the patent application. (2) Any person intending to claim the a priority right under paragraph (1) shall, when applying for a patent, indicate the purport and an earlier application on the patent application. (3) For the purposes of Article 29 (1) and (2), the main sentence of Article 29 (3), Articles 30 (1), 36 (1) through (3), 96 (1) 3, 98, 103, 105 (1) and (2), 129 and 136 (4) of this Act (including such cases as applied mutatis mutandis under Article 133-2 (4)), Articles 7 (3) and (4) and 25 of the Utility Model Act, Articles 45 and 52 (3) of the Design Protection Act to an invention which is the same as the invention described in the specification or drawings initially attached to an earlier application which is the basis of the relevant priority claim, from among inventions for which a patent application has been filed with a priority claim pursuant to paragraph (1), such patent application shall be deemed to have been filed when the earlier application was filed. (4) The main sentence of Article 29 (3) of this Act or the main sentence of Article 4 (3) of the Utility Model Act shall apply to an invention which is the same as the invention described in the specification or drawings initially attached to an earlier application which is the basis of the relevant priority claim, from among inventions for which a patent application has been filed with a priority claim pursuant to paragraph (1) by deeming that an earlier application which is the basis of the relevant

priority claim has been laid open when the patent application has been laid open or the patent has been registered and publicly announced. (5) If an earlier application falls under any of the following subparagraphs, paragraphs (3) and (4) shall not apply to an invention described in the specification or drawings when a patent application which is the basis of the priority claim is filed with respect to the earlier application from among inventions described in the specification or drawings initially attached to the earlier application: 1. Where an earlier application is the one with a priority claim pursuant to paragraph (1); 2. Where an earlier application is the one with a priority claim pursuant to Article 4-D (1) of the Paris Treaty for Protection of Industrial Property Rights. (6) In applying paragraph (4), where the earlier application falls under any of the following subparagraphs, "invention or device described in the specification, claims or drawings submitted on the international filing date and the translated version of the said documents" in Article 29 (4) shall be construed as "invention or device described in the specification, claims or drawings submitted on the international filing date": 1. Where an earlier application is an international application (including an international application which becomes a patent application pursuant to Article 214 (4)) which is regarded as a patent application pursuant to Article 199 (1); 2. Where an earlier application is an international application (including an international application which becomes a utility model registration application pursuant to Article 40 (4) of the Utility Model Act) which is regarded as a utility model registration application pursuant to Article 34 (1) of the same Act. (7) Any person who has claimed a priority right, satisfying the requirements pursuant to paragraph (1), may amend or supplement the priority claim within one year and four months from the filing date of an earlier application (the earliest filing date in cases where there exist no less than two earlier applications). [This Article Wholly Amended by Act No. 9381, Jan. 30, 2009] Article 56 (Withdrawal, etc. of Earlier Application) (1) An earlier application which is the basis of a priority claim pursuant to Article 55 (1) shall be deemed to have been withdrawn at the time of

expiration of one year and three months from the filing date of the earlier application: Provided, That this shall not apply where that earlier application falls under any of the following subparagraphs: <Amended by Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 9381, Jan. 30, 2009> 1. Where the earlier application has been abandoned, invalidated or withdrawn; 2. Where a decision or a trial decision to grant or refuse a patent or a utility model registration has become final and conclusive; 3. Where priority claims based on the earlier application concerned have been withdrawn; 4. Deleted. <by Act No. 7871, Mar. 3, 2006> (2) No applicant of a patent application containing a priority claim under Article 55 (1) may withdraw the priority claim after the expiration of one year and three months from the filing date of an earlier application. (3) Where a patent application containing a priority claim under Article 55 (1) is withdrawn within one year and three months from the filing date of an earlier application, the priority claim shall be deemed withdrawn simultaneously therewith. CHAPTER Ⅲ EXAMINATION Article 57 (Examination by Examiners) (1) The Commissioner of the Korean Intellectual Property Office shall direct examiners to examine patent applications. <Amended by Act No. 7871, Mar. 3, 2006> (2) The qualifications for examiners shall be prescribed by Presidential Decree. Article 58 (Search, etc. for Prior Art) (1) If it is deemed necessary for the examination of a patent application (including an international investigation and international preliminary examination for an international application), the Commissioner of the Korean Intellectual Property Office may designate a specialized institution and assign duties of searching prior art, conducting a patent classification under the International Patent Classification and others determined by Presidential Decree to such institution. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 9381, Jan. 30, 2009>

(2) If it is deemed necessary for the process of examination, the Commissioner of the Korean Intellectual 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. In such cases, he/she may pay them allowances or expenses for such cooperation or advice within the budgetary limits of the Korean Intellectual Property Office. (3) Necessary matters concerning the designation of a specialized institution, such as standards for designation, and the implementation procedures for searching prior art or conducting a patent classification, etc. under paragraph (1), shall be prescribed by Presidential Decree. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> Article 58-2 (Cancellation of Designation of Specialized Institutions) (1) Where a specialized institution referred to in Article 58 (1) falls under subparagraph 1, the Commissioner of the Korean Intellectual Property Office shall cancel such designation, and where a specialized institution falls under subparagraph 2, he/she may cancel such designation or order suspension of its business operations by fixing the period of up to six months: 1. Where the organization has obtained designation by false or illegal means; 2. Where the organization does not conform to the standard for designation under Article 58 (3). (2) Where the Commissioner of the Korean Intellectual Property Office intends to cancel the designation of a specialized institution in accordance with paragraph (1), he/she shall conduct a public hearing. (3) Necessary matters for the standards and procedures for the designation cancelation or suspension of business operations of specialized institutions under paragraph (1) shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 8852, Feb. 29, 2008> [This Article Wholly Amended by Act No. 8197, Jan. 3, 2007] Article 59 (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 request the Commissioner of the Korean Intellectual Property Office to examine the

patent application within five years from the filing date thereof: Provided, That an applicant for a patent may request for examination of a patent application, only if the specification stating the scope of claims is attached. <Amended by Act No. 8197, Jan. 3, 2007> (3) With respect to a divisional application under Article 52 (2), or a converted application under Article 53 (2), a request for examination may be made even after the expiration of the period prescribed in paragraph (2) within 30 days from the filing date of the divisional application or the converted application. <Amended by Act No. 5576, Sep. 23, 1998; Act No. 7871, Mar. 3, 2006> (4) No request for examination of an application shall be withdrawn. (5) If a request for examination has not been made within the period prescribed in paragraph (2) or (3), the patent application concerned shall be deemed to have been withdrawn. Article 60 (Procedure for Request for Examination) (1) Any person intending to request examination of an application shall submit a written request for examination of an application to the Commissioner of the Korean Intellectual Property Office, stating the following: <Amended by Act No. 6768, Dec. 11, 2002> 1. The name and the domicile of the person making the request (in cases of a juristic person, its title and the location of its place of business); 2. Deleted; <by Act No. 6768, Dec. 11, 2002> 3. The identification of the patent application for which the request for examination is made. (2) The Commissioner of the Korean Intellectual 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 application is laid open, the Commissioner shall publish such fact in the Patent Gazette without delay. (3) Where a request for examination of an application has been made by a person, other than the applicant, the Commissioner of the Korean Intellectual Property Office shall notify the applicant of such fact. Article 61 (Accelerated Examination) The Commissioner of the Korean Intellectual Property Office may direct an examiner to examine one application in preference over another if the former falls under any of the following subparagraphs:

1. Where 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; 2. Where the Commissioner of the Korean Intellectual Property Office deems it necessary to urgently process a patent application prescribed by Presidential Decree. [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 62 (Decision to Reject Patent Application) Any examiner shall make a decision to reject a patent application where the invention falls under any of the following subparagraphs (hereinafter referred to as "grounds for rejection"): <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8197, Jan. 3, 2007> 1. Where the invention is not patentable under Article 25, 29, 32, 36 (1) through (3), or 44; 2. Where the application is filed by a person who does not have the right to obtain a patent therefor under the main sentence of Article 33 (1) or where the invention is not patentable under the proviso to the said Article 33 (1); 3. Where it is in violation of a treaty; 4. Where it has not satisfied the requirements prescribed under Article 42 (3), (4) and (8) or 45; 5. Where the application is amended beyond the scope under Article 47 (2); 6. Where the application is a divisional application filed beyond the scope under Article 52 (1); 7. Where the application is a converted application beyond the scope under Article 53 (1). Article 63 (Notice of Grounds for Rejection) (1) Where an examiner intends to render a decision to reject a patent application under Article 62, he/she shall notify the applicant of the grounds therefor and provide the applicant an opportunity to present his/her written opinions within a fixed period: Provided, That this shall not apply where the examiner intends to reject an amendment pursuant to Article 51 (1). <Amended by Act No. 6411, Feb. 3, 2001; Act No. 9381, Jan. 30, 2009> (2) Where an examiner notifies the grounds to reject under the main sentence of paragraph (1) with regard to a patent application with two or more

claims in its scope of patent application, he/she shall clearly state in the notice the claims refused and specifically describe the grounds for rejection of such claims. <Newly Inserted by Act No. 8197, Jan. 3, 2007; Act No. 9381, Jan. 30, 2009> Article 63-2 (Furnishing of Information concerning Patent Applications) Any person may, at the time a patent application is filed, furnish the Commissioner of the Korean Intellectual Property Office with information together with evidence, to the effect that the invention concerned is unpatentable, because it falls under grounds for rejection: Provided, That this shall not apply where the requirements prescribed in Articles 42 (3) 2 and (8) and 45 are not complied therewith. <Amended by Act No. 8197, Jan. 3, 2007; Act No. 10716, May 24, 2011> [This Article Newly Inserted by Act No. 7871, Mar. 3, 2006] Article 64 (Laying-Open of Applications) (1) Under Ordinance of the Ministry of Knowledge Economy, the Commissioner of the Korean Intellectual Property Office shall lay open a patent application in the Patent Gazette at the time one year and six months have elapsed since any of the following dates or before one year and six months have elapsed since a filling date of a patent application, upon request from the applicant: Provided, That in cases of a patent application which is accompanied by the specification not stating the scope of claims in accordance with the former sentence other than each subparagraph of Article 42 (5) and a patent whose registration has already been published in accordance with Article 87 (3), they shall not be subject to the laying-open of the application: <Amended by Act No. 5080, Dec. 29, 1995; Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 8197, Jan. 3, 2007; Act No. 8852, Feb. 29, 2008> 1. Where a patent application contains a priority claim under Article 54 (1), the filing date being the basis for claiming a priority right shall apply; 2. Where a patent application contains a priority claim under Article 55 (1), the filing date of the earlier application shall apply; 3. The earliest filing date among the filing dates of two or more applications that are the basis for claiming a priority right in a patent application under Article 54 (1) or 55 (1); 4. Where a patent application does not fall under any of subparagraphs 1 through 3, the filing date of the patent application shall apply.

(2) Deleted. <by Act No. 7871, Mar. 3, 2006> (3) Article 87 (4) shall apply mutatis mutandis to the laying-open of applications under paragraph (1). <Amended by Act No. 5329, Apr. 10, 1997> (4) Matters to be published in the Patent Gazette with respect to the laying-open of applications under paragraph (1) shall be prescribed by Presidential Decree. Article 65 (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 for in paragraph (1) or knowing that an application for the invention has been laid open, to pay compensation in an amount equivalent to what he/she 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 patent right. <Amended by Act No. 5329, Apr. 10, 1997> (3) The right to demand compensation as provided for in paragraph (2) shall be exercised only after the registration of the patent right. <Amended by Act No. 5329, Apr. 10, 1997> (4) The exercise of the right to demand compensation under paragraph (2) shall not preclude the exercise of the patent right. <Amended by Act No. 5329, Apr. 10, 1997> (5) Articles 127, 129 and 132 of this Act, or Articles 760 and 766 of the Civil Act shall apply mutatis mutandis to the exercise of the rights to demand compensation under paragraph (2). In such cases, "date on which the injured party or his/her legal representative became aware of such damage and of the identity of the person who caused it" in Article 766 (1) of the Civil Act shall be construed as "date of registration of the patent right involved." <Amended by Act No. 5329, Apr. 10, 1997; Act No. 7871, Mar. 3, 2006> (6) When a patent application is abandoned, invalidated or withdrawn after the laying-open of the application, and when a decision to reject a patent application or a decision to invalidate a patent under Article 133 (excluding cases as prescribed in Article 133 (1) 4) have become final and conclusive, the right under paragraph (2) shall be deemed never to

have existed. <Newly Inserted by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> [This Article Wholly Amended by Act No. 5080, Dec. 29, 1995] Article 66 (Decision to Grant Patent) Where an examiner does not find any grounds to reject a patent application, he/she shall render a decision to grant a patent. <Amended by Act No. 6411, Feb. 3, 2001> [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 66-2 (Ex Officio Amendment, etc.) (1) Where an examiner finds any clear clerical error in the specification, drawings or abstract attached to a patent application when he/she makes a decision to grant a patent, he/she may amend such error ex officio (hereinafter referred to as "ex officio amendment"). (2) In order for an examiner to amend ex officio in accordance with paragraph (1), he/she shall notify the applicant of such ex officio amendment while delivering a certified copy of the decision to grant a patent in accordance with Article 67 (2). (3) If a patent applicant cannot accept the whole or part of an ex officio amendment, he/she shall present his/her written opinion on such ex officio amendment to the Commissioner of the Korean Intellectual Property Office by the time he/she pays a patent fee pursuant to Article 79 (1). (4) Where a patent applicant has presented a written application pursuant to paragraph (3), the whole or part of the relevant ex officio amendment shall be deemed never to have existed. (5) Where an ex officio amendment has been made for any matter which is not a clear clerical error, such ex officio amendment shall be deemed never to have existed. [This Article Newly Inserted by Act No. 9381, Jan. 30, 2009] Article 67 (Formalities for Decision of Patentability) (1) A decision to either grant or reject a patent (hereinafter referred to as "decision of patentability") shall be made in writing and shall state the grounds therefor. <Amended by Act No. 6411, Feb. 3, 2001> (2) Where a decision of patentability has been rendered, the Commissioner of the Korean Intellectual Property Office shall serve a certified copy of the decision on the patent applicant. <Amended by Act No. 6411, Feb. 3, 2001> [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 67-2 (Request for Re-examination)

(1) A patent applicant may, within 30 days (where a period under Article 132-3 has been extended pursuant to Article 15 (1), referring to such extended period) from the date of receipt of a certified copy of the decision to reject the patent application, request a re-examination (hereinafter referred to as "re-examination") on the relevant patent application after amendment to the specification or drawings attached to the patent application: Provided, that this shall not apply where there exists a decision to reject a patent following the re-examination or a request for trial pursuant to Article 132-3. (2) Where a request for re-examination is made in accordance with para graph (1), a decision to reject a patent application previously made for the relevant patent application shall be deemed to have been withdrawn. (3) No request for re-examination pursuant to paragraph (1) shall be withdrawn. [This Article Newly Inserted by Act No. 9381, Jan. 30, 2009] Article 68 (Mutatis Mutandis Application of Provisions concerning Trial to Examination) Subparagraph 1 through 5 and 7 of Article 148 shall apply mutatis mutandis to the examination of patent applications. [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 69 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 70 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 71 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 72 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 73 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 74 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 75 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 76 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 77 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 78 (Suspension of Examination or Litigation Procedures) (1) The examination procedure of a patent application may, if necessary, be suspended until a trial decision thereon becomes final and conclusive or litigation procedures concerned have been complete. <Amended by Act No. 7871, Mar. 3, 2006> (2) The court may, if necessary, suspend litigation procedures until a decision on a patent application becomes final and conclusive. <Amended by Act No. 7871, Mar. 3, 2006>

(3) No appeal shall be made against the suspension under paragraphs (1) and (2). [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 78-2 Deleted. <by Act No. 7871, Mar. 3, 2006> CHAPTER Ⅳ PATENT FEES AND PATENT REGISTRATIONS, ETC. Article 79 (Patent Fees) (1) Any person who intends to obtain the registration of establishment of a patent right in accordance with Article 87 (1) shall pay patent fees for three years from the date when he/she intends to obtain the registration of establishment of the patent right (hereinafter referred to as "registration date of establishment"), and a patentee shall pay, on a yearly basis, a patent fee for one year from the following year based on the date falling under the registration date of establishment of the relevant right. (2) Notwithstanding paragraph (1), a patentee may pay patent fees for several or entire years according to the order of years of payment in a lump sum. (3) Patent fees, method and term of payment thereof pursuant to paragraphs (1) and (2), and other necessary matters shall be prescribed by Ordinance of the Ministry of Knowledge Economy. [This Article Wholly Amended by Act No. 9381, Jan. 30, 2009] Article 80 (Payment of Patent Fees by Interested Party) (1) Regardless of the intent of a person liable to pay patent fees, any interested party may pay the patent fees. (2) An interested party who has paid patent fees in accordance with paragraph (1) may demand reimbursement of his/her expenses to the extent that the person liable to pay the patent fees is currently making a profit. Article 81 (Late Payment, etc. of Patent Fees) (1) A patentee or a person intending to register a patent right may make late payment of the patent fees within six months following the expiration of the payment period prescribed under Article 79 (3). <Amended by Act No. 9381, Jan. 30, 2009> (2) In cases of late payment of patent fees pursuant to paragraph (1), an amount prescribed by Ordinance of the Ministry of Knowledge Economy

shall be paid within the extent of double the amount of patent fees payable. <Amended by Act No. 9381, Jan. 30, 2009> (3) In cases of failing to pay patent fees (where the remaining payment period provided for in Article 81-2 (2) does not expire in spite of the expiration of the extended payment period, referring to such cases as failing to pay the remaining portion of the payment fees within such remaining payment period) within the extended period provided for in paragraph (1), the patent application by a person intending to register a patent right shall be deemed to have been abandoned and the patent right of a patentee shall be deemed to have terminated retroactively on the next day of the expiry date of the period equivalent to patent fees paid pursuant to Article 79 (1) and (2). <Amended by Act No. 6768, Dec. 11, 2002; Act No. 9381, Jan. 30, 2009> Article 81-2 (Remainder Payment) (1) Where a patentee or a person intending to register a patent right fails to pay some of the patent fees within the period fixed under Article 79 (3) or 81 (1), the Commissioner of the Korean Intellectual Property Office shall order him/her to pay the remaining portion of the patent fees. <Amended by Act No. 9381, Jan. 30, 2009> (2) A person ordered to pay the remaining portion under paragraph (1) may pay the remaining portion of the patent fees within one month after the order is received. (3) A person who pays the remaining portion of the patent fees under paragraph (2) shall pay an amount prescribed by Ordinance of the Ministry of Knowledge Economy within the extent of double the amount of patent fees not paid if he/she falls under any of the following subparagraphs: <Amended by Act No. 9381, Jan. 30, 2009> 1. Where he/she pays the remaining portion of the patent fees after the lapse of the period of payment under Article 79 (3); 2. Where he/she pays the remaining portion of the patent fees after the lapse of the period of late payment under Article 81 (1). [This Article Newly Inserted by Act No. 6768, Dec. 11, 2002] Article 81-3 (Restoration, etc. of Patent Application or Patent Right by Late Payment or Remaining Payment of Patent Fees) (1) If a patentee or a person intending to register a patent right has failed to observe the deadline for late payment of the patent fees under Article 81 (1) or the deadline for remaining payment of the patent fees under Article

81-2 (2) due to any cause beyond his/her control, he/she may pay the patent fees or the remaining portion thereof within fourteen days after the said cause ceases to exist: Provided, That this shall not apply where six months have elapsed since the expiration of the deadline for late payment or remaining payment, whichever is later. <Amended by Act No. 6768, Dec. 11, 2002> (2) Notwithstanding Article 81 (3), a person who has paid the patent fees or the remaining portion thereof in accordance with paragraph (1) shall be deemed not to have abandoned the patent application and the relevant patent right shall be deemed to have existed continuously. <Amended by Act No. 6768, Dec. 11, 2002; Act No. 9381, Jan. 30, 2009> (3) Where the patent right of a patented invention in execution has been extinguished, because the patent fee was not paid within the extended payment deadline under Article 81 (1) or the remaining portion thereof was not paid within the remaining payment period under Article 81-2 (2), the relevant patentee may apply to restore the relevant extinguished right by paying three times the amount of the patent fees under Article 79 within three months from the expiration date of the extended payment deadline or of the remaining payment period. In such cases, the relevant patent right shall be deemed to have existed continuously. <Newly Inserted by Act No. 7554, May 31, 2005; Act No. 9381, Jan. 30, 2009> (4) The effects of a patent application or a patent right under paragraph (2) or (3) shall not extend to another person's working of the patented invention during a period from the date of expiration of the extended period for late payment of the patent fees to the date of actual payment or remainer payment of the patent fees (hereafter referred to as "period of limited effect" in this Article). <Amended by Act No. 6768, Dec. 11, 2002; Act No. 7554, May 31, 2005> (5) During the period of limited effect, a person who has been commercially or industrially working or preparing to work an invention in good faith under a patent application or patent right in accordance with paragraph (2) or (3) in the Republic of Korea, shall have a non-exclusive license on that patent right under the patent application within the scope of the object of the invention or business that he/she is working or preparing to work. <Amended by Act No. 7554, May 31, 2005> (6) A person who has been granted a non-exclusive license in accordance with paragraph (5) shall pay reasonable consideration to the patentee or

exclusive licensee. <Amended by Act No. 7554, May 31, 2005> [This Article Newly Inserted by Act No. 6411, Feb. 3, 2001] Article 82 (Official Fees) (1) A person initiating a patent-related procedure shall pay an official fees. (2) Where the number of claims is increased because of the amendments to the specification after a request for examination made by a person, other than the applicant, the applicant shall pay the fees for the request for examination corresponding to the increased number of claims. <Amended by Act No. 6411, Feb. 3, 2001> (3) Matters necessary for the payment of official fees, the payment method and deadline thereof under paragraph (1) and other necessary matters shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6768, Dec. 11, 2002; Act No. 8852, Feb. 29, 2008> Article 83 (Reduction or Exemption of Patent Fees or Official Fees) (1) Notwithstanding Articles 79 and 82, the Commissioner of the Korean Intellectual Property Office shall grant an exemption from paying any of the following patent fees or official fees:<Amended by Act No. 11117, Dec. 2, 2011> 1. Official fees or patent fees corresponding to the patent applications or patent rights belonging to the State; 2. Official fees related to requests for an invalidation trial made by an examiner under Article 133 (1), 134 (1) and (2) or 137 (1). (2) Notwithstanding Articles 79 and 82, where a patent application has been filed by a person eligible for assistances in accordance with Article 5 of the National Basic Living Security Act or a person prescribed by Ordinance of the Ministry of Knowledge Economy, the Commissioner of the Korean Intellectual Property Office may reduce or exempt the payment of the official fees prescribed by Ordinance of the Ministry of Knowledge Economy and the patent fees for obtaining the establishment registration of a patent right for the first three years. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6024, Sep. 7, 1999; Act No. 6768, Dec. 11, 2002; Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008> (3) A person who intends to take advantage of reduction or exemption of patent fees or official fees in accordance with paragraph (2) shall submit documents prescribed by Ordinance of the Ministry of Knowledge Economy to the Commissioner of the Korean Intellectual Property Office.

<Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6768, Dec. 11, 2002; Act No. 8852, Feb. 29, 2008> Article 84 (Refund of Patent Fees, etc.) (1) No patent fee and official fee paid shall be refunded: Provided, That in any of the following cases, such fees shall be refundable upon request by a person who made such payment: <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8197, Jan. 3, 2007> 1. Patent fees or official fees paid erroneously; 2. Portions corresponding to the patent fee for the years subsequent to the year in which a trial decision of invalidation on the patent becomes final and conclusive; 3. Portions corresponding to the patent fee for the years subsequent to the year in which a trial decision of invalidation on the registration of patent term extension becomes final and conclusive; 4. Application fees for a patent and fees for the request for examination among official fees already paid where the patent application concerned was withdrawn or abandoned within a month after such application is filed (excluding a divisional application, converted application and patent application with a request for accelerated examination). (2) When any patent fee or official fee paid falls under any subparagraph of paragraph (1), the Commissioner of the Korean Intellectual Property Office shall issue a notification to the party who paid such fees. <Newly Inserted by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (3) Refund of patent fees and official fees under the proviso to paragraph (1) may not be claimed if more than three years have elapsed from the date of receiving the notification under paragraph (2). <Amended by Act No. 7871, Mar. 3, 2006; Act No. 8462, May 17, 2007> [This Article Wholly Amended by Act No. 4594, Dec. 10, 1993] Article 85 (Patent Register) (1) The Commissioner of the Korean Intellectual Property Office shall keep the Patent Register at the Korean Intellectual Property Office and shall register the following matters: <Amended by Act No. 6768, Dec. 11, 2002> 1. The establishment, transfer, extinguishment, recovery, restriction on disposal, or extension of the term of a patent right; 2. The establishment, maintenance, transfer, modification, extinguishment, or restriction on disposal of an exclusive or non-exclusive license;

3. The establishment, transfer, modification, extinguishment or restric tion on the disposal of a pledge on a patent right or on an exclusive or non-exclusive license. (2) All or parts of the Patent Register under paragraph (1) may be stored on magnetic tapes, etc. (3) Necessary information relating to the matters and procedures of registration not provided for in paragraphs (1) and (2) shall be prescribed by Presidential Decree. (4) Specifications and drawings of patented inventions and other documents prescribed by Presidential Decree shall be deemed part of the Patent Register. Article 86 (Issuance of Patent Registration Certificate) (1) When a patent right has been registered, the Commissioner of the Korean Intellectual Property Office shall issue a patent registration certificate to the relevant patentee. (2) Where a patent registration certificate does not coincide with the Patent Register or other documents, the Commissioner of the Korean Intellectual Property Office shall reissue the patent registration certificate with amendments, or issue a new patent registration certificate upon request or ex officio. (3) When a decision on a trial for amendment under Article 136 (1) has become final and conclusive, the Commissioner of the Korean Intellectual Property Office shall issue a new patent registration certificate in accordance with the trial decision. CHAPTER Ⅴ PATENT RIGHT Article 87 (Registration of Establishment of Patent Right and Publication of Registration) (1) A patent right shall enter into effect upon establishment of registration thereof. (2) The Commissioner of the Korean Intellectual Property Office shall register the establishment of a patent right in any case of the following subparagraphs: <Amended by Act No. 7871, Mar. 3, 2006> 1. Where the payment of patent fees has been made in accordance with Article 79 (1); 2. Where the late payment of patent fees has been made in accordance

with Article 81 (1); 3. Where the remaining portion of patent fees has been paid in accordance with Article 81-2 (2); 4. Where the patent fees or the remaining portion thereof has been paid in accordance with Article 81-3 (1); 5. Where an exemption from the payment of patent fees has been granted under Article 83 (1) 1 and (2). (3) Where registration has been made under paragraph (2), the Commissioner of the Korean Intellectual Property Office shall publish the grant of the patent together with the relevant information in the Patent Gazette. <Amended by Act No. 5329, Apr. 10, 1997> (4) The publication of the registration of a patented invention required to be treated confidentially shall be reserved until it is declassified, and upon declassification, the registration shall be published without delay. <Newly Inserted by Act No. 5329, Apr. 10, 1997> (5) The Commissioner of the Korean Intellectual Property Office shall provide application documents and attached materials thereof for public inspection for a period of three months from the date of publication of registration. <Newly Inserted by Act No. 5329, Apr. 10, 1997> (6) Matters to be published in the Patent Gazette with respect to the publication of registration under paragraph (3) shall be prescribed by Presidential Decree. <Newly Inserted by Act No. 5329, Apr. 10, 1997> Article 88 (Term of Patent Right) (1) The term of a patent right shall commence upon registration of the patent right under Article 87 (1) and last for 20 years from the filing date of the patent application. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001> (2) Where a patent is granted to a lawful holder of the right under Articles 34 and 35, the term of a patent right under paragraph (1) shall be calculated from the date following the filing date of the patent application by the unentitled person. <Amended by Act No. 5080, Dec. 29, 1995> (3) Deleted. <by Act No. 6411, Feb. 3, 2001> (4) Deleted. <by Act No. 7871, Mar. 3, 2006> Article 89 (Extension of Term of Patent Right by Permit, etc) (1) When any one intends to implement a patented invention, he/she shall obtain a permit or file for registration under other Acts and subordinate statues, and, in cases of an invention prescribed by Presidential Decree,

which takes a long time due to activity or safety tests, etc. required for such permit or registration. etc. (hereinafter referred to as "permit, etc."), the term of the relevant patent right may be extended up to five years, during which the relevant invention cannot be implemented, notwithstanding the provisions of Article 88 (1). (2) In applying the provisions of paragraph (1), the period which has lapsed due to grounds attributable to patentees shall not be included in "period during which the relevant invention cannot be implemented" pursuant to paragraph (1). [This Article Wholly Amended by Act No. 11117, Dec. 2, 2011] Article 90 (Applications to Register Extension of Term of Patent Right by Permit, etc.) (1) A person who intends to apply to register the extension of a patent right under Article 89 (1) (hereafter referred to as "applicant for registration of extension" in this Article and Article 91) shall submit an application for registration of an extension of the term of a patent right to the Commissioner of the Korean Intellectual Property Office, stating each of the following: <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008; Act No. 11117, Dec. 2, 2011> 1. The name and domicile of an applicant for registration of extension (if the applicant is a juristic person, its title and the location of its place of business); 2. The name and domicile, or location of place of business, of the representative, if designated (if the representative is a patent corporation, its name, location of office and designated patent attorney's name); 3. The identification by the number of patent for which an extension is applied, and the claims of that patent; 4. The period of extension; 5. The requirements for permission, etc. under Article 89 (1); 6. The grounds for extension prescribed by Ordinance of the Ministry of Knowledge Economy (accompanied by materials substantiating the grounds). (2) An application to register an extension of the term of a patent right pursuant to paragraph (1) shall be filed within three months from the date permission, etc. under Article 89 (1) was obtained: Provided, That such

application may not be filed six months before the term of patent right provided for in Article 88 expires.<Amended by Act No. 11117, Dec. 2, 2011> (3) Where a patent right is owned by joint owners, an application to register an extension of the term of a patent right shall be made in the names of all the joint owners. (4) Where an application to register an extension of term of a patent right pursuant to paragraph (1) has been filed, the term shall be deemed extended: Provided, That the same shall not apply where a decision of refusal for registration of extension of term under Article 91 has become final and conclusive.<Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 11117, Dec. 2, 2011> (5) Where an application to register an extension of the term of a patent right pursuant to paragraph (1) has been filed, the Commissioner of the Korean Intellectual Property Office shall publish the information prescribed in paragraph (1) in the Patent Gazette.<Amended by Act No. 11117, Dec. 2, 2011> (6) An applicant for registration of an extension may make an amendment to the matters referred to in paragraph (1) 3 through 6, which are described in the application for registration of an extension (excluding the patent number of the patent right to be extended under subparagraph 3) until the examiner transmits a certified copy of the decision for registration or rejection of the extension: Provided, That after receiving a notice of grounds for rejection which is applicable mutatis mutandis pursuant to Article 93, he/she may make an amendment in the period for presentation of a written opinion only, according to the relevant notice of grounds for rejection. <Newly Inserted by Act No. 6411, Feb. 3, 2001; Act No. 9381, Jan. 30, 2009> Article 91 (Decision of Rejecting Application to Register Extension of Term of Patent Right by Permit, etc)  An examiner shall make a decision to reject an application to register an extension of the term of a patent right pursuant to Article 90 when it falls under any of the following subparagraphs:<Amended by Act No. 6411, Feb. 3, 2001; Act No. 11117, Dec. 2, 2011> 1. When a permit etc. under Article 89 (1) is deemed unnecessary for implementing the relevant patented invention; 2. When the relevant patentee or any person who has an exclusive license

or registered non-exclusive license related to the relevant patent right fails to obtain a permit, etc. under Article 89 (1); 3. When the period of an application for extension exceeds the period during which the relevant patented invention could not have been implemented pursuant to Article 89; 4. When an applicant for the registration of extension is not the relevant patentee; 5. When an application for the registration of extension has been filed, in violation of Article 90 (3). Article 92 (Decision, etc. to Register Extending Term of Patent Right by Permit, etc) (1) Where an examiner finds no reason under any subparagraph of Article 91 (1) to reject an application for an extension of the term of a patent right under Article 90, he/she shall make a decision to register the extension. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 11117, Dec. 2, 2011> (2) When a decision to register the extension has been made under paragraph (1), the Commissioner of the Korean Intellectual Property Office shall register the extension of the term of the patent right in the Patent Register. <Amended by Act No. 6411, Feb. 3, 2001> (3) When the registration under paragraph (2) has been made, the information prescribed in the following subparagraphs shall be published in the Patent Gazette: <Amended by Act No. 6411, Feb. 3, 2001; Act No. 11117, Dec. 2, 2011> 1. The name and domicile of a patentee (if the patentee is a legal entity, its title and the location of its place of business); 2. The patent number; 3. The date of registration of the extension; 4. The period of the extension; 5. The requirements for permission, etc. under Article 89 (1). attributable to the patentee. <Amended by Act No. 5576, Sep. 23, 1998> Article 92-2(Extension of Term of Patent Right Following Delayed Registration) (1) When the registration of establishment of a patent right is delayed than the date on which four years lapse after the date of a patent application or the date on which three years lapse after a request for the examination of an application is made, whichever is later, the term of the relevant patent right may be extended as much as the delayed period, notwithstanding the provisions of Article 88 (1).

(2) In applying the provisions of paragraph (1), the period delayed due to an applicant shall be excluded from the extension of the term of a patent right under paragraph (1): Provided, That when the period delayed due to an applicant overlaps with the abovementioned delayed period, the period excluded from the extension of the term of a patent right shall not exceed the actual period delayed due to an applicant. (3) Matters concerning "the period delayed due to an applicant" under paragraph (2) shall be prescribed by Presidential Decree. (4) When four years are reckoned from the date of a patent application pursuant to paragraph (1), any date falling under each of the following subparagraphs shall be deemed the date of a patent application, notwithstanding the provisions of Articles 34, 35, 52 (2), 53 (2), 199 (1) and 214 (4):    1. The date when the lawful holder of a right applies for a patent, in cases of a patent application by the lawful holder of a right pursuant to Article 34 or 35;    2. The date when a divisional application is filed, in cases of a divisional application under Article 52;   3. The date when a converted application is filed, in cases of a converted application under Article 53;   4. The date when a document containing matters falling under subparagraphs of Article 203 (1) is submitted, in cases of an international application construed as a patent application pursuant to Article 199 (1);    5. The date when an applicant who filed an international application requests the Commissioner of the Korean Intellectual Property Office to make a decision pursuant to Article 214 (1), in cases of an international application construed as a patent application pursuant to Article 214;   6. The date when a patent application is filed, in cases of a patent application which does not fall under any of the subparagraphs 1 through 5.  [This Article Newly Inserted by Act No. 11117. Dec. 2, 2011] Article 92-3 (Application to Register Extension of Term of Patent Right Following Delayed Registration) (1) Any person who intends to apply to register the extension of the term of a patent right under Article 92-2 (hereinafter referred to as "applicant for

registration of extension" in this Article and Article 92-4) shall submit an application for registration of extension of the term of a patent right accompanied with the following matters to the Commissioner of the Korean Intellectual Property Office: 1. The name and domicile of an applicant for registration of extension (if the applicant is a juristic person, its title and the location of its business place); 2. The name and domicile of an agent or the location of business place, when the agent of an applicant for registration of extension exists (if the agent is a patent office, its title, location of its business place and the name of a designated patent attorney); 3. The patent number of a patent right subject to extension; 4. The period of application for extension; 5. Grounds for extension prescribed by Ordinance of the Ministry of Knowledge Economy (data certifying such grounds shall be attached thereto). (2) An application to register extension of the term of a patent right pursuant to paragraph (1) shall be filed within three months from the date when the establishment of a patent right is registered. (3) Where a patent right is owned by joint owners, an application to register extension of the term of a patent right shall be filed by all joint owners. (4) Any applicant for registration of extension may revise matters falling under paragraph (1) 4 and 5, among matters stated in a written application for registration of extension, before an examiner decides whether extension of the term of a patent right shall be registered: Provided, That after he/she receives a notice on grounds for refusal, which are applied mutatis mutandis under Article 93, he/she may revise such matters only in the period for submission of written opinions following the relevant notice on grounds for refusal.  [This Article Newly Inserted by Act No. 11117. Dec. 2, 2011] Article 92-4 (Decision to Reject Application to Register Extension of Term of Patent Right Following Delayed Registration)   When an application to register extension of term of a patent right pursuant to Article 92-3 falls under any of the following subparagraphs, an examiner shall decide to reject the application:    1. When the period of the application for extension exceeds a period of extension recognized pursuant to Article 92-2;

   2. When an applicant for registration of extension is not the relevant patentee;   3. When the application for registration of extension is filed, in violation of Article 92-3 (3). [This Article Newly Inserted by Act No. 11117, Dec. 2, 2011] Article 92-5 (Decision, etc to Register Extension of Term of Patent Right Following Delayed Registration)   (1) When an examiner cannot find a ground falling under any of the subparagraphs of Article 92-4, with regard to any application to register extension of term of a patent right pursuant to Article 92-3, he/she shall decide to register such extended term.    (2) When a decision is made to register extension of term of a patent right pursuant to paragraph (1), the Commissioner of the Korean Intellectual Property Office shall register such extension with the patent original register.    (3) When any registration is made pursuant to paragraph (2), the following matters shall be included in the patent gazette:    1. The name and domicile of a patentee (if a patentee is a juristic person, its name and its business place);   2. The patent number;   3. The date when the extension of term of a patent right is registered;   4. The period of extension. [This Article Newly Inserted by Act No. 11117, Dec. 2, 2011] Article 93 (Provisions Applicable Mutatis Mutandis) Articles 57 (1), 63, 67 and subparagraphs 1 through 5 and 7 of Article 148 shall apply mutatis mutandis to the examination of an application for registration of an extension of the term of a patent right. [This Article Wholly Amended by Act No. 11117, Dec. 2, 2011] Article 94 (Effects of Patent Right) A patentee shall have the exclusive right to work a patented invention both commercially and industrially: Provided, That where the patent right is the subject of an exclusive license, this shall not apply to the extent that the exclusive licensee has the exclusive right to work the patented invention under Article 100 (2). Article 95 (Effects of Patent Right with its Term Extended by Permit, etc) The effects of a patent right, the term of which has been extended pursuant to Article 90 (4), shall not extend to any other acts except the working of

the patented invention with respect to such products for which permission, etc. was the basis for registering the extension (or where permission, etc. was obtained for any specific use of the product, with respect to the product adapted for such specific use).<Amended by Act No. 11117, Dec. 2, 2011> Article 96 (Limitations on Patent Rights) (1) The effects of the patent right shall not extend to the following: <Amended by Act No. 9985, Jan. 27, 2010> 1. Working of the patented invention for the purpose of research or experiments (including item permission or reporting on medicines under the Pharmaceutical Affairs Act, and research or experiments for registration of agrochemicals under the Agrochemicals Control Act); 2. Vessels, aircraft or vehicles merely passing through the Republic of Korea, or machinery, instruments, equipment or other accessories used therein; 3. Articles existing in the Republic of Korea as at the time the patent application was filed. (2) The effects of the patent right for inventions of a medicine (referring to products used for diagnosis, therapy, alleviation, medical treatment or prevention of human diseases; hereinafter the same shall apply) manufactured by mixing two or more medicines, or for inventions of processes for manufacturing medicines by mixing two or more medicines, shall not extend to the acts of manufacturing medicines or to medicines manufactured by such acts in accordance with the Pharmaceutical Affairs Act. <Amended by Act No. 7871, Mar. 3, 2006> Article 97 (Scope of Protection of Patented Invention) The scope of protection conferred by a patented invention shall be determined by the subject matters described in the claims. Article 98 (Relation to Patented Invention, etc. of Another Person) Where the working of a patented invention would infringe another person's patented invention, registered utility model or registered design or similar design under an application filed prior to the filing date of the patent application concerned, or where a patent right conflicts with another person's design right or trademark right under an application for registration for a design right or trademark right filed prior to the filing date of the patent application concerned, the patentee, exclusive licensee or non-exclusive licensee shall not work the patented invention commercially or industrially without permission from the owner of the earlier patent, utility model right,

or design right, or trademark right. <Amended by Act No. 4594, Dec. 10, 1993; Act No. 6411, Feb. 3, 2001; Act No. 7289, Dec. 31, 2004> Article 99 (Transfer and Joint Ownership of Patent Right) (1) A patent right may be transferred. (2) Where a patent right is owned jointly, each joint owner of the patent right may neither transfer his/her share nor establish a pledge upon it without the consent of all the other joint owners. (3) Where a patent right is owned jointly, each joint owner may, except as otherwise agreed in a contract among all the joint owners, work the patented invention by himself/herself without the consent of the other joint owners. (4) Where a patent right is owned jointly, each joint owner of the patent right may not grant an exclusive license or a non-exclusive license of the patent right without the consent of the other joint owners. Article 100 (Exclusive License) (1) A patentee may grant an exclusive license of the patent right to others. (2) An exclusive licensee having been granted an exclusive license under paragraph (1), shall have the exclusive right to work the patented invention commercially or industrially to the extent provided for in the license contract. (3) No exclusive licensee may transfer the license without the consent of the patentee, unless it is transferred together with the underlying business, or by inheritance or other general succession. (4) No exclusive licensee may establish a pledge nor grant a nonexclusive license on the exclusive license without the consent of the patentee. (5) Article 99 (2) through (4) shall apply mutatis mutandis to exclusive licenses. Article 101 (Effects of Registration of Patent Right and Exclusive License) (1) The following matters shall be of no effect unless they are registered: <Amended by Act No. 6411, Feb. 3, 2001> 1. The transfer (excluding transfer by inheritance or other general succession) or extinguishment by abandonment, or restriction on disposal of a patent right; 2. The grant, transfer (excluding transfer by inheritance or other general succession), modification, extinguishment (excluding extinguishment by confusion), or restriction on disposal of an exclusive license; 3. The establishment, transfer (excluding transfer by inheritance or other

general succession), modification, extinguishment (excluding extinguishment by confusion), or restriction on disposal of a pledge on a patent right or exclusive license. (2) Inheritance of, or other general succession relating to a patent right, exclusive license, and pledge under paragraph (1) shall be notified without delay to the Commissioner of the Korean Intellectual Property Office. Article 102 (Non-exclusive License) (1) A patentee may grant to others a non-exclusive license on his/her patent right. (2) A non-exclusive licensee shall have the right to work the patented invention commercially or industrially to the extent prescribed in this Act or provided for by the license contract. <Amended by Act No. 4594, Dec. 10, 1993> (3) A non-exclusive license granted under Article 107 may only be transferred together with the underlying business. <Amended by Act No. 5080, Dec. 29, 1995> (4) A non-exclusive license under Article 138 of this Act, Article 32 of the Utility Model Act, or Article 70 of the Design Protection Act shall be transferred together with the patent right, utility model right, or design right concerned and shall be extinguished as at the same time the patent, utility model or design right concerned is extinguished. <Amended by Act No. 5576, Sep. 23, 1998; Act No. 7289, Dec. 31, 2004; Act No. 7871, Mar. 3, 2006> (5) No non-exclusive license, other than those described in paragraphs (3) and (4), may be transferred without the consent of the patentee (or the patentee and the exclusive licensee in cases of a non-exclusive license on an exclusive license), unless it is transferred together with the underlying business, or by inheritance or other general succession. <Amended by Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001> (6) No pledge may be established on a non-exclusive license, other than those under paragraphs (3) and (4), without the consent of the patentee (or the patentee and the exclusive licensee in cases of a non-exclusive license on an exclusive license). (7) Article 99 (2) and (3) shall apply mutatis mutandis to non-exclusive licenses. <Amended by Act No. 4594, Dec. 10, 1993> Article 103 (Non-exclusive License by Prior Use) At the time of filing of a patent application, a person who has made an

invention without having prior knowledge of the contents of an invention described in an existing patent application, or has learned how to make the invention from such person and has been working the invention commercially or industrially in the Republic of Korea, in good faith, or has been making preparations therefor, shall have a non-exclusive license on that patent right for the invention under the patent application. Such license shall be limited to the invention which is being worked, or for which preparations for working have been made, and to the purpose of such working or preparations. <Amended by Act No. 6411, Feb. 3, 2001> Article 104 (Non-exclusive License due to Working prior to Registration of Request for Invalidation Trial) (1) Where a person falling under any of the following subparagraphs has been working an invention or a device in the Republic of Korea commercially or industrially, or has been making preparations therefor, prior to the registration of a request for an invalidation trial of the patent or registered utility model concerned, without knowing that his/her patented invention or registered utility model is subject to invalidation, such person shall have a non-exclusive license on that patent right or have a non-exclusive license on the exclusive license to a patent right existing at the time the patent or the utility model registration was invalidated, but such non-exclusive license shall be limited to the invention or device which is being worked or for which preparations for working are being made and to the purpose of such working or the preparations therefor: <Amended by Act No. 5576, Sep. 23, 1998; Act No. 7871, Mar. 3, 2006> 1. The original patentee, where one of two or more patents granted for the same invention has been invalidated; 2. The original owner of a utility model right, where a patented invention and a device registered as a utility model are the same and the utility model registration has been invalidated; 3. The original patentee, where his/her patent has been invalidated and a patent for the same invention has been granted to an entitled person; 4. The original owner of a utility model right, where his/her utility model registration has been invalidated and a patent for the same invention as the device has been granted to an entitled person; 5. In cases of subparagraphs 1 through 4, a person who has been granted an exclusive license or a non-exclusive license, or non-exclusive license

on the exclusive license and has been registered such, at the time of registration of the request for an invalidation trial of the invalidated patent right or utility model right: Provided, That a person falling under Article 118 (2) is not required to register the license. (2) A person who has been granted a non-exclusive license in accordance with paragraph (1) shall pay reasonable consideration to the patentee or exclusive licensee. Article 105 (Non-exclusive License after Expiration of Design Right) (1) Where a design right applied for a patent and registered prior to or on the filing date of a patent application conflicts with the patent right, and the term of the design right has expired, the owner of such design right shall have a non-exclusive license on the patent right or the exclusive license existing at the time the design right expired to the extent of such design right. <Amended by Act No. 7289, Dec. 31, 2004> (2) Where a design right applied for a patent and registered prior to or on the filing date of a patent application conflicts with the patent right, and the term of the design right has expired, a person who has an exclusive license on the design right existed at the time of expiration, or non-exclusive license under Article 118 (1) of this Act, as applied mutatis mutandis by Article 61 of the Design Protection Act related to the design right or the exclusive license shall have a non-exclusive license on the patent right concerned or on the exclusive license at the time the design right expired to the extent of the expired right. <Amended by Act No. 7289, Dec. 31, 2004> (3) A person who has been granted a non-exclusive license under paragraph (2) shall pay reasonable consideration to the patentee or exclusive licensee. Article 106 (Expropriation of Patent Rights) (1) If a patented invention is necessary for national defense in time of war, uprising, or any other similar emergency, the Government may expropriate a patent right. <Amended by Act No. 9985, Jan. 27, 2010> (2) If a patent right is expropriated, rights to the invention, other than the patent right, shall be extinguished. (3) If the Government expropriates a patent right under paragraph (1), it shall pay reasonable compensation to the patentee, exclusive licensee or non-exclusive licensee. <Amended by Act No. 9985, Jan. 27, 2010> (4) Necessary matters concerning the expropriation of patent rights and

payment of compensation therefor shall be prescribed by Presidential Decree. <Amended by Act No. 9985, Jan. 27, 2010> Article 106-2 (Working of Patented Invention by Government, etc.) (1) If it is deemed necessary to non-commercially work a patented invention due to a national or extreme emergency, or for the public interests, the Government may directly work the patented invention or have any person, other than the Government, work it. (2) When the Government or any person, other than the Government, becomes aware of or is able to know the fact that a patent right retained by a third person exists, he/she or it shall promptly notify the patentee, exclusive licensee or non-exclusive licensee of the fact of working under paragraph (1). (3) When the Government or any person, other than the Government, works a patented invention pursuant to paragraph (1), he/she or it shall pay reasonable compensation to the patentee, exclusive licensee or non-exclusive licensee. (4) Necessary matters concerning working of a patented invention and payment of compensation shall be prescribed by Presidential Decree. [This Article Newly Inserted by Act No. 9985, Jan. 27, 2010] Article 107 (Adjudication for Grant of Non-exclusive License) (1) Where a patented invention falls under any of the following subparagraphs, and where agreement is not reached while having a consultation with the patentee or exclusive licensee of the relevant patented invention on granting a non-exclusive license under reasonable conditions (hereafter referred to as "consultation" in this Article) or where the consultation is unable to take place, a person who intends to work the patented invention may request the Commissioner of the Korean Intellectual Property Office to adjudicate (hereinafter referred to as "adjudication") for grant of a non-exclusive license thereon: Provided, That where intended to work the patented invention noncommercially for the public interests and where falling under the provisions of subparagraph 4, an adjudication may be applied even if no agreement has been reached: <Amended by Act No. 7554, May 31, 2005> 1. Where the patented invention has not been worked for three or more consecutive years in the Republic of Korea, except in cases of natural disaster, unavoidable circumstances or other justifiable reasons prescribed by Presidential Decree;

2. Where the patented invention has not been continuously worked commercially or industrially in the Republic of Korea on a substantial scale during a period of three or more years without justifiable grounds, or where the demand in the Republic of Korea for the patented invention has not been satisfied to an appropriate extent and under reasonable conditions; 3. Where the working of the patented invention is specially necessary for public interests; 4. Where the working of the patented invention is necessary to remedy a practice determined to be unfair after the judicial or administrative process; 5. Where the working of the patented invention is necessary for ex porting medicines (including effective ingredients necessary for medicine production and diagnosis kits necessary for the use of medicines) to countries intending to import the medicines (hereafter referred to as "importing countries" in this Article) to cure diseases that threaten the health of the majority of its citizens. (2) Paragraph (1) 1 and 2 shall not apply unless a period of four years has lapsed from the filing date of the application for patent right to the patented invention. (3) In adjudication for the grant of a non-exclusive license, the Commissioner of the Korean Intellectual Property Office shall consider the necessity of each and every claim. (4) In making an adjudication under paragraph (1) 1 through 3, or 5, the Commissioner of the Korean Intellectual Property Office shall impose conditions falling under each of the following subparagraphs on persons subject to the adjudication: <Amended by Act No. 7554, May 31, 2005> 1. In cases of adjudication under paragraph (1) 1 through 3, the non-exclusive license shall be mainly worked for the purpose of supplies for sufficiency of demands in the Republic of Korea; 2. In an adjudication under paragraph (1) 5, all volume of produced medicines shall be exported to importing countries. (5) In making an adjudication, the Commissioner of the Korean Intellectual Property Office shall assure that an appropriate price shall be paid. In such cases, in making an adjudication under paragraph (1) 4 or 5, matters falling under each of the following subparagraphs may be considered for a decision of pricing: <Amended by Act No. 7554, May 31, 2005>

1. In cases of adjudication under paragraph (1) 4, the purport for correcting unfair trade practices; 2. In cases of adjudication under paragraph (1) 5, the economic values in importing countries which occur by working the relevant patented inventions. (6) With respect to semi-conductor technology, the request for adjudication may be made only in cases set forth in paragraph (1) 3 (limited to noncommercial working for the public interests) or 4. <Amended by Act No. 7554, May 31, 2005> (7) The importing countries shall be limited to World Trade Organization member countries which have notified the World Trade Organization of the following matters, or non-WTO members prescribed by Presidential Decree which have notified the Government of the Republic of Korea of the following matters: <Newly Inserted by Act No. 7554, May 31, 2005> 1. Name and volume of medicines required by importing countries; 2. If importing countries are not the least developed countries listed in a resolution by the General Assembly of the United Nations, the confirmation of the importing countries that manufacturing abilities for production of the relevant medicines are non-existent or insufficient; 3. If the relevant medicines have been patented in an importing country, the confirmation of the said country that compulsory licensing has been permitted or intended to be permitted. (8) Medicines under paragraph (1) 5 mean those falling under any of the following subparagraphs: <Newly Inserted by Act No. 7554, May 31, 2005> 1. Patented medicines; 2. Medicines produced by the patented manufacturing methods; 3. Patented effective ingredients necessary for the production of medicines; 4. Patented diagnosis kit necessary for the use of medicines. (9) Documents to be submitted by persons demanding an adjudication and other matters necessary for the adjudication shall be prescribed by Presidential Decree. <Newly Inserted by Act No. 7554, May 31, 2005> [This Article Wholly Amended by Act No. 5080, Dec. 29, 1995] Article 108 (Submission of Response) Upon a request for adjudication, the Commissioner of the Korean Intellectual Property Office shall transmit a copy of the written request to the patentee or exclusive licensee mentioned in the request and to any other person having any registered right relating to the patent, and shall provide them an

opportunity to submit a response within the fixed period. Article 109 (Hearing of Opinions from Intellectual Property Rights Dispute Coordination Committee and Heads of Related Ministries) If recognized as necessary for making an adjudication, the Commissioner of the Korean Intellectual Property Office may hear opinions from the Intellectual Property Rights Dispute Coordination Committee under Article 41 of the Invention Promotion Act and the heads of the related Ministries, and may request the related administrative agencies or the related persons to cooperate. <Amended by Act No. 8357, Apr. 11, 2007> [This Article Wholly Amended by Act No. 7554, May 31, 2005] Article 110 (Formalities, etc. of Adjudications) (1) An adjudication shall be made in writing and shall state the grounds therefor. (2) The following matters shall be specified in an adjudication under paragraph (1): <Amended by Act No. 5080, Dec. 29, 1995; Act No. 7554, May 31, 2005> 1. The scope and duration of a non-exclusive license; 2. The consideration for the license and method and timing of payment; 3. In cases of adjudication under Article 107 (1) 5, the medicines supplied by the patentee, exclusive licensee, or non-exclusive licensee (excluding the holder of a non-exclusive license issued through adjudication) of the relevant patented invention, externally discernable packaging and markings and the addresses of a web site that publishes information on the adjudication; 4. Other codes of practice necessary for executing the terms or conditions provided by Acts and subordinate statutes or treaties to be executed by the person who is granted the adjudication in working the relevant patented invention. (3) Except for cases having justifiable grounds, the Commissioner of the Korean Intellectual Property Office shall make decisions on adjudication within six months from the date of demanding an adjudication. <Newly Inserted by Act No. 7554, May 31, 2005> (4) Where the demand for adjudication under Article 107 (1) 5 falls under paragraphs (7) and (8) of the said Article and all documents under paragraph (9) of the same Article are submitted, the Commissioner of the Korean Intellectual Property Office shall make an adjudication of establishment of the non-exclusive license, except for cases where

justifiable grounds exist. <Newly Inserted by Act No. 7554, May 31, 2005> Article 111 (Service of Certified Copies of Adjudication) (1) Where an adjudication is made, the Commissioner of the Korean Intellectual Property Office shall serve certified copies of adjudication on the parties and any other person having the registered right relating to the patent. (2) When a certified copy of adjudication has been served on the parties under paragraph (1), consultation to the terms as specified in the adjudication shall be deemed to have been held by the parties. Article 111-2 (Alteration of Written Adjudication) (1) Where any alteration is required on the matters of Article 110 (2) 3 which are specified on the written adjudication, the person who is granted the adjudication may request such to the Commissioner of the Korean Intellectual Property Office by attaching documents proving the relevant causes. (2) Where the request under paragraph (1) is admitted to be reasonable, the Commissioner of the Korean Intellectual Property Office may alter the matters clarified on the written adjudication. In such cases, he/she shall hear opinions of the interested persons. (3) Article 111 shall apply mutatis mutandis to cases under paragraph (2). [This Article Newly Inserted by Act No. 7554, May 31, 2005] Article 112 (Deposit of Consideration) A party who is obligated to pay consideration under Article 110 (2) 2 shall make a deposit thereof under the following circumstances: 1. Where the party entitled to receive the consideration refuses or is unable to receive it; 2. Where an action under Article 190 (1) has been brought with respect to the consideration; 3. Where the patent right or exclusive license is the subject of a pledge: Provided, That the same shall not apply where the pledgee has consented. Article 113 (Lapse of Adjudication) Where a person who was granted adjudication fails to pay or deposit the consideration (or the first installment thereof, if payment is to be made periodically or by installments) under Article 110 (2) 2 by payment deadline, the adjudication shall lose its effect. Article 114 (Cancellation of Adjudication)

(1) Where a person who was granted adjudication falls under any of the following subparagraphs, the Commissioner of the Korean Intellectual Property Office may cancel the adjudication, ex officio or upon request by any interested party: Provided, That in cases of subparagraph 2, such action shall protect the non-exclusive license's lawful interests: <Amended by Act No. 5080, Dec. 29, 1995; Act No. 7554, May 31, 2005> 1. Where the working of the patented invention is not within the purpose of the adjudication; 2. Where the grounds for adjudication on the authorization of non-exclusive license disappears and it is deemed that such grounds will not reoccur; 3. Where matters under Article 110 (2) 3 or 4 which are specified on the written adjudication are violated without justifiable grounds. (2) The provisions of Articles 108, 109, 110 (1) and 111 (1) shall apply mutatis mutandis to cases under paragraph (1). (3) A non-exclusive license shall be extinguished upon cancellation of the ruling under paragraph (1). Article 115 (Restriction on Reason for Objections to Adjudication) Where a request for an administrative trial has been filed under the Administrative Appeals Act or a revocation action has been brought under the Administration Litigation Act as to the adjudication, the consideration determined in the adjudication shall not be a basis for objection. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> Article 116 Deleted. <by Act No. 11117, Dec. 2, 2011> Article 117 Deleted. <by Act No. 6411, Feb. 3, 2001> Article 118 (Effects of Registration of Non-exclusive License) (1) When a non-exclusive license has been registered, it shall also be effective against any person who subsequently acquires the patent right or an exclusive license. (2) A non-exclusive license granted under Articles 81-3 (5), 103 through 105, 122, 182 and 183 of this Act, and Article 10 (1) of the Invention Promotion Act shall have the same effect as prescribed under paragraph (1) of this Article even if it has not been registered. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8197, Jan. 3, 2007; Act No. 8357, Apr. 11, 2007> (3) The transfer, modification, extinguishment or restriction on disposal of a non-exclusive license or the establishment, transfer, modification,

extinguishment or restriction on disposal of a pledge relating to a nonexclusive license shall not be effective against a third party unless it is registered. Article 119 (Restriction on Abandonment of Patent Right, etc.) (1) No patentee shall abandon his/her patent right without the consent of the exclusive licensee, pledgee, or non-exclusive licensee under Articles 100 (4) and 102 (1) of this Act and Article 10 (1) of the Invention Promotion Act. <Amended by Act No. 4594, Dec. 10, 1993; Act No. 8197, Jan. 3, 2007; Act No. 8357, Apr. 11, 2007> (2) No exclusive licensee shall abandon his/her exclusive license without the consent of the pledgee or non-exclusive licensee under Article 100 (4). (3) No non-exclusive licensee shall abandon his/her non-exclusive license without the consent of the pledgee. Article 120 (Effects of Abandonment) A patent right, or an exclusive or non-exclusive license thereon, shall be extinguished as of the time of abandonment of the patent right or of the exclusive or non-exclusive license thereon. Article 121 (Pledge) Where a patent right or an exclusive or non-exclusive license is the subject of a pledge, the pledgee may not work the patented invention except as otherwise agreed in a contract. Article 122 (Non-exclusive License Incidental to Transfer of Patent Right by Exercise of Pledge Right) If a patentee works a patented invention prior to the establishment of a pledge on the patent right, the patentee shall have a non-exclusive license on the patented invention even if the patent right is transferred by an auction, etc. In such cases, the patentee shall pay reasonable consideration to the person to whom the patent right is transferred by an auction, etc. <Amended by Act No. 4594, Dec. 10, 1993> Article 123 (Subrogation of Pledge) A pledge may be exercised against compensation under this Act or against consideration or goods to be received for the working of the patented invention: Provided, That an attachment order shall be obtained prior to the payment or delivery of the consideration or goods. Article 124 (Extinguishment of Patent Right in Absence of Successor) A patent right shall be extinguished when no successor exists at the time of succession.

Article 125 (Report on Working of Patent) The Commissioner of the Korean Intellectual Property Office may require a patentee, exclusive licensee or non-exclusive licensee to report whether the patented invention has been worked and the extent of such working, etc. Article 125-2 (Title of Execution on Amount of Compensation and Consideration) A final and conclusive ruling by the Commissioner of the Korean Intellectual Property Office on the amount of the compensation or consideration to be paid under this Act shall have the same effect as an enforceable title of execution. In such cases, the enforceable writ, which has the force of execution, shall be given by a public official of the Korean Intellectual Property Office. [This Article Newly Inserted by Act No. 6411, Feb. 3, 2001] CHAPTER Ⅵ PROTECTION OF PATENTEES Article 126 (Right to Seek Injunction, etc. against Infringement) (1) A patentee or exclusive licensee may demand a person who infringes or is likely to infringe on his/her own patent right to discontinue or refrain from such infringement. (2) A patentee or an exclusive licensee acting under paragraph (1) may demand the destruction of the articles by which the act of infringement was committed (including the products obtained by the act of infringement in cases of a process invention for manufacturing the products), the removal of the facilities used for the act of infringement, or other measures necessary to prevent the infringement. Article 127 (Acts Deemed to be Infringement) Where any person intends to conduct any of the following acts as his/her business, he/she shall be deemed to infringe on a patent right or an exclusive license: <Amended by Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001> 1. In cases of the invention of a product, acts of making, assigning, leasing, importing, or offering for assignment or lease articles used exclusively for producing such products; 2. In cases of the invention of process, acts of making, assigning, leasing, importing or offering for assignment or lease articles used exclu sively for working such process. Article 128 (Presumption, etc. of Amount of Losses)

(1) Where a patentee or exclusive licensee claims compensation from a person who has intentionally or negligently infringed his/her patent right or exclusive license for losses caused by the infringer's transfer of in fringing articles, the amount of losses may be calculated by multiplying the number of transferred articles by the profit per unit of the articles that the patentee or exclusive licensee might have sold in the absence of said infringement. In such cases, the compensation may not exceed an amount calculated by multiplying the estimated profit per unit by the amount obtained by subtracting the number of articles actually sold from the number of products that the patentee or exclusive licensee could have produced: Provided, That where the patentee or exclusive licensee was unable to sell his/her product for reasons, other than infringement, a sum calculated according to the number of articles subject to the said circumstances shall be deducted. <Newly Inserted by Act No. 6411, Feb. 3, 2001> (2) Where a patentee or exclusive licensee claims compensation for losses from a person who has intentionally or negligently infringed a patent right or exclusive license, the profits gained by the infringer as a result of the infringement shall be presumed to be the amount of damage suffered by the patentee or exclusive licensee. (3) Where a patentee or exclusive licensee claims compensation for losses from a person who has intentionally or negligently infringed a patent right or exclusive license, the pecuniary amount which he/she would normally be entitled to receive for working of the patented invention may be claimed as the amount of losses suffered by the patentee or exclusive licensee. (4) Notwithstanding paragraph (3), where the amount of losses exceeds the amount referred to in paragraph (3), the amount in excess may also be claimed as compensation for losses. In such cases, the court may take into consideration the fact that there has been neither willfulness nor gross negligence on the part of the person who has infringed the patent right or the exclusive license when awarding losses. <Amended by Act No. 6411, Feb. 3, 2001> (5) In litigation relating to a patent right or exclusive license, where the court recognizes that the nature of the facts of the case makes it difficult to provide evidence proving the amount of losses that have occurred, the court may determine a reasonable amount on the basis of an examination

of the evidence and on a review of all the arguments, notwithstanding paragraphs (1) through (4). <Newly Inserted by Act No. 6411, Feb. 3, 2001> Article 129 (Presumption of Process for Manufacturing) Where one product is identical to another product manufactured by a patented process, the former shall be presumed to have been manufactured by the patented process of the latter: Provided, That where such product falls under any of the following subparagraphs, the same shall not apply: 1. A product publicly known or worked in the Republic of Korea prior to the filing of the patent application; 2. A product described in a publication distributed in the Republic of Korea or in a foreign country or a product made known to the public through telecommunication lines prescribed by Presidential Decree prior to the filing of the patent application. [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 130 (Presumption of Negligence) A person who has infringed a patent right or exclusive license of another person shall be presumed to have been negligent regarding such act of infringement. Article 131 (Recovery of Reputation of Patentee, etc.) Upon request of a patentee or exclusive licensee, the court may order the person who has injured the business reputation of the patentee or exclusive licensee by intentionally or negligently infringing the patent right or exclusive license to take necessary measures to restore the business reputation of the said patentee or exclusive licensee, in lieu of compensation for losses or in addition thereto. Article 132 (Submission of Documents) In litigation relating to the infringement of a patent right or exclusive license, the court may, upon request of a party, order the other party to submit documents necessary for the assessment of losses caused by the infringement: Provided, That this shall not apply when the person possessing the documents has a justifiable ground for refusing to submit them. CHAPTER Ⅶ TRIAL Article 132-2 (Intellectual Property Tribunal) (1) The Intellectual Property Tribunal shall be established under the jurisdiction of the Commissioner of the Korean Intellectual Property Office

to be responsible for trials and retrials regarding patents, utility models, designs and trademarks and investigation and research thereof. <Amended by Act No. 7289, Dec. 31, 2004> (2) The Intellectual Property Tribunal shall be comprised of the President and administrative patent judges. (3) Matters necessary for the organization, personnel and operation of the Intellectual Property Tribunal shall be determined by Presidential Decree. [This Article Newly Inserted by Act No. 4892, Jan. 5, 1995] Article 132-3 (Trial against Decision to Reject Patent Application, etc.) Where a person who has received a decision to reject a patent application or a decision to reject an application to register extension of the term of a patent right has an objection to such decision, such person may request a trial within thirty days from the date of receipt of the certified copy of the decision. <Amended by Act No. 7871, Mar. 3, 2006; Act No. 11117, Dec. 2, 2011> [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 132-4 Deleted. <by Act No. 6411, Feb. 3, 2001> Article 133 (Invalidation Trial of Patent) (1) In any of the following cases, an interested party or an examiner may request a trial to invalidate a patent. In such cases, that patent contains two or more claims, a request for the invalidation trial may be made for each claim: Provided, That if three months have not passed since the date of registration publication of the patent right after registration of its establishment, any person may make a request for the invalidation trial on the grounds that the patent falls under any of the following subparagraphs (excluding subparagraph 2): <Amended by Act No. 7871, Mar. 3, 2006; Act No. 10716, May 24, 2011> 1. Where a person has violated Articles 25, 29, 32, 36 (1) through (3), or 42 (3) 1 or (4); 2. Where the patent has been granted to a person not entitled to obtain the patent under the main sentence of Article 33 (1), or in violation of Article 44; 3. Where a person is unable to obtain the patent under the proviso to Article 33 (1); 4. After the grant of the patent, where the patentee is no longer capable of enjoying the patent right under Article 25, or the patent comes to be contrary to a treaty; 5. Where a person is unable to obtain the patent for violating a treaty;

6. Where the application is amended beyond the scope under Article 47 (2); 7. Where the application is a divisional application filed beyond the scope under Article 52 (1); 8. Where the application is a converted application beyond the scope under Article 53 (1). (2) A trial under paragraph (1) may be requested even after the extinguishment of a patent right. (3) Where a trial decision invalidating a patent has become final and conclusive, the patent right shall be deemed never to have existed: Provided, That where a patent falls under paragraph (1) 4 and a trial decision invalidating the patent has become final and conclusive, the patent right shall be deemed not to have existed at the time when the patent first became subject to the said subparagraph. (4) Where a trial under paragraph (1) has been requested, the presiding administrative patent judge shall notify the exclusive licensee of the patent right and any other person having registered rights relating to such patent of the purport of such request. Article 133-2 (Correction of Patent during Invalidation Trial of Patent) (1) A defendant of a trial under Article 133 (1) may request corrections to the specification or drawings of a patented invention only in cases falling under any subparagraph of Article 136 (1) within the term designated pursuant to Article 147 (1) or the latter part of Article 159 (1). In such cases, if the presiding administrative patent judge finds it necessary to allow request of corrections due to submission of evidential documents by an applicant after the designated period prescribed by Article 147 (1), he/she may designate another period and allow request of corrections within the period. <Amended by Act No. 8197, Jan. 3, 2007; Act No. 9381, Jan. 30, 2009> (2) In cases of a request of corrections pursuant to paragraph (1), a request of corrections carried out before the request of corrections during the procedures of relevant invalidation trials shall be deemed withdrawn. <Newly Inserted by Act No. 8197, Jan. 3, 2007> (3) When the corrections have been requested under paragraph (1), the presiding administrative patent judge shall serve a copy of the written request on the defendant under Article 133 (1). (4) Articles 136 (2) through (5), (7) through (11), 139 (3) and 140 (1), (2)

and (5) shall apply mutatis mutandis to requests for correction under paragraph (1). In such cases, "before issuance of a notification of closure of the trial examination under Article 162 (3) (where the trial examination is reopened under Article 162 (4), before a subsequent notification of the closure of the trial examination is issued under Article 162 (3))" in Article 136 (9) shall be construed as "within the designated term where it would be noticed under Article 136 (5)." (5) With respect to the application of paragraph (4), Article 136 (4) shall not apply mutatis mutandis in correcting a claim against which a patent invalidation trial is requested under Article 133 (1). <Newly Inserted by Act No. 7871, Mar. 3, 2006; Act No. 8197, Jan. 3, 2007> [This Article Newly Inserted by Act No. 6411, Feb. 3, 2001] Article 134 (Invalidation Trial of Registration for Extension of Term of Patent Right) (1) In any of the following cases, any interested party or examiner may request a trial to invalidate the registration of an extension of the term of a patent right pursuant to Article 92: <Amended by Act No. 5329, Apr. 10, 1997; Act No. 11117, Dec. 2, 2011> 1. Where an extension had been registered with respect to the application that did not require any permission, etc. under Article 89 for purposes of working the patented invention; 2. Where an extension had been registered with respect to the application, permission, etc. under Article 89 of which was not obtained by the patentee or an exclusive licensee thereof or a registered nonexclusive licensee; 3. Where the term extended by the registration of an extension exceeds the period during which the patented invention could not be worked; 4. Where the registration of an extension has been effected on an application made by a person, other than the patentee; 5. Where the registration of an extension has been effected on an application made in violation of Article 90 (3); 6. Deleted. <by Act No. 5576, Sep. 23, 1998> (2) When registering extension of the term of a patent right pursuant to Article 92-5 falls under any of the following subparagraphs, any interested party or examiner may request a trial to invalidate such registration: <Newly Inserted by Act No. 11117, Dec. 2, 2011>   1. When the period extended following the registration of extension

exceeds the period of extension recognized pursuant to Article 92-2;   2. When the registration of extension is made, with regard to an application filed by any person, other than the relevant patentee;   3. When the registration of extension is made, with regard to an application which violates Article 92-3 (3). (3) The provisions of Article 133 (2) and (4) shall apply mutatis mutandis to requests for a trial under paragraphs (1) and (2). <Amended by Act No. 11117, Dec. 2, 2011> (4) Where a trial decision that the registration of extension is to be invalidated has become final and conclusive, the registration of extension of the term shall be deemed never existed: Provided, That where the registration of extension falls under any of the following subparagraphs, extension shall be deemed not existed for the relevant period:<Amended by Act No. 6411, Feb. 3, 2001; Act No. 11117, Dec. 2, 2011> 1. In cases where the registration of extension falls under paragraph (1) 3 and thus becomes invalidated, the period extended in excess of a period during which the relevant patented invention could not be implemented; 2. In cases where the registration of extension falls under paragraph (2) 1 and thus becomes invalidated, the period extended in excess of a period for extension recognized pursuant to Article 92-2. Article 135 (Trial to Confirm Scope of Patent Right) (1) A patentee, an exclusive licensee or an interested person may request a trial to confirm the scope of a patent right. <Amended by Act No. 7871, Mar. 3, 2006> (2) Where a trial is requested to confirm the scope of a patent right under paragraph (1), the confirmation may apply to each claim if the patent contains two or more claims. Article 136 (Trial for Correction) (1) A patentee may request a trial to correct the specification or drawings in any of the following cases: Provided, That this shall not apply where an invalidation trial against the patent is pending before the Intellectual Property Tribunal: <Amended by Act No. 7871, Mar. 3, 2006; Act No. 9381, Jan. 30, 2009> 1. Where the scope of claims is reduced; 2. Where a clerical error is corrected; 3. Where an ambiguous statement is made to a clear statement.

(2) Correction of the specification or drawings under paragraph (1) shall be limited to the scope of the subject matter disclosed in the specification or drawings of the patented invention: Provided, That where a clerical error is corrected pursuant to paragraph (1) 2, it shall be limited to the scope of the subject matter of the specification or drawings initially attached to the application. <Amended by Act No. 9381, Jan. 30, 2009> (3) For purposes of correction of the specification or drawings under paragraph (1), the claim shall neither be extended nor modified. (4) A correction which is made in accordance with paragraph (1) and falls under paragraph (1) 1 and 2 shall be patentable at the time of filing of the patent application with regard to the matters which are described in the scope of claims after the correction. <Amended by Act No. 9381, Jan. 30, 2009> (5) Where a request for a trial for correction under paragraph (1) is deemed not to comply with any subparagraph of paragraph (1), to exceed the scope of paragraph (2), or to be in violation of paragraph (3) or (4), the administrative patent judge shall notify the petitioner of the reasons therefor and provide him/her an opportunity to submit his/her written opinion within a designated period. <Amended by Act No. 9381, Jan. 30, 2009> (6) A trial for correction under paragraph (1) may be requested even after the patent right has been extinguished: Provided, That this shall not apply where the patent has been invalidated by a trial decision. <Amended by Act No. 7871, Mar. 3, 2006> (7) No patentee shall request a trial for correction under paragraph (1) without the consent of an exclusive licensee, a pledgee or a non-exclusive licensee under Articles 100 (4) and 102 (1) of this Act and Article 10 (1) of the Invention Promotion Act. <Amended by Act No. 8197, Jan. 3, 2007; Act No. 8357, Apr. 11, 2007> (8) Where a trial decision allowing the specification or drawings of a patented invention to be corrected becomes final and conclusive, the patent application, laying-open of the application, decision to grant the patent or trial decision on patent and the establishment registration of the patent right shall be deemed to have been made on the basis of such corrected specification or drawings. (9) A petitioner may amend the corrected specification or drawings attached to the written request prescribed in Article 140 (5) only before issuance

of a notification of closure of trial proceedings under Article 162 (3) (where the trial proceedings are reopened under Article 162 (4), before a subsequent notification of the closure of trial proceedings is issued under Article 162 (3)). (10) Where a decision has been rendered to allow correction of the specification or drawings of the patented invention, the President of the Intellectual Property Tribunal shall notify the Commissioner of the Korean Intellectual Property Office of the corrected subject matter. (11) In cases where a notification is issued under paragraph (10), the Commissioner of the Korean Intellectual Property Office shall publish it in the Patent Gazette. [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 137 (Trial for Invalidation of Correction) (1) An interested party or an examiner may request a trial for an invalidation of a correction, where the correction of the specification or drawings of a patented invention under Article 133-2 (1) or 136 (1) has been made in violation of any of the following: <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8197, Jan. 3, 2007; Act No. 9381, Jan. 30, 2009> 1. Any subparagraph of Article 136 (1); 2. Article 136 (2) through (4) (including cases where the said provisions shall apply mutatis mutandis under Article 133-2 (4)). (2) Article 133 (2) and (4) shall apply mutatis mutandis to requests for trial under paragraph (1). (3) A defendant in an invalidation trial under paragraph (1) may request corrections of the specification or drawings of a patented invention only in a case falling under any subparagraph of Article 136 (1) within the term designated under Article 147 (1) or the latter part of Article 159 (1). <Newly Inserted by Act No. 6411, Feb. 3, 2001; Act No. 9381, Jan. 30, 2009> (4) Article 133-2 (3) and (4) shall apply mutatis mutandis to requests for correction under paragraph (3). In such cases, "Article 133 (1)" in Article 133-2 (3) shall be construed as "Article 137 (1)." <Newly Inserted by Act No. 6411, Feb. 3, 2001; Act No. 8197, Jan. 3, 2007> (5) Where a trial decision to invalidate a correction under paragraph (1) has become final and conclusive, the correction shall be deemed never to have been made. Article 138 (Trial for Granting Non-exclusive License)

(1) If a patentee, or exclusive or non-exclusive licensee, intends to obtain permission to exercise the right provided for in Article 98, and if the other party concerned refuses to grant the permission without justifiable grounds or it is not possible to obtain such permission, the said patentee or exclusive or non-exclusive licensee may request a trial for the grant of a non-exclusive license having the scope necessary to work the patented invention. (2) Where a request under paragraph (1) has been made, a non-exclusive license shall be granted only where the patented invention of the later application constitutes any important technical advance having substantial economical value in comparison with the other party's patented invention or registered utility model for which an application was filed prior to the filing date of the later application. <Amended by Act No. 6411, Feb. 3, 2001> (3) If a person who has granted a non-exclusive license under paragraph (1) needs to work the patented invention of the person who has been granted such non-exclusive license, and if the latter refuses to grant permission or if it is impossible to obtain such permission, the former may request a trial for the grant of a non-exclusive license within the scope of the patented invention which he/she intends to work by obtaining such license. (4) A non-exclusive licensee under paragraphs (1) and (3) shall pay consideration to the patentee, owner of the utility model right, owner of the design right, or exclusive licensee thereof: Provided, That if the non-exclusive licensee is unable to make payment for reasons beyond his/her control, the consideration shall be deposited. <Amended by Act No. 7289, Dec. 31, 2004> (5) No non-exclusive licensee under paragraph (4) shall work the patented invention, registered utility model or registered design, or similar design without payment of consideration or deposit thereof. <Amended by Act No. 4594, Dec. 10, 1993; Act No. 7289, Dec. 31, 2004> Article 139 (Request, etc. for Joint Trial) (1) Where two or more persons request an invalidation trial under Articles 133 (1), 134 (1) and (2) and 137 (1) or a trial to confirm the scope of a patent right under Article 135 (1), the request may be made jointly.<Amended by Act No. 11117, Dec. 2, 2011> (2) Where a trial is requested against any of the joint owners of a patent right, all the joint owners shall be made defendants. (3) Where joint owners of a patent right or of a right to obtain a patent

request a trial concerning the right under joint ownership, the request shall be made jointly by all of the owners. (4) Where there are grounds for the suspension of trial proceedings which apply to one of the requesters under paragraph (1) or (3) or one of the defendants under paragraph (2), the suspension shall be effective against all of them. Article 140 (Formal Requirements of Request for Trial) (1) A person who intends to request a trial shall submit a written request stating the following matters to the President of the Intellectual Property Tribunal: <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> 1. Name and domicile of a person (if the person is a juristic person, its title and the location of its place of business); 1-2. The name and domicile, or location of place of business, of the representative, if designated (if the representative is a patent corporation, its title, location of office and designated patent attorney's name); 2. Identification of the trial case; 3. The purport of the request and the grounds therefor. (2) No amendment to a request for trial submitted under paragraph (1) shall be made in the intent or purpose thereof: Provided, That this shall not apply when such amendment falls under any of the following subparagraphs: <Amended by Act No. 8197, Jan. 3, 2007; Act No. 9381, Jan. 30, 2009> 1. Where an amendment (including an addition) is made to correct a statement of a patentee from among the persons concerned pursuant to paragraph (1) 1; 2. Where a ground for request under paragraph (1) 3 is amended; 3. At a trial requested by a patentee or an exclusive licensee as a petitioner to confirm the scope of a patent right, the specification or drawings of the invention subject to confirmation on the written request for a trial is amended by the petitioner in order to make it identical with the invention which is on the working by the defendant, in cases where the defendant insists that the specification or drawings of the invention subject to confirmation on the written request for a trial (referring to the defendant's invention claimed by the petitioner) are different from the invention which is on the working by

himself/herself. (3) When a trial is requested to confirm the scope of a patent right under Article 135 (1), the specification capable to be compared with the patented invention and the relevant drawings shall be attached to the written request. <Amended by Act No. 6411, Feb. 3, 2001> (4) A written request for a trial for the grant of a non-exclusive license under Article 138 (1) shall, in addition to the particulars referred to in paragraph (1), state the following: <Amended by Act No. 5080, Dec. 29, 1995; Act No. 7289, Dec. 31, 2004> 1. The number and title of his/her patent which is required to be worked; 2. The number, title and date of the other party's patent, registered utility model or registered design to be worked; 3. The scope, duration and consideration for the non-exclusive license for a patented invention, registered utility model or registered design. (5) When a trial for amendment under Article 136 (1) is requested, the amended specification or drawings shall be attached to the written request for trial. <Amended by Act No. 6411, Feb. 3, 2001> Article 140-2 (Formal Requirements of Request for Trial against Decision to Reject Patent Application) (1) Notwithstanding Article 140 (1), a person who intends to request a trial against a decision to reject a patent application under Article 132-3 shall, submit a written request stating the following matters to the President of the Intellectual Property Tribunal: <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 9381, Jan. 30, 2009> 1. The name and domicile of a petitioner (if the petitioner is a juristic person, its title and the location of its place of business); 1-2. The name and domicile, or location of place of business, of the representative, if designated (if the representative is a patent corporation, its title, location of office and designated patent attorney's name); 2. The filing date and file number of the application; 3. The title of the invention; 4. The date of the decision; 5. The identification of the trial case; 6. The purport of the request and the grounds therefor. (2) Where a written request for a trial submitted pursuant to paragraph (1) is amended, the gist thereof shall not be changed: Provided, That this shall

not apply where such amendment falls under any of the following subparagraphs: <Newly Inserted by Act No. 9381, Jan. 30, 2009> 1. Where an amendment (including an addition) is made to correct a statement of a petitioner pursuant to paragraph (1) 1; 2. Where a ground for request pursuant to paragraph (1) 6 is amended. (3) Deleted. <by Act No. 9381, Jan. 30, 2009> [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 141 (Rejection of Request for Trial) (1) The presiding administrative patent judge shall order an amended submission within a specified period where any of the following subparagraphs applies: <Amended by Act No. 6411, Feb. 3, 2001> 1. Where a request for trial does not comply with Article 140 (1) and (3) through (5) or 140-2 (1); 2. Where a procedure relating to a trial falls under any of the following cases: (a) Where the procedure is not in compliance with Article 3 (1) or 6; (b) Where fees required in accordance with Article 82 have not been paid; (c) Where the procedure is not in compliance with the formalities specified in this Act or any order thereunder. (2) Where a person who has been ordered to make an amended submission under paragraph (1) fails to do so within the specified period, the presiding administrative patent judge shall reject the request for trial by decision. <Amended by Act No. 6411, Feb. 3, 2001> (3) A decision to reject a request for trial under paragraph (2) shall be in writing and shall state the grounds therefor. (4) through (6) Deleted. <by Act No. 4892, Jan. 5, 1995> Article 142 (Dismissal of Request for Trial containing Incurable Defects by Trial Decision) If a request for a trial contains unlawful defects which cannot be corrected by amendment, such request may be rejected by a ruling without providing the defendant an opportunity to submit a written reply. Article 143 (Administrative Patent Judges) (1) When a trial is requested, the President of the Intellectual Property Tribunal shall direct administrative patent judges to hear the case. <Amended by Act No. 4892, Jan. 5, 1995> (2) The qualifications of administrative patent judges shall be prescribed by

Presidential Decree. <Amended by Act No. 4892, Jan. 5, 1995> (3) Administrative patent judges shall conduct their official trial duties in an independent manner. <Amended by Act No. 4892, Jan. 5, 1995> Article 144 (Designation of Administrative Patent Judges) (1) For each trial, the President of the Intellectual Property Tribunal shall designate administrative patent judges constituting a board for trial under Article 146. <Amended by Act No. 4892, Jan. 5, 1995> (2) When any administrative patent judge designated in accordance with paragraph (1) is unable to participate in the trial, the President of the Intellectual Property Tribunal may allow another administrative patent judge to do so. <Amended by Act No. 4892, Jan. 5, 1995> Article 145 (Presiding Administrative Patent Judge) (1) The President of the Intellectual Property Tribunal shall select one of the administrative patent judges designated under Article 144 (1) as the presiding administrative patent judge. <Amended by Act No. 4892, Jan. 5, 1995> (2) The presiding administrative patent judge shall preside over all matters relating to the trial. Article 146 (Board for Trial) (1) A trial shall be conducted by a board of three or five administrative patent judges. <Amended by Act No. 4892, Jan. 5, 1995> (2) The board referred to in paragraph (1) shall make its decisions by a majority vote. (3) The consultations of the administrative patent judges shall not be open to the public. Article 147 (Submission of Written Response, etc.) (1) When a trial has been requested, the presiding administrative patent judge shall serve a copy of the written request on the defendant and shall provide him/her an opportunity to submit a written response within a designated deadline. (2) Upon receipt of a written response under paragraph (1), the presiding administrative patent judge shall serve a copy of the response on the petitioner. (3) The presiding administrative patent judge may directly examine the parties in relation to the trial. Article 148 (Exclusion of Administrative Patent Judges) In any of the following cases, an administrative patent judge shall be

precluded from exercising his/her functions in a trial: <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7427, Mar. 31, 2005; Act No. 7871, Mar. 3, 2006> 1. Where the administrative patent judge or his/her spouse or ex-spouse is a party or intervenor; 2. Where the administrative patent judge is or was a relative of a party or intervenor; 3. Where the administrative patent judge is or was a legal representative of a party or intervenor; 4. Where the administrative patent judge has become a witness or expert witness or was an expert witness; 5. Where the administrative patent judge is or was a representative of a party or intervenor; 6. Where the administrative patent judge has participated as an examiner or administrative patent judge in a decision to grant a patent or a trial decision relating to the case; 7. Where the administrative patent judge has a direct interest. Article 149 (Request for Exclusion) Where grounds for preclusion under Article 148 exist, a party or intervenor may request the exclusion of an administrative patent judge. Article 150 (Challenge of Administrative Patent Judges) (1) Where there are circumstances wherein the participation of an administrative patent judge would compromise the fairness of the proceedings in a trial, such administrative patent judge may be challenged by a party or intervenor. (2) After a party or intervenor has made a written or oral statement with regard to the case before a administrative patent judge, he/she may not challenge the administrative patent judge: Provided, That the same shall not apply where the party or intervenor did not know that there was a ground for challenge or where a ground for challenge arose subsequently. Article 151 (Indication of Grounds for Exclusion or Challenge) (1) A person who presents a motion for exclusion or challenge under Articles 149 and 150 shall submit a document stating the grounds therefor to the President of the Intellectual Property Tribunal: Provided, That in an oral trial examination, an oral challenge may be made. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> (2) The underlying causes for exclusion or challenge shall be substantiated within three days from the date the motion was presented.

Article 152 (Decision on Petition for Exclusion or Challenge) (1) A decision on a petition for exclusion or challenge shall be made by a trial. (2) No administrative patent judge subject to the exclusion or challenge motion shall participate in the trial of the request: Provided, That he/she may state his/her opinion. (3) A decision made under paragraph (1) shall be in writing and shall state the grounds therefor. (4) No appeal shall be made against a decision made under paragraph (1). Article 153 (Suspension of Proceedings) When a motion for exclusion or challenge has been presented, the trial proceedings shall be suspended until a decision thereon has been made: Provided, That this shall not apply to the matters requiring urgent attention. Article 153-2 (Avoidance of Administrative Patent Judges) Where Article 148 or 150 applies to an administrative patent judge, he/she may avoid trial proceedings relating to the case with permission from the President of the Intellectual Property Tribunal. [This Article Newly Inserted by Act No. 6411, Feb. 3, 2001] Article 154 (Trial Proceedings, etc.) (1) Trial proceedings shall be conducted by oral hearing or documentary examination: Provided, That where a party requests an oral hearing, trial proceedings shall be conducted by oral hearing except where it is recognized that a decision can be made on the basis of a documentary examination alone. <Amended by Act No. 6411, Feb. 3, 2001> (2) Deleted. <by Act No. 6411, Feb. 3, 2001> (3) Oral hearings shall be conducted in public: Provided, That this shall not apply where public order or morality is likely to be injured thereby. <Amended by Act No. 6411, Feb. 3, 2001> (4) Where trial proceedings are conducted by oral hearings in accordance with paragraph (1), the presiding trial examiner shall designate the date and place thereof and serve a document containing such information on the parties and intervenors: Provided, That this shall not apply where the parties or intervenors to attend the case have already been notified. <Amended by Act No. 6411, Feb. 3, 2001> (5) With respect to the trial proceedings by oral hearings under paragraph (1), an official designated by the President of the Intellectual Property Tribunal shall, under the direction of the presiding administrative patent judge,

prepare a protocol setting forth the gist of the proceedings and other necessary matters for the date of each trial proceeding. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> (6) The presiding administrative patent judge and the official who has prepared the protocol under paragraph (5) shall sign the protocol and affix their seals thereto. (7) Articles 153, 154, and 156 through 160 of the Civil Procedure Act shall apply mutatis mutandis to protocols under paragraph (5). <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> (8) Articles 143, 259, 299 and 367 of the Civil Procedure Act shall apply mutatis mutandis to trials. <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> Article 155 (Intervention) (1) Any person having the right to request a trial under Article 139 (1) may intervene in the trial before the conclusion of the trial examination. (2) An intervenor under paragraph (1) may continue a trial even after the request for the trial has been withdrawn by the original party. (3) Any person having an interest in the result of a trial may intervene in the trial before the conclusion of the trial examination in order to assist one of the parties. (4) An intervenor under paragraph (3) may initiate and take part in any procedure relating to the trial. (5) Where there are grounds for suspension of a trial proceeding applicable to the intervenor under paragraph (1) or (3), the suspension shall also be effective against the original party. Article 156 (Request for Intervention and Ruling thereon) (1) A person intending to intervene in a trial shall submit a request for intervention to the presiding administrative patent judge. (2) The presiding administrative patent judge shall serve copies of the request for intervention on the parties and other intervenors and provide them an opportunity to submit written opinions within a designated deadline. (3) Where a request for intervention is made, the ruling thereon shall be made by a trial. (4) The ruling under paragraph (3) shall be in writing and shall state the grounds therefor. (5) No appeal shall be made against the ruling under paragraph (3). Article 157 (Taking and Preserving Evidence)

(1) With respect to a trial, evidence may be taken or preserved upon request of a party, intervenor or interested person, or ex officio. (2) The provisions of the Civil Procedure Act relating to taking and preserving evidence shall apply mutatis mutandis to taking and preserving evidence under paragraph (1): Provided, That the administrative patent judge may not impose a fine for negligence, order compulsory appearance, or require the deposit of money as a security. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 7871, Mar. 3, 2006> (3) A request to preserve evidence shall be made to the President of the Intellectual Property Tribunal prior to a request for trial and to the presiding administrative patent judge of the case while the trial is pending. <Amended by Act No. 4892, Jan. 5, 1995> (4) Where a motion for preservation of evidence has been made under paragraph (1) prior to a request for trial, the President of the Intellectual Property Tribunal shall designate an administrative patent judge to be responsible for the preservation of evidence. <Amended by Act No. 4892, Jan. 5, 1995> (5) Where evidence has been taken or preserved ex officio under paragraph (1), the presiding administrative patent judge shall serve the result thereof on the parties, intervenors, and interested persons and shall provide them an opportunity to submit written opinions within a designated deadline. Article 158 (Continuation of Trial Proceedings) Notwithstanding the failure of a party or intervenor to take any proceedings within a statutory period or designated deadline, or failure to appear on the designated date in accordance with Article 154 (4), the presiding administrative patent judge may proceed with the trial proceedings. Article 159 (Ex Officio Trial Examination) (1) Grounds which have not been pleaded by a party or intervenor in a trial may be examined. In such cases, the parties and intervenors shall be provided an opportunity to state their opinions regarding such grounds, within a designated deadline. <Amended by Act No. 6411, Feb. 3, 2001> (2) In a trial, no examination may be made on the purpose of a claim not requested by the petitioner. <Newly Inserted by Act No. 4594, Dec. 10, 1993> Article 160 (Joint or Separate Conduct of Trial Proceedings or Trial Decisions) An administrative patent judge may jointly or separately conduct trial proceedings or trial decisions with regard to two or more trial proceedings where one or both parties thereto are the same.

Article 161 (Withdrawal of Request for Trial) (1) A request for trial may be withdrawn by a petitioner before the trial decision has become final and conclusive: Provided, That the consent of the defendant for the withdrawal shall be obtained where a response has already been submitted. (2) When a request for a trial for invalidating a patent under Article 133 (1) or for confirming the scope of a patent right under Article 135 has been made with regard to two or more claims, the request may be withdrawn for each of the claims. (3) Where a request for a trial or a request for each of the claims is withdrawn in accordance with paragraph (1) or (2), the request shall be deemed never to have been made. <Amended by Act No. 6411, Feb. 3, 2001> Article 162 (Trial Decisions) (1) Except as otherwise provided for, a trial shall be closed when a trial decision has been made. (2) The trial decision under paragraph (1) shall be in writing, signed and sealed by the administrative patent judges who have rendered it, and shall state the following: <Amended by Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001> 1. The number of the trial; 2. The name and domicile of the parties and intervenors (if a juristic person, its title and the place of business); 2-2. The name and domicile or place of business of the representative, if any (if the representative is a patent corporation, its title, location of office and designated patent attorney's name); 3. The identification of the trial case; 4. The text of the ruling (including the scope, duration and consideration of a non-exclusive license in trial cases under Article 138); 5. The grounds for the decision (including the purport and a summary of the grounds for the request); 6. The date of the ruling. (3) When a case has been thoroughly examined and is ready to be ruled, the presiding administrative patent judge shall notify the parties and intervenors thereof. (4) Even after notification of the closure of the trial examination under paragraph (3), the presiding administrative patent judge may, if necessary, reopen the examination upon the motion of a party or an intervenor or ex

officio. (5) The decision shall be rendered within twenty days following the date on which the closure of a trial examination is notified under paragraph (3). <Amended by Act No. 4594, Dec. 10, 1993> (6) When a trial decision or a ruling has been rendered, the presiding administrative patent judge shall serve a certified copy of the trial decision or the ruling on the parties, intervenors, and persons who have requested intervention to the trial, but have been rejected. <Amended by Act No. 4892, Jan. 5, 1995> Article 163 (Res Judicata) When a trial decision has become final and conclusive pursuant to this Act, with regard to the case, no person may demand the trial again on the basis of the same facts and evidence: Provided, That this shall not apply where the final and conclusive trial decision is a decision of rejection. <Amended by Act No. 6411, Feb. 3, 2001> Article 164 (Relations to Litigation) (1) Procedures of a trial may, if necessary, be suspended until the trial decision of another trial relevant to the trial becomes final and conclusive or litigation procedures thereon are concluded. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 7871, Mar. 3, 2006> (2) The court may, if deemed necessary for litigation procedures, suspend the litigation procedures until a trial decision on the patent becomes final and conclusive. (3) Where a legal action against an infringement on a patent right or exclusive license is instituted, the relevant court shall notify the President of the Intellectual Property Tribunal of its purport. This shall also apply where the litigation procedures have been terminated. <Newly Inserted by Act No. 6411, Feb. 3, 2001> (4) Where a trial for invalidating a patent, etc. is requested in response to a legal action against an infringement on a patent right or exclusive license under paragraph (3), the President of the Intellectual Property Tribunal shall notify the relevant court under paragraph (3) of its purport. This shall also apply where a decision of rejection, a request for trial, or a withdrawal of a request has occurred. <Newly Inserted by Act No. 6411, Feb. 3, 2001> Article 165 (Costs of Trial) (1) The imposition of costs in connection with a trial under Articles 133 (1),

134 (1) and (2), 135 and 137 (1) shall be decided by a trial decision in the event the trial is terminated by a trial decision, or by a decision in the trial where the trial is terminated in a manner, other than by a trial decision. <Amended by Act No. 11117, Dec. 2, 2011> (2) Articles 98 through 103, 107 (1) and (2), 108, 111, 112, and 116 of the Civil Procedure Act shall apply mutatis mutandis to the costs in connection with the trial under paragraph (1). <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> (3) The costs in connection with the trial under Article 132-3, 136 or 138 shall be borne by a petitioner. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (4) Article 102 of the Civil Procedure Act shall apply mutatis mutandis to the costs borne by the petitioner under paragraph (3). <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> (5) The President of the Intellectual Property Tribunal shall decide the costs of a trial upon request by an interested party, after the trial decision or the ruling has become final and conclusive. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> (6) The extent, amount, and payment of the costs of a trial, as well as the payment of the costs for performing any procedural acts in the trial, shall be governed by the relevant provisions of the Costs of Civil Procedure Act unless they are incompatible. <Amended by Act No. 7871, Mar. 3, 2006> (7) The fees which a party has paid or will pay to a patent attorney who represents the party in the trial shall be deemed an element of the costs in connection with a trial to determine the extent of the costs by the Commissioner of the Korean Intellectual Property Office. In such cases, even if two or more patent attorneys have represented a person for the trial, it shall be deemed represented by one patent attorney. Article 166 (Title of Enforcement of Trial Costs or Consideration) A final and conclusive ruling on the costs of a trial decided by the President of the Intellectual Property Tribunal or on the consideration decided by an administrative patent judge, to be paid under this Act, shall have the same effect as an enforceable title of liability. In such cases, the enforceable writ, which has the force of execution, shall be given by an official of the Intellectual Property Tribunal. [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 167 Deleted. <by Act No. 4892, Jan. 5, 1995>

Article 168 Deleted. <by Act No. 4892, Jan. 5, 1995> Article 169 Deleted. <by Act No. 4892, Jan. 5, 1995> Article 170 (Mutatis Mutandis Application of Provisions on Examination to Trial against Decision to Reject Patent Application) (1) Article 47 (1) 1 and 2, Articles 51, 63 and 66 shall apply mutatis mutandis to a trial against a decision to reject a patent application. In such cases, "Article 47 (1) 2 and 3" in the main sentence of Article 51 (1) shall be construed as "Article 47 (1) 2", and "amendment" in the main sentence of Article 51 (1) shall be construed as "amendment (excluding such amendments made before a request for a trial against a decision to reject a patent application referred to in Article 132-3)." <Amended by Act No. 9381, Jan. 30, 2009> (2) Article 63, which applies mutatis mutandis under paragraph (1), shall apply where grounds for rejection have been found that are different from those in the examiner's original decision to reject a patent application. <Amended by Act No. 6411, Feb. 3, 2001> [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 171 (Special Provisions of Trial against Decision to Reject Patent Application) Articles 147 (1) and (2), 155 and 156 shall not apply to a trial against a decision to reject a patent application or against a decision to reject to register an extension of the term of a patent right. [This Article Wholly Amended by Act No. 9381, Jan. 30, 2009] Article 172 (Effect of Examination Proceedings) Patent-related procedures previously taken during the course of an examination shall also remain effective in a trial against a decision to reject a patent application or against a decision to reject to register an extension of the term of a patent right. [This Article Wholly Amended by Act No. 7871, Mar. 3, 2006] Article 173 Deleted. <by Act No. 9381, Jan. 30, 2009> Article 174 Deleted. <by Act No. 9381, Jan. 30, 2009> Article 175 Deleted. <by Act No. 9381, Jan. 30, 2009> Article 176 (Cancellation of Decision to Reject Patent Application, etc.) (1) Where an administrative patent judge deems that the request for a trial under Articles 132-3 is well-grounded, he/she shall make a trial decision to cancel the decision to reject a patent application or to reject the registration of an extension of term of a patent right. <Amended by Act No.

5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (2) When any decision to reject a patent or to reject the registration of extension of term of a patent right is revoked pursuant to paragraph (1) in a trial, a trial decision may be made to remand the case for examination proceedings. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 11117, Dec. 2, 2011> (3) In ruling on a trial under paragraphs (1) and (2), the reasons constituting the basis for the reversal shall bind the examiner with respect to the case. [This Article Wholly Amended by Act No. 4892, Jan. 5, 1995] Article 177 Deleted. <by Act No. 4892, Jan. 5, 1995> CHAPTER Ⅷ RETRIAL Article 178 (Request for Retrial) (1) Any party may request a retrial against a trial decision which has become final and conclusive. (2) Articles 451 and 453 of the Civil Procedure Act shall apply mutatis mutandis to requests for retrial under paragraph (1). <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> Article 179 (Request for Retrial on Trial Decision on Fraudulent Acts) (1) Where the parties in a trial acted in collusion for the purpose of causing a trial decision to be rendered which damages the rights or interests of a third party, the third party may request a retrial against the final and conclusive trial decision. <Amended by Act No. 4892, Jan. 5, 1995> (2) In cases of a request for a retrial under paragraph (1), the parties of the trial shall be joint defendants. <Amended by Act No. 4892, Jan. 5, 1995> Article 180 (Period for Requesting Retrial) (1) A retrial shall be requested within thirty days from the date on which the petitioner becomes aware of the grounds for the retrial after the trial ruling became final and conclusive. (2) Where a retrial is requested on the ground of defects in the authority of representative, the period provided for in paragraph (1) shall be counted from the day following the date on which the petitioner or his/her legal representative becomes aware that the trial decision had been rendered, by means of service of the certified copy of such ruling. (3) No request for a retrial shall be made after the expiration of three years from the date on which the trial ruling became final and conclusive.

(4) Where grounds for a retrial arise after the trial decision has become final and conclusive, the period prescribed in paragraph (3) shall be counted from the day following the date on which the grounds first arose. (5) Paragraphs (1) and (3) shall not apply to a request for a retrial made on the grounds that the trial ruling conflicts with a final and conclusive trial decision previously rendered. Article 181 (Restriction on Effects of Patent Rights Restored by Retrial) (1) Patent rights shall not be effective to any product that was imported into, manufactured or acquired in good faith, in the Republic of Korea after the trial decision became final and conclusive but before a request for a retrial has been registered in any of the following cases: <Amended by Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> 1. Where the patent right whose patent or registration of term extension was concluded to be invalid has been restored by a retrial; 2. Where a trial decision to the contrary through a retrial has become final and conclusive after a trial decision that a product was outside the scope of the patent right became final and conclusive; 3. Where the establishment of a patent right or the extension of a patent term with respect to a patent application or application for registration of extension of patent term, previously refused by a trial decision, has been registered through a retrial. (2) Patent rights under any subparagraph of paragraph (1) shall not extend to any of the following acts: <Amended by Act No. 5080, Dec. 29, 1995> 1. Working the invention in good faith after a trial decision became final and conclusive but before the registration of a request for retrial; 2. In cases of a patent for an invention of a product, manufacturing, assigning, leasing, importing, or offering for to assign or lease such articles as to be used exclusively for the manufacture of the products, in good faith, after trial decision became final and conclusive but before the registration of a request for retrial; 3. In cases of a patent for an invention of a process, manufacturing, assigning, leasing, importing, offering to assign or lease such articles as to be used exclusively for the working of the process, in good faith, after a trial decision became final and conclusive but before the registration of a request for retrial. Article 182 (Non-exclusive License for Prior User of Patent Right Restored

through Retrial) For cases which fall under any subparagraph of Article 181 (1), any person who has, in good faith, commercially or industrially worked the invention in the Republic of Korea, or has been making preparations therefor, after a trial ruling became final and conclusive but prior to the registration of a request for retrial, such person shall have a non-exclusive license on the patent right to the extent of the invention and of the purpose of business which is being worked or of which the preparations for working are being made. Article 183 (Non-exclusive License for Person Deprived of Non-exclusive License by Retrial) (1) After a decision to grant a non-exclusive license under Article 138 (1) or (3) has become final and conclusive, where a decision to the contrary is rendered through a retrial, any person who has, in good faith, commercially or industrially worked the invention in the Republic of Korea or has been making preparations therefor under a non-exclusive license, prior to the registration of a request for retrial, shall have a non-exclusive license on the patent right or on the exclusive license existing at the time the decision at the retrial becomes final and conclusive, to the extent of the purpose of his/her business and to the scope of the invention under the original non-exclusive license. (2) Article 104 (2) shall apply mutatis mutandis to cases under paragraph (1). Article 184 (Mutatis Mutandis Application of Provisions on Trial to Retrial) The provisions relating to the procedures of a trial shall apply mutatis mutandis to procedures of a retrial on a trial, unless they are not compatible. [This Article Wholly Amended by Act No. 4892, Jan. 5, 1995] Article 185 (Mutatis Mutandis Application of the Civil Procedure Act) Article 459 (1) of the Civil Procedure Act shall apply mutatis mutandis to requests for retrial. <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> CHAPTER Ⅸ LITIGATION Article 186 (Action against Trial Decision, etc.) (1) The Patent Court of Korea shall have original jurisdiction over any action against a trial decision or dismissal of a request for a trial or retrial. <Amended by Act No. 6411, Feb. 3, 2001> (2) The action prescribed in paragraph (1) may be brought by a person who

is a party, intervenor or any person who has requested for intervention in the trial but has been rejected. (3) The action prescribed in paragraph (1) shall be brought within thirty days from the date of receipt of a certified copy of the trial decision or ruling. (4) The period prescribed in paragraph (3) shall be invariable. (5) With respect to an invariable period as referred to in paragraph (4), the presiding administrative patent judge may, ex officio, determine any additional period for the benefit of a person residing in a remote area or area with poor transportation. <Newly Inserted by Act No. 5576, Sep. 23, 1998> (6) No action may be brought unless it relates to matters for which a trial may be requested. (7) No action under paragraph (1) on a trial decision on consideration under Article 162 (2) 4 and a trial decision or ruling on trial costs under Article 165 (1) may be brought independently. (8) Any person who has received a ruling from the Patent Court may appeal to the Supreme Court. [This Article Wholly Amended by Act No. 4892, Jan. 5, 1995] Article 187 (Qualification for Defendants) In an action under Article 186 (1), the Commissioner of the Korean Intellectual Property Office shall be a defendant: Provided, That in cases of a trial or trial decisions on a retrial under Articles 133 (1), 134 (1) and (2), 135 (1), 137 (1), and 138 (1) and (3) or retrial, the petitioner or the defendant thereof shall be a defendant. <Amended by Act No. 11117, Dec. 2, 2011> [This Article Wholly Amended by Act No. 4892, Jan. 5, 1995] Article 188 (Notification of Institution of Action and Service of Original Copy of Judgment) (1) When an action under Article 186 (1) is instituted or an appeal under Article 186 (8) is filed, the court shall promptly notify the President of the Intellectual Property Tribunal thereof. <Amended by Act No. 6411, Feb. 3, 2001> (2) When an action under the proviso to Article 187 (1) has been concluded, the court shall serve an original copy of a judgment on the President of the Intellectual Property Tribunal. [This Article Wholly Amended by Act No. 4892, Jan. 5, 1995] Article 188-2 (Exclusion, Challenge or Avoidance of Technical Examiner)

(1) Article 148 of this Act, Articles 42 through 45, 47 and 48 of the Civil Procedure Act shall apply mutatis mutandis to exclusion or challenge of technical examiners under Article 54-2 of the Court Organization Act. <Amended by Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> (2) A decision on a request for exclusion or challenge of a technical examiner under paragraph (1) shall be made by a trial of court to which the technical examiner belongs. (3) If there are justifiable grounds for exclusion or challenge, any technical examiner may avoid trial proceedings relating to the case with permission from the President of the Intellectual Property Tribunal. [This Article Newly Inserted by Act No. 4892, Jan. 5, 1995] Article 189 (Revocation of Trial Decision or Ruling) (1) Where the court deems that an action instituted under Article 186 (1) is well-grounded, it shall revoke the relevant trial decision or ruling by judgment. (2) Where a reversal of trial decision or ruling becomes final and conclusive under paragraph (1), the administrative patent judge shall review the case and make a trial decision or ruling. (3) The reasons for a judgment on an action under paragraph (1) which constitute the basis for the revocation shall bind the Intellectual Property Tribunal with respect to the case. [This Article Wholly Amended by Act No. 4892, Jan. 5, 1995] Article 190 (Action against Decision on Compensation or Consideration) (1) A person dissatisfied with a decision and ruling or an adjudication regarding the compensation or consideration under Article 41 (3) and (4), 106 (3), 106-2 (3), 110 (2) 2, and 138 (4) may bring an action before the court. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 9985, Jan. 27, 2010> (2) An action under paragraph (1) shall be filed within thirty days from the date a certified copy of the decision and ruling or adjudication is served. <Amended by Act No. 6411, Feb. 3, 2001> (3) The period prescribed in paragraph (2) shall be invariable. Article 191 (Defendant in Action relating to Compensation or Consideration) In an action under Article 190, any of the following persons shall be a defendant: <Amended by Act No. 7289, Dec. 31, 2004; Act No. 9985, Jan. 27, 2010> 1. The government agency or applicant liable for payment of

compensation in cases of compensation under Article 41 (3) and (4); 2. The government agency, patentee, exclusive licensee or non-exclusive licensee liable for payment of compensation in cases of compensation under Article 106 (3) and 106-2 (3); 3. The non-exclusive licensee, exclusive licensee, patentee or owner of a utility model or a registered design in cases of consideration under Articles 110 (2) 2 and 138 (4). Article 191-2 (Remuneration for Patent Attorney and Costs of Litigation) With respect to remuneration to be paid to a patent attorney who performs a lawsuit on behalf of a party, Article 109 of the Civil Procedure Act shall apply mutatis mutandis. In such cases, "lawyer" shall be construed as "patent attorney." [This Article Newly Inserted by Act No. 7871, Mar. 3, 2006] CHAPTER Ⅹ INTERNATIONAL APPLICATIONS UNDER PATENT COOPERATION TREATY

SECTION 1 International Application Procedure

Article 192 (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 Intellectual Property Office: <Amended by Act No. 4541, Mar. 6, 1993; Act No. 4594, Dec. 10, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> 1. A national of the Republic of Korea; 2. A foreigner who has a domicile or place of business in the Republic of Korea; 3. A person who does not fall under subparagraph 1 or 2 but who files an international application under the name of a representative falling under subparagraph 1 or 2; 4. A person who meets the requirements prescribed by Ordinance of the Ministry of Knowledge Economy.

Article 193 (International Application) (1) A person intending to file an international application shall submit to the Commissioner of the Korean Intellectual Property Office a request, description, the scope of claims, drawings (where required) and an abstract prepared in a language prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 5576, Sep. 23, 1998; Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008> (2) The request under paragraph (1) shall contain the following: <Amended by Act No. 4594, Dec. 10, 1993; Act No. 7871, Mar. 3, 2006> 1. A petition to the effect that the international application be proc essed according to the Patent Cooperation Treaty; 2. The designation of the contracting states of the Patent Cooperation Treaty in which protection for the invention is desired on the basis of the international application; 3. If the applicant intends to obtain a regional patent referred to in Article 2 (iv) of the Patent Cooperation Treaty, an indication to that effect; 4. The name or title, domicile or place of business, and nationality, of the applicant; 5. The name and domicile or place of business of the representative, if any; 6. The title of the invention; 7. The name and domicile, or place of business, of the inventor (limited to cases 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) through (4) concerning an international application shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008>

Article 194 (Recognition, etc. of International Filing Date) (1) The Commissioner of the Korean Intellectual 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 "international filing date"): Provided, That this shall not apply to the following cases: <Amended by Act No. 7871, Mar. 3, 2006> 1. Where the applicant does not meet the requirements prescribed in Article 192; 2. Where the international application is not in the language prescribed under Article 193 (1); 3. Where the international application does not contain a description and scope of claims under Article 193 (1); 4. Where the elements listed in Article 193 (2) 1 and 2 and the name or title of the applicant are not indicated. (2) If an international application falls under the proviso to paragraph (1), the Commissioner of the Korean Intellectual Property Office shall order the applicant to amend the defect, in writing, within a designated deadline. <Amended by Act No. 4594, Dec. 10, 1993> (3) If an international application refers to a drawing which is not included in that application, the Commissioner of the Korean Intellectual Property Office shall notify the applicant thereof. (4) The Commissioner of the Korean Intellectual Property Office shall deem the international filing date as the date of receipt of the amendment in writing when the applicant ordered to amend under paragraph (2) has complied with the invitation within the designated deadline, or as the date of receipt of the drawings when the applicant notified under paragraph (3) has furnished the drawings within the deadline prescribed by Ordinance of the Ministry of Knowledge Economy: Provided, That if the applicant notified under paragraph (3) has not furnished the drawings within the deadline prescribed by Ordinance of the Ministry of Knowledge Economy, reference to the said drawings shall be considered nonexistent. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 4594, Dec. 10, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> Article 195 (Order to Amend) The Commissioner of the Korean Intellectual Property Office shall order the applicant to make amendments within a designated deadline, if the international application falls under any of the following subparagraphs:

<Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> 1. Where the title of the invention is not included; 2. Where an abstract is not submitted; 3. Where it violates Article 3 or 197 (3); 4. Where it violates the requirements prescribed by Ordinance of the Ministry of Knowledge Economy. Article 196 (International Application Considered to have been Withdrawn, etc.) (1) An international application shall be considered to have been withdrawn if it falls under any of the following subparagraphs: <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008> 1. Where an applicant ordered to make an amendment under Article 195 has failed to do so within the designated deadline; 2. Where an official fee with regard to an international application has not been paid within the deadline prescribed by Ordinance of the Ministry of Knowledge Economy, and Article 14 (3) (a) of the Patent Cooperation Treaty therefore becomes applicable; 3. 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 subparagraph of the proviso to Article 194 (1), within the deadline prescribed by Ordinance of the Ministry of Knowledge Economy. (2) If part of an official fee payable with regard to an international application has not been paid within the deadline prescribed by Ordinance of the Ministry of Knowledge Economy, and Article 14 (3) (b) of the Patent Cooperation Treaty therefore becomes applicable, the designation of the designated state which has not paid such official fee shall be considered to have been withdrawn. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008> (3) If an international application, or designation of a designated state, is considered to have been withdrawn under paragraphs (1) and (2), the Commissioner of the Korean Intellectual Property Office shall notify the applicant of such fact. Article 197 (Common Representative, etc.) (1) Where two or more applicants jointly file an international application, the

procedures under Articles 192 through 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 by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (3) Where an applicant intends to allow a representative to initiate a procedure under paragraph (1), he/she shall appoint a patent attorney as his/her representative unless the procedure is initiated by a legal representative under Article 3. Article 198 (Official Fees) (1) An applicant for an international application shall pay an official fee. (2) Necessary matters for official fees, and proceedings and deadline of payment thereof under paragraph (1) shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> Article 198-2 (International Search and International Preliminary Examination) (1) The Korean Intellectual Property Office shall perform duties as an international search authority and as an international preliminary examination authority for an international application in accordance with a convention concluded with the International Bureau (hereinafter referred to as the "International Bureau") referred to in Article 2 (xix) of the Patent Cooperation Treaty. <Amended by Act No. 7871, Mar. 3, 2006; Act No. 9381, Jan. 30, 2009> (2) Details concerning the performance of duties as prescribed in paragraph (1) shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 8852, Feb. 29, 2008> [This Article Newly Inserted by Act No. 5576, Sep. 23, 1998]

SECTION 2 SpecialProvisionsonInternational Patent Applications

Article 199 (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 deemed a patent application filed on its international filing date. <Amended by Act No. 7871, Mar. 3, 2006> (2) Article 54 shall not apply to an international application deemed a patent application under paragraph (1) (hereinafter referred to as "international patent application"). Article 200 (Special Provisions concerning Inventions not Deemed to be Publicly Known, etc.) Notwithstanding Article 30 (2), any person intending to have Article 30 (1) 1 applied to the invention claimed in an international patent application may submit to the Commissioner of the Korean Intellectual Property Office a written statement stating the purport of such intention and a document proving the relevant fact within the period prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008> Article 201 (Translation of International Patent Application) (1) An applicant who has filed an international patent application in a foreign language shall submit to the Commissioner of the Korean Intellectual Property Office a Korean translation of the specification, scope of claims, drawings (only the text matter therein) and abstract filed on the international filing date within two years and seven months from the priority date (hereinafter referred as "priority date") as defined in Article 2 (xi) of the Patent Cooperation Treaty (hereinafter referred to as "period for submitting domestic documents"): Provided, That in cases where the said applicant has amended the claims under Article 19 (1) of the Patent Cooperation Treaty, he/she may substitute a Korean translation of the amended claims for the Korean translation of the claims filed on the international filing date. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 5576, Sep. 23, 1998; Act No. 6768, Dec. 11, 2002; Act No. 7871, Mar. 3, 2006> (2) If the translations of the specification and claims under paragraph (1) have not been submitted within the period for submitting domestic documents, the international patent application shall be deemed to have been withdrawn. (3) An applicant who has submitted the translation referred to in paragraph

(1) may submit a new translation to replace the prior translation within the period for submitting domestic documents: Provided, That this shall not apply where the applicant has made a request for examination. (4) Matters stated in the specification, claims and text matter of drawings of an international patent application filed on the international filing date, but not stated in the translation under paragraph (1) or (3) (hereinafter referred to as "translated version") submitted within the period for submitting domestic documents (or the date of the request for examination where the applicant has made such request within the said period; hereinafter referred to as "relevant date") shall be deemed not to have been stated in the specification and claims of the said international patent application filed on the international filing date or deemed to have no text in the drawings of such application. (5) An application of an international patent application submitted on the international filing date shall be deemed an application submitted under Article 42 (1). (6) The translated version of the specification, scope of claims, drawings and abstract of an international patent application (the specification, scope of claims, drawings and abstract submitted on the international filing date, in cases of an international patent application made in the Korean language) shall be deemed the specification, drawings and abstract submitted under Article 42 (2). <Amended by Act No. 5576, Sep. 23, 1998> (7) Article 204 (1) and (2) shall not apply where a Korean translation of the amended claims has been submitted pursuant to the proviso to paragraph (1). <Newly Inserted by Act No. 5329, Apr. 10, 1997> (8) Where the Korean translation for only the amended claims has been submitted pursuant to the proviso to paragraph (1), the claims submitted at the international filing date shall not be recognized. <Newly Inserted by Act No. 5329, Apr. 10, 1997> Article 202 (Special Provisions on Priority Claim by Patent Application, etc.) (1) Articles 55 (2) and 56 (2) shall not apply to an international patent application. (2) In applying Article 55 (4), "specification or drawings initially attached to the earlier application" shall be construed as "specification, scope of claims or drawings (only text matter thereof) submitted on the international filing date under Article 201 (1), and the translated version of the said documents under Article 201 (4) or drawings (excluding the

text matter thereof) of the international application submitted on the international filing date", and "laying open for public inspection" shall be construed as "international publication under Article 21 of the Patent Cooperation Treaty." <Amended by Act No. 7871, Mar. 3, 2006> (3) Where an earlier application is an international patent application or an application for registration of an international utility model pursuant to Article 34 (2) of the Utility Model Act, the following subparagraphs shall apply for the purposes of Articles 55 (1) and (3) through (5) and 56 (1): <Amended by Act No. 9381, Jan. 30, 2009> 1. "Specification or drawings initially attached to an application" in the main text of Article 55 (1), Article 55 (3) and the main text of Article 55 (5) shall be construed as "specification, scope of claims or drawings of an international application submitted on the international filing date"; 2. "Specification or drawings initially attached to an earlier application" in Article 55 (4) shall be construed as "specification, scope of claims or drawings of an international application submitted on the international filing date of an earlier application", and "laid open with respect to an earlier application" shall be construed as "published internationally pursuant to Article 21 of the Patent Cooperation Treaty with respect to the earlier application"; 3. "At the time of expiration of one year and three months from the filing date" in the main text of Article 56 (1) shall be construed as "at the time of expiration of one year and three months from the international filing date, or on the basic date pursuant to Article 201 (4) of this Act, or Article 35 (4) of the Utility Model Act, whichever comes later." (4) Where an earlier application pursuant to Article 55 (1) is an international application which becomes a patent application or application for registration of a utility model pursuant to Article 214 (4) of this Act, or Article 40 (4) of the Utility Model Act, the following subparagraphs shall apply for the purposes of Articles 55 (1) and (3) through (5) and 56 (1): <Amended by Act No. 9381, Jan. 30, 2009> 1. "Specification or drawings initially attached to an application" in the main text of Article 55 (1), Article 55 (3), and the main text of Article 55 (5) shall be construed as "specification, scope of claims, or drawings of an international application on the date which may have

been deemed the international filing date pursuant to Article 214 (4) of this Act, or Article 40 (4) of the Utility Model Act"; 2. "Specification or drawings initially attached to an earlier application" in Article 55 (4) shall be construed as "specification, scope of claims, or drawings of an international application of an earlier application on the date which may have been deemed the international filing date pursuant to Article 214 (4) of this Act, or Article 40 (4) of the Utility Model Act"; 3. "At the time of expiration of one year and three months from the filing date" in the main text of Article 56 (1) shall be construed as "at the time of expiration of one year and three months from the date which may have been deemed the international filing date pursuant to Article 214 (4) of this Act, or Article 40 (4) of the Utility Model Act, or when a decision is made pursuant to Article 214 (4) of this Act, or Article 40 (4) of the Utility Model Act, whichever comes later." Article 203 (Submission of Documents) (1) An applicant for an international patent shall submit to the Commissioner of the Korean Intellectual Property Office a document stating the following matters within the period for submitting domestic documents. In such cases, an applicant who has filed an international patent application in a foreign language shall submit a Korean translation under Article 201 (1), together with such document: <Amended by Act No. 6411, Feb. 3, 2001; Act No. 6768, Dec. 11, 2002> 1. The name and domicile of the applicant (if the applicant is a juristic person, its title and location of place of business); 2. The name and domicile or place of business of the representative, if any (if the representative is a patent corporation, its title, location of office and designated patent attorney's name); 3. Deleted; <by Act No. 6411, Feb. 3, 2001> 4. The title of the invention; 5. The name and domicile, or place of business of the inventor; 6. The international filing date and the international application number. (2) The Commissioner of the Korean Intellectual Property Office shall, in any of the following cases, order an amendment thereto designating a deadline: <Newly Inserted by Act No. 6768, Dec. 11, 2002> 1. Where a document under the former part of paragraph (1) is not submitted within the period for submitting domestic documents;

2. Where a document submitted under the former part of paragraph (1) is in violation of the formalities as specified by this Act or by an order made by this Act. (3) Where a person who receives an order for amendment under paragraph (2) fails to make such amendment within the designated deadline, the Commissioner of the Korean Intellectual Property Office may invalidate the international patent application concerned. <Newly Inserted by Act No. 6768, Dec. 11, 2002> Article 204 (Amendment after Receipt of International Search Report) (1) Where an applicant who filed an international patent application, after having received an international search report pursuant to Article 19 (1) of the Patent Cooperation Treaty, has amended the scope of claims of the international application, he/she shall submit the documents falling under any of the following subparagraphs to the Commissioner of the Korean Intellectual Property Office by the relevant date (where the relevant date is the date of request for examination of application, referring to such time when a request for examination of application is made; hereafter the same shall apply in this Article and Article 205): 1. In cases of an international application filed in a foreign language, the Korean translation of such amendment; 2. In cases of an international application filed in the Korean language, a copy of such amendment. (2) When the translation or a copy of the amendment has been submitted in accordance with paragraph (1), the scope of claims pursuant to Article 47 (1) shall be deemed to have been amended according to the translation or a copy of such amendment: Provided, That when the amendment (limited to cases of an international patent application filed in the Korean language) has been served on the Korean Intellectual Property Office by the relevant date pursuant to Article 20 of the Patent Cooperation Treaty, the scope of claims shall be deemed to have been amended according to such amendment. (3) Where an applicant who filed an international patent application has submitted a brief statement pursuant to Article 19 (1) of the Patent Cooperation Treaty to the International Bureau, he/she shall submit the documents falling under any of the following subparagraphs to the Commissioner of the Korean Intellectual Property Office by no later than the relevant date:

1. In cases of an international application filed in a foreign language, the Korean translation of such statement; 2. In cases of an international application filed in the Korean language, a copy of such statement. (4) Where an applicant who filed an international patent application has failed to comply with the formalities pursuant to paragraph (1) or (3) by the relevant date, the written amendment or statement pursuant to Article 19 (1) of the Patent Cooperation Treaty shall be deemed not to have been submitted: Provided, That this shall not apply when the written amendment or statement of an international application filed in the Korean language has been served on the Korean Intellectual Property Office by the relevant date pursuant to Article 20 of the Patent Cooperation Treaty. [This Article Wholly Amended by Act No. 9381, Jan. 30, 2008] Article 205 (Amendment before Preparation of International Preliminary Examination Report) (1) Where an applicant who filed an international patent application has amended the specification, scope of claims, and drawings of an international patent application pursuant to Article 34 (2) (b) of the Patent Cooperation Treaty, he/she shall submit the documents falling under any of the following subparagraphs to the Commissioner of the Korean Intellectual Property Office by the relevant date: 1. In cases of an international application filed in a foreign language, the Korean translation of such amendment; 2. In cases of an international application filed in the Korean language, a copy of such amendment. (2) When the translation or a copy of the amendment has been submitted pursuant to paragraph (1), the specification and drawings prescribed in Article 47 (1) shall be deemed to have been amended according to the translation or a copy of such amendment: Provided, That this shall not apply when the written amendment (limited to cases of an international patent application filed in the Korean language) has been served on the Korean Intellectual Property Office by the relevant date pursuant to Article 36 (3) (a) of the Patent Cooperation Treaty. (3) Where an applicant who filed an international patent application has failed to comply with the formalities pursuant to paragraph (1) by the relevant date, a written amendment pursuant to Article 34 (2) (b) of the Patent Cooperation Treaty shall be deemed not to have been submitted: Provided,

That this shall not apply when the written amendment (limited to cases of an international patent application filed in the Korean language) has been served on the Korean Intellectual Property Office by the relevant date pursuant to Article 36 (3) (a) of the Patent Cooperation Treaty. [This Article Wholly Amended by Act No. 9381, Jan. 30, 2009] Article 206 (Special Provisions on Patent Administrators for Overseas Residents) (1) Notwithstanding the provisions of Article 5 (1), an overseas resident applicant for an international patent may initiate a patent-related procedure application without a patent administrator by the relevant date. (2) An overseas resident who has submitted a translation of an application under paragraph (1) shall appoint a patent administrator and report such fact to the Commissioner of the Korean Intellectual Property Office within the deadline prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (3) An international application shall be deemed to have been withdrawn where the appointment of a patent administrator is not reported within the deadline prescribed by paragraph (2). Article 207 (Special Provisions on Time and Effect of Laying Open Application) (1) When Article 64 (1) applies to the laying-open of an international patent application, "at the time of expiration of one year and six months from any of the following dates" shall be construed as "at the time of expiration of the period for submitting domestic documents (in cases of an international application for which an applicant has requested an examination of a patent application and which has been internationally published pursuant to Article 21 of the Patent Cooperation Treaty, when one year and six months have passed from the preference date or the date of request for examination of application, whichever is later)." <Amended by Act No. 9381, Jan. 30, 2009> (2) Notwithstanding paragraph (1), where an international application filed in the Korean language has already been published internationally in accordance with Article 21 of the Patent Cooperation Treaty before the application is laid open pursuant to paragraph (1), such international application shall be deemed to have been laid open at the time of such international publication. <Newly Inserted by Act No. 9381, Jan. 30, 2009> (3) An applicant who filed an international patent application may, after the

domestic laying-open (in cases of an international application filed in the Korean language, referring to an international publication pursuant to Article 21 of the Patent Cooperation Treaty; hereafter the same shall apply in this paragraph) and after having issued 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 a patent right, the payment of compensation in an amount equivalent to what he/she would normally receive for the working of the invention. Even in the absence of a warning, this shall apply to 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, That the applicant shall not claim the right for compensation before the registration of a patent right. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 9381, Jan. 30, 2009> Article 208 (Special Provisions on Amendment) (1) Notwithstanding Article 47 (1), no amendment (excluding an amendment under Articles 204 (2) and 205 (2)) to an international patent application shall be made unless all the following requirements are satisfied: <Amended by Act No. 9381, Jan. 30, 2009> 1. Official fees pursuant to Article 82 (1) shall be paid; 2. The Korean translation pursuant to Article 201 (1) shall be submitted: Provided, That this shall not apply to an international patent application filed in the Korean language; 3. The relevant date shall have passed (where the relevant date is the date of request for an examination of application, referring to the time of filing a request for examination of application). (2) Deleted. <by Act No. 6411, Feb. 3, 2001> (3) With regard to the scope of an amendment made to an international patent application filed in a foreign language, "features stated in the specification or drawings initially attached to the patent application" in Article 47 (2) shall be construed as "features stated in a translation of the specification, scope of claims or drawings (only the text matter therein), or the features stated in the drawings (excluding the text matter therein), in the international patent application submitted on the international filing date." <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (4) and (5) Deleted. <by Act No. 6411, Feb. 3, 2001>

Article 209 (Restriction on Time of Conversion of Utility Model Registration Application) Notwithstanding Article 53 (1) of this Act, a patent application made on the basis of and by converting from an international application which is deemed a utility model registration application filed on the international filing date under Article 34 (1) of the Utility Model Act may not be filed until the fees under Article 17 (1) of the Utility Model Act have been paid, and a translation of the application under Article 35 (1) of the Utility Model Act (excluding cases 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 registration application under Article 40 (4) of the Utility Model Act, until the decision under the said provision has been made). <Amended by Act No. 7871, Mar. 3, 2006> [This Article Wholly Amended by Act No. 5576, Sep. 23, 1998] Article 210 (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/her application until the proceedings (excluding cases of international patent application made in the Korean language) under Article 201 (1) have been taken and the official 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. <Amended by Act No. 5576, Sep. 23, 1998> Article 211 (Orders to Submit Documents Cited in International Search Report, etc.) The Commissioner of the Korean Intellectual Property Office may require an applicant for an international patent 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 the said Treaty, designating a deadline. <Amended by Act No. 7871, Mar. 3, 2006> Article 212 Deleted. <by Act No. 7871, Mar. 3, 2006> Article 213 (Special Provisions on Invalidation Trial of Patent) With respect to a patent granted for an international patent application filed in a foreign language, an invalidation trial thereagainst may be brought on the grounds that the invention concerned does not fall under any of the following subparagraphs as well as the grounds falling under any subparagraph of

Article 133 (1): <Amended by Act No. 7871, Mar. 3, 2006> 1. An invention described in both the specification, scope of claims or drawings (limited to the text matter therein) in the international application submitted on the international filing date and the translated version thereof; 2. An invention described in the drawings (excluding the text matter therein) in the international application submitted on the international filing date. [This Article Wholly Amended by Act No. 6768, Dec. 11, 2002] Article 214 (International Application Considered to be Patent Application by Ruling) (1) An applicant who filed an international application may, where the international application (only applicable to a patent application) which includes the Republic of Korea in the designated states referred to in Article 4 (1) (ii) of the Patent Cooperation Treaty falls under any of the following subparagraphs, request the Commissioner of the Korean Intellectual Property Office to make a decision pursuant to Article 25 (2) (a) of the same Treaty, within the period prescribed by Ordinance of the Ministry of Knowledge Economy, as prescribed by Ordinance of the Ministry of Knowledge Economy: <Amended by Act No. 9381. Jan 30, 2009> 1. Where a receiving office referred to in Article 2 (xv) of the Patent Cooperation Treaty has rejected such international application pursuant to Article 25 (1) (a) of the same Treaty; 2. Where a receiving office referred to in Article 2 (xv) of the Patent Cooperation Treaty has made a declaration on such international application pursuant to Article 25 (1) (a) or (b) of the same Treaty; 3. Where the International Bureau has recognized such international application pursuant to Article 25 (1) (a) of the same Treaty. (2) A person who intends to make a request under paragraph (1) shall submit to the Commissioner of the Korean Intellectual Property Office a Korean translation of the specification, scope of claims or drawings (limited to the text matter thereof) as well as other documents relating to the international application provided by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 4541, Mar. 6, 1993; Act No. 5080, Dec. 29, 1995; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (3) Where a request under paragraph (1) has been made, the Commissioner of the Korean Intellectual Property Office shall decide whether the refusal,

declaration or finding was justified under the Patent Cooperation Treaty and the Regulations thereunder. <Amended by Act No. 7871, Mar. 3, 2006> (4) Where the Commissioner of the Korean Intellectual Property Office has made a decision under paragraph (3) to the effect that the refusal, declaration or finding was not justified under 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. <Amended by Act No. 7871, Mar. 3, 2006> (5) Where the Commissioner of the Korean Intellectual Property Office decides on the justification pursuant to paragraph (3), he/she shall serve a certified copy of the decision on the relevant applicant for an international patent. <Newly Inserted by Act No. 8197, Jan. 3, 2007> (6) Articles 199 (2), 200, 201 (4) through (8), 202 (1) and (2), 208, 210 and 213 shall apply mutatis mutandis to international applications considered to be patent applications under paragraph (4). <Amended by Act No. 5576, Sep. 23, 1998; Act No. 7871, Mar. 3, 2006> (7) In cases of the laying open of an international application considered to be a patent application under paragraph (4), "filing date of a patent application" in Article 64 (1) shall be construed as "priority date referred to in Article 201 (1)." CHAPTER Ⅺ SUPPLEMENTARY PROVISIONS Article 215 (Special Provisions for Patent or Patent Right with Two or More Claims) Where Articles 65 (6), 84 (1) 2, 85 (1) 1 (limited to extinguishment), 101 (1) 1, 104 (1) 1, 3 or 5, 119 (1), 133 (2) or (3), 136 (6), 139 (1), 181 and 182 of this Act and Article 26 (1) 2, 4 or 5 of the Utility Model Act apply to a patent or patent right with two or more claims, a patent shall be deemed to have been granted, or a patent right to have been established, for each claim. <Amended by Act No. 7871, Mar. 3, 2006> [This Article Wholly Amended by Act No. 6411, Feb. 3, 2001] Article 215-2 (Special Provisions for Registration of Patent Application with Two or More Claims) (1) Where a person who has received a decision to grant a patent for a

patent application with two or more claims has paid the registration fees, the person may abandon individual claims. (2) Matters necessary for abandonment of claims under paragraph (1) shall be prescribed by Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 8852, Feb. 29, 2008> [This Article Newly Inserted by Act No. 6411, Feb. 3, 2001] Article 216 (Inspection of Documents, etc.) (1) A person who intends to receive a certificate for a patent or a trial, a certified copy or extract of documents, or inspect or copy the Patent Register or documents may request the Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal to that effect. <Amended by Act No. 4892, Jan. 5, 1995> (2) The Commissioner of the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may refuse to permit the request referred to in paragraph (1) if it relates to a patent application, the establishment of which has not been registered or which has not been laid open for public inspection, or if it relates to matters liable to contravene public order or morality. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 5329, Apr. 10, 1997; Act No. 9381, Jan. 30, 2009> Article 217 (Prohibition of Documents Relating to Patent Application, Examination, Trial, Retrial, Patent Register, etc. from being Taken out or Opened to Public) (1) Documents relating to a patent application, examination, trial or retrial or the Patent Register shall be prohibited from being taken out except for any of the following cases: <Amended by Act No. 7871, Mar. 3, 2006; Act No. 8171, Jan. 3, 2007; Act No. 10012, Feb. 4, 2010> 1. Where documents relating to patent applications or examinations are taken out for the purpose of searching prior art, etc. under Article 58 (1) or (2); 2. Where documents relating to patent applications, examinations, trials or retrials or the Patent Register are taken out for the purpose of entrusting the affairs of digitizing patent documents under Article 217-2 (1); 3. Where documents relating to patent applications, examinations, trials or retrials or the Patent Register are taken out for the purpose of online remote working under Article 32 (2) of the Electronic Government Act. (2) A response shall not be given to a request for an expert opinion,

testimony or an inquiry as to the contents of a pending patent application, examination, trial, or retrial that is in process, or as to the contents of an examiner's decision, trial decision or ruling. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> Article 217-2 (Agency for Affairs of Digitizing Patent Documents) (1) Where it is deemed necessary to effectively deal with patent-related procedures, the Commissioner of the Korean Intellectual Property Office may entrust any corporation equipped with facilities and manpower prescribed by Ordinance of the Ministry of Knowledge Economy with the digitization of documents relating to patent applications, examinations, trials or retrials or the Patent Register through an electronic information processing system and its technology of utilizing the electronic information processing system (hereinafter referred to "affairs of digitizing patent documents"). <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008> (2) Deleted. <by Act No. 7871, Mar. 3, 2006> (3) A person who is or was an executive or employee of the person who has been entrusted with the affairs of digitizing patent documents pursuant to paragraph (1) (hereinafter referred to as "agency of digitizing patent documents") shall not divulge confidential information on inventions or appropriate the invention disclosed in a pending application to which he/she had access during the course of his/her duties. (4) The Commissioner of the Korean Intellectual Property Office may, pursuant to paragraph (1), digitize a written patent application or other documents prescribed by Ordinance of the Ministry of Knowledge Economy, which fail to be submitted with such electronic documents as prescribed in Article 28-3 (1), and may record them in a file of an electronic information processing system operated by the Korean Intellectual Property Office or the Intellectual Property Tribunal. <Newly Inserted by Act No. 5576, Sep. 23, 1998; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (5) The details written in a file under paragraph (4) shall be deemed the same as those entered in the documents concerned. <Newly Inserted by Act No. 5576, Sep. 23, 1998> (6) The method of carrying out the affairs of digitizing patent documents as referred to in paragraph (1) and other matters necessary for carrying out the affairs of digitizing patent documents, shall be determined by

Ordinance of the Ministry of Knowledge Economy. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (7) Where any agency of digitizing patent documents which fails to meet the standards for facilities and manpower determined by Ordinance of the Ministry of Knowledge Economy under paragraph (1) does not comply with any corrective measures therefor taken by the Commissioner of the Korean Intellectual Property Office, the latter may cancel the entrustment of the affairs of digitizing patent documents to the agency. In such cases, he/she shall first provide the agency an opportunity to present its opinion thereabout. <Newly Inserted by Act No. 7871, Mar. 3, 2006; Act No. 8852, Feb. 29, 2008> [This Article Newly Inserted by Act No. 5329, Apr. 10, 1997] Article 218 (Service of Documents) Necessary matters related to procedures for service of documents, etc. in this Act shall be prescribed by Presidential Decree. <Amended by Act No. 8197, Jan. 3, 2007> Article 219 (Service by Public Announcement) (1) In cases where documents cannot be served because the domicile or place of business of a person to be served is unclear, service shall be made by public announcement. (2) Service by public announcement shall be implemented by publishing a notice in the Patent Gazette to the effect that the documents will be served at any time to the person to be served. (3) The initial service by public announcement shall come into force after the expiry of two weeks from the date it is published in the Patent Gazette: Provided, That subsequent service by public announcement on the same party shall come into force from the date following its publication in the Patent Gazette. Article 220 (Service of Documents to Overseas Residents) (1) For an overseas resident having a patent administrator, documents shall be served on his/her patent administrator. (2) For an overseas resident without a patent administrator, documents may be sent to him/her by registered airmail. (3) When documents have been sent by registered airmail under paragraph (2), such documents shall be deemed to have been served on the mailing date. Article 221 (Patent Gazette)

(1) The Korean Intellectual Property Office shall publish the Patent Gazette. (2) The Patent Gazette may be published by the electronic media, as prescribed by Ordinance of the Ministry of Knowledge Economy. <Newly Inserted by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 8852, Feb. 29, 2008> (3) In publishing the Patent Gazette by the electronic media, the Commissioner of the Korean Intellectual Property Office shall make public matters regarding the fact of publication of the Patent Gazette, its main contents, and service by public announcement through information and communication networks. <Newly Inserted by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001> Article 222 (Submission, etc. of Documents) The Commissioner of the Korean Intellectual Property Office or any examiner may require a party concerned to submit documents and articles necessary for dealing with proceedings, other than those relating to trial or retrial. Article 223 (Patent Indication) A patentee or an exclusive or non-exclusive licensee may indicate an identification of the patent upon a patented product in cases of an invention of a product or in cases of an invention of process, on the manufactured product. If it is not possible to place such indication on the product, the identification may be made on the container or package thereof. Article 224 (Prohibition of False Indication) No person shall be allowed to perform any of the following acts: 1. Marking with an indication of a patent having been granted or patent application having been filed, or any sign likely to cause confusion therewith, on an article for which a patent has not been granted, a patent application is not pending, or upon an article manufactured by a process for which a patent has not been granted or a patent application is not pending, or a container or package thereof; 2. Assigning, leasing or displaying an article which has been marked with an indication referred to in subparagraph 1; 3. For the purpose of manufacture, use, assignment or lease of an article referred to in subparagraph 1, marking with an indication upon advertisements, signboards or tags that a patent has been granted, a patent application had been filed for it, that it has been produced by a process for which a patent has been granted, a patent application is pending, or marking with any sign likely to cause confusion therewith;

4. For the purpose of use, assignment or lease of a process for which a patent has not been granted or a patent application is not pending, marking with an indication on advertisements, signboards or tags that a patent has been granted, a patent application had been filed for the process, or marking with any sign likely to cause confusion therewith. Article 224-2 (Restriction on Objection) (1) No objection may be raised under any other Act against a ruling to dismiss an amendment, a decision of patentability, a trial decision, or a ruling to dismiss a request for trial or retrial, and no objection may be raised under any other Act against any disposition against which no objection may be raised under this Act. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> (2) Any objection against a disposition, other than that referred to in paragraph (1) shall be governed by the Administrative Appeals Act or the Administrative Litigation Act. <Newly Inserted by Act No. 7871, Mar. 3, 2006> [This Article Wholly Amended by Act No. 5329, Apr. 10, 1997] Article 224-3 (Order of Secrecy) (1) When the following grounds are explained in a lawsuit against infringement of a patent right or exclusive license, with regard to trade secret (referring to trade secret pursuant to subparagraph 2 of Article 2 of the Unfair Competition Prevention and Trade Secret Protection Act) possessed by the relevant party, the court may order, in its ruling, the other relevant party (in cases of a juristic person, referring to the representative thereof), a person who files a lawsuit on behalf of the relevant party or any other person who becomes aware of trade secret due to the relevant lawsuit not to use the relevant trade secret for purposes other than for continuing the relevant lawsuit or not to disclose such secret to any person, other than a person who has received an order with respect to the relevant trade secret pursuant to this paragraph, upon the request of the relevant party: Provided, That this shall not apply where the other relevant party (in cases of a juristic person, referring to the representative thereof), a person who files a lawsuit on behalf of the relevant party or any other person who becomes aware of trade secret has already acquired such secret by methods, other than the perusal of preparatory documents or examination of evidence prescribed in subparagraph 1 until the time of the relevant application:

   1. That trade secret is included in preparatory documents which have already been submitted or should be submitted, or evidence which has already been examined or should be examined;   2. That the usage or disclosure of trade secret shall be restricted to prevent the trade secret under subparagraph 1 from being used or disclosed for purposes other than for filing the relevant lawsuit, as such usage or disclosure is likely to affect the business operation of the relevant party. (2) Requests for order (hereinafter referred to as "order of secrecy") under     paragraph (1) shall be made in written documents containing the following:    1. A person who receives an order of secrecy;   2. Actual facts which are enough to specify trade secret subject to order of       secrecy;    3. Actual facts falling under subparagraphs of paragraph (1). (3) When a decision is made on the order of secrecy, the court shall deliver such written decision to a person who has received the order of secrecy. (4) The order of secrecy shall take effect from the date when a written decision under paragraph (3) is delivered to a person who has received the order of secrecy. (5) The immediate appeal may be made against a trial which has dismissed or rejected requests for the order of secrecy. [This Article Newly Inserted by Act No. 11117, Dec. 2, 2011] Article 224-4 (Revoking Order of Secrecy) (1) In cases where requirements prescribed in Article 224-3 (1) have not been satisfied or fail to be satisfied any longer, any person who has requested the order of secrecy or has received such order may request the court which keeps trial records (if there is no court which keeps trial records, referring to the court which has issued the order of secrecy) to revoke the order of secrecy. (2) When a trial is to be conducted concerning requests for revocation of the order of secrecy, the court shall deliver the relevant written decision to a person who has made such requests and the other party. (3) The immediate appeal may be made against a trial concerning requests for revocation of the order of secrecy. (4) A trial which revokes the order of secrecy shall become effective only after it is made final and conclusive.

(5) A court which has held a trial concerning revocation of the order of secrecy shall inform a person who has requested the revocation of the order of secrecy or a person who has received such order concerning the relevant trade secret, other than the other party, of a trial on the revocation of the order of secrecy, without delay. [This Article Newly Inserted by Act No. 11117, Dec. 2, 2011] Article 224-5 (Notice, etc. on Requests for Perusal, etc. of Trial Records) (1) In cases where a decision under Article 163 (1) of the Civil Procedure Act is made with respect to trial records concerning a lawsuit in which the order of secrecy is issued (excluding a lawsuits in which all orders of secrecy are revoked), if the relevant party has requested the perusal, etc. of confidential information prescribed in the abovementioned paragraph, but a person who has not received the order of secrecy has followed procedures for requests in the relevant lawsuit, the court clerical official of Grade Ⅳ, court clerical official of Grade Ⅴ, court clerical official of Grade VI or court clerical official of Grade Ⅶ (hereinafter referred to as "court clerical official of Grade Ⅴ, etc." in this Article) shall inform the relevant party who has filed a request (excluding a person who requested the relevant perusal, etc.; hereinafter the same shall apply in paragraph (3)) pursuant to Article 163 (1) of the Civil Procedure Act of the request for the relevant perusal immediately after such request. (2) In cases under paragraph (1), court clerical official of Grade Ⅴ, etc. shall not allow a person who has followed procedures for the relevant request to peruse confidential information under paragraph (1) until two weeks lapse (if a request for the order of secrecy is made during the period against a person who has followed procedures for the relevant request, until the time when a trial on the relevant application becomes final and conclusive) from the date when a request under paragraph (1) is made. (3) The provisions of paragraph (2) shall not apply to cases where all the relevant parties who have filed a request pursuant to Article 163 (1) of the Civil Procedure Act have agreed to allow a person who has made a request pursuant to paragraph (1) to peruse the confidential information under paragraph (1). [This Article Newly Inserted by Act No. 11117, Dec. 2, 2011] CHAPTER Ⅻ PENAL PROVISIONS

Article 225 (Offense of Infringement) (1) Any person who infringes a patent right or exclusive license shall be punished by imprisonment not exceeding seven years or by a fine not exceeding 100 million won. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001> (2) Prosecution for offenses under paragraph (1) shall be initiated upon filing of a complaint by an injured party. Article 226 (Offense of Divulging Confidential Information, etc.) Where any present or former employee of the Korean Intellectual Property Office or the Intellectual Property Tribunal has divulge confidential information on inventions or appropriate the invention disclosed in a pending patent application (including an invention for which an international application is pending) to which he/she had learned in the course of performing his/her duties, such employee shall be punished by imprisonment not exceeding five years or by a fine not exceeding 50 million won. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 9381, Jan. 30, 2009> Article 226-2 (Executives and Employees of Specialized Institutions, etc. Deemed to be as Public Officials) A person who is or was an executive or employee of any specialized institution or any agency of digitizing patent documents under Article 58 (1) shall be deemed one who is or was an employee of the Korean Intellectual Property Office for purposes of applying Article 226. <Amended by Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006; Act No. 9381, Jan. 30, 2009> [This Article Newly Inserted by Act No. 5329, Apr. 10, 1997] Article 227 (Offense of Perjury) (1) Where a witness, expert witness or interpreter, having taken an oath under this Act, has made a false statement or provided a false expert opinion or interpreted falsely before the Intellectual Property Tribunal, he/she shall be punished by imprisonment not exceeding five years or by a fine not exceeding 10 million won. <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6411, Feb. 3, 2001> (2) Any person who has committed an offense under paragraph (1), who confesses it before the trial decision concerned becomes final and conclusive, may be partially or totally exempted from the application of the sentence. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 7871, Mar. 3, 2006> Article 228 (Offense of False Marking)

Any person who violates Article 224 shall be punished by imprisonment not exceeding three years or by a fine not exceeding 20 million won. Article 229 (Offense of Frauds) Any person who has obtained a patent, the registration of an extension of a patent term, or a trial decision by means of a fraudulent or any other unjust act shall be punished by imprisonment not exceeding three years or by a fine not exceeding 20 million won. <Amended by Act No. 5329, Apr. 10, 1997; Act No. 6411, Feb. 3, 2001; Act No. 7871, Mar. 3, 2006> Article 229-2 (Offences Violating Order of Secrecy) (1) Any person who has violated the order of secrecy under Article 224-3 (1) in the Republic of Korea or in a foreign country without any justifiable ground shall be punished by imprisonment not exceeding five years or by a fine not exceeding 50 million won. (2) A public action against an offence under paragraph (1) shall be instituted only if a complaint thereof is filed by a person who has requested the order of secrecy. [This Article Newly Inserted by Act No. 11117, Dec. 2, 2011] Article 230 (Joint Penal Provisions) If a representative of a juristic person, or an agent, an employee or any other employed person of a juristic person or individual has committed an offense under Articles 225 (1), 228 or 229 with respect to the duties of the juristic person or individual, not only shall the offender be punished, but also the juristic person shall be punished by a fine under any of the following subparagraphs and the individual shall be punished by a fine referred to in the relevant provisions: Provided, That this shall not apply to cases where the juristic person or individual has not been negligent in giving due attention and supervision concerning the relevant duties to prevent such offense: <Amended by Act No. 9381, Jan. 30, 2009> 1. Cases referred to in Article 225 (1): A fine not exceeding 300 million won; 2. Cases referred to in Article 228 or 229: A fine not exceeding 60 million won. [This Article Wholly Amended by Act No. 9249, Dec. 26, 2008] Article 231 (Confiscation, etc.) (1) Any article that is the subject of an infringing act under Article 225 (1), or any article arising out of such act, shall be confiscated or, upon request of the injured party, a judgment shall be rendered to the effect

that such article shall be delivered to the injured party. <Amended by Act No. 5329, Apr. 10, 1997> (2) Where the article is delivered to the injured party under paragraph (1), the person may claim compensation for losses in excess of the value of the article. Article 232 (Fines for Negligence) (1) Any person falling under any of the following subparagraphs shall be punished by a fine for negligence not exceeding 500,000 won: <Amended by Act No. 4892, Jan. 5, 1995; Act No. 6626, Jan. 26, 2002; Act No. 7871, Mar. 3, 2006> 1. Where a person who has taken an oath under Articles 299 (2) and 367 of the Civil Procedure Act has made a false statement before the Intellectual Property Tribunal; 2. Where a person was ordered by the Intellectual Property Tribunal to submit or show documents or other materials with respect to taking evidence or to the preservation of evidence, and has failed to comply with the order without justifiable grounds; 3. Deleted; <by Act No. 7871, Mar. 3, 2006> 4. Where a person was summoned by the Intellectual Property Tribunal as a witness, expert witness or interpreter and has failed to comply with the subpoena, or has refused to take an oath, to make a statement, to testify, to give an expert opinion or to interpret, without justifiable grounds. (2) Fines for negligence referred to in paragraph (1) shall be imposed and collected by the Commissioner of the Korean Intellectual Property Office, as prescribed by Presidential Decree. (3) Deleted. <by Act No. 11117, Dec. 2, 2011> (4) Deleted. <by Act No. 11117, Dec. 2, 2011> (5) Deleted. <by Act No. 11117, Dec. 2, 2011>

ADDENDA Article 1 (Enforcement Date) This Act shall enter into force on September 1, 1990: Provided, That matters concerning Chapter II of the Patent Cooperation Treaty as prescribed in Articles 201, 205 and 211 shall enter into force on the day on which Chapter II of the Patent Cooperation Treaty takes effect to the Republic of Korea. Article 2 (General Transitional Measures)

Except as otherwise provided for in Articles 3 through 9 of this Addenda, this Act shall also apply to matters having taken place before this Act enters into force: Provided, That any effect produced pursuant to the previous provisions shall not be affected. Article 3 (Transitional Measures concerning Patent Application, etc.) The examination as to a patent application and the appellate trial as to a refusal ruling, which are made before this Act enters into force, shall be governed by the previous provisions. Article 4 (Transitional Measures concerning Trial, etc. on Patent for which Right is established) The trial, appellate trial, review and lawsuit on a patent for which a right is established on the basis of a patent application filed before this Act enters into force, shall be governed by the previous provisions. Article 5 (Transitional Measures concerning Submission of Priority Evidentiary Documents under Treaty) The period for submitting priority evidentiary documents of a patent application which requests a priority to the Republic of Korea before this Act enters into force, shall be governed by the previous provisions. Article 6 (Transitional Measures concerning Rejection of Correction) Any correction made before this Act enters into force shall be governed by the previous provisions. Article 7 (Transitional Measures concerning Duration of Patent Right) The duration of any patent right established before this Act enters into force and that established by patent application shall be governed by the previous provisions. Article 8 (Transitional Measures concerning Expropriation, etc. of Patent Right) Any disposition or lawsuit on restriction, expropriation, revocation, or embodiment of a patent right, which is requested before this Act enters into force, shall be governed by the previous provisions. Article 9 (Transitional Measures concerning Procedure, Expenses and Compensation for Losses, etc. of Trial) The procedure, expenses and compensation for losses, etc. concerning any trial, appellate trial, review and lawsuit, which are requested before this Act enters into force, shall be governed by the previous provisions.

ADDENDA <Act No. 4541, Mar. 6, 1993> Article 1 (Enforcement Date)

This Act shall enter into force on the date of its promulgation. (Proviso Omitted.) Articles 2 through 5 Omitted.

ADDENDA <Act No. 4594, Dec. 10, 1993> (1)(Enforcement Date) This Act shall enter into force on January 1, 1994. (2)(Transitional Measures concerning Period for Return of Patent Fees, etc.) The return of patent fees and official fees paid by mistake before this Act enters into force, shall be governed by the previous provisions. (3) (Applicability to Return of Patent Fees) The amended provisions of Article 84 (1) 2 and 3 concerning the return of patent fees due to a final decision on nullity of a patent, shall apply to those on which a decision on nullity becomes conclusive after this Act enters into force.

ADDENDA <Act No. 4757, Mar. 24, 1994> Article 1 (Enforcement Date) This Act shall enter into force on the date of its promulgation. Articles 2 through 5 Omitted.

ADDENDA <Act No. 4892 Jan. 5, 1995> Article 1 (Enforcement Date) This Act shall enter into force on March 1, 1998. Article 2 (Transitional Measures on Cases Pending) (1) Any case for which a request for trial has been made or a case pending for which a request for appellate trial against a ruling of refusal, decision of revocation, or a decision of rejection for correction before this Act enters into force shall be deemed to have made a request against a trial with the Intellectual Property Tribunal and to have been pending therein. (2) Any case for which a request for trial and decision has been made or a case pending for which a request for immediate appeal against a decision of dismissal for request for trial before this Act enters into force shall be deemed to have brought a litigation against the Patent Court under this Act and to have been pending therein. Article 3 (Transitional Measures on Cases against which Dissatisfactions may be Brought) (1) Any litigation may be brought against a case on which a trial, a decision of rejection for request for trial, a ruling of refusal, or a decision of dis

missal for correction by an examiner as at the time this Act enters into force, and against which a dissatisfaction has not brought with the board of patent appeals under the previous provisions, within 30 days from the date this Act enters into force, a litigation as referred to in Article 186 (1) may be brought against a trial and decision of the trial and a decision of rejection for request for trial, and a trial as referred to in Article 132-3 or 132-4 may be requested against a ruling of refusal, or a decision of dismissal for correction by an examiner: Provided, That where any period for dissatisfaction has expired under the previous provisions as at the time this Act enters into force, the same shall not apply. (2) Any dissatisfaction may be brought against a case on which a trial and decision of a trial, a decision of rejection for request for appellate trial and a decision of rejection for correction by the appellate trial judge as at the time this Act enters into force has been served, with the Supreme Court within 30 days from the date this Act enters into force: Provided, That where any period for dissatisfaction has expired under the previous provisions as at the time this Act enters into force, the same shall not apply. (3) Any case against which a dissatisfaction has been brought with the Supreme Court and which is pending therein before this Act enters into force and any case against which a dissatisfaction on has been brought pursuant to paragraph (2) shall be deemed to have been pending or to have been brought against the Supreme Court. Article 4 (Transitional Measures on Review Cases) Articles 2 and 3 of Addenda shall apply mutatis mutandis to any review case pending. Article 5 (Transfer, etc. of Documents) (1) The Commissioner of the Korean Industrial Property Office shall transfer documents on a pending case as referred to in Article 2 (1) of Addenda (including those applied mutatis mutandis under Article 4 of Addenda) without delay to the President of the Intellectual Property Tribunal. (2) The Commissioner of the Korean Industrial Property Office shall transfer documents on a pending case as referred to in Article 2 (2) of Addenda (including those applied mutatis mutandis under Article 4 of Addenda) without delay to the chief Justice of the Patent Court. In such cases, matters necessary for the transfer etc. of documents shall be determined by the Supreme Court Regulations. Article 6 Omitted.

ADDENDA <Act No. 5080, Dec. 29, 1995> Article 1 (Enforcement Date) This Act shall enter into force on July 1, 1996. Article 2 (Transitional Measures concerning Invention of Substance to be Manufactured by Nuclear Conversion Method) (1) Any applicant of a patent specifying an invention of a substance to be manufactured by the nuclear conversion method, in the specification or drawings appended first to the patent application of those pending in the Korean Industrial Property Office (excluding cases where a certified copy of the patent ruling is served), as at the time this Act enters into force, may correct such specification or drawings within six months after this Act enters into force. (2) The correction as referred to in paragraph (1) shall be deemed the correction made prior to the service of a certified copy of the decision on public announcement on application. Article 3 (Transitional Measures concerning Duration of Patent Right) (1) This Act shall not apply to any patent right, the duration of which is terminated pursuant to the previous provisions before this Act enters into force. (2) The duration of the patent rights existing, or those the application of which is pending in the Korean Industrial Property Office, and the duration of which is to be shortened due to the enforcement of this Act, as at the time this Act enters into force, shall be governed by the previous provisions. Article 4 (Special Cases for Recognition of Non-exclusive License for those Preparing Embodiment Project) (1) In the event that the patent right to the invention of substance to be manufactured by the nuclear conversion method is established under the amended provisions of Article 32, the person who is carrying on or preparing for the embodiment project of such invention is Korea before January 1, 1995, shall have a non-exclusive license of the patent right to such invention, in the limit of the object of such invention or project which is embodied or prepared. (2) In the event that the term of a patent right is extended by the enforcement of this Act, any person who is preparing the embodiment project of the invention in Korea before January 1, 1995, in anticipation of the termination of such patent right pursuant to the previous provisions, shall

have a non-exclusive license as to such patent right, to the extent of the object of the invention and business which he/she is preparing, during the term extended by the enforcement of this Act from the expiration of the duration as set forth by the previous provisions. (3) Any person who holds a non-exclusive license under paragraphs (1) and (2), shall pay a considerable compensation to the patentee or exclusive licensee. (4) The provisions of Article 118 (2) shall be applicable mutatis mutandis to non-exclusive licenses as referred to in paragraphs (1) and (2). Article 5 (Transitional Measures concerning Procedure and Expenses of Trial, and Compensation for Losses, etc.) The procedure, expenses, compensation for losses, etc. concerning any trial, appellate trial, review and lawsuit requested against any act committed before this Act enters into force, shall be governed by the previous provisions.

ADDENDA <Act No. 5329, Apr. 10, 1997> Article 1 (Enforcement Date) This Act shall enter into force on July 1, 1997: Provided, That Articles 15 (2), 16 (1) and (2), 46, 132-3, 140-2, 164 (1), 170, 171 (2), 172, 176 (1) and (2), 224-2 of this Act and Articles 2 (1) and 3 (1) of Addenda of the amended Patent Act, Act No. 4892 shall enter into force on March 1, 1998. Article 2 (Special Cases on Patent Objections) (1) In applying Article 6, "request an appellate trial against a ruling of refusal under Article 167" in the same Article shall be construed as "request an appellate trial against a ruling of refusal or a decision of revocation under Article 167" until February 28, 1998. (2) In applying Article 164 (1), "until the decision of another trial or appellate trial becomes definite" in the same paragraph shall be construed as "until a decision on a patent objection, of another trial or appellate trial becomes definite" until February 28, 1998. (3) In applying Article 170 (1), "Articles 50, 51, 63 and 66 through 75" in the former part of the same paragraph shall be construed as "Articles 51, 63 and 66" and the latter part of the same paragraph shall be deemed as if it were deleted until February 28, 1998, and in applying paragraph (3) of the same Article, "Article 51 (4) through (6)" in the same paragraph shall be construed as "Article 51 (1) and (5)" until February 28, 1998. (4) In applying Article 171 (3) and (4), "ruling of refusal" in the same

paragraph shall be construed as "ruling of refusal or decision of revocation" until February 28, 1998. (5) In applying Article 172, "procedure for the patent, which was taken for the examination or trial" in the same Article shall be construed as "procedure for the patent, which was taken for the examination, patent objection or trial" until February 28, 1998. (6) In applying Article 176, "shall reverse the refusal ruling or decision on trial" in the same Article shall be construed as "shall reverse or revoke the refusal ruling, decision of revocation or decision on trial" until February 28, 1998. Article 3 (Transitional Measures on Modification of Patent Objection System) (1) Any application for a patent which has been pending in the Korean Industrial Property Office before this Act enters into force and on which a certified copy of decision for publicity of application has been served, and any patent, patent right, trial or review related to the application for a patent on which a certified copy of decision for publicity of application has been served before this Act enters into force shall be governed by the previous provisions. (2) Any application for a patent on which a copy of decision for publicity of application has been served before this Act enters into force or any application for a patent for which has been applied as the same invention as an invention or a device described in the specification or drawing appended initially to the patent application after the date of application of a utility model registration application shall, notwithstanding the amended provisions of Article 29 (3), be governed by the previous provisions. Article 4 (Transitional Measures on Penal Provisions) The application of penal provisions to acts committed before this Act enters into force shall be governed by the previous provisions. Article 5 Omitted.

ADDENDA <Act No. 5576, Sep. 23, 1998> Article 1 (Enforcement Date) This Act shall enter into force on January 1, 1999: Provided, That Articles 193 (1) and 198-2, the amended provisions concerning the effect of specification, claims, drawings and abstracts of an international patent application made in the Korean language of Article 201 (6), the amended provisions concerning the exemption of submission of translations with respect

to an international patent application made in the Korean language of Article 208 (1) and the amended provisions con cerning the exemption of submission of translations with respect to an international patent application made in the Korean language of Article 210, shall enter into force on the date when a convention which the Government of the Republic of Korea concludes with the International Bureau in connection with the appointment of an international search authority enters into force, and the amended provisions of Articles 6, 11, 29, 36, 49, 53, 55, 56, 59, 69, 87, 88, 102, 104, 133, 202, 209 and 215 of this Act, and those of Articles 21 and 22 of the Design Act in Article 5 (2) of this addenda shall enter into force on July 1, 1999. 〔Effective Date of the Agreement: Dec. 1, 1999〕 Article 2 (General Transitional Measures) The previous provisions shall apply to a patent application made under the previous provisions as at the time this Act enters into force, and the patent registration, patent right, opposition to a patent, trial, review and litigation related thereto. Article 3 (Applicability to Disposition of Procedures Related to Filing of Patent Application by Means of Electronic Documents) The amended provisions of Articles 28-3 and 217-2 (5) involving patent applicationand opposition-related procedures shall apply with respect to a patent application that is filed from January 1, 1999. Article 4 (Applicability to Requirements for Patents) The amended provisions of Article 29 (3) shall apply in cases where an invention for which a patent application is made after this Act enters into force (hereafter referred to as "later-filed invention" in this Article) is the same as a device described in the specifications or drawings appended to a written application for utility model registration, which was filed before this Act enters into force and which was laid open after the filing date of the patent application for a later-filed invention. Article 5 Omitted.

ADDENDA <Act No. 6024, Sep. 7, 1999> Article 1 (Enforcement Date) This Act shall enter into force on October 1, 2000. (Proviso Omitted.) Articles 2 through 13 Omitted.

ADDENDA <Act No. 6411, Feb. 3, 2001>

(1) (Enforcement Date) This Act shall enter into force on July 1, 2001: Provided, That the amended provisions of Articles 56 (1), 84 (2) and (3), the proviso to Article 217 (1) and Article 229-2 shall enter into force on the date of its promulgation. (2) (Applicability to Requirements for Patents) The amended provisions of Articles 29 (1) 2 and 30 (1) 1 (c) shall apply to a patent application that is filed on and after this Act enters into force. (3) (General Transitional Measures) The previous provisions shall apply to an examination, patent registration, patent right, opposition to a patent, trial, retrial and litigation related to a patent application which is made under the previous provisions as at the time this Act enters into force: Provided, That this shall not apply to any of the following cases: <Amended by Act No. 7871, Mar. 3, 2006> 1. Where an opposition to a patent is made, Articles 136 (9) and 140 (2) as applied mutatis mutandis under amended Article 77 (3) shall apply; 2. Where a patent application or patent right is deemed to have retroactive effect, amended Article 81-2 shall apply; 3. Where a trial to invalidate a patent is requested, amended Article 133-2 (1), (2), amended Articles 136 (3) through (5), (7) through (11), 139 (3), 140 (1), (2) and (5), and 136 (1) as applied mutatis mutandis under amended Article 133-2 (3) shall apply; 4. Where a trial against ruling of refusal of patent application is re quested, the amended provisions of the proviso to Article 140-2 (1), and (3) shall apply; 5. Where individual claims of a patent application with two or more claims are abandoned, amended Article 215-2 shall apply.

ADDENDA <Act No. 6582, Dec. 31, 2001> (1) (Enforcement Date) This Act shall enter into force six months after the date of its promulgation. (2) (Transitional Measures for State or Public Patents) The patents and the rights eligible to obtain the patent on the in-service inventions of the teachers and staff of any State or public school, which have owned by the State or local government as at the time this Act enters into force, shall pass to the fully-responsible systems of the school at the time of such inservice inventions. (3) (Transitional Measures for State or Public Utility Model Right, etc.) With regard to the transfer of the utility model rights for an in-service device and in-service creation of the teachers and staff of any State or public school, the

rights eligible to obtain a registration of utility model, and the design rights and the rights eligible to obtain a registration of design, which have owned by the State or local government as at the time this Act enters into force, the amended provisions of Article 39 and paragraph (2) of the Addenda applied mutatis mutandis respectively in Article 20 of the Utility Model Act and in Article 24 of the Design Act shall apply mutatis mutandis.

ADDENDA <Act No. 6626, Jan. 26, 2002> Article 1 (Enforcement Date) This Act shall enter into force on July 1, 2002. Articles 2 through 7 Omitted.

ADDENDA <Act No. 6768, Dec. 11, 2002> (1) (Enforcement Date) This Act shall enter into force five months after the date of its promulgation: Provided, That the amended provisions of Article 201 (1) shall enter into force three months after the date of its promulgation. (2) (Applicability to Handling of Opposition to Grant of Patent) The amended provisions of Article 78-2 shall apply to an opposition to the grant of a patent which is filed on and after the date this Act enters into force. (3) (Transitional Measures on Period for Submitting Domestic Documents on International Patent Application) Notwithstanding the amended provisions of Article 201 (1), the previous provisions shall apply with respect to an international patent application for which the period for submitting domestic documents has expired as at the time this Act enters into force.

ADDENDA <Act No. 7289, Dec. 31, 2004> Article 1 (Enforcement Date) This Act shall enter into force six months after the date of its promulgation. Articles 2 through 5 Omitted.

ADDENDA <Act No. 7427, Mar. 31, 2005> Article 1 (Enforcement Date) This Act shall enter into force on the date of its promulgation: Provided, That … (Omitted.) … Article 7 (excluding paragraphs (2) and (29)) of the Addenda shall enter into force on January 1, 2008. Articles 2 through 7 Omitted.

ADDENDUM <Act No. 7554, May 31, 2005> This Act shall enter into force six months after the date of its promulgation: Provided, That the amended provisions of Article 81-3 shall enter into force on September 1, 2005.

ADDENDA <Act No. 7869, Mar. 3, 2006> Article 1 (Enforcement Date) This Act shall enter into force six months after the date of its promulgation. (Proviso Omitted.) Articles 2 through 6 Omitted.

ADDENDA <Act No. 7871, Mar. 3, 2006> Article 1 (Enforcement Date) This Act shall enter into force on the date of its promulgation: Provided, That the amended provisions of Articles 3 (3), 6, 7-2 and 11 (1), subparagraph 7 of Article 20, subparagraph 6 of Article 21, and Articles 29 (1), (3) and (4) (amendments related to the Utility Model Act), 31, 36 (3), 49, 52, 53, 55 (1), (3) and (4) (amendments related to the Utility Model Act), 56 (1), 58, 58-2, 59 (3), 62, 63-2, 64, 87 (2), 88 (4), 102 (4) (amendments related to the Utility Model Act), 104 (1), 133 (1), 133-2 (4), 135 (1), 154 (8), 193 (1), 202 (3) (amendments related to the Utility Model Act) and (4), 204 and 205 (amendments related to the` relevant date), 208 (3), 209, 213, 215 (amendments related to the Utility Model Act), and 229-2 shall take effect on October 1, 2006; and the amended provisions of Articles 3 (2), 4, 15 (1), 35, 55 (3) (amendments related to the patent objections), 57 (1), 65 (6), 69 through 78, 78-2, 84 (1), 132-3, 136 (1) and (6), 137 (1), 140-2, 148, 164 (1), 165 (3) and (4) (amendments related to the patent objections), 171 (2), 172, 176 (1) and (2), 181 (1), 212, 214 (5), 215, 217 (1) (amendments related to the patent objections) and (2), 217-2 (1) and (2) (amendments related to the patent objections), 224-2 (1) (amendments related to the patent objections), 226 (2), and 228, on July 1, 2007. Article2(Applicability to Patent Requirements, etc.) The amended provisions of Articles 29 (1) 1, 30 (1) and 36 (4) shall apply from the first patent application filed after this Act enters into force. Article 3 (Applicability to Refund of Patent Fees) The amended provisions of Article 84 (2) and (3) shall apply with respect to a decision to cancel a patent or a trial decision to invalidate a patent or the

registration of an extension of the term of a patent right which becomes final and conclusive after this Act enters into force. Article 4 (Applicability to Revision of Patent Invalidation Trial) The amended provisions of the proviso to Article 133 (1) (excluding subparagraphs 7 and 8) shall apply to a patent right whose establishment is registered after this Act enters into force. Article 5 (Applicability to Remuneration for Patent Attorney) The amended provisions of Article 191-2 shall apply to a fee to be paid to a patent attorney who performs a lawsuit on behalf of a party after this Act enters into force. Article 6 (General Transitional Measures) The previous provisions shall apply with respect to the examination of a patent application filed under the previous provisions as at the time this Act enters into force, and the patent registration, patent right, trial, retrial and litigation related thereto: Provided, That the calculation of a period shall be governed by the amended provisions of subparagraph 4 of Article 14 and a request for the invalidation trial of the patent shall be governed by the amended provisions of Article 133-2 (4), and a request for a trial to confirm the scope of the patent right, by the amended provisions of Article 135 (1). Article7(Transitional Measures concerning Abolition of Patent Objection System) The previous provisions shall apply with respect to a patent objection against a patent right whose establishment is registered prior to July 1, 2007.

ADDENDA <Act No. 8171, Jan. 3, 2007> Article 1 (Enforcement Date) This Act shall enter into force six months after the date of its promulgation. (Proviso Omitted.) Articles 2 through 6 Omitted.

ADDENDA <Act No. 8197, Jan. 3, 2007> Article 1 (Enforcement Date) This Act shall enter into force on July 1, 2007. Article 2 (Applicability to Patent Applications, etc.) The amended provisions of Articles 42, 47 (1) and 55 (3), proviso to Article 59 (2), subparagraph 4 of Article 62, Article 63-2, proviso to Article 64 (1), the latter parts of Articles 170 (1) and 174 (2) shall apply from the first patent application filed after this Act enters into force.

Article 3 (Applicability to Cancelation of Designation of Specialized Institutions) The amended provisions of Article 58-2 shall apply from the first violation made after this Act enters into force. Article 4 (Applicability to Refund of Official Fees for Patent Applications, etc.) The amended provisions of Article 84 (1) 4 shall apply from the first patent application filed after this Act enters into force. Article 5 (Applicability to Correction of Patent in Procedures of Patent Invalidation Trials) The amended provisions of Articles 133-2 and 137 shall apply from the first request for a patent invalidation trial made after this Act enters into force. Article 6 (Applicability to Amendment Made in Specification and Drawings at Trials to Confirm Scope of Right) The amended provisions of Article 140 (2) 2 shall apply from the first request for a trial to confirm the scope of a patent right, filed after this Act enters into force. Article 7 (General Transitional Measures) The previous provisions shall apply to a patent application filed under the previous provisions as well as an examination, trial, retrial, or litigation with regard to such application as at the time this Act enters into force.

ADDENDA <Act No. 8357, Apr. 11, 2007> Article 1 (Enforcement Date) This Act shall enter into force on the date of its promulgation: Provided, That …(Omitted.)… and the amended provisions of Article 6 (4) of the Addenda shall enter into force on July 1, 2007. Articles 2 through 7 Omitted.

ADDENDA <Act No. 8462, May 17, 2007> (1) (Enforcement Date) This Act shall enter into force six months after the date of its promulgation. (2) (Applicability to Refund of Patent Fees, etc.) The amended provisions of Article 84 (3) shall apply even to patent fees and official fees whose time period of the request for refund under the previous provisions does not elapse at the time this Act enters into force.

ADDENDA <Act No. 8852, Feb. 29, 2008> Article 1 (Enforcement Date)

This Act shall enter into force on the date of its promulgation. (Proviso Omitted.) Articles2through 7 Omitted.

ADDENDUM <Act No. 9249, Dec. 26, 2008> This Act shall enter into force on the date of its promulgation.

ADDENDA <Act No. 9381, Jan. 30, 2009> Article 1 (Enforcement Date) This Act shall enter into force on July 1, 2009: Provided, That the amended provisions of Articles 15 (1), 29 (4), 55, 56, 58 (1), 63 (2), 81-3, 90 (6), 140, 140-2 (2), 202, 204, 205, 207, 208, 214, 216, 226, 226-2, and 227 through 230 shall enter into force on the date of its promulgation. Article 2 (Applicability to Requirements for Patent of International Patent Application Filed in Korean Language) The amended provisions of Articles 29 (4), 204, 205 and 207 shall apply from the first international patent application filed in the Korean language on or after January 1, 2009. Article 3 (Applicability to Amendment to Patent Application) The amended part related to the deletion of Article 47 (4) of the amended provisions of Article 47, the main sentence of Article 51 (1) and Article 55 shall apply from the first amendment made after this Act enters into force. Where an amendment is made to a patent application filed before this Act enters into force, "period (in cases of subparagraph 3, that time)" in the proviso to the part other than the subparagraphs of Article 47 (1) shall be construed as "period"; "when an applicant requests a re-examination pursuant to Article 67-2" in subparagraph 3 of the same paragraph as "where a request for a trial against a ruling of refusal to grant a patent is made in accordance with Article 132-3, 30 days from the date of such request for a trial"; and "Article 47 (1) 2 and 3" in the main sentence of Article 51 (1) as "Article 47 (1) 2. " Article 4 (Applicability to Request for Re-examination) The amended part related to a request for re-examination of the amended provisions of Article 47, the amended part related to a request for re-examination of the amended provisions of Article 51, and the amended provisions of Article 67-2 shall apply from the first patent application filed after this Act enters into force.

Article 5 (Applicability to Divided Application) The amended provisions of Article 52 shall apply to a divisional application based on the first patent application filed after this Act enters into force. Article 6 (Applicability to Ex Officio Amendment, etc.) The amended provisions of Article 66-2 shall apply from the first decision to grant a patent, made after this Act enters into force. Article 7 (Applicability to Late Payment and Remaining Payment of Patent Fees) The amended provisions of Articles 79, 81 and 81-2 shall apply from the first payment, late payment or remaining payment of patent fees, made after this Act enters into force. Article 8 (Applicability to Application for Registration of Extension of Term of Patent Right) The amended provisions of Article 90 (6) shall apply from the first application for registration of the extension of the term of a patent right, filed after this Act enters into force. Article 9 (Applicability to Amendment to Request for Trial, etc.) The amended provisions of Articles 140 and 140-2 (2) shall apply from the first request for a trial, made after this Act enters into force. Article 10 (General Transitional Measures) The previous provisions (excluding Articles 15 (1) and 216) shall apply to a patent application filed before this Act enters into force. Article 11 Omitted.

ADDENDUM <Act No. 9985, Jan. 27, 2010> This Act shall enter into force six months after the date of its promulgation: Provided, That the amended provisions of Article 96 shall enter into force on the date of its promulgation.

ADDENDA <Act No. 10012, Feb. 4, 2010> Article 1 (Enforcement Date) This Act shall enter into force three months after the date of its promulgation. (Proviso Omitted.) Articles 2 through 6 Omitted.

ADDENDA <Act No. 10716, May 24, 2011> (1) (Enforcement Date) This Act shall enter into force on July 1, 2011.

(2) (Applicability to Patent Applications) The amended provisions of Articles 42 (3), 63-2 and 133 (1) 1 shall apply from the first patent application filed after this Act enters into force. 

ADDENDA <Act No. 11117, Dec. 2, 2011> Article 1 (Enforcement Date) This Act shall enter into force on the date when the Free Trade Agreement between the Republic of Korea and the United States of America and Exchange of Letters related to the Agreement takes effect: Provided, That the amended provisions of the proviso to Article 6 of the Addenda of the Patent Act (No. 7871) shall enter into force on the date of its promulgation. Article 2 (Applicability to Inventions not Deemed to be Publicly Known, etc.)  The amended provisions of Article 30 shall apply from the first patent application filed after this Act enters into force. Article 3 (Applicability to Extension, etc. of Term of Patent Right Following Delayed Registration) The amended provisions of Articles 83, 92-2 through 92-5, 93, 132-3, 134, 139, 165, 176 and 187 shall apply from the first patent application filed after this Act enters into force. Article 4 (Applicability to Order of Secrecy, etc.) The amended provisions of Articles 224-3 through 224-5 shall apply from the first lawsuit against infringement of a patent right or exclusive license filed after this Act enters into force. Article 5 (Transitional Measures concerning Repeal of Revocation of Patent Right) The revocation of a patent right due to grounds for revocation of a patent right under the former Article 116 before this Act enters into force, shall be governed by the previous provisions.

 

 

                

Patent Act (Act No. 121 of April 13, 1959)  

Table of Contents Chapter I General Provision (Article 1 and 28) Chapter II Patents and Patent Applications (Article 29 to 46-2) Chapter III Examination (Article 47 to 63) Chapter III-2 Laying Open of Applications (Article 64 to 65) Chapter IV Patent Rights Section 1 Patent Rights (Article 66 to 99) Section 2 Infringement of rights (Article 100 to 106) Section 3 Patent Fees (Article 107 to 112-3) Chapter V (Deleted) Chapter VI Appeals and Trials (Article 121 to 170) Chapter VII Retrial (Article 171 to 177) Chapter VIII Litigation (Article 178 to 184-2) Chapter IX Special Provisions Concerning International Applications under the Patent Cooperation Treaty (Article 184-3 to 184-20) Chapter X Miscellaneous Provisions (Article 185 to 195-4) Chapter XI Penal Provisions (Article 196 to 204)

この特許法の翻訳は、平成二十三年法律第六十三号までの改正(平成24年4月 1日施行)について作成したものです。 この法令の翻訳は公定訳ではありません。法的効力を有するのは日本語の法令自 体であり、翻訳はあくまでその理解を助けるための参考資料です。この翻訳の利用 に伴って発生した問題について、一切の責任を負いかねますので、法律上の問題に 関しては、官報に掲載された日本語の法令を参照してください。 

  This English translation of the Patent Act has been prepared (up to the revisions of Act No. 63 of 2011 (Effective April 1, 2012)).   This is an unofficial translation. Only the original Japanese texts of laws and regulations have legal effect, and the translations are to be used solely as reference material to aid in the understanding of Japanese laws and regulations.    The Government of Japan shall not be responsible for the accuracy, reliability or currency of the legislative material provided in this Website, or for any consequence resulting from use of the information in this Website. For all purposes of interpreting and applying law to any legal issue or dispute, users should consult the original Japanese texts published in the Official Gazette. 

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Supplementary Provisions  

Chapter I General Provisions 

 (Purpose)  Article 1   The purpose of this Act is, through promoting the protection and the utilization of inventions, to encourage inventions, and thereby to contribute to the development of industry. 

 (Definitions)  Article 2   (1) "Invention" in this Act means the highly advanced creation of technical ideas utilizing the laws of nature.  (2) "Patented invention" in this Act means an invention for which a patent has been granted.  (3) "Working" of an invention in this Act means the following acts:  (i) in the case of an invention of a product (including a computer program, etc., the same shall apply hereinafter), producing, using, assigning, etc. (assigning and leasing and, in the case where the product is a computer program, etc., including providing through an electric telecommunication line, the same shall apply hereinafter), exporting or importing, or offering for assignment, etc. (including displaying for the purpose of assignment, etc., the same shall apply hereinafter) thereof;  (ii) in the case of an invention of a process, the use thereof; and  (iii) in the case of an invention of a process for producing a product, in addition to the action as provided in the preceding item, acts of using, assigning, etc., exporting or importing, or offering for assignment, etc. the product produced by the process.  (4) A "computer program, etc." in this Act means a computer program (a set of instructions given to an electronic computer which are combined in order to produce a specific result, hereinafter the same shall apply in this paragraph) and any other information that is to be processed by an electronic computer equivalent to a computer program. 

 (Calculation of time periods) Article 3   (1) The calculation of time periods under this Act or any order issued under this Act shall be made in accordance with the following provisions.  (i) The first day of the period shall not be included in the calculation; provided,

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however, that this shall not apply where the period of time commences at 00:00 hours.  (ii) Where the period is indicated by months or years, such months or years shall refer to calendar months or calendar years. Where the period is not calculated from the beginning of a month or a year, the period shall expire on the preceding day of the day corresponding to the first day of the calculation in the last month or year; provided, however, that where there is no corresponding day in the last month, the period shall expire on the last day of the last month.  (2) Where the last day of the prescribed period for any procedures relating to a patent (hereinafter referred to as "procedures") including filing a patent application and a request, is any of the days provided for in Article 1(1) of the Act on Holidays of Administrative Organs (Act No. 91 of 1988), the day following such day shall be the last day of the period. 

 (Extension of time limits, etc.)  Article 4   The Commissioner of the Patent Office may, upon request or ex officio, extend the period provided for in Articles 46-2(1)(iii), 108(1), 121(1) and 173(1), for a person in a remote area or an area with transportation difficulty. 

Article 5   (1) Where the Commissioner of the Patent Office, the chief appeal examiner, or the examiner has designated a time limit by which procedures are to be undertaken under this Act, the said official may, upon request or ex officio, extend the time limit.  (2) Where the chief appeal examiner has designated a specific date under this Act, the said official may, upon request or ex officio, change such date. 

 (Capacity of associations, etc. which are not juridical persons to undertake procedures)  Article 6   (1) An association or foundation which is not a juridical person but for which a representative or an administrator has been designated may, in its name:  (i) file a request for examination of an application;  (ii) file a request for a invalidation trial or a trial for invalidation of the registration of extension of duration; and  (iii) file a request for a retrial in accordance with Article 171(1), against a final and binding decision in a invalidation trial or a trial for invalidation of the registration of extension of duration.  (2) An association or foundation which is not a juridical person but for which a

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representative or an administrator has been designated may be named as a demandee in a request filed for a retrial against a final and binding decision in a invalidation trial or a trial for invalidation of the registration of extension of duration. 

 (Capacity of minors or adult wards etc. to undertake procedures)  Article 7   (1) Minors or adult wards may not undertake procedures except through their statutory representatives; provided, however, that this shall not apply where a minor is capable of independently performing a juristic act.  (2) Where a person under curatorship undertakes procedures, the consent of a curator is required.  (3) Where a statutory representative undertakes procedures, the consent of a supervisor of the guardian, if any, is required.  (4) Where an adverse party files a request for a trial or retrial involving a person under curatorship or a statutory representative, the preceding two paragraphs shall not apply. 

 (Patent administrators for overseas residents)  Article 8   (1) Unless otherwise provided for by Cabinet Order, no person domiciled or resident (or, in the case of a juridical person, with a business office) outside Japan (hereinafter referred to as an "overseas resident") may undertake procedures or institute action against measures taken by a relevant administrative agency in accordance with the provisions of this Act or an order issued under this Act, except through a representative domiciled or resident in Japan, who is acting for such person in handling matters related to the person's patent (hereinafter referred to as a "patent administrator").  (2) The patent administrator shall represent the principal in all procedures and litigation against measures taken by any relevant administrative agency in accordance with the provisions of this Act or an order issued under this Act; provided, however, that this shall not apply where the overseas resident limits the scope of authority of representation of the patent administrator. 

 (Scope of authority of representation)  Article 9   An agent of a person domiciled or resident in Japan (or, in the case of a juridical person, with a business office) and who is undertaking a procedure shall not, unless expressly so empowered, convert, waive or withdraw a patent application, withdraw an application for registration of extension of the duration of a patent right, withdraw a request, application or motion, make or

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withdraw a priority claim under Article 41(1), file a patent application based on a registration of a utility model in accordance with Article 46-2(1), file a request for laying open of an application, file a request for a appeal against an examiner's decision of refusal, waive a patent right or appoint a subagent. 

Article 10  Deleted 

 (No extinction of authority of representation)  Article 11   The authority of representation of an authorized agent acting for a person undertaking procedures shall not be extinct upon the death of the principal, or in the case of a juridical person, merger of the principal, termination of trust duties of a trustee who is the principal, the death of a legal representative, or change or extinction of the statutory representative's authority of representation. 

 (Independent representation by representatives)  Article 12   Where there are two or more representatives acting for a person who undertakes procedures, each representative may represent the principal before the Patent Office. 

 (Replacement of representatives, etc.)  Article 13   (1) When the Commissioner of the Patent Office or the chief appeal examiner finds that a person undertaking procedures is not competent or suitable for undertaking such procedures, the official may order the person to undertake the procedures through a representative.  (2) When the Commissioner of the Patent Office or the chief appeal examiner finds that a representative acting for a person undertaking procedures is not competent or suitable for undertaking such procedures, the official may order that the representative be replaced.  (3) In the case of the preceding two paragraphs, the Commissioner of the Patent Office or the chief appeal examiner may order that a patent attorney be the representative.  (4) The Commissioner of the Patent Office or the chief appeal examiner may, after the issuance of an order under paragraph (1) or (2), dismiss the procedures before the Patent Office undertaken by the person undertaking procedures under paragraph (1) or the representative under paragraph (2). 

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 (Mutual representation of multiple parties in the case)  Article 14   Where two or more persons are jointly undertaking a procedure, each of them shall represent the other or others with respect to procedures other than the conversion, waiver and withdrawal of a patent application, the withdrawal of an application for registration of extension of the duration of a patent right, the withdrawal of a request, application, or motion, the making and withdrawal of a priority claim under Article 41(1), the request for laying open of an application, and the request for a appeal against an examiner's decision of refusal; provided, however, that this shall not apply where the said persons have appointed a representative for both/all of them and have notified the Patent Office accordingly. 

 (Jurisdiction over overseas residents)  Article 15   Regarding a patent right or other right relating to the patent of an overseas resident, the location of the property under Article 5(iv) of the Code of Civil Procedure (Act No. 109 of 1996) shall be the domicile or residence of the overseas resident's patent administrator, or if there is no such patent administrator, the address of the Patent Office. 

 (Ratification of acts of persons lacking legal capacity)  Article 16   (1) Any procedures undertaken by a minor (excluding one who has a legal capacity to juristic act independently) or an adult ward may be ratified by the person's statutory representative (or by the said adult ward, if the person later acquires a legal capacity to undertake the procedures).  (2) Any procedures undertaken by a person with no authority of representation may be ratified by the principal holding legal capacity to undertake the procedures or the principal's statutory representative.  (3) Any procedures undertaken by a person under curatorship without the consent of his curator may be ratified if the person under curatorship obtains the approval of his curator.  (4) Any procedures undertaken by a statutory representative without the consent of a supervisor of a guardian may be ratified by the statutory representative if the approval of the supervisor of the guardian is obtained, or by the principal if the principal acquires a legal capacity to undertake the procedures. 

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 (Amendment of proceedings)  Article 17   (1) A person undertaking a procedure before the Patent Office may make amendments only while the case is pending; provided, however, that the person may not amend the description, scope of claims, drawing(s) or the abstract attached to the application, or the corrected description, scope of claims or drawings attached to the written request for correction or a correction trial under Article 134-2(1), unless an amendment may be made pursuant to the provisions the following Article to Article 17-4 inclusive.  (2) Notwithstanding the main clause of the preceding paragraph, an applicant of a foreign-language-written-application as provided in Article 36-2(2) may not amend foreign-language-documents and as provided in Article 36-2(1).  (3) The Commissioner of the Patent Office may require an applicant to amend a procedure, designating an adequate time limit, in the following cases:  (i) where the procedures do not comply with paragraphs (1) to (3) of Article 7 or Article 9;  (ii) where the procedures do not comply with the formal requirements prescribed by this Act or an order thereunder; and  (iii) where the fees relating to the procedures payable under paragraphs (1) to (3) of Article 195 are not paid.  (4) For any amendment of procedures (except in the case of the payment of fees), written amendment shall be submitted in writing, except for cases provided by Article 17-2(2). 

 (Amendment of Description, Claim or Drawing attached to the application)  Article 17-2   (1) An applicant for a patent may amend the description, scope of claims, or drawings attached to the application, before the service of the certified copy of the examiner's decision notifying that a patent is to be granted; provided, however, that following the receipt of a notice provided under Article 50, an amendment may only be made in the following cases:  (i) where the applicant has received the first notice (hereinafter referred to in this Article as the "notice of reasons for refusal") under Article 50 (including the cases where it is applied mutatis mutandis pursuant to Article 159(2) (including the cases where it is applied mutatis mutandis pursuant to Article 174(1))and Article 163(2), hereinafter the same shall apply in this paragraph) and the said amendment is made within the designated time limit under Article 50;]  (ii) where, following the receipt of the notice of reasons for refusal, the applicant has received a notice under Article 48-7 and the said amendment is made within the designated time limit under the said Article;

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 (iii) where, following the receipt of the notice of reasons for refusal, the applicant has received a further notice of reasons for refusal and the said amendment is made within the designated time limit under Article 50 with regard to the final notice of reasons for refusal; and  (iv) where the applicant files a request for a appeal against an examiner's decision of refusal and the said amendment is made at the same time as the said request for the said appeal.  (2) Where an applicant of a foreign-language-written-application as provided in Article 36-2(2) amends the description, scope of claims or drawings under the preceding paragraph for the purpose of correcting an incorrect translation, the applicant shall submit the statement of correction of the incorrect translation, stating the grounds thereof.  (3) Except in the case where the said amendment is made through the submission of a statement of correction of an incorrect translation, any amendment of the description, scope of claims or drawings under paragraph (1) shall be made within the scope of the matters described in the description, scope of claims or drawings originally attached to the application (in the case of a foreign-language-written-application under Article 36-2(2), the translation of the foreign-language-documents as provided in Article 36-2(2) that is deemed to be the description, scope of claims and drawings under Article 362(6) (in the case where the amendment to the description, scope of claims or drawings has been made through the submission of the statement of correction of an incorrect translation, the said translation or the amended description, scope of claims or drawings), the same shall apply in Articles 34-2(1) and 343(1))  (4) In addition to the case provided in the preceding paragraph, where any amendment of the scope of claims is made in the cases listed in the items of paragraph (1), the invention for which determination on its patentability is stated in the notice of reasons for refusal received prior to making the amendment and the invention constituted by the matters described in the amended scope of claims shall be of a group of inventions recognized as fulfilling the requirements of unity of invention set forth in Article 37.  (5) In addition to the requirements provided in the preceding two paragraphs, in the cases of items (i), (iii) and (iv) of paragraph (1) (in the case of item (i) of the said paragraph, limited to the case where the applicant has received a notice under Article 50-2 along with the notice of reasons for refusal), the amendment of the scope of claims shall be limited to those for the following purposes:  (i) the deletion of a claim or claims as provided in Article 36(5);  (ii) restriction of the scope of claims (limited to the cases where the restriction is to restrict matters required to identify the invention stated in a claim or claims under Article 36(5), and the industrial applicability and the problem

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to be solved of the invention stated in the said claim or claims prior to the amendment are identical with those after the amendment.);  (iii) the correction of errors; and  (iv) the clarification of an ambiguous statement (limited to the matters stated in the reasons for refusal in the notice of reasons for refusal).  (6) Article 126(7) shall apply mutatis mutandis to cases under item (ii) of the preceding paragraph. 

 (Amendment of abstract)  Article 17-3   An applicant for a patent may amend the abstract attached to the application within one year and three months (excluding the period after a request for laying open of application is filed) from the filing date of the patent application (or in the case of a patent application containing a priority claim under Article 41(1), the filing date of the earlier application provided for in the said paragraph, in the case of a patent application containing a priority claim under Article 43(1), 43-2(1) or 43-2(2), the filing date of the earliest application, a patent application that is deemed to be the earliest application under Article 4.C(4) of the Paris Convention (refers to the Paris Convention for the Protection of Industrial Property of March 20, 1883, as revised at Brussels on December 14, 1900, at Washington on June 2, 1911, at Hague on November 6, 1925, at London on June 2, 1934, at Lisbon on October 31, 1958, and at Stockholm on July 14, 1967, the same shall apply hereinafter) or a patent application that is recognized as the earliest application under Article 4.A(2) of the Paris Convention, and in the case of a patent application containing two or more priority claims under Article 41(1), 43(1), 43-2(1) or 43-2(2), the earliest day of the filing dates on which the said priority claims are based, the same shall apply to the main clause of Article 36-2(2) and Article 64(1)). 

 (Amendment of corrected description, scope of claims or drawings)  Article 17-4   (1) The demandee of a invalidation trial may amend the corrected description, scope of claims or drawings attached to the written request for correction under Article 134-2(1) only within the time limit designated under Article 134(1) or 134(2), 134-2(5), 134-3, 153(2) or 164-2(2).  (2) The demandant of a correction trial may amend the corrected description, scope of claims or drawings attached to the written request for a correction trial, only prior to notice under Article 156(1) (in the case where the proceedings has been reopened under Article 156(3), prior to further notice under Article 156(1)). 

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 (Dismissal of procedures)  Article 18   (1) The Commissioner of the Patent Office may dismiss the procedures where a person ordered to make an amendment to the procedures under Article 17(3) fails to make such amendment within the designated time limit under the said provision, or where a person obtaining the registration establishing a patent right fails to pay patent fees within the designated time limit under Article 108(1).  (2) The Commissioner of The Patent Office may dismiss a patent application where the applicant ordered under Article 17(3) to pay patent fees provided for in Article 195(3) fails to pay such patent fees within the designated time limit under Article 17(3). 

 (Dismissal of unlawful procedure)  Article 18-2   (1) The Commissioner of the Patent Office shall dismiss a procedure where the procedure is unlawful and not amendable.  (2) Where the Commissioner of the Patent Office intends to dismiss a procedure under the preceding paragraph, he/she shall notify the person who undertook the procedure of the reasons therefor and give the said person an opportunity to submit a document stating an explanation (hereinafter referred to as a "statement of explanation"), designating an adequate time limit. 

 (Effective time of submission of application)  Article 19   An application, a document or any other item submitted by mail to the Patent Office under this Act, or any order rendered under this Act, that is subject to a time limit, shall be deemed to have arrived at the Office at the date and time when such application or item is presented to the post office if such date and time are proven by the receipt of the mail, at the date and time of the date stamp on the mail if such date and time are clearly legible, or at noon of the day of the date stamp on the mail if only the day, but not the time, of the date stamp is clearly legible. 

 (Succession of effects of procedures)  Article 20   The effects of the procedures relating to a patent right or any right relating to a patent shall extend to a successor in title. 

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 (Continuation of procedures)  Article 21   Where a patent right or any right relating to a patent is transferred while a case is pending before the Patent Office, the Commissioner of the Patent Office or the chief appeal examiner may proceed with the procedures relating to the case to which the successor in title shall be the party. 

 (Suspension or termination of procedures)  Article 22   (1) Where a motion for the resumption of procedures suspended after a certified copy of a ruling, an examiner's decision or a trial decision has been served is filed, the Commissioner of the Patent Office or the appeal examiner shall render a ruling on whether the resumption shall be accepted.  (2) The ruling under the preceding paragraph shall be made in writing and state the grounds therefor. 

Article 23   (1) Where a procedure for an examination, trial or retrial has been suspended and the person responsible for resuming the procedure fails to do so, the Commissioner of the Patent Office or the appeal examiner shall, upon a motion or ex officio, order the said person to resume the procedure and designate an adequate time limit for this purpose.  (2) Where the resumption does not occur within the time limit designated under the preceding paragraph, the resumption may be deemed by the Commissioner of the Patent Office or the appeal examiner to have commenced on the date the time limit lapsed.  (3) When the resumption is deemed to have commenced under the preceding paragraph, the Commissioner of the Patent Office or the chief appeal examiner shall notify the parties in the case thereof. 

Article 24   The Code of Civil Procedure, Articles 124 (excluding paragraph (1)(vi)), 126 to 127, 128(1), 130, 131 and 132(2) (suspension or termination of court proceedings) shall apply mutatis mutandis to a procedure for an examination, a trial or retrial. In this case, the term "counsel" in Article 124(2) of the said Code shall be deemed to be replaced with "agent entrusted with the examination, trial or retrial", the term "court" in Article 127 of the said Code shall be deemed to be replaced with "commissioner of the patent office or the chief appeal examiner", the term "court" in Articles 128(1) and 131 of the said Code shall be deemed to be replaced with "commissioner of the patent office or the appeal examiner", and the term "court" in Article 130 of the said Code shall

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be deemed to be replaced with "patent office". 

 (Enjoyment of rights by foreign nationals)  Article 25   A foreign national not domiciled or resident (or, in the case of a juridical person, with a business office) in Japan may not enjoy a patent right or other rights relating to a patent, except in the following cases:  (i) where the country of the foreign national allows Japanese nationals to enjoy a patent right or other rights relating to a patent under the same conditions as for its own nationals;  (ii) where the country of the foreign national allows Japanese nationals to enjoy a patent right or other rights relating to a patent under the same conditions as for its own nationals in the case where Japan allows nationals of that country to enjoy a patent right or others right relating to a patent; and  (iii) where specifically provided by treaty. 

 (Effect of treaties)  Article 26   Where specific provisions relating to a patent are provided by treaty, such provisions shall prevail. 

 (Registration in the patent registry)  Article 27   (1) The following matters shall be registered in the patent registry maintained in the Patent Office:  (i) the establishment, extension of the duration, transfer, modification due to trust, lapse, restoration or restriction on disposition, of a patent right;  (ii) the establishment, maintenance, transfer, modification, lapse or restriction on disposal of an exclusive license;  (iii) the establishment, transfer, modification, lapse or restriction on disposal of a right of pledge on a patent right or exclusive license; and  (iv) the establishment, maintenance, transfer, modification, lapse or restriction on disposal of a provisional exclusive license.  (2) The patent registry may be prepared, in whole or in part, in the form of magnetic tapes (including other storage media using a similar method that is able to record and reliably store certain matters, the same shall apply hereinafter).  (3) In addition to those prescribed in this Act, matters relating to registration shall be prescribed by Cabinet Order. 

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 (Issuance of certificate of patent)  Article 28   (1) The Commissioner of the Patent Office shall issue the certificate of patent to the patentee where the establishment of a patent right has been registered, where the transfer of a patent right has been registered based on a request under Article 74(1), or where a trial decision to the effect that the description, scope of claims or drawings attached to the application are to be corrected has become final and binding and the said trial decision has been registered.  (2) Re-issuance of the certificate of patent shall be prescribed by Ordinance of the Ministry of Economy, Trade and Industry. 

Chapter II Patents and Patent Applications 

 (Conditions for Patentability)  Article 29   (1) An inventor of an invention that is industrially applicable may be entitled to obtain a patent for the said invention, except for the following cases:  (i) inventions that were publicly known in Japan or a foreign country prior to the filing of the patent application;  (ii) inventions that were publicly worked in Japan or a foreign country prior to the filing of the patent application; or  (iii) inventions that were described in a distributed publication, or inventions that were made publicly available through an electric telecommunication line in Japan or a foreign country prior to the filing of the patent application.  (2) Where, prior to the filing of the patent application, a person ordinarily skilled in the art of the invention would have been able to easily make the invention based on an invention prescribed in any of the items of the preceding paragraph, a patent shall not be granted for such an invention notwithstanding the preceding paragraph. 

Article 29-2   Where an invention claimed in a patent application is identical with an invention or device (excluding an invention or device made by the inventor of the invention claimed in the said patent application) disclosed in the description, scope of claims for a patent or utility model registration or drawings (in the case of a foreign-language-written-application under Article 36-2(2), foreign-language-documents as provided in Article 36-2(1)) originally attached to the application of another application for a patent or for a utility model registration which has been filed prior to the date of filing of the said patent application and published after the filing of the said patent application in the patent gazette under Article 66(3) of the Patent Act (hereinafter referred

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to as "gazette containing the patent") or in the utility model bulletin under Article 14(3) of the utility Model Act (Act No. 123 of 1959) (hereinafter referred to as "utility model bulletin") describing matters provided for in each of the paragraphs of the respective Article or in the laying open of the application, a patent application has been effected, a patent shall not be granted for the invention notwithstanding Article 29(1); provided, however, that this shall not apply where, at the time of the filing of the said patent application, the applicant of the said patent application and the applicant of the other application for a patent or for registration of a utility model are the same person. 

 (Exception to lack of novelty of invention)  Article 30  (1) In the case of an invention which has fallen under any of the items of Article 29 (1) against the will of the person having the right to obtain a patent, such invention shall be deemed not to have fallen under any of the items of Article 29 (1) for the purpose of Article 29 (1) and (2) for the invention claimed in a patent application which has been filed by the said person within six months from the date on which the invention first fell under any of said items.  (2) In the case of an invention which has fallen under any of the items of Article 29(1) as a result of an act of the person having the right to obtain a patent (excluding those which have fallen under any of the items of the preceding paragraph by being contained in gazette relating to an invention, utility model, design or trademark), the preceding paragraph shall also apply for the purposes of Article 29(1) and (2) the invention claimed in the patent application which has been filed by the said person within six months from the date on which the invention first fell under any of those items.  (3) Any person seeking the application of the preceding paragraph shall submit to the Commissioner of the Patent Office, at the time of filing of the patent application, a document stating thereof and, within thirty days from the date of filing of the patent application, a document proving the fact that the invention which has otherwise fallen under any of the items of Article 29(1) is an invention to which the preceding paragraph may be applicable. 

Article 31  Deleted 

 (Unpatentable inventions)  Article 32   Notwithstanding Article 29, any invention that is liable to injure public order, morality or public health shall not be patented. 

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 (Right to obtain patent)  Article 33   (1) The right to obtain a patent may be transferred.  (2) The right to obtain a patent may not be the subject of a pledge.  (3) Where the right to obtain a patent is jointly owned, no joint owner may assign his respective share without the consent of all the other joint owners.  (4) Where the right to obtain a patent is jointly owned, no joint owner may grant a provisional exclusive license or provisional non-exclusive license on the patent right to be obtained based on the right to obtain a patent to any third party without the consent of all the other joint owners. 

Article 34   (1) The succession of the right to obtain a patent prior to the filing of the patent application shall have no effect on any third party unless the successor in title files the patent application.  (2) Where two or more patent applications are filed on the same date based on the right to obtain the same patent based on succession from the same person, any succession(s) by a person(s) other than those selected by consultations between the applicants shall have no effect on any third party.  (3) The preceding paragraph shall apply where applications for a patent and a utility model registration are filed on the same date based on the right to obtain a patent and the right to obtain a utility model registration for the same invention and device based on succession from the same person.  (4) Any succession to the right to obtain a patent after the filing of the patent application shall have no effect, except in the case of general successions including inheritance, without notification to the Commissioner of the Patent Office.  (5) Where a general succession to the right to obtain a patent including inheritance thereof occurs, the successor in title shall notify the Commissioner of the Patent Office thereof without delay.  (6) Where two or more notifications are submitted on the same date regarding successions to the right to obtain the same patent based on succession from the same person, any notification(s) by a person(s) other than the person selected by consultations between the persons submitting the notifications shall have no effect.  (7) Articles 39(6) and 39(7) shall apply mutatis mutandis to the cases prescribed in paragraphs (2), (3) and (6). 

 (Provisional exclusive license)  Article 34-2   (1) A person who has the right to obtain a patent may grant a provisional

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exclusive license with regard to the patent right to be obtained based on the right to obtain a patent within the scope of the matters described in the description, scope of claims or drawings originally attached to the application.  (2) Where the establishment of a patent right has been registered with regard to a patent application pertaining to a provisional exclusive license, the exclusive license shall be deemed to have been granted  on patent right to the extent permitted by the contract granting the said provisional exclusive license.  (3) A provisional exclusive license may be transferred only where the business involving the working of the invention pertaining to the patent application is also transferred, where the consent of a person who has the right to obtain a patent is obtained or where the transfer occurs as a result of general succession including inheritance.  (4) A provisional exclusive licensee may grant a provisional non-exclusive license on his exclusive license to be obtained based on said provisional exclusive license to a third party only where the consent of a person who has the right to obtain a patent is obtained.  (5) Where a patent application pertaining to a provisional exclusive license is divided pursuant to Article 44(1), the provisional exclusive license shall be deemed to have been granted with regard to the patent right to be obtained based on the right to obtain a patent pertaining to a new patent application pertaining to the division of the said patent application to the extent permitted by the contract granting the said provisional exclusive license; provided, however, that this shall not apply where it is otherwise provided in the contract.  (6) A provisional exclusive license shall be extinguished where the establishment of a patent right has been registered, where the patent application has been abandoned, withdrawn or declined, or where an examiner's decision or trial decision has become final and conclusive to the effect that the patent application is to be refused.  (7) Where there is a provisional non-exclusive licensee as provided in the main clause of paragraph (4) or paragraph (7) of the following Article, a provisional exclusive licensee may waive the provisional exclusive license; only where the consent of the said provisional non-exclusive licensee is obtained.  (8) Article 33(2) to Article 33 (4) shall apply mutatis mutandis to a provisional exclusive license. 

 (Provisional non-exclusive license)  Article 34-3  (1) A person who has the right to obtain a patent may grant a provisional nonexclusive license on the patent right to be obtained based on the right to obtain a patent to a third party within the scope of the matters described in the

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description, scope of claims or drawings originally attached to the application of the said patent application.  (2) Where the establishment of a patent right has been registered with regard to a patent application pertaining to a provisional non-exclusive license pursuant to the preceding paragraph, a non-exclusive license shall be deemed to have been granted on the patent right to a person who has the said provisional nonexclusive license to the extent permitted by the contract granting the said provisional non-exclusive license.  (3) Where an exclusive license is deemed to have been granted with regard to a provisional exclusive license pertaining to the provisional non-exclusive license under 34-2 (4) pursuant to 34-2 (2), the non-exclusive license shall be deemed to have been granted to a person who has the said provisional non-exclusive license on the said exclusive license to the extent permitted by the contract granting the said provisional non-exclusive license.  (4) A provisional non-exclusive license may be transferred only where the business involving the working of invention pertaining to the patent application is also transferred, where the consent of a person who has the right to obtain a patent (or, in the case of  provisional non-exclusive license on the exclusive license to be obtained based on the provisional exclusive license, a person who has the right to obtain a patent and a provisional exclusive licensee ) is obtained, or where the transfer occurs as a result of general succession including inheritance.  (5) Where a priority claim under Article 41(1) is made based on the invention described in the description, scope of claims or drawings (in the case of the earlier application being the foreign-language-written-application under Article 36-2(2), foreign-language-documents as provided in Article 36-2(1)) originally attached to the application of the earlier application under Article 41(1) pertaining to a provisional non-exclusive license under paragraph (1) or Article 34-2(4), or Article 4-2(1) of the Utility Model Act, the provisional nonexclusive license shall be deemed to have been granted to a person who has the said provisional non-exclusive license on the patent right to be obtained based on the right to obtain a patent pertaining to the patent application containing the said priority claim to the extent permitted by the contract granting the said provisional non-exclusive license; provided, however, that this shall not apply where it is otherwise provided in the contract.  (6) Where a patent application pertaining to a provisional non-exclusive license is divided pursuant to Article 44(1), the provisional non-exclusive license shall be deemed to have been granted to a person who has the said provisional nonexclusive license on the patent right to be obtained based on the right to obtain a patent pertaining to a new patent application pertaining to the division of the said patent application to the extent permitted by the contract granting the

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said provisional non-exclusive license; provided, however, that this shall not apply where it is otherwise provided in the contract.  (7) Where a provisional exclusive license on a patent right to be obtained based on the right to obtain a patent pertaining to a new patent application under 342(5) (hereinafter in this paragraph referred to as a "provisional exclusive license pertaining to the new patent application") is deemed to have been granted pursuant to the main clause of Article 34-2(5), the provisional nonexclusive license shall be deemed to have been granted to a person who has the provisional non-exclusive license with regard to an exclusive license to be obtained based on the provisional exclusive license on the patent right to be obtained based on the right to obtain a patent pertaining to the original patent application pertaining to the said new patent application ,on the exclusive license to be obtained based on the said provisional exclusive license pertaining to the new patent application to the extent permitted by the contract granting the said provisional non-exclusive license; provided, however, that this shall not apply where it is otherwise provided in the contract.  (8) Where an application is converted pursuant to Article 46(1) with regard to an application for utility model registration pertaining to a provisional nonexclusive license under Article 4-2(1) of the Utility Model Act, the provisional non-exclusive license shall be deemed to have been granted to a person who has the said provisional non-exclusive license on a patent right to be obtained based on the right to obtain a patent pertaining to the patent application pertaining to the conversion of the said application to the extent permitted by the contract granting the said provisional non-exclusive license; provided, however, that this shall not apply where it is otherwise provided in the contract.  (9) Where an application is converted pursuant to Article 46(2) with regard to an application for design registration pertaining to a provisional non-exclusive license under Article 5-2(1) of the Design Act (Act No.125 of 1959), the provisional non-exclusive license shall be deemed to have been granted to a person who has the said provisional non-exclusive license with regard to a patent right to be obtained based on the right to obtain a patent pertaining to the patent application pertaining to the conversion of the said application to the extent permitted by the contract granting the said provisional nonexclusive license; provided, however, that this shall not apply where it is otherwise provided in the contract.  (10) A provisional non-exclusive license shall be extinguished where the establishment of a patent right has been registered, where the patent application has been abandoned, withdrawn or declined, or where an examiner's decision or trial decision has become final and conclusive to the effect that the patent application is to be refused.

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 (11) In addition to the case provided for in the preceding paragraph, the provisional non-exclusive license under Article 34-2(4) or the main clause of paragraph (7) shall be extinguished in the case where the said provisional exclusive license is extinguished.  (12) Article 33(2) and Article 33(3) shall apply mutatis mutandis to a provisional non-exclusive license. 

 (Effect of the registration)  Article 34-4  (1) The grant, transfer (except for a transfer arising from general succession including inheritance), amendment, lapse (except for a lapse arising from a merger or under Article 34-2(6)) or restriction on disposition of a provisional exclusive license shall have no effect unless it is registered.  (2) Matters of general succession including inheritance under the preceding paragraph shall be notified to the Commissioner of the Patent Office without delay. 

 (Perfection of provisional non-exclusive license)  Article 34-5  A provisional non-exclusive license shall have effect on any person who, after the grant thereof, has obtained the right to obtain a patent pertaining to the said provisional non-exclusive license or a provisional exclusive license, or a provisional exclusive license on the right to obtain a patent pertaining to the provisional non-exclusive license. 

 (Inventions by Employees)  Article 35   (1) An employer, a juridical person or a national or local government (hereinafter referred to as "employer, etc."), where an employee, an officer of the juridical person, or a national or local government employee (hereinafter referred to as "employee, etc.") has obtained a patent for an invention which, by the nature of the said invention, falls within the scope of the business of the said employer, etc. and was achieved by an act(s) categorized as a present or past duty of the said employee, etc. performed for the employer, etc. (hereinafter referred to as "employee invention") or where a successor to the right to obtain a patent for the employee invention has obtained a patent therefor, shall have a non-exclusive license on the said patent right.  (2) In the case of an invention by an employee, etc., any provision in any agreement, employment regulation or any other stipulation providing in advance that the right to obtain a patent or that the patent rights for any invention made by an employee,etc. shall vest in the employer, etc., or that a

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provisional exclusive license or exclusive license for the said invention shall be granted to the employer, etc., shall be null and void unless the said invention is an employee invention.  (3) Where the employee, etc., in accordance with any agreement, employment regulation or any other stipulation, vests the right to obtain a patent or the patent right for an employee invention in the employer, etc., or grants an exclusive license therefor to the employer, etc., or where an exclusive license is deemed to have been granted pursuant to Article 34-2(2) in the case where the employee, etc., in accordance with any agreement, employment regulation or any other stipulation, grants a provisional exclusive license therefor to the employer,etc., for an employee invention, the said employee, etc. shall have the right to receive reasonable value.  (4) Where an agreement, employment regulation or any other stipulation provides for the value provided in the preceding paragraph, the payment of value in accordance with the said provision(s) shall not be considered unreasonable in light of circumstances where a negotiation between the employer, etc. and the employee, etc. had taken place in order to set standards for the determination of the said value, the set standards had been disclosed, the opinions of the employee, etc. on the calculation of the amount of the value had been received and any other relevant circumstances.  (5) Where no provision setting forth the value as provided in the preceding paragraph exists, or where it is recognized under the preceding paragraph that the amount of the value to be paid in accordance with the relevant provision(s) is unreasonable, the amount of the value under paragraph (3) shall be determined by taking into consideration the amount of profit to be received by the employer, etc. from the invention, the employer, etc.'s burden, contribution, and treatment of the employee, etc. and any other circumstances relating to the invention. 

 (Patent applications)  Article 36   (1) A person requesting the grant of a patent shall submit an application to the Commissioner of the Patent Office stating the following:  (i) the name and domicile or residence of the applicant(s) for the patent; and  (ii) the name and domicile or residence of the inventor(s).  (2) The description, scope of claims, drawings (where required), and abstract shall be attached to the application.  (3) The description as provided in the preceding paragraph shall state the following:  (i) the title of the invention;  (ii) a brief explanation of the drawing(s); and

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 (iii) a detailed explanation of the invention.  (4) The statement of the detailed explanation of the invention as provided in item (iii) of the preceding Paragraph shall comply with each of the following items:  (i) in accordance with Ordinance of the Ministry of Economy, Trade and Industry, the statement shall be clear and sufficient as to enable any person ordinarily skilled in the art to which the invention pertains to work the invention; and  (ii) where the person requesting the grant of a patent has knowledge of any invention(s) (inventions as provided in Article 29(1)(iii), hereinafter the same shall apply in this item) related to the said invention, that has been known to the public through publication at the time of filing of the patent application, the statement shall provide the source of the information concerning the invention(s) known to the public through publication such as the name of the publication and others.  (5) The scope of claims as provided in paragraph (2) shall state a claim or claims and state for each claim all matters used necessary to specify the invention for which the applicant requests the grant of a patent. In such case, an invention specified by a statement in one claim may be the same invention specified by a statement in another claim.  (6) The statement of the scope of claims as provided in paragraph (2) shall comply with each of the following items:  (i) the invention for which a patent is sought is stated in the detailed explanation of the invention;  (ii) the invention for which a patent is sought is clear;  (iii) the statement for each claim is concise; and  (iv) the statement is composed in accordance with Ordinance of the Ministry of Economy, Trade and Industry.  (7) The abstract as provided in paragraph (2) shall state a summary of the invention disclosed in the description, scope of claims or drawings, and any other matters as provided by Ordinance of the Ministry of Economy, Trade and Industry. 

Article 36-2   (1) A person requesting the grant of a patent may, in lieu of the description, scope of claims, drawings (where required) and abstract as provided in paragraph (2) of the preceding Article, attach to the application a document in foreign language as provided by Ordinance of the Ministry of Economy, Trade and Industry, stating matters required to be stated in the description or the scope of claims under paragraphs (3) to (6) of the said Article, and drawing(s) (where required) which contain any descriptive text in the said foreign

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language(hereinafter referred to as "foreign-language-documents"), and a document in the said foreign language stating matters required to be stated in the abstract under paragraph (7) of the said Article (hereinafter referred to as "foreign-language-abstract").  (2) The applicant for a patent application in which foreign-language-documents and foreign-language-abstract are attached to the application under the preceding paragraph (hereinafter referred to as "foreign-language-writtenapplication") shall submit to the Commissioner of the Patent Office Japanese translations of the foreign-language-documents and the foreign-languageabstract within one year and two months from the date of filing of the patent application; provided, however, that where the foreign-language-writtenapplication is a new patent application arising from the division of a patent application under Article 44(1), or a patent application arising from the conversion of an application under Article 46(1) or (2), or a patent application based on a utility model registration under Article 46-2(1), the applicant may submit Japanese translations of the foreign-language-documents and the foreign-language-abstract even after the lapse of the time limit prescribed in the main clause, but not later than two months following the division of a patent application, conversion of application or filing of patent application based on a utility model registration.  (3) Where the translation of foreign-language-documents (excluding drawings) as provided in the preceding paragraph is not submitted within the time limit as provided in the preceding paragraph, the patent application shall be deemed to have been withdrawn.  (4) An applicant of a patent application that was deemed to have been withdrawn pursuant to the provision of the preceding paragraph, where there are justifiable reasons for having not been able to submit the said translation within the time limit under paragraph(2), may submit to the Commissioner of the Patent Office translations of the foreign-language-documents and the foreign-language-abstract under paragraph (2), within two months from the date on which the reasons ceased to exist, but not later than one year following the expiration of the time limit under paragraph(2).  (5) The translation submitted under the preceding paragraph shall be deemed to have been submitted to the Commissioner of the Patent Office at the time of expiration of the time limit under paragraph (2).  (6) The translation of foreign-language-documents as provided in paragraph (2) shall be deemed to be the description, scope of claims and drawings submitted with the application under paragraph (2) of the preceding Article and the translation of foreign-language-abstract as provided in paragraph (2) shall be deemed to be the abstract submitted with the application under paragraph (2) of the preceding Article.

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Article 37   Two or more inventions may be the subject of a single patent application in the same application provided that, these inventions are of a group of inventions recognized as fulfilling the requirements of unity of invention based on their technical relationship designated in Ordinance of the Ministry of Economy, Trade and Industry,. 

 (Joint applications)  Article 38  Where the right to obtain a patent is jointly owned, a patent application may only be filed by all the joint owners. 

 (Waiver or withdrawal of patent application)  Article 38-2   Where there is a person who has a provisional exclusive license on the patent application, an applicant of the patent may waive or withdraw the said patent application, only where the consent of the person is obtained. 

 (Prior application)  Article 39   (1) Where two or more patent applications claiming identical inventions have been filed on different dates, only the applicant who filed the patent application on the earliest date shall be entitled to obtain a patent for the invention claimed.  (2) Where two or more patent applications claiming identical inventions have been filed on the same date, only one applicant, who was selected by consultations between the applicants who filed the said applications, shall be entitled to obtain a patent for the invention claimed. Where no agreement is reached by consultations or consultations are unable to be held, none of the applicants shall be entitled to obtain a patent for the invention claimed.  (3) Where an invention and a device claimed in applications for a patent and a utility model registration are identical and the applications for a patent and a utility model registration are filed on different dates, the applicant for a patent may obtain a patent for the invention claimed therein, only if the application for a patent is filed prior to the application for a utility model registration.  (4) Where an invention and a device claimed in applications for a patent and a utility model registration are identical (excluding the case where an invention claimed in a patent application based on a utility model registration under Article 46-2(1) (including a patent application that is deemed to have been filed at the time of filing of the said patent application under Article 44(2)

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(including its mutatis mutandis application under Article 46(5)) and a device relating to the said utility model registration are identical) and the applications for a patent and a utility model registration are filed on the same date, only one of the applicants, selected by consultations between the applicants, shall be entitled to obtain a patent or a utility model registration. Where no agreement is reached by consultations or no consultations are able to be held, the applicant for a patent shall not be entitled to obtain a patent for the invention claimed therein.  (5) Where an application for a patent or a utility model registration has been waived, withdrawn or dismissed, or where the examiner's decision or trial decision to the effect that a patent application is to be refused has become final and binding, the application for a patent or a utility model registration shall, for the purpose of paragraphs (1) to (4), be deemed never to have been filed; provided, however, that this shall not apply to the case where the examiner's decision or trial decision to the effect that the patent application is to be refused has become final and binding on the basis that the latter sentence of paragraph (2) or (4) is applicable to the said patent application.  (6) The Commissioner of the Patent Office shall, in the case of paragraph (2) or (4), order the applicant to hold consultations as specified under paragraph (2) or (4) and to report the result thereof, designating an adequate time limit.  (7) Where no report under the preceding paragraph is submitted within the time limited designated under the said paragraph, the Commissioner of the Patent Office may deem that no agreement under paragraph (2) or (4) has been reached. 

Article 40  Deleted 

 (Priority claim based on patent application, etc.)  Article 41   (1) A person requesting the grant of a patent may make a priority claim for an invention claimed in the patent application, based on an invention disclosed in the description or scope of claims for a patent or utility model registration, or drawings (in the case where the earlier application was a foreign-languagewritten-application, foreign-language-documents) originally attached to the application of an earlier application filed for a patent or utility model registration which the said person has the right to obtain (hereinafter referred to as "earlier application"), except in the following cases: provided, however, where there is a person who has a provisional exclusive license on the earlier application, priority claim may be made only where the consent of the person is obtained at the time of filing of the patent:  (i) where the said patent application is not filed within one year from the date

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of the filing of the earlier application;  (ii) where the earlier application is a new divisional patent application extracted from a patent application under Article 44(1), a patent application converted from a patent application under Article 46(1) or 46(2) or a patent application based on a utility model registration under Article 46-2(1), or a new divisional utility model registration application extracted from a utility model registration application under Article 44(1) of the Patent Act as applied mutatis mutandis under Article 11(1) of the Utility Model Act or a utility model registration application converted from a utility model registration application under Article 10(1) or 10(2) of the Utility Model Act;  (iii) where at the time of the filing of the said patent application, the earlier application had been waived, withdrawn or dismissed;  (iv) where, at the time of the filing of the said patent application, the examiner's decision or the trial decision on the earlier application had become final and binding; and  (v) where, at the time of the filing of the said patent application, the registration establishing a utility model right under Article 14(2) of the Utility Model Act with respect to the earlier application had been effected.  (2) For inventions among those claimed in a patent application containing a priority claim under paragraph (1), for those that are stated in the description, scope of claims for a patent or utility model registration or drawings (in the case where the earlier application was a foreign-language-written-application, foreign-language-documents) originally attached to the application of the earlier application on which the priority claim is based (in the case where the earlier application contains a priority claim under that paragraph or Article 8(1) of the Utility Model Act, or Article 43(1) or 43-2(1) or (2) of the Patent Act (including its mutatis mutandis application under Article 11(1) of the Utility Model Act), excluding any inventions disclosed in any documents (limited to those equivalent to the description, scope of claims for a patent or utility model registration or drawings) submitted at the time of the filing of the application on which the priority claim in the earlier application is based), the said patent application shall be deemed to have been filed at the time when the earlier application was filed, in the case of the application of Article 29, the main clause of Article 29-2, Articles 30(1), (2), 39(1) to (4), 69(2)(ii), 72, 79, 81, 82(1), 104 (including its mutatis mutandis application under Article 65(5) (including its mutatis mutandis application under Article 184-10(2))) and 126(7) (including its mutatis mutandis application under Articles 17-2(6) and 1342(9)) of the Patent Act, Articles 7(3) and 17 of the Utility Model Act, Articles 26, 31(2) and 32(2) of the Design Act, and Article 29, 33-2(1) and 33-3(1) (including its mutatis mutandis application under Article 68(3) of the Trademark Act) of the Trademark Act (Act No. 127 of 1959 ).

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 (3) Among inventions disclosed in the description, scope of claims or drawings (in the case of a foreign-language-written-application, foreign-languagedocuments) originally attached to the application in a patent application containing a priority claim under paragraph (1), for those that are stated in the description, scope of claims for a patent or utility model registration or drawings (in the case where the earlier application was a foreign-languagewritten-application, foreign-language-documents) originally attached to the application of the earlier application on which the priority claim is based (in the case where the earlier application contains a priority claim under the said paragraph or Article 8(1) of the Utility Model Act, or Article 43(1) or 43-2(1) or (2) of the patent Act (including its mutatis mutandis application under Article 11(1) of the Utility Model Act), excluding any inventions disclosed in any documents (limited to those equivalent to the description, scope of claim for a patent or utility model registration or drawing) submitted at the time of the filing of the application on which the priority claim in the earlier application is based), the laying open of application or the bulletin containing the Utility Model pertaining to the earlier application shall be deemed to have been effected or issued at the time when the patent gazette containing patent or the laying open of application pertaining to the said patent application was issued or effected, and the main clause of Article 29-2 of the patent Act or Article 3-2 of the Utility Model Act shall apply.  (4) A person requesting to make a priority claim under paragraph (1) shall submit to the Commissioner of the Patent Office a document stating thereof and the indication of the earlier application along with the patent application. 

 (Withdrawal, etc. of earlier application)  Article 42   (1) The earlier application on which a priority claim is based under Article 41(1) shall be deemed to have been withdrawn when one year and three months has lapsed from the filing date of the earlier application; provided, however, that this shall not apply to the case where the earlier application has been waived, withdrawn or dismissed, where the examiner's decision or trial decision on the earlier application has become final and binding, where the registration establishing a utility model right under Article 14(2) of the Utility Model Act with respect to the earlier application has been effected or where all priority claims based on the earlier application have been withdrawn.  (2) The applicant of a patent application containing a priority claim under Article 41(1) may not withdraw the priority claim after the period of one year and three months has passed from the filing date of the earlier application.  (3) Where the patent application containing a priority claim under Article 41(1) is withdrawn within one year and three months from the filing date of the

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earlier application, the said priority claim shall be deemed withdrawn simultaneously. 

 (Procedures for a priority claim under the Paris Convention)  Article 43   (1) A person desiring to take advantage of the priority under Article 4.D(1) of the Paris Convention regarding a patent application shall, along with the patent application, submit to the Commissioner of the Patent Office a document stating thereof, and specify the country of the Union of the Paris Convention in which the application was first filed, deemed to have been first filed under C(4) of the said Article, or recognized to have been first filed under A(2) of the said Article, and the date of filing of the said application.  (2) A person who has made a declaration of priority under the preceding paragraph shall submit to the Commissioner of the Patent Office a certificate showing the date of filing from the country of the Union of the Paris Convention in which the application was first made, or deemed to have been first made under Article 4.C(4) of the Paris Convention, or recognized to have been first made under A(2) of the said Article, as well as certified copies of those equivalent to the description, scope of claims for patent or utility model registration and drawings submitted at the time of the filing of the application, or any bulletin or certificate equivalent thereto issued by the government of the said country, within one year and four months from the earliest of the following dates:  (i) the date of filing which was first made, deemed to have been first made under Article 4.C(4) of the Paris Convention, or recognized to have been first made under A(2) of the said Article;  (ii) where such patent application contains a priority claim under Article 41(1), the date of filing of the application on which the said priority claim is based; or  (iii) where such patent application contains other priority claims under 43(1) or 43-2 (1) or (2), the date of filing of the application on which the said priority claim is based.  (3) A person who has made a declaration of priority under paragraph (1) shall, in addition to the documents as provided in the preceding paragraph, submit to the Commissioner of the Patent Office a document specifying the filing number of the application which was first filed, deemed to have been first filed under Article 4.C(4) of the Paris Convention, or recognized to have been first filed under A(2) of the said Article; provided, however, that where such filing number is not available to the person prior to the submission of the documents as provided in the said paragraph, in lieu of the said document, a document specifying the reason thereof shall be submitted and the document specifying

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such filing number shall be submitted without delay when such number becomes available to the said person.  (4) Where a person who has made a declaration of priority under paragraph (1) fails to submit the documents specified in paragraph (2) within the time limit provided therein, the said priority claim shall lose its effect.  (5) In relation to the application of the preceding two paragraphs, where a person, having made a declaration of priority under paragraph (1) in the case as provided by Ordinance of the Ministry of Economy, Trade and Industry in which a conversion of matters stated in the documents as provided in paragraph 2 through an electromagnetic devices (devices that are not perceivable by senses including electronic and magnetic devices) with a country of the Union of the Paris Convention or an international organization for industrial property rights is allowed, submits to the Commissioner of the Patent Office the document stating the said filing number of the application and other matters as provided by Ordinance of the Ministry of Economy, Trade and Industry as matters necessary for converting the said matters, within the designated time limit under paragraph (2), the documents as provided in paragraph (2) shall be deemed to have been submitted. 

 (Priority claims recognized under the Paris Convention)  Article 43-2   (1) A priority claim may be declared in a patent application under Article 4 of the Paris Convention, where the priority claim is based on an application filed by a person specified in the left-hand column of the following table in a country specified in the corresponding right-hand column. 

Japanese nationals or nationals of a country of the Union of the Paris Convention (including nationals deemed to be the nationals of the country of the Union in accordance with Article 3 of the Paris Convention - hereinafter the same shall apply in paragraph (2)).

Member of the World Trade Organization

Nationals of a Member of the World Trade Organization (meaning the nationals of Members provided for in paragraph (3) of Article 1 of the Annex 1C to the Marrakesh

Country of the Union of the Paris Convention or Member of the World Trade Organization 

 (2) A national of a country that is neither a country of the Union of the Paris Convention nor a member of the World Trade Organization (limited to the country that allows Japanese nationals to declare a priority under the same

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conditions as in Japan, hereinafter referred to as a "specified country" in this paragraph), a Japanese national, a national of a country of the Union of the Paris Convention or a national of a member of the World Trade Organization may declare a priority claim in the patent application based on the application filed in the specified country under Article 4 of the Paris Convention.  (3) Article 43 shall apply mutatis mutandis to the case where a priority claim is declared under paragraph (1) or (2). 

 (Division of patent applications)  Article 44   (1) An applicant for a patent may extract one or more new patent applications out of a patent application containing two or more inventions only within the following cases:  (i) at the allowable time or within the allowable time limit for amendments of the description, scope of claims or drawings attached to the application;  (ii) within 30 days from the date on which a certified copy of the examiner's decision to the effect that a patent is to be granted (excluding the examiner's decision to the effect that a patent is to be granted under Article 51 as applied mutatis mutandis under Article 163(3) and the examiner's decision to the effect that a patent is to be granted with regard to a patent application that has been subject to examination as provided in Article 160(1)) has been served; and  (iii) within three months from the date on which a certified copy of the examiner's initial decision to the effect that the application is to be refused has been served.  (2) In the case referred to in the preceding paragraph, the new patent application shall be deemed to have been filed at the time of filing of the original patent application; provided, however, that this shall not apply for the purposes of applications of: Article 29-2 of the Patent Act where the new patent application falls under another patent application in the said Article; Article 32 of the Utility Model Act where the new patent application falls under a patent application in the said Article; and Articles 30(3), 41(4) and 43(1) of the Patent Act (including its mutatis mutandis application under paragraph (3) of the preceding Article).  (3) For the purpose of application of Article 43(2) (including its mutatis mutandis application under paragraph (3) of the preceding Article) where a new patent application is filed under paragraph (1), "within one year and four months from the earliest of the following dates" in Article 43(2) shall read "within one year and four months from the earliest of the following dates or three months from the date of filing of the new patent application, whichever is later."

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 (4) Where a new patent application is filed under paragraph (1), any statements or documents which have been submitted in relation to the original patent application and are required to be submitted in relation to the new patent application under Article 30(3), 41(4), or Articles 43(1) and 43(2) (including its mutatis mutandis application under paragraph (3) of the preceding Article) shall be deemed to have been submitted to the Commissioner of the Patent Office along with the new patent application.  (5) Where the period as provided in Article 108(1) is extended under Article 4 or Article 108(3), the 30-day period as provided in paragraph (1)(ii) shall be deemed to have been extended only for that period as extended.  (6) Where the period as provided in Article 121(1) is extended under Article 4, the three-month period as provided in paragraph (1)(iii) shall be deemed to have been extended only for that period as extended. 

Article 45  Deleted 

 (Conversion of application)  Article 46   (1) An applicant of a utility model registration may convert the application into a patent application; provided, however, that this shall not apply after the expiration of 3 years from the date of filing of the utility model registration application.  (2) An applicant of a design registration may convert the application into a patent application; provided, however, that this shall not apply after the expiration of 3 months from the date the certified copy of the examiner's initial decision to the effect that the application for a design registration is to be refused has been served or after the expiration of 3 years from the date of filing of the design registration application (excluding the period of a maximum of 3 months after the date the certified copy of the examiner's initial decision to the effect that the application for a design registration is to be refused has been served).  (3) Where the period as provided in Article 46(1) of the Design Act is extended under Article 4 of the Patent Act as applied mutatis mutandis under Article 68(1) of the Design Act, the 3-month period as provided in the proviso to the preceding paragraph shall be deemed to have been extended only for that period as extended.  (4) Where an application is converted under paragraph (1) or (2), the original application shall be deemed to have been withdrawn.  (5) Paragraphs (2) to (4) of Article 44 shall apply mutatis mutandis to the case of conversion of an application under paragraph (1) or (2). 

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 (Patent applications based on utility model registration)  Article 46-2   (1) Except for the following cases, a holder of utility model right may file a patent application based on his/her own utility model registration as provided by Ordinance of the Ministry of Economy, Trade and Industry.; In such a case, the utility model right shall be waived:  (i) where 3 years have lapsed from the date of filing of an application for the said utility model registration;  (ii) where a petition requesting the examiner's technical opinion as to the registerability of the utility model claimed in the utility model registration application or of the utility model registration, (in the following paragraph simply referred to as "utility model technical opinion"), is filed by the applicant of the utility model registration or the utility model right holder;  (iii) where 30 days have lapsed from the date of receipt of initial notice under Article 13(2) of the Utility Model Act pertaining to a petition requesting the utility model technical opinion on the application for the utility model registration, or on the utility model registration filed by a person who is neither the applicant of the said utility model registration nor the said holder of Utility Model right; and  (iv) where the time limit initially designated under Article 39(1) of the Utility Model Act for a utility model registration invalidation trial filed against the said utility model registration under Article 37(1) of the Utility Model Act has expired.  (2) A patent application under the preceding paragraph shall be deemed to have been filed at the time of filing of the application for the said utility model registration, provided that matters stated in the description, scope of claims or drawings attached to the application in the said patent application are within the scope of the matters stated in the description, scope of claims or drawings attached to the application in the said utility model registration application on which the said patent application is based; provided, however, that this shall not apply for the purpose of application of Article 29-2 of the Patent Act or Article 3-2 of the Utility Model Act, where the patent application falls under another patent application under the said Article of the Patent Act or the patent application under the said Article of the Utility Model Act, or for the purpose of application of Articles 30(3), the proviso to 36-2(2), 41(4), 43(1) (including its mutatis mutandis application under Article 43-2(3)) and 48-3(2).  (3) Notwithstanding item (iii) of paragraph (1), where, due to reasons beyond the control of the applicant for a patent under paragraph (1), the applicant is unable to file an application for a patent within the time limit as provided in the said item, the applicant may file a patent application within 14 days (where overseas resident, within two months) from the date on which the

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reasons ceased to be applicable, but not later than six months following the expiration of the said time limit.  (4) Where there is an exclusive licensee, a pledgee or, in the case where Article 35(1) of the Patent Act as applied under Article 11(3) of the Utility Model Act or Article 77(4) of the Patent Act as applied under Article 18(3) of the Utility Model Act or Article 19(1) of the Utility Model Act is applicable, a nonexclusive licensee, the holder of a utility model right may file a patent application under paragraph (1), provided that the consent of the said exclusive licensee, pledgee or non-exclusive licensee is obtained.  (5) Articles 44(3) and 44(4) shall apply mutatis mutandis to the case where a patent application is filed under paragraph (1). 

Chapter III Examination 

 (Examination by examiner)  Article 47   (1) The Commissioner of the Patent Office shall direct the examination of patent applications by an examiner.  (2) The qualifications of examiners shall be as prescribed by Cabinet Order. 

 (Exclusion of examiners)  Article 48   Articles 139(i) to 139(v) and 139(vii) shall apply mutatis mutandis to examiners. 

 (Examination of patent applications)  Article 48-2   The examination of a patent application shall be initiated after the filing of a request for examination. 

 (Request for examination of application)  Article 48-3   (1) Where a patent application is filed, any person may, within 3 years from the filing date thereof, file with the Commissioner of the Patent Office a request for the examination of the said application.  (2) In the case of a new patent application arising from the division of a patent application under Article 44(1), or a patent application arising from the conversion of an application under Article 46(1) or 46(2), or a patent application based on a utility model registration under Article 46-2(1), a request for the examination of the said patent application may be filed even after the lapse of the time limit prescribed in the preceding paragraph, but not

33

later than 30 days following the division of a patent application, conversion of application or filing of patent application based on a utility model registration.  (3) A request for the examination of a patent application may not be withdrawn.  (4) Where a request for the examination of an application is not filed within the time limit as provided in paragraph (1) or (2), the said patent application shall be deemed to have been withdrawn. 

Article 48-4   A person(s) filing a request for the examination of an application shall submit a written request to the Commissioner of the Patent Office stating the following:  (i) the name and domicile or residence of the demandant; and  (ii) the identification of the patent application for which the examination is requested. 

Article 48-5   (1) Where a request for the examination of an application is filed, in the case where such request is filed prior to the laying open of the application, the Commissioner of the Patent Office shall publish the fact thereof in the patent gazette either at the time of laying open of the application or thereafter without delay, and in the case where such a request is filed after laying open of the application, without delay after laying open.  (2) Where a request for the examination of an application is filed by a person other than the applicant for a patent, the Commissioner of the Patent Office shall notify the applicant thereof. 

 (Preferential examination)  Article 48-6   Where it is recognized that a person other than the applicant is working the invention claimed in a patent application as a business after the laying open of the application, the Commissioner of the Patent Office may, where deemed necessary, cause the examiner to examine the patent application in preference to other patent applications. 

 (Notice of statement of information concerning invention known to the public through publication)  Article 48-7   Where the examiner recognizes that a patent application does not comply with the requirements as provided in Article 36(4)(ii), the examiner may notify the applicant of the patent thereof and give the said applicant an opportunity to submit a written opinion, designating an adequate time limit for such

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purpose. 

 (Examiner's decision of refusal)  Article 49   The examiner shall render an examiner's decision to the effect that a patent application is to be refused where the patent application falls under any of the following:  (i) an amendment made to the description, scope of claims or drawings attached to the application of a patent application does not comply with the requirements as provided in Article 17-2(3) or (4);  (ii) the invention claimed in the patent application is not patentable under Article 25, 29, 29-2, 32, 38 or 39(1) to 39(4);  (iii) the invention claimed in the patent application is not patentable under the provisions of any relevant treaty;  (iv) the patent application does not comply with the requirements under Article 36(4)(i), 36(6), or 37;  (v) where notice under the preceding Article has been given, following the amendment of the description or submission of the written opinion, the patent application does not comply with the requirements under Article 36(4)(ii);  (vi) where the patent application is a foreign-language-written-application, matters stated in the description, scope of claims or drawings attached to the application of the said patent application do not remain within the scope of matters stated in foreign-language-documents; and  (vii) where the applicant for the patent does not have the right to obtain a patent for the said invention. 

 (Notice of reasons for refusal)  Article 50   Where the examiner intends to render an examiner's decision to the effect that an application is to be refused, the examiner shall notify the applicant for the patent of the reasons therefor and give the said applicant an opportunity to submit a written opinion, designating an adequate time limit for such purpose; provided, however, that in cases referred to in Article 17-2(1) (i) or (iii) (in the case of Article 17-2(1)(i), limited to the case where the examiner has given a notice under the next Article along with the notice of reasons for refusal), this shall not apply where a ruling dismissing an amendment under Article 53(1) is rendered. 

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 (Notice to the effect that the reasons for refusal stated therein are the same as those stated in the previous notice)  Article 50-2   Where the examiner intends to give a notice of reasons for refusal for a patent application under the preceding Article, and these reasons for refusal are the same as the reasons for refusal stated in the previous notice under the preceding Article (including its application mutatis mutandis under Article 159(2) (including its application mutatis mutandis under Article 174(1)) and Article 163(2)) with regard to another patent application (limited to the case where both patent applications are deemed to have been filed simultaneously by applying the provision of Article 44(2) to either or both of them) (excluding such a notice of reasons for refusal of which the applicant of the patent application could have never known the content prior to the filing of a request for examination of the patent application), the examiner shall also give a notice to that effect. 

 (Examiner's decision to the effect that a patent is to be granted)  Article 51   Where no reasons for refusal are found for a patent application, the examiner shall render a decision to the effect that a patent is to be granted. 

 (Formal requirements for decision)  Article 52   (1) The examiner's decision shall be in writing and specify the reasons therefor.  (2) Where the examiner's decision is rendered, the Commissioner of the Patent Office shall serve to the applicant of a Patent a certified copy of the examiner's decision. 

 (Dismissal of amendments)  Article 53   (1) In the case of Article 17-2(1)(i) or 17-2(1)(iii) (in the case of Article 17-2(1)(i), limited to the case where the examiner has given a notice under Article 50-2 along with the notice of reasons for refusal), where, prior to the service of the certified copy of the examiner's decision notifying to the effect that a patent is to be granted, an amendment made to the description, scope of claims or drawings attached to the application is found not to comply with paragraphs (3) to (6) of Article 17-2, the examiner shall dismiss the amendment by a ruling.  (2) The ruling dismissing an amendment under the preceding paragraph shall be made in writing and state the reasons therefor.  (3) The ruling dismissing an amendment under paragraph (1) shall not be subject to appeal; provided, however, that where a request for an appeal

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against an examiner's decision of refusal has been filed, this shall not apply to the appeal made in the proceeding in the said trial. 

 (In relation to litigation)  Article 54   (1) Where deemed necessary during an examination, the examination procedure may be suspended until a trial decision has become final and binding or court proceedings have been concluded.  (2) Where an action is instituted or a motion for an order of provisional seizure or provisional disposition is filed, the court may, if it considers it necessary, suspend the court proceedings until the examiner's decision becomes final and binding. 

Articles 55 through 63  Deleted 

Chapter III-2 Laying Open of Applications 

 (Laying open of applications)  Article 64   (1) After a lapse of one year and six months from the date of the filing of a patent application, the Commissioner of the Patent Office shall lay open the patent application, except in the case where gazette containing the patent has already been published. The same shall apply where a request for the laying open of the patent application under paragraph (1) of the following Article is filed.  (2) The laying open of a patent application shall be effected by stating the following matters in the patent gazette; provided, however, that this shall not apply to the matters prescribed in items (iv) to (vi) where the Commissioner of the Patent Office recognizes that public order or morality is liable to be injured by stating such matters in the patent gazette:  (i) the name, and the domicile or residence of the applicant(s) for the patent;  (ii) the number and the filing date of the patent application;  (iii) the name, and the domicile or residence of the inventor(s);  (iv) the matters stated in the description, scope of claims attached to the application and the contents of the drawings attached to the said application;  (v) the matters stated in the abstract attached to the application;  (vi) in the case of a foreign-language-written-application, the matters stated in documents in foreign language and the abstract in foreign language;  (vii) the number and the date of laying open of the patent application; and  (viii) other necessary matters.  (3) When anything stated in the abstract attached to the application does not

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comply with Article 36(7), or in cases where the Commissioner of the Patent Office finds it otherwise necessary, the Commissioner of the Patent Office may publish in the patent gazette, in lieu of the matters stated in the abstract under item (v) of the preceding paragraph, matters prepared by the Commissioner of the Patent Office. 

 (Request for laying open of a patent application)  Article 64-2   (1) An applicant for a patent may file a request for the laying open of the patent application with the Commissioner of the Patent Office except in the following cases:  (i) where the patent application has already been laid open;  (ii) where the patent application contains a priority claim under Article 43(1), 43-2(1) or 43-2(2), and documents relating thereto under Articles 43(2)(including its mutatis mutandis application under Article 43-2(3)) and 43(5) (including its mutatis mutandis application under Article 43-2(3)), have not been submitted to the Commissioner of the Patent Office; and  (iii) where the patent application is a foreign-language-written-application and translations of foreign-language-documents under Article 36-2(2) have not been submitted to the Commissioner of the Patent Office.  (2) A request for the laying open of a patent application may not be withdrawn. 

Article 64-3   An applicant filing a request for the laying open of a patent application shall submit a written request to the Commissioner of the Patent Office stating the following:  (i) the name and domicile or residence of the demandant; and  (ii) the identification of the patent application for which the laying open is requested. 

 (Effect of the laying open of applications)  Article 65   (1) After the laying open of a patent application, where the applicant for the patent has given warning with documents stating the contents of the invention claimed in the patent application, the applicant may claim compensation against a person who has worked the invention as a business after the warning and prior to the registration establishing a patent right, and the amount of compensation shall be equivalent to the amount the applicant would be entitled to receive for the working of the invention if the invention were patented. Even where the said warning has not been given, the same shall apply to a person who knowingly commercially worked an invention claimed in

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a laid open patent application, prior to the registration establishing a patent right.  (2) The right to claim compensation under the preceding paragraph may not be exercised until the registration establishing a patent right has been effected.  (3) Where a provisional exclusive licensee or a provisional non-exclusive licensee has worked an invention pertaining to the patent application to the extent permitted by the contract granting a license, the applicant for the patent may not claim compensation under paragraph (1). 4 第一項の規定による請求権の行使は、特許権の行使を妨げない。 (4) The exercise of the right to claim compensation under paragraph (1) shall not preclude the exercise of the patent right.  (5) Where a patent application has been waived, withdrawn or dismissed after the laying open of the patent application, or where the examiner's decision or a trial decision refusing the patent application has become final and binding, or where the patent right has been deemed never to have existed from the beginning under Article 112(6) (except in the case where it is further found that the patent right is deemed to have existed from the beginning under Article 112-2(2)), or where, with exception of cases coming under the proviso to Article 125, a trial decision to the effect that the patent is to be invalidated has become final and binding, the right to claim under paragraph (1) shall be deemed never to have been established from the beginning.  (6) Articles 101, 104 to 104-3, 105, 105-2, 105-4 to 105-7 and 168(3) to 168(6) of this Act and Articles 719 and 724 (tort) of the Civil Code (Act No. 89 of 1896) shall apply mutatis mutandis to the exercise of the right to claim compensation under paragraph (1). In this case, where a person having the right to claim compensation has become aware of the fact that the invention claimed in the patent application had been worked and of the person who had worked the invention prior to the registration establishing a patent right, the term "by the victim or his/her legal representative within three years from the time when he/she comes to know of the damages and the identity of the perpetrator" in Article 724 of the Civil Code shall be deemed to be replaced with "by the person having the right to claim within three years from the date of the registration establishing a patent right." 

Chapter IV Patent Rights Section 1 Patent Rights 

 (Registration of establishment of a patent right)  Article 66   (1) A patent right shall become effective upon registration of its establishment.  (2) The establishment of a patent right shall be registered where patent fees for

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each year during the period from the first year to the third year under Article 107(1) have been paid or an exemption or deferment thereof has been granted.  (3) Where the registration under the preceding paragraph has been effected, the following matters shall be published in the patent gazette; provided, however, that this shall not apply to the matters prescribed in paragraph (v) where the patent application has already been laid open:  (i) the name, and the domicile or residence of the patentee(s);  (ii) the number and the filing date of the patent application;  (iii) the name, and the domicile or residence of the inventor(s);  (iv) the matters stated in the description and scope of claims attached to the application and the contents of the drawings attached to the said application;  (v) the matters stated in the abstract attached to the application;  (vi) the patent number and the date of registration of establishment; and  (vii) other necessary matters.  (4) Article 64(3) shall apply mutatis mutandis where the matters stated in the abstract as provided in Article 64(3)(v) are published in the patent gazette under the preceding paragraph. 

 (Duration of patent rights)  Article 67   (1) The duration of a patent right shall expire after a period of 20 years from the filing date of the patent application.  (2) Where there is a period during which the patented invention is unable to be worked because approvals prescribed by relevant Acts that are intended to ensure the safely, etc. or any other disposition designated by Cabinet Order as requiring considerable time for the proper execution of the disposition in light of the purpose, procedures, etc., of such a disposition is necessary to obtain for the working of the patented invention, the duration of the patent right may be extended, upon the filing an application to register an extension of the duration, by a period not exceeding 5 years. 

 (Registration of extension of duration)  Article 67-2   (1) A person(s) filing an application to register an extension of the duration of a patent right shall submit an application to the Commissioner of the Patent Office stating the following:  (i) the name, and the domicile or residence of the applicant;  (ii) the patent number;  (iii) the period for which the extension is requested (not exceeding 5 years); and  (iv) the contents of the disposition designated by Cabinet Order under Article

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67(2).  (2) The written application under the preceding paragraph shall be accompanied by materials specifying the reason(s) for the extension, as provided by Ordinance of the Ministry of Economy, Trade and Industry.  (3) The application to register an extension of the duration of a patent right shall be filed within the time limit prescribed by Cabinet Order after the disposition prescribed by Cabinet Order under Article 67(2) is obtained; provided, however, that the said written application may not be filed after the expiration of the duration of a patent right under Article 67(1).  (4) Where a patent right is jointly owned, none of the joint owners may file an application to register an extension of the duration of a patent right unless jointly with all the other joint owners.  (5) Where an application to register an extension of the duration of a patent right is filed, the duration shall be deemed to have been extended; provided, however, that this shall not apply where the examiner's decision to the effect that the application is to be refused has become final and binding or where the extension of the duration of a patent right has been registered.  (6) Where an application to register an extension of the duration of a patent right is filed, matters stated in paragraph (1) and the number and the filing date of the application shall be published in the patent gazette. 

Article 67-2-2   (1) Where the disposition designated by Cabinet Order under Article 67(2) is unlikely to be obtained prior to 6 months before the expiration of the duration of a patent right under Article 67(1), a person filing an application to register an extension of the duration of a patent right shall submit to the Commissioner of the Patent Office, on or before the time limit, a document stating the following:  (i) the name, and domicile or residence of the person filing the application;  (ii) the patent number; and  (iii) the disposition designated by Cabinet Order under Article 67(2).  (2) Unless the document required to be submitted under the preceding paragraph is submitted, an application to register an extension of the duration of a patent right may not be filed after 6 months before the expiration of the duration of the patent right under Article 67(1).  (3) Where the document as provided in paragraph (1) is submitted, the matters prescribed in the said paragraph shall be published in the patent gazette. 

Article 67-3   (1) Where an application to register an extension of the duration of a patent right falls under any of the following items, the examiner shall render the

41

examiner's decision to the effect that the application is to be refused:  (i) where the disposition designated by Cabinet Order under Article 67(2) is not deemed to have been necessary to obtain for the working of the patented invention;  (ii) where the patentee, or the exclusive licensee or the non-exclusive licensee of the patent has not obtained the disposition designated by Cabinet Order under Article 67(2);  (iii) where the period for which the extension is requested exceeds the period during which the patented invention was unable to be worked;  (iv) where the person filing the application is not the patentee; and  (v) where the application does not meet the requirements under Article 67-2(4).  (2) Where no reasons for refusal are found for the application to register an extension of the duration of a patent right, the examiner shall render an examiner's decision to the effect that the extension is to be registered.  (3) Where the examiner's decision or trial decision to the effect that the extension of the duration of the patent right is to be registered is rendered, the extension of the duration of the patent right shall be registered.  (4) Where the registration under the preceding paragraph is made, the following matters shall be published in the patent gazette:  (i) the name and domicile or residence of the patentee;  (ii) the patent number;  (iii) the number and filing date of the application to register an extension of the duration of the patent right;  (iv) the date of the registration of extension;  (v) the period of extension; and  (vi) the contents of the disposition designated by Cabinet Order under Article 67(2). 

Article 67-4   Articles 47(1), 48, 50 and 52 shall apply mutatis mutandis to the examination of the application to register an extension of the duration of a patent right. 

 (Effect of patent right)  Article 68   A patentee shall have the exclusive right to work the patented invention as a business; provided, however, that where an exclusive license regarding the patent right is granted to a licensee, this shall not apply to the extent that the exclusive licensee is licensed to exclusively work the patented invention. 

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 (Effect of patent right in the case of duration extension)  Article 68-2   Where the duration of a patent right is extended (including the case where the duration is deemed to have been extended under Article 67-2(5)), such patent right shall not be effective against any act other than the working of the patented invention for the product which was the subject of the disposition designated by Cabinet Order under Article 67(2) which constituted the reason for the registration of extension (where the specific usage of the product is prescribed by the disposition, the product used for that usage). 

 (Limitations of patent right)  Article 69   (1) A patent right shall not be effective against the working of the patented invention for experimental or research purposes.  (2) A patent right shall not be effective against the following products:  (i) vessels or aircrafts merely passing through Japan, or machines, apparatus, equipment or other products used therefor; and  (ii) products existing in Japan prior to the filing of the patent application.  (3) A patent right for the invention of a medicine (refers to a product used for the diagnosis, therapy, treatment or prevention of human diseases, hereinafter the same shall apply in this paragraph) to be manufactured by mixing two or more medicines or for the invention of a process to manufacture a medicine by mixing two or more medicines shall not be effective against the act of preparation of a medicine as is written in a prescription from a physician or a dentist and the medicine prepared as is written in a prescription from a physician or a dentist. 

 (Technical scope of patented invention)  Article 70   (1) The technical scope of a patented invention shall be determined based upon the statements in the scope of claims attached to the application.  (2) In the case of the preceding paragraph, the meaning of each term used in the scope of claims shall be interpreted in consideration of the statements in the description and drawings attached to the application.  (3) In the case of the preceding two paragraphs, statements in the abstract attached to the application shall not be taken into consideration. 

Article 71   (1) A request may be made to the Patent Office for its advisory opinion on the technical scope of a patented invention.  (2) Where a request under the preceding paragraph is made, the Commissioner

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of the Patent Office shall designate three appeal examiners to make an advisory opinion on the requested matter.  (3) Articles 131(1), the main clause of 131-2(1), 132(1) and (2), 133, 133-2, 134(1), (3) and (4), 135, 136(1) and (2), 137(2), 138, 139 (excluding (vi)), 140 to 144, 144-2(1) and (3) to (5), 145(2) to (5), 146, 147(1) and (2), 150(1) to (5), 151 to 154, 155(1), 157 and 169(3), (4) and (6) shall apply mutatis mutandis to the advisory opinion under paragraph (1). In this case, the term "trial decision" in Article 135 shall be deemed to be replaced with "ruling", the term "trial other than the trial under the preceding paragraph" in Article 145(2) shall be deemed to be replaced with "proceedings for advisory opinion", the term "where public order or morality is liable to be injured thereby" in the proviso to Article 145(5) shall be deemed to be replaced with "where the chief appeal examiner considers it necessary", the term "Article 147" in Article 151 shall be deemed to be replaced with "Article 147(1) and (2)", the term "before a trial decision becomes final and binding" in Article 155(1) shall be deemed to be replaced with "before the certified copy of the written advisory opinion is served".  (4) No appeal shall be available against a ruling under Article 135 to be applied mutatis mutandis in the preceding paragraph. 

Article 71-2   (1) Where the Commissioner of the Patent Office is commissioned by the court for the provision of an expert opinion on the technical scope of a patented invention, the Commissioner of the Patent Office shall appoint three appeal examiners and direct them to provide an expert opinion on the requested matter.  (2) Articles 36(1), 36(2), 137(2) and 138 shall apply mutatis mutandis to the commissioning of the provision of an expert opinion prescribed in the preceding paragraph. 

 (Related to patented inventions, etc., by others)  Article 72   Where a patented invention uses another person's patented invention, registered utility model, registered design or design similar thereto for which an application was filed prior to the date of filing of the said patent application, or where the patent right is in conflict with another person's design right or trademark right obtained based on an application filed prior to the date of filing of the said patent application, the patentee, exclusive licensee or nonexclusive licensees may not work the patented invention as a business. 

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 (Jointly owned patent rights)  Article 73   (1) Where a patent right is jointly owned, no joint owner may assign or establish a right of pledge on the said joint owner's own share without the consent of all the other joint owners.  (2) Where a patent right is jointly owned, unless otherwise agreed upon by contract, each of the joint owners of the patent right may work the patented invention without the consent of the other joint owners.  (3) Where a patent right is jointly owned, no joint owner may grant an exclusive license or non-exclusive license with regard to the patent right to any third party without the consent of all the other joint owners. 

 (Special provisions pertaining to transfer of patent right)  Article 74   (1) Where a patent falls under the requirements as provided in Article 123(1)(ii) (limited to cases where the patent is obtained in violation of Article 38) or the requirements as provided in item (vi) of the said paragraph, a person who has the right to obtain a patent for the invention pertaining to the said patent may request the patentee thereof to transfer the said patent right as provided by Ordinance of the Ministry of Economy, Trade and Industry.  (2) Where the transfer of a patent right has been registered based on the request under the preceding paragraph, the patent right shall be deemed to have belonged to a person who has obtained the said registration from the beginning. The same shall apply to the right to claim compensation under Article 65(1) or Article 184-10(1) on the invention pertaining to the said patent right.  (3) Paragraph (1) of the preceding Article shall not apply where the share of a jointly owned patent right is transferred based on the request under paragraph (1). 

Articles 75  Deleted 

 (Lapse of patent rights in absence of heir)  Article 76   A patent right shall lapse where no person claims the right as an heir within the time limit designated in Article 958 of the Civil Code. 

 (Exclusive license)  Article 77   (1) A patentee may grant an exclusive license on the patent right.  (2) An exclusive licensee shall have an exclusive right to work the patented invention as a business to the extent permitted by the contract granting the

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license.  (3) An exclusive license may be transferred only where the business involving the working of the relevant invention is also transferred, where the consent of the patentee is obtained or where the transfer occurs as a result of general succession including inheritance.  (4) An exclusive licensee may establish a right of pledge or grant a non-exclusive license on his exclusive license to a third party only where the consent of the patentee is obtained.  (5) Article 73 shall apply mutatis mutandis to exclusive licenses. 

 (Non-exclusive license)  Article 78   (1) A patentee may grant a non-exclusive license on the patent right to any third party.  (2) A non-exclusive licensee shall have a right to work the patented invention as a business to the extent prescribed by this Act or permitted by the contract granting the license. 

 (Non-exclusive license based on prior use)  Article 79   A person who, without knowledge of the content of an invention claimed in a patent application, made an invention identical to the said invention, or a person who, without knowledge of the content of an invention claimed in a patent application, learned the invention from a person who made an invention identical to the said invention and has been working the invention or preparing for the working of the invention in Japan at the time of the filing of the patent application, shall have a non-exclusive license on the patent right, only to the extent of the invention and the purpose of such business worked or prepared. 

 (Non-exclusive license due to the working of the invention prior to the registration of transfer of patent right)  Article 79-2   A person who had a patent right, or an exclusive license on the patent right or a non-exclusive license on the patent right, or the exclusive license at the time of the registration of transfer of the patent right based on the request pursuant to Article 74(1), who is doing a business working an invention in Japan or preparing such business, before the registration of transfer of the patent right, without knowledge that the patent falls under the requirements as provided in Article 123(1)(ii) (limited to cases where the said patent has been obtained in violation of Article 38) or the requirements as provided in item (vi) of the said paragraph, shall have a non-exclusive license on the patent

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right only to the extent of the invention and the purpose of such business worked or prepared. 

 (Non-exclusive license due to the working of the invention prior to the registration of the request for a invalidation trial)  Article 80   (1) A person falling under any of the following items, who is doing a business working an invention in Japan or preparing such business, before the registration of a request for a invalidation trial, without knowledge that the patent falls under any of the paragraphs of Article 123(1), shall have a nonexclusive license regarding the invalidated patent right or the exclusive license existing at the time of the invalidation, only to the extent of the invention and the purpose of such business worked or prepared:  (i) the original patentee in the case where one of two or more patents granted for the same invention has been invalidated;  (ii) the original patentee in the case where, after a patent has been invalidated, a patent is granted to the person who is entitled to obtain a patent for the same invention; and  (iii) in the case referred to in items (i) and (ii), a person that, at the time of the registration of the request for a invalidation trial, has an exclusive license regarding the patent right to be invalidated, or a non-exclusive license regarding the patent right or an exclusive license on the patent right.  (2) The patentee or the exclusive licensee shall have a right to receive reasonable consideration from the non-exclusive licensee under the preceding paragraph. 

 (Non-exclusive license after expiration of duration of design right)  Article 81   Where a design right with regard to an application for a design registration filed on or before the date of filing of a patent application is in conflict with the patent right with regard to the patent application, the original holder of design right shall, upon expiration of the duration of the design right, have a nonexclusive license on the said patent right or on the exclusive license actually existing at the time of expiration of the duration of the design right, limited to the extent of the original design right. 

Article 82   (1) Where a design right with regard to an application for a design registration filed on or before the date of filing of a patent application is in conflict with the patent right with regard to the patent application, a person who, at the time of expiration of the duration of the design right, actually owns the exclusive

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license on the design right, or a non-exclusive license on the design right or on the exclusive license shall, upon expiration of the duration of the design right, have a non-exclusive license on the patent right or on the exclusive license actually existing at the time of expiration of the duration of the design right, limited to the extent of the original right.  (2) The patentee or the exclusive licensee shall have a right to receive reasonable consideration from the non-exclusive licensee under the preceding paragraph. 

 (Award granting non-exclusive license where invention is not worked)  Article 83   (1) Where a patented invention is not sufficiently and continuously worked for 3 years or longer in Japan, a person intending to work the patented invention may request the patentee or the exclusive licensee to hold consultations to discuss granting a non-exclusive license; provided, however, that this shall not apply unless 4 years have lapsed from the filing date of the patent application in which the patented invention was filed.  (2) Where no agreement is reached by consultations or no consultations are able to be held as provided in the preceding paragraph, the person intending to work the patented invention may request the Commissioner of the Patent Office for an award. 

 (Submission of a written answer)  Article 84   Where a request for an award has been filed under Article 83(2), the Commissioner of the Patent Office shall serve a copy of the written request to the patentee or exclusive licensee pertaining to the request, or any other person having a registered right pertaining to the patent, and give such a person an opportunity to submit a written answer, designating an adequate time limit. 

 (Statement of opinions of non-exclusive licensee)  Article 84-2   Where a request for an award has been filed under Article 83(2), a person who has a non-exclusive license on the patent may state opinions on the said request for the award within the time limit under the preceding Article. 

 (Hearing of opinions of councils, etc.)  Article 85   (1) In rendering an award under Article 83(2), the Commissioner of the Patent Office shall hear the opinions of those provided by Cabinet Order, including

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councils, etc. (refer to organs provided in Article 8 of National Government Organization Act (Act No. 120 of 1948)).  (2) Where there is a reasonable ground for failing to properly work the patented invention, the Commissioner of the Patent Office shall not render an award to the effect that a non-exclusive license is to be granted. 

 (Formal requirements for award)  Article 86   (1) The award under Article 83(2) shall be rendered in writing and state the grounds therefor.  (2) The following matters shall be determined in an award to the effect that a non-exclusive license is to be granted:  (i) the scope of the non-exclusive license to be granted; and  (ii) the amount of consideration, and the method and time of payment thereof. 

 (Service of certified copy of award)  Article 87   (1) The Commissioner of the Patent Office shall, upon rendering an award under Article 83(2), serve a certified copy of the award to the parties, non-parties having registered rights relating to the patent and a non-exclusive licensee who has stated opinions under Article 84-2.  (2) Where a certified copy of an award to the effect that a non-exclusive license is to be granted is served to the parties under the preceding paragraph, an agreement as prescribed in the award is deemed to have been reached between the parties. 

 (Deposit of consideration)  Article 88   A person(s) required to pay consideration under Article 86(2)(ii) shall deposit the said consideration in the following cases:  (i) where the person(s) entitled to the consideration refuses or is unable to receive such consideration;  (ii) where an action with respect to the consideration is instituted under Article 183(1); or  (iii) where a right of pledge is established on the patent right or the exclusive license; provided, however, that this shall not apply where the consent of the pledgee is obtained. 

 (Loss of effect of award)  Article 89   Where a person(s) who desires a non-exclusive license to be granted fails to

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pay or deposit consideration (or, where such consideration is to be paid periodically or by installments, the first installment thereof) within the time of payment determined in the award under Article 83(2), the award to the effect that a non-exclusive license is to be granted shall lose its effect. 

 (Rescission of award)  Article 90   (1) After rendering an award to the effect that a non-exclusive license is to be granted under Article 83(2), where the enforcement of the award becomes inappropriate due to specific reason(s) including the case where the grounds for the award have ceased to exist, or where the person to whom the non-exclusive license was granted fails to properly work the patented invention, the Commissioner of the Patent Office may, upon request of an interested person or ex officio, rescind the award.  (2) Articles 84, 84-2, 85(1), 86(1) and 87(1) shall apply mutatis mutandis to the rescission of awards under the preceding paragraph and Article 85(2) shall apply mutatis mutandis to the rescission of awards under the preceding paragraph where the person to whom a non-exclusive license is granted fails to properly work the patented invention. 

Article 91   A non-exclusive license shall lapse after the rescission of the award under Article 90(1). 

 (Restriction on grounds for objection to award)  Article 91-2   No objection under the Administrative Appeal Act (Act No. 160 of 1962) to the award rendered under Article 83(2) may be raised on the ground that the consideration prescribed in the award is unsatisfactory. 

 (Award granting non-exclusive license to work own patented invention)  Article 92   (1) Where a patented invention falls under any of the cases as provided in Article 72, the patentee or exclusive licensee may request the other person under the said Article to hold consultations to discuss granting a non-exclusive license to work the patented invention or a non-exclusive license on the utility model right or the design right.  (2) The other person under Article 72 who is requested to hold consultations under the preceding paragraph may request the patentee or exclusive licensee requesting such consultations to hold consultations to discuss granting a nonexclusive license to the extent of the patented invention that the said patentee

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or exclusive licensee intend to work with a non-exclusive license on the patent right, on the utility model right or on the design right granted through consultations.  (3) Where no agreement is reached by consultations or no consultations are able to be held as provided in paragraph (1), the patentee or the exclusive licensee may request the Commissioner of the Patent Office for an award.  (4) Where no agreement is reached by consultations or no consultations are able to be held as provided in paragraph (2) and where a request for an award is filed under the preceding paragraph, the other person under Article 72 may request the Commissioner of the Patent Office for an award only within the time limit for the submission of a written answer by the said other person designated by the Commissioner of the Patent Office under Article 84 as applied mutatis mutandis under paragraph (7).  (5) In the case of paragraph (3) or (4), the Commissioner of the Patent Office shall not render an award to the effect that a non-exclusive license is to be granted where the granting of the non-exclusive license will be unreasonably prejudicial to interest of the other person under Article 72, the patentee or the exclusive licensee.  (6) In the case of paragraph (4), in addition to the case provided for in the preceding paragraph, the Commissioner of the Patent Office shall not render an award ordering a non-exclusive license to be granted if an award ordering a non-exclusive license to be granted is not rendered with respect to the request for an award under paragraph (3).  (7) Articles 84, 84-2, 85(1) and 86 through the preceding Article shall apply mutatis mutandis to the award under paragraph (3) or (4). 

 (Award granting non-exclusive license for public interest)  Article 93   (1) Where the working of a patented invention is particularly necessary for the public interest, a person(s) intending to work the patented invention may request the patentee or the exclusive licensee to hold consultations to discuss granting a non-exclusive license.  (2) Where no agreement is reached by consultations or no consultations are able to be held as provided in the preceding paragraph, the person intending to work the patented invention may request the Minister of Economy, Trade and Industry for an award.  (3) Articles 84, 84-2, 85(1) and 86 through 91-2 shall apply mutatis mutandis to the award under the preceding paragraph. 

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 (Transfer, etc. of non-exclusive license)  Article 94   (1) Except for a non-exclusive license granted by an award under Article 83(2), 92(3), 92(4) or 93(2) of the Patent Act, Article 22(3) of the Utility Model Act or Article 33(3) of the Design Act, a non-exclusive license may be transferred only where the business involving the working of the relevant invention is also transferred, where the consent of the patentee (or, in the case of non-exclusive license on the exclusive license, the patentee and the exclusive licensee) is obtained and where the transfer occurs as a result of general succession including inheritance.  (2) Except for a non-exclusive license granted by an award under Article 83(2), 92(3), 92(4) or 93(2) of the Patent Act, Article 22(3) of the Utility Model Act or Article 33(3) of the Design Act, a non-exclusive licensee may establish a right of pledge on the non-exclusive right only where the consent of the patentee (or, in the case of non-exclusive license on the exclusive license, the patentee and the exclusive licensee) is obtained.  (3) A non-exclusive license granted by an award under Article 83(2) or 93(2) may be transferred only where the business involving the working of the relevant invention is also transferred.  (4) Where a non-exclusive license is granted by an award under Article 92(3) of the Patent Act, Article 22(3) of the Utility Model Act or Article 33(3) of the Design Act, the said non-exclusive license shall be transferred together with the patent right, utility model right or design right of the non-exclusive licensee on which the non-exclusive license is granted and the business involving the working of the relevant invention in the case where each right is transferred together with the said business, and shall be extinguished in the case where each right of the said non-exclusive licensee is extinguished or transferred independently of the said business.  (5) A non-exclusive license granted by an award under Article 92(4) shall be transferred together with the patent right, utility model right or design right of the non-exclusive licensee on which the non-exclusive license is granted, and shall be extinguished in the case where the said patent right, utility model right or design right is extinguished.  (6) Article 73(1) shall apply mutatis mutandis to non-exclusive licenses. 

 (Right of pledge)  Article 95   Unless otherwise agreed upon by contract, where a right of pledge is established on a patent right, exclusive license or non-exclusive license, the pledgee may not work the patented invention. 

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Article 96  A right of pledge on a patent right, exclusive license or non-exclusive license may be exercised against any consideration to be paid for the patent right, exclusive license or non-exclusive license or any money or goods to be received by the patentee or the exclusive licensee for the working of the patented invention; provided, however, that the pledgee have to attach the consideration, money or goods prior to the payment of money or delivery of goods. 

 (Waiver of patent right, etc.)  Article 97   (1) Where there is an exclusive licensee, pledgee or non-exclusive licensee as provided in Article 35(1), 77(4) or 78(1), a patentee may waive the patent right, only where the consent of the said exclusive licensee, pledgee or non-exclusive licensee is obtained.  (2) Where there is a pledgee or non-exclusive licensee as provided in Article 77(4), an exclusive licensee may waive the exclusive license, only where the consent of the said pledgee or non-exclusive licensee is obtained.  (3) Where there is a pledgee, a non-exclusive licensee may waive the nonexclusive license, only where the consent of the said pledgee is obtained. 

 (Effect of registration)  Article 98   (1) The following matters must be registered to take effect:  (i) the transfer (except for a transfer arising from general succession including inheritance), modification due to trust, lapse due to waiver or restriction on disposition of a patent right;  (ii) the grant, transfer (except for a transfer arising from general succession including inheritance), amendment, lapse (except for a lapse arising from a merger or a lapse of the patent right) or restriction on disposition of an exclusive license; and  (iii) the establishment, transfer (except for a transfer arising from general succession including inheritance), amendment, lapse (except for a lapse arising from a merger or extinguishment of credit secured thereby) or restriction on disposition of a right of pledge of a patent right or exclusive license.  (2) Matters of general succession including inheritance under the preceding paragraph shall be notified to the Commissioner of the Patent Office without delay. 

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 (Perfection of non-exclusive license)  Article 99   When a non-exclusive license is registered, the non-exclusive license shall have effect on any person who subsequently acquires the patentee or the exclusive licensee, or the exclusive license on the patent right. 

Section 2 Infringement of rights 

 (Right to seek injunction)  Article 100   (1) A patentee or exclusive licensee may demand a person who infringes or is likely to infringe the patent right or exclusive license to stop or prevent such infringement.  (2) In making a demand under the preceding paragraph, the patentee or exclusive licensee may demand measures necessary for the prevention of such infringement including the disposal of products constituting such act of infringement (including, in the case of a patented invention of a process of producing products, products produced by the act of infringement; the same shall apply in Article 102(1)) and the removal of facilities used for the act of infringement. 

 (Acts Deemed to constitute infringement)  Article 101  The following acts shall be deemed to constitute infringement of a patent right or an exclusive license:  (i) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product to be used exclusively for the producing of the said product as a business;  (ii) where a patent has been granted for an invention of a product, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the producing of the said product and indispensable for the resolution of the problem by the said invention as a business, knowing that the said invention is a patented invention and the said product is used for the working of the invention;  (iii) where a patent has been granted for an invention of a product, acts of possessing the said product for the purpose of assigning, etc. or exporting it as a business;  (iv) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any

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product to be used exclusively for the use of the said process as a business; and  (v) where a patent has been granted for an invention of a process, acts of producing, assigning, etc., importing or offering for assignment, etc. any product (excluding those widely distributed within Japan) to be used for the use of the said process and indispensable for the resolution of the problem by the said invention, knowing that the said invention is a patented invention and the said product is used for the working of the invention as a business;  (vi) where a patent has been granted for an invention of a process of producing a product, acts of possessing the product produced by the said process for the purpose of assigning, etc. or exporting it as a business. 

 (Presumption of Amount of Damage, etc.)  Article 102   (1) Where a patentee or an exclusive licensee claims against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the patent right or exclusive license, and the infringer assigned articles that composed the act of infringement, the amount of damage sustained by the patentee or the exclusive licensee may be presumed to be the amount of profit per unit of articles which would have been sold by the patentee or the exclusive licensee if there had been no such act of infringement, multiplied by the quantity (hereinafter referred to in this paragraph as the "assigned quantity") of articles assigned by the infringer, the maximum of which shall be the amount attainable by the patentee or the exclusive licensee in light of the capability of the patentee or the exclusive licensee to work such articles; provided, however, that if any circumstances exist under which the patentee or the exclusive licensee would have been unable to sell the assigned quantity in whole or in part, the amount calculated as the number of articles not able to be sold due to such circumstances shall be deducted.  (2) Where a patentee or an exclusive licensee claims against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the patent right or exclusive license, and the infringer earned profits from the act of infringement, the amount of profits earned by the infringer shall be presumed to be the amount of damage sustained by the patentee or exclusive licensee.  (3) A patentee or an exclusive licensee may claim against an infringer compensation for damage sustained as a result of the intentional or negligent infringement of the patent right or exclusive license, by regarding the amount the patentee or exclusive licensee would have been entitled to receive for the working of the patented invention as the amount of damage sustained.  (4) The preceding paragraphs shall not prevent any relevant party from claiming

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compensation for damage in an amount exceeding the amount provided for therein. In such a case, where the infringer committed the infringement of the patent right or exclusive license without intent or gross negligence, the court may take these circumstances into consideration in determining the amount of damages. 

 (Presumption of negligence)  Article 103   An infringer of a patent right or exclusive license of another person is presumed negligent in the commission of the said act of infringement. 

 (Presumption of (patented) producing process)  Article 104   Where the invention of a process of producing a product has been patented and the product was not publicly known in Japan prior to the filing of the patent application, a product identical with such product shall be presumed to have been produced by the patented process. 

 (Obligation to clarify the specific conditions (of infringement))  Article 104-2   In litigation concerning the infringement of a patent right or an exclusive license, in order to deny the specific conditions of an article or process that a patentee or an exclusive licensee claims as one that composed an act of infringement, the adverse party shall clarify the specific conditions of his/her act; provided, however, that this shall not apply where there exist reasonable grounds preventing the adverse party from so doing. 

 (Restriction on exercise of rights of patentee, etc.)  Article 104-3   (1) Where, in litigation concerning the infringement of a patent right or an exclusive license, the said patent is recognized as one that should be invalidated by a invalidation trial or the registration of extension of duration of the said patent right is recognized as one that should be invalidated by a trial for invalidation of the registration of extension, the rights of the patentee or exclusive licensee may not be exercised against the adverse party.  (2) Where the court considers that the materials used for an allegation or defense under the preceding paragraph are submitted for the purpose of unreasonably delaying the proceedings, the court may, upon a motion or ex officio, render a ruling to the effect that the allegation or the defense is to be dismissed.  (3) The proviso to Article 12(2) shall not preclude any person other than a person

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who has the right to obtain a patent on the said patented invention from submitting a method of allegation or defense as provided in paragraph (1). 

 (Limitation to assertion)  Article 104-4   (1) Where the following trial decision has become final and binding after a final judgment on a litigation pertaining to an infringement of a patent right or an exclusive license or to a claim of compensation as provided in Article 65(1) or Article 184-10(1) has become final and binding, a person who was a party in the said litigation may not claim the fact that the said trial decision has become final and binding in an appeal for retrial against the said final judgment (including appeals for the purpose of the claim of compensation for damage against an obligee of a case of provisional seizure order in which the said litigation is the case and appeals for the purpose of the claim of the compensation for damage and the return for unjust enrichment against an obligee of the case of provisional disposition order in which the said litigation is the case):  (i) a trial decision to the effect that the said patent is to be invalidated;  (ii) a trial decision to the effect that the registration of extension of the duration of the said patent is to be invalidated;  (iii) a trial decision as provided by Cabinet Order to the effect that the description, scope of claims or drawings attached the application for the said patent is to be corrected. 

 (Production of documents, etc.)  Article 105   (1) In litigation concerning the infringement of a patent right or exclusive license, the court may, upon a motion of a party, order the other party to produce documents that are required to prove the said act of infringement or to calculate the damage arising from the said act of infringement; provided, however, that this shall not apply where there are reasonable grounds for the person possessing the documents to refuse production of the said documents.  (2) When the court finds it necessary for determining whether or not there are reasonable grounds as provided in the proviso to the preceding paragraph, the court may cause the person possessing the documents to present such documents. In such a case, no person may request the disclosure of the documents presented.  (3) In the case of the preceding paragraph, where the court finds it necessary to hear opinions by disclosing the documents as provided in the latter sentence of the preceding paragraph to make a decision concerning the existence of reasonable grounds as provided in the proviso to paragraph (1), the court may

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disclose the documents to the parties, etc. (the parties (or, in the case of juridical persons, their representatives), their representatives (excluding attorneys and assistant), employees and other workers, the same shall apply hereinafter), attorneys or assistant.  (4) The preceding three paragraphs shall apply mutatis mutandis to the presentation of the subject-matter of the inspection that is required to prove the act of infringement in litigation concerning the infringement of a patent right or exclusive license. 

(Expert opinion for calculation of damages)  Article 105-2   In litigation concerning the infringement of a patent right or exclusive license, where, upon the motion of a party, the court orders that an expert opinion be obtained for the calculation of damage arising from the act of infringement, the other party shall explain to the expert witness the matters necessary for the expert witness's expert opinion. 

 (Determination of reasonable damages)  Article 105-3   In litigation concerning the infringement of a patent right or exclusive license, where the court has determined that damage actually arose and where it is extremely difficult for the court, due to the nature of the facts, to prove the facts necessary to determine the amount of damage, the court may determine a reasonable amount of damage based on the entire import of oral argument and the result of the examination of evidence. 

 (Protective order)  Article 105-4   (1) In litigation concerning the infringement of a patent right or exclusive license, where there is prima-facie evidence of the fact that trade secrets (refers to trade secrets as provided in Article 2(6) of the Unfair Competition Prevention Act (Act No. 47 of 1993), the same shall apply hereinafter) possessed by a party satisfy all of the following paragraphs, the court may, upon a motion of the party, order by a ruling that the parties, etc., attorneys or assistants shall neither use the trade secrets for any purpose other than those for the proceedings of the litigation nor disclose the trade secrets to any person other than those who receive the order regarding the trade secrets under this provision; provided, however, that this shall not apply where the parties, etc., attorneys or assistants have, prior to the filing of the motion, already obtained or been in the possession of the trade secrets by a method other than by reading of the briefs under item (i) or through the examination or disclosure of

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evidence under the said item:  (i) where the trade secrets possessed by the party were or are contained in the briefs already submitted or to be submitted or such trade secrets were or are contained in the evidence already examined or to be examined (including documents disclosed under Article 105(3) and under Article 105-7(4)); and  (ii) where it is necessary to restrict the use or the disclosure of the trade secrets under the preceding paragraph to prevent any possible interference with the party's business activities based on the trade secrets, that might arise if the trade secrets are used for any purpose other than those for the proceedings of the litigation or if the said trade secrets are disclosed.  (2) A motion requesting the order under the preceding paragraph (hereinafter referred to as a "protective order") shall be made in writing specifying the following matters:  (i) the person(s) to whom the protective order is to be issued;  (ii) the facts that clearly identify the trade secrets to be protected by the protective order; and  (iii) the facts corresponding to the reasons each of the items in the preceding paragraph is applicable.  (3) Where the protective order is issued, a written ruling thereof shall be served to the person(s) to whom the protective order is issued.  (4) The protective order shall take effect as of the date the written ruling is served to the person(s) to whom the protective order is issued.  (5) The decision dismissing a motion requesting the protective order shall be subject to immediate appeal. 

 (Rescission of protective order)  Article 105-5   (1) A person(s) who has filed a motion requesting a protective order or to whom a protective order is issued may file a motion with the court where the record of a case(s) is maintained (or, in the case of no such court maintaining the record of a case(s), the court issuing the protective order), requesting the rescission of the protective order on the ground that the requirements as provided in Article 105-4(1) are not met or are no longer met.  (2) Where a decision on a motion requesting the rescission of a protective order is rendered, a written ruling thereof shall be served to the person who filed the motion and the adverse party in the case.  (3) The decision on a motion requesting the rescission of a protective order shall be subject to immediate appeal.  (4) A decision to the effect that a protective order is to be rescinded shall have no effect unless the decision becomes final and binding.  (5) Where a decision to the effect that a protective order is to be rescinded is

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rendered, the court shall immediately notify the person(s) who, in the litigation in which the said protective order was issued, received the protective order pertaining to the trade secrets who are neither the person filing the motion requesting the rescission of the protective order nor the adverse party, if any, of the fact that the decision to the effect that the protective order is to be rescinded was rendered. 

 (Notice, etc. of a request inspection of record, etc)  Article 105-6   (1) Where a ruling under Article 92(1) of the Code of Civil Procedure was rendered concerning the record of litigation in which a protective order was issued (excluding litigation in which all protective orders have been rescinded), where a party to whom the protective order was not issued in the litigation requests inspection etc. of a part of the record in which the confidential information is contained, etc under the said Article., immediately after the filing of the request, the court clerk shall notify the party who filed the motion (restricting access to the record) under the said Article (excluding the person who filed the request, the same in paragraph (3)) of the fact that the said request has been filed.  (2) In the case of the preceding paragraph, the court clerk shall not allow the person who filed the request to inspect etc. the part in which confidential information is contained under Article 92(1) of the Code of Civil Procedure before a lapse of two weeks from the date of filing of the said request (or, where a motion requesting a protective order is filed prior to the day in which two weeks have lapsed, against the person who filed the request, before the decision on the motion becomes final and binding).  (3) The preceding two paragraphs shall not apply where the consent of all the parties who filed a motion under Article 92(1) of the Code of Civil Procedure is obtained, allowing the person who filed a request under paragraph (1) to inspect etc. the part in which confidential information is contained. 

 (Ban on open examination of parties, etc.)  Article 105-7   (1) When a party, etc., to litigation concerning the infringement of a patent right or exclusive license is to be examined as a party to the litigation, as its statutory representative or as a witness, with regard to matters that will be a basis for the determination of the existence or non-existence of the said infringement, and such matters are trade secrets possessed by a party, the court may, by a ruling, elect to hold closed examinations of such matters where the court, upon the unanimous consent of all judges, finds that the parties, etc. will be unable to make sufficient statements regarding the matters due to the

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obvious fact that making statements regarding the matters at an open examination will significantly interfere with the business activities of the party based on such trade secrets and that, without such statements, a proper decision on the fact of the existence or non-existence of the infringement of a patent right or exclusive license that ought to be made based on the said matters may not be made based solely on other evidence.  (2) The court shall, in rendering the ruling as provided in the preceding paragraph, hear the opinions of the parties, etc. in advance.  (3) In the case of the preceding paragraph, where necessary, the court may cause the parties, etc., to present a document stating the gist of the matters to be stated. In such a case, no person may request the disclosure of the document presented.  (4) When the court finds it necessary to hear opinions by disclosing the document as provided in the latter sentence of the preceding paragraph, the court may disclose the document to the parties, etc., their attorneys or assistants.  (5) Where the examination on certain matters is to be closed under paragraph (1), the court shall declare such fact and reasons therefor prior to requiring the public to leave the court. Upon completion of the examination on the said matters, the court shall allow the public to re-enter the court. 

 (Measures to restore credibility)  Article 106   The court may, upon the request of a patentee or exclusive licensee, order the person(s) who harmed the business credibility of the patentee or exclusive licensee by intentionally or negligently infringing upon the patent right or exclusive license to take measures necessary to restore the business credibility of the patentee or exclusive licensee in lieu of or in addition to compensation for damages. 

Section 3 Patent Fees 

 (Patent fees)  Article 107   (1) A person obtaining the registration establishing a patent right, or a patentee, shall pay as patent fees the amount specified in the right-hand column of the following table, corresponding to the relevant period in the left-hand column, for each patent registration and for each year from the date of the registration establishing the patent right to the expiration of the duration as provided in Article 67(1), (and, where the said duration is extended by Article 67(2), for such additional period):

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Period within term Amount First to third year Annually 2,300 yen plus 200 yen per claim Fourth to sixth year Annually 7,100 yen plus 500 yen per claim Seventh to ninth year Annually 21,400 yen plus 1,700 yen per claim Tenth to twenty-fifth year Annually 61,600 yen plus 4,800 yen per claim 

 (2) The preceding paragraph shall not apply to patent rights belonging to the State.  (3) Notwithstanding the provisions of paragraph (1), where a patent right is jointly owned by persons including the State and/or a person entitled to receive a reduction of the patent fees or exemption therefrom under Article 109 or the provisions of any other laws or ordinances (hereinafter referred to as a "reduction/exemption" in this paragraph), and the portion of their respective shares of the said patent right has been agreed, the patent fees payable under paragraph (1) shall be determined as the sum of the amounts calculated for each person other than the State jointly owning the patent right by multiplying the applicable patent fees as provided in paragraph (1) (in the case of a person receiving a reduction/exemption, the amount after the said reduction/exemption) by the ratio of the share of each person other than the State jointly owning the patent right, and, the persons other than the State shall pay such sum.  (4) For the amount of patent fees calculated under the preceding paragraph, fractional figures of less than ten yen shall be discarded.  (5) The payment of patent fees under paragraph (1) shall be made by patent revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and Industry; provided, however, that where so provided by Ordinance of the Ministry of Economy, Trade and Industry, a cash payment thereof shall be accepted. 

 (Time limit for payment of patent fees)  Article 108   (1) The patent fees for each year from the first to the third year under Article 107(1) shall be paid in a lump sum within 30 days from the date on which a certified copy of the examiner's decision or the trial decision to the effect that the patent is to be granted has been served.  (2) The patent fees for each year from the fourth and subsequent years under Article 107(1) shall be paid by the end of the previous year; provided, however, that where the date on which a certified copy of the examiner's decision or the trial decision to the effect that the extension of the duration of the patent right is to be registered is served (hereinafter referred to in this paragraph as the

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"certified copy service date") is on or after the thirtieth day before the end of the year in which the duration of the patent right would have expired if the said extension of duration had not been registered, the patent fees for each year from the year following that year to the year in which the certified copy service date falls (or, in the case where a period from the certified copy service date to the last day of the year in which the certified copy service date falls is shorter than 30 days, the year following the year in which the certified copy service date falls) shall be paid in a lump sum within 30 days from the certified copy service date.  (3) The Commissioner of the Patent Office may, upon a request by a person by whom the patent fees are to be paid, extend the time limit under paragraph (1) by a period not exceeding 30 days. 

 (Reduction, exemption or deferment of patent fees)  Article 109   Where the Commissioner of the Patent Office recognizes that a person who receives the registration of establishment of a patent right or a patentee, who meets the requirements of Cabinet Order to be recognized as a person with insufficient funds, has difficulties paying the patent fees, the Commissioner of the Patent Office may, pursuant to the provisions of Cabinet Order, grant the person a reduction of, exemption from or deferment of the payment of the patent fees for each year from the first to the tenth year under Article 107(1): 

 (Payment of patent fees by interested persons)  Article 110   (1) An interested person may pay the patent fees even against the will of the person by whom the patent fees are to be paid.  (2) The interested person who has paid the patent fees under the preceding paragraph may request the reimbursement of the expenses arising therefrom to the extent of the actual benefit obtained by the person by whom the patent fees were to be paid. 

 (Refund of patent fees)  Article 111   (1) The following patent fees shall be refunded upon the request of the person that paid them:  (i) patent fees paid in error or in excess;  (ii) patent fees for each year following the year in which a trial decision to the effect that the patent is to be invalidated has become final and binding; and  (iii) patent fees for the year following the year in which a trial decision to the effect that the registration of extension of the duration of a patent right is to

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be invalidated became final and binding, and subsequent years (limited to those for the year following the year in which the duration of a patent right would have expired if the said extension of duration had not been registered, and subsequent years).  (2) A request for refund of patent fees under the preceding paragraph may not be filed after one year from the date of payment in the case of patent fees under item (i) above, or after six months from the date on which a trial decision became final and binding in the case of patent fees under items (ii) and (iii) above. 

 (Late payment of patent fees)  Article 112   (1) Where a patentee is unable to pay the patent fees within the time limit under Article 108(2) or the time limit for deferred payment under Article 109, the patentee may make a late payment of the patent fees after the expiration of the said time limit, but not later than 6 months following the expiration of the said time limit.  (2) The patentee who makes a late payment of the patent fees under the preceding paragraph shall pay, in addition to the patent fees to be paid under Article 107(1), a patent surcharge in the same amount as the patent fees.  (3) The payment of the patent surcharge under the preceding paragraph shall be made by patent revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and Industry; provided, however, that where so provided by Ordinance of the Ministry of Economy, Trade and Industry, a cash payment thereof shall be accepted.  (4) Where a patentee fails to pay, within the time limit for late payment of the patent fees under paragraph (1), the patent fees that were due and payable within the time limit as provided in the main clause of Article 108(2) and the patent surcharge under paragraph (2), the patent right shall be deemed to have been extinguished retroactively upon expiration of the time limit as provided in the main clause of Article 108(2).  (5) Where a patentee fails to pay, within the time limit for late payment of the patent fees under paragraph (1), the patent fees as provided in the proviso to Article 108(2) and the surcharge under paragraph (2), the patent right shall be deemed to have been extinguished retroactively upon the lapse of the year in which the duration of the patent right would have expired if the said extension of the duration had not been registered.  (6) Where a patentee fails to pay, within the time limit for late payment of the patent fees under paragraph (1), the patent fees for which the deferment was granted under Article 109 and the patent surcharge under paragraph (2), the patent right shall be deemed never to have existed.

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 (Restoration of patent right by late payment of patent fees)  Article 112-2   (1) Where an original patentee of the patent right which was deemed to have been extinguished under Article 112(4) or 112(5), or which was deemed never to have existed under Article 112(6), has justifiable reasons for having been unable to pay the patent fees and the patent surcharge under paragraphs (4) to (6) of Article 112 within the time limit for late payment of the patent fees under Article 112(1), the original patentee may make a late payment of the patent fees and the surcharge within two months from the date on which the reasons ceased to exist, but not later than one year following the expiration of the said time limit.  (2) Where the patent fees and the surcharge are paid under the preceding paragraph, the patent right shall be deemed to have been maintained retroactively from the time of expiration of the time limit as provided in the main clause of Article 108(2) or the lapse of the year in which the day of the expiration of the duration of the patent right falls or existed from the beginning. 

 (Restriction on effect of restored patent right)  Article 112-3   (1) Where a patent right has been restored under paragraph (2) of the preceding Article, where the patent has been granted for the invention of a product, such patent right shall not be effective against the product which was imported into, produced or acquired within Japan after the lapse of the time limit during which the late payment of the patent fees is allowed under Article 112(1) but before the registration of the restoration of the patent right.  (2) A restored patent right under paragraph (2) of the preceding Article shall not be effective against the following acts conducted after the lapse of the time limit during which the late payment of the patent fees is allowed under Article 112(1) but before the registration of the restoration of the patent right:  (i) the working of the said invention;  (ii) where a patent has been granted for an invention of a product, producing, assigning, etc., importing or offering for assignment, etc. of any product to be used for producing of the said product; and  (iii) where a patent has been granted for an invention of a product, possessing the said product for the purpose of assigning, etc. or exporting it;  (iv) where a patent has been granted for an invention of a process, producing, assigning, etc., importing or offering for assignment, etc. of any product to be used for the use of the said process; and  (v) where a patent has been granted for an invention of a process of producing

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a product, possessing the product produced by the said process for the purpose of assigning, etc. or exporting it. 

Chapter V (Deleted) 

Articles 113 through 120  Deleted 

Chapter VI Appeals and Trials 

 (Appeals against examiner's decision of refusal)  Article 121   (1) A person who has received an examiner's decision to the effect that an application is to be refused and is dissatisfied may file appeals against the examiner's decision of refusal within three months from the date the certified copy of the examiner's decision has been served.  (2) Where, due to reasons beyond the control of the person, the said person is unable to file appeals against the examiner's decision of refusal within the time limit as provided in the preceding paragraph, the said person may,  

Article 122  Deleted 

 (Invalidation Trial)  Article 123   (1) Where a patent falls under any of the following, a request for invalidation trial may be filed. In the event of two or more claims, a request for invalidation trial may be filed for each claim.  (i) where the patent has been granted on a patent application (excluding a foreign-language-written-application) with an amendment that does not comply with the requirements as provided in Article 17-2(3);  (ii) where the patent has been granted in violation of Articles 25, 29, 29-2, 32, 38 or 39(1) to 39(4); (where the patent has been obtained in violation of Article 38, excluding the case where the transfer of a patent right pertaining to the patent has been registered based on the request under Article 74(1));  (iii) where the patent has been granted in violation of a treaty;  (iv) where the patent has been granted on a patent application not complying with the requirements as provided in Article 36(4)(i) or 36(6) (excluding 36(6)(iv));  (v) where matters stated in the description, scope of claims or drawings attached to the foreign-language-written-application are not within the scope of matters stated in foreign-language-documents;  (vi) where the patent has been granted on a patent application filed by a

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person who has not had the right to obtain a patent for the said invention; (excluding the case where the transfer of a patent right pertaining to the patent has been registered based on the request under Article 74(1));  (vii) where, after the grant of a patent, the patentee has become unable to hold a patent right under Article 25, or the patent has become in violation of a treaty; and  (viii) where the correction of the description, scope of claims or drawings attached to the application for the patent has been obtained in violation of the proviso to Article 126(1), Article 126(5) to (7) (including its application mutatis mutandis under Article 134-2(9) or the proviso to Article 134-2(1).  (2) Any person may file a request for invalidation trial; provided, however, that where a request for invalidation trial is filed on the ground that the patent falls under item (ii) of the preceding paragraph (limited to cases where the patent is obtained in violation of Article 38) or item (vi) of the preceding paragraph, only a person who has the right to obtain a patent on the invention pertaining to the said patent may file a request for invalidation trial.  (3) A request for invalidation trial may be filed even after the lapse of the patent right.  (4) Where a request for invalidation trial has been filed, the chief appeal examiner shall notify the exclusive licensee of the patent right and other persons who have any registered rights relating to the patent. 

Article 124  Deleted 

Article 125   Where a trial decision to the effect that a patent is to be invalidated has become final and binding, the patent right shall be deemed never to have existed; provided, however, that where a patent falls under Article 123(1)(vii) and where a trial decision to the effect that the patent is to be invalidated has become final and binding, the patent shall be deemed not to have existed from the time the said item first became applicable to the patent. 

 (Invalidation trial of a registration of extension of duration)  Article 125-2   (1) A request for invalidation trial of the registration of extension of duration of a patent right may be filed if the registration of extension falls under any of the following:  (i) where the registration of extension has been made for an application filed where the disposition as provided in Cabinet Order under Article 67(2) for the working of the patented invention is not deemed to have been required;  (ii) where the registration of extension has been made for an application filed

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where the patentee or an exclusive licensee or a non-exclusive licensee of the patent right did not receive the disposition as provided in Cabinet Order under Article 67(2);  (iii) where the duration extended by the registration of extension exceeds the period during which the patented invention could be worked;  (iv) where the registration of extension has been made upon an application filed by a person who is not the said patentee; and  (v) where the registration of extension has been made upon an application not complying with the requirements as provided in Article 67-2(iv).  (2) Paragraphs (3) to (4) of Article 123 shall apply mutatis mutandis to a request for invalidation trial of the registration of extension of duration.  (3) Where a trial decision to the effect that the registration of extension is to be invalidated has become final and binding, the extension of the duration by the said registration of extension shall be deemed never to have been made; provided, however, that where the registration of extension falls under paragraph (1)(iii) and a trial decision to the effect that the registration of extension for the duration exceeding the period during which the patented invention could be worked is to be invalidated has become final and binding, the extension for the said excess period shall be deemed not to have been made. 

 (Correction trial)  Article 126   (1) The patentee may file a request for correction trial with regard to the correction of the description, scope of claims or drawings attached to the application; provided, however, that such correction shall be limited to the following:  (i) restriction of the scope of claims;  (ii) correction of errors or incorrect translations; and  (iii) clarification of an ambiguous statement.  (iv) correction of a statement of claims which cites other statement of claims to the statement which does not cite the said other statement of claims.  (2) A request for correction trial may not be filed from the time the relevant invalidation trial has become pending before the Patent Office to the time the trial decision has become final and binding (all trial decisions in the case where a request has been filed for each claim).  (3) Where the scope of claims attached to the application covering two or more claims is corrected, a request may be filed pursuant to paragraph (1) for each claim. In this case, where there is a group of claims which has the relationship in which the statement of one claim is cited by another claim or any other relationship as provided by Ordinance of Ministry of the Economy, Trade and Industry (hereinafter referred to as "group of claims"), said request shall be

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filed for the said each group of claims.  (4) Where the description or drawings attached to the application is corrected and a request is filed for each claim pursuant to paragraph (1), the request shall be filed for all claims pertaining to the correction of the said description or drawings (in the case where a request under paragraph (1) is filed for each group of claims pursuant to the latter clause of the preceding paragraph, all groups of claims including claims pertaining to the correction of the said description or drawings).  (5) The correction of the description, scope of claims or drawings under paragraph (1) above shall remain within the scope of the matters disclosed in the description, scope of claims, or drawings attached to the application (in the case of correction for the purposes provided in item (ii) of the proviso to paragraph (1), the description, scope of claims and drawings originally attached to the application (in the case of a patent with regard to a foreignlanguage-written-application, foreign-language-documents)).  (6) The correction of the description, scope of claims or drawings under paragraph (1) shall not substantially enlarge or alter the scope of claims.  (7) In the case of correction for any of the purposes as provided in item (i) or (ii) of the proviso to paragraph (1), an invention constituted by the matters described in the corrected scope of claims must be one which could have been patented independently at the time of filing of the patent application.  (8) A request for correction trial may be filed even after the lapse of the patent right; provided, however, that this shall not apply after the patent has been invalidated in invalidation trial. 

Article 127   Where there is a non-exclusive licensee under Article 35(1), 77(4) or 78(1), an exclusive licensee, or a pledgee, the patentee may file a request for a correction trial only with the consent of the said person. 

Article 128   Where a trial decision to the effect that the description, scope of claims or drawings attached to the application is to be corrected, has become final and binding, the filing of the patent application, the laying open of the patent application, the examiner's decision or the trial decision to the effect that the patent is to be granted, or the registration of the establishment of the patent right, shall be deemed to have been made based on the corrected description, scope of claims or drawings. 

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Articles 129 and 130  Deleted 

 (Formal requirements of appeal/request for trial)  Article 131   (1) A person filing appeal/request for trial shall submit a written request stating the following to the Commissioner of the Patent Office:  (i) the name, and the domicile or residence of the party and the representative thereof;  (ii) the identification of the appeal/trial case; and  (iii) object and statement of the claim.  (2) When a request for invalidation trial is filed, the facts on which the invalidation of the patent is based shall be specified in concrete terms, and the relationship of each fact that is required to be proved with the relevant evidence shall be stated in the grounds for the request as provided in item (iii) of the preceding paragraph.  (3) Where a request for correction trial is filed, the object and statement of the claim listed in paragraph (1) item (iii) shall be stated as provided by Ordinance of the Ministry of Economy, Trade and Industry.  (4) Where a request for correction trial is filed, the corrected description, scope of claims or drawings shall be attached to the written request. 

 (Amendment of appeal/request for trial)  Article 131-2   (1) An amendment of the written request filed under paragraph (1) of the preceding Article shall not change the gist thereof; provided, however, that this shall not apply where the said amendment falls under any of the following items:  (i) where the amendment is made with respect to the ground for the request as provided in paragraph (1) item (iii) of the preceding Article in the course of filling a request for a trial other than invalidation trial;  (ii) where the amendment is made in the event that approval is granted by the chief appeal examiner under the following paragraph; and  (iii) where an amendment is made with regard to a matter ordered, in the case where it is ordered to make the amendment with regard to the said written request pursuant to Article 133(1) (including cases where it is applied mutatis mutandis in Article 134-2(9)).  (2) In the course of filing a request for invalidation trial, where an amendment of the grounds for the request as provided in paragraph (1), item (iii) of the preceding Article changes the gist thereof, the chief appeal examiner may make a ruling approving such amendment if the chief appeal examiner recognizes that there is no possibility of unreasonable delay of the proceedings

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by such amendment and any of the following facts exists:  (i) a request for correction under Article 134-2(1) has been filed in the said invalidation trial and such request for correction has given rise to a need for amendment of the grounds for the request; and  (ii) other than the case as provided in the preceding paragraph there exist reasonable grounds for not stating the grounds for the request with regard to the amendment of the request at the time the request for trial was filed, and the demandee has agreed to such amendment.  (3) The approval of the amendment as provided in the preceding paragraph may not be granted if the written amendment of proceedings with regard to the said amendment is submitted prior to the service of a copy of the written request under Article 134(1).  (4) No appeal shall be available from a ruling under paragraph (2). 

 (Joint trial)  Article 132   (1) Where two or more persons file a request for invalidation trial or a trial for invalidation of the registration of extension of duration concerning the same patent right, the request may be filed jointly.  (2) Where a request for trial is filed against patentees jointly owning a patent right, the demandees in the said request shall be all the joint owners of the said patent right.  (3) Where appeal/request for trial is filed by a joint owner or owners of a patent right or a right to obtain a patent, with regard to the right under joint ownership, all of the said joint owners shall jointly file the request.  (4) Where there is a ground for suspension or termination of appeal/trial procedures on any of the demandants of appeal/request for trial under paragraph (1) or (3) or any of the demandees of appeal/request for trial under paragraph (2), the said suspension or termination shall have effect on all of the demandants or demandees. 

 (Dismissal by ruling in the case of non-compliance with formal requirements)  Article 133   (1) Where a written request does not comply with Article 131, the chief appeal examiner shall order the demandant to amend the written request, designating an adequate time limit.  (2) Excluding the case as provided in the preceding paragraph, the chief appeal examiner may order the demandant to amend a procedure pertaining to the trial, designating an adequate time limit, in any of the following cases:  (i) where the procedure does not comply with paragraphs (1) to (3) of Article 7 or Article 9;

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 (ii) where the procedure does not comply with formal requirements as provided in this Act or an order thereunder; and  (iii) where the fees for a procedure payable under Articles 195(1) or 195(2) have not been paid;  (3) The chief appeal examiner may dismiss the procedure by a ruling where a person ordered to make an amendment to a procedure pertaining to appeal/trial cases to make such amendment within the time limit designated under the preceding two paragraphs or where such amendment is made in violation of Article 131-2(1).  (4) The ruling under the preceding paragraph shall be made in writing and state the grounds thereof. 

 (Dismissal of unlawful procedures)  Article 133-2   (1) In the procedures pertaining to appeal/trial case (excluding appeal/request for trial), the chief appeal examiner may, by a ruling, dismiss procedures that are unlawful and not amendable.  (2) Where the chief appeal examiner intends to dismiss a procedure under the preceding paragraph, he/she shall notify the person who undertook the procedures of the reasons therefor, and give the said person an opportunity to submit a statement of explanation, designating an adequate time limit.  (3) The ruling under this paragraph (1) shall be in writing and state the grounds therefor. 

 (Submission of a written answer, etc.)  Article 134   (1) Where appeal/request for trial has been filed, the chief appeal examiner shall serve a copy of the written request to the demandee and give the demandee an opportunity to submit a written answer, designating an adequate time limit.  (2) When the chief appeal examiner approves the correction of the written request under Article 131-2(2), the chief appeal examiner shall serve a copy of the statement of the amendment of proceedings with regard to such amendment to the demandee, and shall give the demandee an opportunity to submit a written answer, designating an adequate time limit; provided, however, that this shall not apply where special circumstances exist under which it is recognized that giving an opportunity to the demandee to submit a written answer is not required.  (3) Upon receipt thereof, the chief appeal examiner shall serve to the demandant a copy of the written answer under paragraph (1) or the main clause of the preceding paragraph.  (4) The chief appeal examiner may question the parties and the intervenors with

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regard to the appeal and trial. 

 (Request for correction in invalidation trial)  Article 134-2   (1) The demandee in invalidation trial may file a request for a correction of the description, scope of claims or drawing(s) attached to the application only within the time limit designated in accordance with paragraph (1) or (2) of the preceding Article, the following Article,  Article 153(2) or Article 164-2(2); provided, however, that such correction shall be limited to the following purposes:  (i) restriction of the scope of claims;  (ii) correction of errors in the description or of incorrect translations; and  (iii) clarification of an ambiguous description.  (iv) correction of a statement of claims which cites other statement of claims to the statement which does not cite the said other statement of claims.  (2) A request for correction in the preceding paragraph may be filed for each claim in the case where the scope of claims attached to the application covering two or more claims is corrected; provided, however, that a request for correction in the said paragraph shall be filed for each claim in the case where a request for invalidation trial has been filed for each claim.  (3) In the case of the preceding paragraph, where there is a group of claims in the said claims, the said request shall be filed for each group of claims.  (4) Upon receipt thereof, the chief appeal examiner shall serve to the demandant a copy of the written request for correction as well as the corrected description, scope of claims or drawings attached to the request under paragraph (1).  (5) The appeal examiner may examine grounds that have not been pleaded by the party in the case or an intervenor in determining whether the request for correction under paragraph (1) is not for any of the purposes provided in the items of the proviso to the said paragraph, or does not conform the provisions of paragraphs (5) to (7) of Article 126 that shall be applied mutatis mutandis upon reading the specified terms in accordance with paragraph (9). In such a case, where the request for correction on the above grounds is not approved of, the chief appeal examiner shall notify the parties in the case and the intervenors of the result of the proceedings and shall give them an opportunity to state their opinions, designating an adequate time limit.  (6) Where a request for correction under paragraph (1) is made, if another request for correction has been previously made in the said trial, such previous request shall be deemed to have been withdrawn.  (7) The request for correction in paragraph (1) may be withdrawn only within the time limit during which the amendment under Article 17-4(1) may be made with regard to the corrected description, scope of claims or drawings attached

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to the written request for correction in the said paragraph. In this case, where requests for correction have been filed for each claim or each group of claims pursuant to paragraph (2) or (3), all those requests shall be withdrawn.  (8) Where a request for invalidation trial has been withdrawn for each claim pursuant to Article 155(3), the request for correction in paragraph (1) shall be deemed to have been withdrawn for each claim, and where all requests pertaining to the trial case of the invalidation trial have been withdrawn, all the requests for correction in the said paragraph pertaining to the said trial case shall be deemed to have been withdrawn.  (9) Articles 126(4) to (8), 127, 128, 131(1), (3) and (4), 131-2(1),132(3) and (4), and 133(1), (3) and (4) shall apply mutatis mutandis to the case of paragraph (1). In this case, the term "item (i) or (ii) of the proviso to paragraph (1)" in Article 126(7) shall be deemed to be replaced with "item (i) or (ii) of the proviso to paragraph (1) pertaining to a claim or claims for which a request for invalidation trial is not filed." 

 (Request for correction where rescission judgment is rendered)  Article 134-3   Where a judgment rescinding a trial decision in a trial for patent invalidation (limited to a trial decision concluding that the request for a trial is groundless) under Article 181(1) has become final and binding, and following which proceedings are initiated under paragraph (2) of the said Article, the chief trial examiner may designate to the demandee an adequate time limit for filing a request for correction of the description, scope of claim(s) or drawing(s) attached to the application, only if such motion is made by the demandee within one week from the date such judgment became final and binding. 

 (Dismissal of inadequate appeal/request for trial by appeal/trial decision)  Article 135   An unlawful appeal/request for trial, that is not amendable, may be dismissed by appeal/trial decision without giving the demandee an opportunity to submit a written answer. 

 (Panel system for trial)  Article 136   (1) A trial shall be conducted by a panel consisting of three or five appeal examiners.  (2) A decision of the panel under the preceding paragraph shall be made by a majority vote.  (3) Qualifications of appeal examiners shall be as provided by Cabinet Order. 

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 (Designation of appeal examiners)  Article 137   (1) The Commissioner of the Patent Office shall designate the appeal examiners constituting a panel under Article 136(1) for each appeal/trial (for appeal/trial that is to be examined by an examiner under Article 162, limited to the case where a report is submitted under Article 164(3)).  (2) Where any of the appeal examiners designated under the preceding paragraph is unable to participate in the appeal/trial, the Commissioner of the Patent Office shall terminate the designation and appoint another appeal examiner to fill the vacancy. 

 (Chief appeal examiner)  Article 138   (1) The Commissioner of the Patent Office shall designate one of the appeal examiners designated under Article 137(1) as the chief appeal examiner.  (2) The chief appeal examiner shall preside over matters relating to the appeal/trial. 

 (Exclusion of appeal examiners)  Article 139   An appeal examiner shall be excluded from performing his/her duties in any of the following cases:  (i) where the apeal examiner or his/her spouse or former spouse is or was a party in the case or an intervenor in the case;  (ii) where the appeal examiner is or was a relative by blood within the fourth degree of kinship, a relative by affinity within the third degree of kinship or a relative living together (as defined in the Civil Code of Japan) of a party in the case or an intervenor in the case;  (iii) where the appeal examiner is a guardian, a supervisor of a guardian, a curator, a supervisor of the curator, an assistant or a supervisor of the assistant of a party in the case or an intervenor in the case;  (iv) where the appeal examiner has become a witness or an expert witness in the case;  (v) where the appeal examiner is or was a representative of a party in the case or an intervenor in the case;  (vi) where the appeal examiner was involved in the procedures relating to the examiner's decision who is being appealed in the case as the examiner; and  (vii) where the appeal examiner has a direct interest in the case. 

Article 140   Where there exists any ground for exclusion under Article 139, a party or an

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intervenor may file a motion requesting the exclusion. 

 (Recusation to appeal examiner)  Article 141   (1) Where there exists any circumstances of a appeal examiner that might hinder fair proceedings of the trial, a party or an intervenor may recuse the appeal examiner.  (2) A party or an intervenor may not recuse a appeal examiner after making a written or oral statement to the appeal examiner with regard to the case; provided, however, that this shall not apply where the party or the intervenor was not aware of the ground of the recusation or the ground of the recusation occurred after making such statement. 

 (Formal requirements for a motion requesting exclusion or recusation)  Article 142   (1) A person filing a motion requesting an exclusion or recusation shall submit a document to the Commissioner of the Patent Office stating the grounds therefor; provided, however, that in the case of oral proceedings such request may be made orally.  (2) The grounds for the exclusion or recusation shall be showed of a prima facie within 3 days from the date the motion under the preceding paragraph has been filed. The same shall apply to the facts prescribed in the proviso to Article 141(2). 

 (Ruling on motion requesting exclusion or recusation)  Article 143   (1) Where a motion requesting an exclusion or recusation has been filed, appeal examiners who are not the appeal examiner named in the motion shall render a ruling thereon through a trial; provided, however, that the appeal examiner named in the motion may present his opinion.  (2) The ruling under the preceding paragraph shall be made in writing and state the grounds therefor.  (3) The ruling under paragraph (1) shall not be subject to appeal. 

Article 144   Where a motion requesting an exclusion or recusation has been filed, the trial procedures shall be suspended until a ruling on the motion is rendered; provided, however, that this shall not apply to the case requiring urgent action. 

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 (Trial Clerk)  Article 144-2   (1) The Commissioner of the Patent Office shall designate the trial clerk for each trial case (in the case of a trial case for which a request is to be examined by the examiner in accordance with Article 162, limited to a trial case in which a report has been submitted under Article 164(3)).  (2) Qualifications of trial clerks shall be as provided by Cabinet Order  (3) Where the trial clerk designated under paragraph (1) is unable to participate in the trial, the Commissioner of the Patent Office shall relieve the designated trial clerk and appoint another trial clerk.  (4) The trial clerk shall undertake affairs relating to the preparation of the trial record and service for each trial case and, upon the order of the chief appeal examiner, undertake any other affairs relating thereto.  (5) Article 139 (excluding item (vi)) and 140 to 144 shall apply mutatis mutandis to the trial clerk. In such a case, the trial clerk named in the motion requesting the exclusion or recusation may not participate in the trial with regard to the said exclusion or recusation. 

 (Procedure of Proceedings)  Article 145   (1) A invalidation trial or a trial for invalidation of the registration of extension of the duration of a patent shall be conducted by oral proceedings; provided, however, that the chief appeal examiner may, upon a motion by a party or intervenor in the case, or ex officio decide to conduct the trial by documentary proceedings.  (2) Trials, excluding those as provided in the preceding paragraph, shall be conducted by documentary proceedings; provided, however, that the chief appeal examiner may, upon a motion by the party or ex officio, decide to conduct the trial by oral proceedings.  (3) Where a trial is conducted by oral proceedings under paragraph (1) or the proviso to the preceding paragraph, the chief appeal examiner shall designate the date and place thereof and summon the parties and the intervenor on the designated date.  (4) Article 94 (Summon on the designated date) of the Code of Civil Procedure shall apply mutatis mutandis to a summon on the designated date as provided in the preceding paragraph.  (5) The oral proceedings under paragraph (1) or the proviso to paragraph (2) shall be conducted in public; provided, however, that this shall not apply where public order or morality is liable to be injured thereby.  

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Article 146   Article 154 (attendance of interpreter, etc.) of the Code of Civil Procedure shall apply mutatis mutandis to a trial. 

 (Trial Records)  Article 147   (1) In oral proceedings under paragraph (1) or the proviso to paragraph (2) of Article 145, the trial clerk shall prepare a trial record stating the gist of the proceedings and all other necessary matters on each trial date.  (2) When the trial clerk finds that an order received from the chief appeal examiner with regard to the preparation or amendment of the trial record under the preceding paragraph is inappropriate, the trial clerk may add his/her opinion.  (3) Paragraphs (2) and (3) of Article 160(record of oral proceedings) shall apply mutatis mutandis to the trial record under paragraph (1). 

 (Intervention)  Article 148   (1) A person who may file a request for a trial under Article 132(1) may intervene in the trial as a demandant until the conclusion of the proceedings.  (2) An intervenor under the preceding paragraph may continue the trial procedures even after the withdrawal of the request for a trial by the original party.  (3) A person with an interest in the result of the trial may intervene in the trial to assist one of the original parties until the conclusion of the proceedings.  (4) The intervenor under the preceding paragraph may undertake all trial procedures.  (5) Where there is a ground for interruption or suspension of trial procedures on behalf of the intervenor under paragraph (1) or (3), the said interruption or suspension shall have effect on the original parties. 

Article 149   (1) A person applying to intervene shall submit an application for intervention to the chief appeal examiner.  (2) Where an application for intervention is submitted, the chief appeal examiner shall serve a copy of the application for intervention to the original parties and intervenor(s) and give such persons an opportunity to present opinions, designating an adequate time limit.  (3) Where an application for intervention is filed, the appeal examiner of the trial in which the applicant intends to intervene shall render a ruling through a trial.

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 (4) The ruling under the preceding paragraph shall be made in writing and state the grounds therefor.  (5) The ruling under paragraph (3) shall not be subject to appeal 

 (Examination and preservation of evidence)  Article 150   (1) Evidence may be examined in a trial, upon a motion by a party or an intervenor, or ex officio.  (2) Evidence may be preserved in a trial, upon a motion by an interested person prior to the filing of a request for a trial, or by a party to or an intervenor in the trial, or ex officio when the trial is pending.  (3) A motion prior to the filing of a request for a trial under the preceding paragraph shall be filed to the Commissioner of the Patent Office.  (4) Where a motion has been filed prior to the filing of a petition for a trial under paragraph (2), the Commissioner of the Patent Office shall designate the appeal examiner and the trial clerk who shall be in charge of preservation of evidence.  (5) Where evidence has been, ex officio, examined or preserved under paragraph (1) or (2), the chief appeal examiner shall notify the parties and intervenor(s) of the result thereof and give such persons an opportunity to present opinions, designating an adequate time limit.  (6) The examination or preservation of evidence under paragraph (1) or (2) may be entrusted to a district court or summary court having jurisdiction over the matter. 

Article 151   Article 147 of this Act and Articles 93(1) (designation of date), 94 (summons on designated date), 179 to 181, 183 to 186, 188, 190, 191, 195 to 198, 199(1), 201 to 204, 206, 207, 210 to 213, 214(1) to 214(3), 215 to 222, 223(1) to 223(6), 226 to 228, 229(1) to 229(3), 231, 232(1), 233, 234, 236 to 238, 240 to 242 (evidence) and 278 (submission of document in lieu of examination, etc) of the Code of Civil Procedure shall apply mutatis mutandis to the examination and preservation of evidence under the preceding Article. In this case, the term "facts that are admitted by the party in court or that are obvious" in Article 179 of the said Code shall be deemed to be replaced with "obvious facts", and the term "Supreme Court Rules" in Article 204 and 215-3 of the said Code shall be deemed to be replaced with "Ordinance of the Ministry of Economy, Trade and Industry." 

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 (Ex officio proceedings)  Article 152   The chief appeal examiner may proceed with the trial procedures, even if a party or intervenor fails to undertake required procedures within the legal or designated time limit or the said person fails to appear pursuant to the provision of Article 145(3). 

Article 153   (1) Any grounds not pleaded by a party or intervenor may be examined in a trial.  (2) Where any grounds not pleaded by a party or intervenor has been examined under the preceding paragraph, the chief appeal examiner shall notify the parties and the intervenor(s) of the result thereof and give such persons an opportunity to present opinions, designating an adequate time limit.  (3) Any object of claim not claimed by the demandant may not be examined in a trial. 

 (Joint or separate conduct of proceedings)  Article 154   (1) Where one or both parties to two or more trials are identical, the proceedings may be jointly conducted.  (2) Proceedings that have been jointly conducted under the preceding paragraph may later be separately conducted. 

 (Withdrawal of request for trial)  Article 155   (1) A request for a trial may be withdrawn before a trial decision becomes final and binding.  (2) A request for a trial may not be withdrawn without the consent of the adverse party, after the written answer under Article 134(1) has been submitted.  (3) When a request for invalidation trial has been filed with regard to two or more claims covered by a patent that has two or more claims, the request may be withdrawn for any of the claims.  (4) Where requests for correction trial are filed for each claim or each group of claims, the withdrawal of the said requests shall be made for all those requests. 

 (Notice of conclusion of proceedings)  Article 156   (1) Where the case has reached the point at which a trial decision may be rendered, the chief appeal examiner shall, in a trial other than invalidation trial, notify the parties and intervenor(s) of the conclusion of the proceedings.

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 (2) In invalidation trial, the chief appeal examiner shall, where the case has reached the point at which a trial decision may be rendered, and an announcement of a trial decision under Article 164-2(1) is not made or an announcement of a trial decision in the said paragraph has been made but a defendant does not file a request for correction under Article 134-2(1) or does not make an amendment under Article 17-4(1) within the time limit under paragraph (2) of the said Article, notify the parties and intervenors of the conclusion of the proceedings.  (3) The chief appeal examiner may, upon a motion by a party or intervenor, or ex officio, resume proceedings, where necessary, even after the notice has been given under the preceding two paragraphs.  (4) The trial decision shall be rendered within 20 days from the date on which the notice under paragraph (1) or (2) has been issued; provided, however, that this shall not apply where the case is complex or there are unavoidable reasons therefor. 

 (Appeal/Trial decision)  Article 157   (1) When appeal/trial decision has been rendered, the appeal/trial shall be concluded.  (2) Appeal/trial decision shall be rendered in writing stating the following matters:  (i) the trial number;  (ii) the name, and domicile or residence of each of the parties, intervenor(s) and their representatives;  (iii) the identification of the appeal/trial case;  (iv) the conclusion of and reasons for the appeal/trial decision; and  (v) the date of the appeal/trial decision.  (3) Where appeal/trial decision has been rendered, the Commissioner of the Patent Office shall serve a certified copy of the appeal/trial decision to the parties, intervenor(s) and person whose application for intervention has been refused. 

 (Special provisions regarding trials against examiner's decision of refusal)  Article 158   Any procedure taken during the examination procedure shall also be effective in appeal against an examiner's decision of refusal. 

Article 159   (1) Article 53 shall apply mutatis mutandis to appeal against an examiner's decision of refusal. In this case, the term "Article 17-2(1)(i) or (iii)" in Article

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53(1) shall be deemed to be replaced with "Article 17-2(1)(i), (iii) or (iv)", and the term "an amendment" in Article 53(1) shall be deemed to be replaced with "an amendment (in the case of Article 17-2(1)(i) or (iii), excluding the amendment made prior to the request for appeal against the examiner's decision of refusal)".  (2) Article 50 and Article 50-2 shall apply mutatis mutandis where a reason for refusal found in appeal against an examiner's decision of refusal is different from the reason(s) of the examiner's decision. In this case, the term "in the case of Article 17-2(1)(i) or (iii) (in the case of Article 17-2(1)(i), limited to the case where the examiner has given a notice under the next Article along with the notice of reasons for refusal)" in the proviso to Article 50 shall be deemed to be replaced with "in the case of Article 17-2(1)(i) (limited to the case where the examiner has given a notice under the next Article along with the notice of reasons for refusal, and excluding the case where the applicant has made an amendment prior to the filing of a request for appeal against an examiner's decision of refusal), (iii) (excluding the case where the applicant has made an amendment prior to the filing of a request for appeal against an examiner's decision of refusal) or (iv)."  (3) Articles 51 and 67-3(2) shall apply mutatis mutandis where a request for appeal against an examiner's decision of refusal is found to have reasonable grounds. 

Article 160   (1) Where an examiner's decision has been rescinded in appeal against the examiner's decision of refusal, appeal decision may be made to order a further examination to be carried out.  (2) The decision made in the appeal decision under the preceding paragraph shall be binding upon the examiner with respect to the case.  (3) Article 159(3) shall not apply where appeal decision under paragraph (1) is rendered. 

Article 161   Articles 134(1) to (3), 134-2, 134-3, 148 and 149 shall not apply to appeal against the examiner's decision of refusal. 

Article 162  Where, in the case of a request for appeal against an examiner's decision of refusal, where an amendment has been made to the description, scope of claims or drawings attached to the application in the patent application pertaining to the request at the time of filing the request, the Commissioner of the Patent Office shall direct the examiner to examine the request.

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Article 163   (1) Articles 48, 53 and 54 shall apply mutatis mutandis to an examination under the preceding Article. In this case, the term "Article 17-2(1)(i) or (iii)" in Article 53(1) shall be deemed to be replaced with "Article 17-2(1)(i), (iii) or (iv)" and the term "an amendment" in Article 53(1) shall be deemed to be replaced with "an amendment (in the case of Article 17-2(1)(i) or (iii), excluding the amendment made prior to the request for appeal against an examiner's decision of refusal)."  (2) Article 50 and Article 50-2 shall apply mutatis mutandis where a reason for refusal which was not contained in the examiner's decision concerned in the request for appeal is found in the examination under the preceding Article. In this case, the term "in the case of Article 17-2(1)(i) or (iii) (in the case of Article 17-2(1)(i), limited to the case where the examiner has given a notice under the next Article along with the notice of reasons for refusal)" in the proviso to Article 50 shall be deemed to be replaced with "in the case of Article 17-2(1) (limited to the case where the examiner has given a notice under the next Article along with the notice of reasons for refusal, and excluding the case where the applicant has made an amendment prior to the filing of a request for appeal against an examiner's decision of refusal), (iii) (excluding the case where the applicant has made an amendment prior to the filing of a request for appeal against an examiner's decision of refusal) or (iv)."  (3) Articles 51 and 52 shall apply mutatis mutandis where appeal is found to have reasonable grounds in the examination under the preceding Article. 

Article 164   (1) In an examination under Article 162, where the examiner renders a decision to the effect that a patent is to be granted, the examiner shall rescind the examiner's decision of refusal that is the basis of the appeal.  (2) Except in the case of the preceding paragraph, the examiner may not render a ruling dismissing an amendment under Article 53(1) as applied under Article 163(1).  (3) Except in the case of paragraph (1), the examiner shall report to the Commissioner of the Patent Office the result of the examination without rendering a decision on the appeal. 

 (Special provisions for invalidation trial)  Article 164-2   (1) Where the case of invalidation trial has reached the point at which a trial decision may be rendered, the chief appeal examiner shall, where he or she finds a reasonable ground for request for a trial or it is as provided by

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Ordinance of the Ministry of Economy, Trade and Industry, notify the parties and intervenors of an advance notice of the trial decision.  (2) Where an advance notice of a trial decision is notified pursuant to the preceding paragraph, the chief appeal examiner shall designate to the defendant an adequate time limit for filing a request for correction of the description, scope of claims or drawings attached to the application.  (3) Article 157(2) shall apply mutatis mutandis to an advance notice of trial decision under paragraph (1). 

 (Special provisions for correction trial)  Article 165   Where a request for correction trial does not correspond to one of the purposes provided in the proviso to Article 126(1) or does not comply with paragraphs (5) to (7) of Article 126, the chief appeal examiner shall notify the demandant of the reasons therefore and give the demandant an opportunity to submit an written opinion, designating an adequate time limit. 

Article 166   Articles 134(1) to (3), 134-2, 134-3, 148 and 149 shall not apply to a correction trial. 

 (Effect of trial decision)  Article 167   Where a final and binding trial decision in a invalidation trial or a trial for invalidation of the registration of extension of the duration has been registered, neither parties nor intervenors may file a request for a trial on the basis of the same facts and evidence. 

 (Scope of final and binding trial decision)  Article 167-2   (1) Appal/trial decision shall become final and binding for each appeal/trial case; provided, however, that, in the cases listed in the following items, appeal/trial decision shall become final and binding as provided in the corresponding item:  (i) where a request for invalidation trial has been filed for each claim and a request for correction has been filed under Article 134-2(1) for each group of claims: for the said group of claims;  (ii) where a request for correction trial has been filed for each group of claims: for the said group of claims; and,  (iii) where a request for trial has been filed for each claim and a case other than those listed in item (i): for the said claim 

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 (In relation to litigation)  Article 168   (1) Where deemed necessary during appeal/trial, the appeal/trial proceedings may be suspended until the decision in another trial has become final and binding or court proceedings have been concluded.  (2) Where an action is instituted or a motion for order of provisional seizure or order of provisional disposition is filed, the court may, if it considers it necessary, suspend the court proceedings until the appeal/trial decision becomes final and binding.  (3) Where an action with respect to infringement of a patent right or an exclusive license is instituted, the court shall notify the Commissioner of the Patent Office thereof. The same shall apply when the said court proceedings have been concluded.  (4) Where the Commissioner of the Patent Office receives the notice as provided in the preceding paragraph, the Commissioner of the Patent Office shall notify the court of whether appeal/request for a trial with regard to the said patent right has been filed. The same shall apply when, with regard to the said trial, a ruling dismissing the written request or appeal/trial decision has been rendered or the request has been withdrawn.  (5) Where the court receives the notice to the effect that a request for appeal/trial with regard to the said patent right has been filed under the preceding paragraph, if a document stating a method of allegation or defense as provided in Article 104-3(1) has already been submitted in the action prior to the said notice or if the said document is submitted for the first time after the said notice, the court shall notify the Commissioner of the Patent Office thereof.  (6) Where the Commissioner of the Patent Office receives the notice as provided in the preceding paragraph, the Commissioner of the Patent Office may request the court to deliver copies of any record of the said action which the appeal examiner considers necessary for the trial. 

 (Burden of costs of appeal/trial)  Article 169   (1) The burden of costs in connection with invalidation trial or invalidation trial of the registration of extension of the duration shall be decided ex officio by a trial decision where the trial is terminated by a trial decision or by a ruling in the trial where the trial is terminated otherwise than by a trial decision.  (2) Articles 61 to 66, 69(1), 69(2), 70 and 71(2) (Bearing of litigation costs) of the Code of Civil Procedure shall apply mutatis mutandis to the costs in connection with the trial under the preceding paragraph. In this case, the term "Supreme Court Rules" in Article 71(2) of the said Code shall be deemed to be replaced

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with "Ordinance of the Ministry of Economy, Trade and Industry."  (3) The costs in connection with appeal against an examiner's decision of refusal and a correction trial shall be borne by the demandant.  (4) Article 65 (Bearing of litigation costs in joint litigation) of the Code of Civil Procedure shall apply mutatis mutandis to the costs to be borne by the demandant under the preceding paragraph.  (5) The amount of costs in connection with appeal/trial shall be determined by the Commissioner of the Patent Office upon request, after appeal/trial decision or a ruling has become final and binding.  (6) The scope, the amount and the payment of the costs in connection with appeal/trial, and the payment required for undertaking a procedure for a trial shall be governed by the relevant provisions of the Act on Civil Procedure Costs, etc. (Act No. 40 of 1971) (excluding provisions in Chapter II, Sections 1 and 3 of the said Act) unless such provisions are contrary to the nature of the said matters. 

 (Enforceability of ruling on amount of costs)  Article 170   A final and binding ruling on the amount of costs for appeal/trial shall have the same effect as that of an enforceable title of obligation. 

Chapter VII Retrial 

 (Request for retrial)  Article 171   (1) A party or an intervenor may file a request for a retrial against a final and binding trial decision.  (2) Articles 338(1), 338(2) and 339 (Grounds for retrial) of the Code of Civil Procedure shall apply mutatis mutandis to a request for a retrial under the preceding paragraph. 

Article 172   (1) Where a demandant for a trial, in conspiracy with the demandee, has caused the trial decision to be rendered for the purpose of harming the right or interest of a third party, the third party may file a request for a retrial against the final and binding trial decision.  (2) A request for a retrial under the preceding paragraph shall be filed against the demandant and the demandee in the trial as joint demandees. 

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 (Time limit for request for retrial)  Article 173   (1) A request for a retrial shall be filed within 30 days from the date on which the demandant became aware of the grounds for the retrial after the trial decision became final and binding.  (2) Where a person intending to file a request for a retrial is unable to file the said request within the time limit as provided in the preceding paragraph due to reasons beyond the control of the person, notwithstanding the said paragraph, the said person may file the request within 14 days (in the case of an overseas resident, within two months) from the date on which the said reasons ceased to exist, prior to the lapse of six months from the expiration of the said time limit.  (3) Where a request for a retrial is filed on the ground that the demandant was not represented in accordance with the applicable legal provisions, the time limit as provided in paragraph (1) shall be counted from the day following the date on which, by being served a copy of the trial decision, the demandant or his statutory representative became aware that the trial decision had been rendered.  (4) No request for a retrial may be filed after the expiration of three years from the date on which the trial decision became final and binding.  (5) Where a ground for a retrial has arisen after the trial decision became final and binding, the time limit as provided in the preceding paragraph shall be counted from the day following the date on which the ground first arose.  (6) Paragraphs (1) and (4) shall not apply to a request for a retrial filed on the ground that the trial decision is in conflict with a final and binding trial decision previously rendered. 

 (Application mutatis mutandis of provisions regarding trial, etc.)  Article 174   (1) Articles 131(1), the main clause of 131-2(1), 132(3) and (4), 133, 133-2, 134(4), 135 to 147, 150 to 152, 155(1), 156(1), (3) and (4), 157 to 160, the main clause of 167-2, 168, 169(3) to (6), and 170 shall apply mutatis mutandis to a retrial against a final and binding trial decision in a appeal against an examiner's decision of refusal.  (2) Articles 131(1), the main clause of 131-2(1), 132(1), (2) and (4), 133, 133-2, 134(1), (3) and (4), 135 to 152, 154, 155(1) to (3), 156(1), (3) and (4), 157, 167, 168, 169(1), (2), (5) and (6), and 170 shall apply mutatis mutandis to a retrial against a final and binding trial decision in a invalidation trial or a trial for invalidation of the registration of extension of the duration.  (3) Articles 131(1) and (4), the main clause of 131-2(1), 132(3) and (4), 133, 133-2, 134(4), 135 to 147, 150 to 152, 155(1) and (4), 156(1), (3) and (4), 157, 165, 167

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2, 168, 169(3) to (6), and 170 shall apply mutatis mutandis to a retrial against a final and binding trial decision in a correction trial.  (4) Article 348(1) (Scope of proceedings) of the Code of Civil Procedure shall apply mutatis mutandis to a retrial. 

 (Restriction on effect of patent right restored by retrial)  Article 175   (1) Where a patent right pertaining to an invalidated patent or a patent right pertaining to the invalidated registration of extension of the duration thereof has been restored by a retrial, or where the establishment of a patent right or the extension of the duration of a patent right with respect to a patent application or an application for the registration of extension of the duration of a patent right which was refused by a trial decision has been registered by a retrial, and where the patent has been granted for the invention of a product, such patent right shall not be effective against any product imported into or produced or acquired in Japan without knowledge, after the trial decision became final and binding but before the registration of the request for a retrial.  (2) Where a patent right pertaining to an invalidated patent or a patent right pertaining to the invalidated registration of extension of the duration thereof has been restored by a retrial or where the establishment of a patent right or the extension of the duration of a patent right with respect to a patent application or an application for the registration of extension of the duration of a patent right which was refused by a trial decision has been registered by a retrial, such patent right shall not be effective against the following acts conducted after the trial decision became final and binding but before the registration of the request for a retrial:  (i) working of the said invention without knowledge;  (ii) where a patent has been granted for the invention of a product, producing, assigning, etc., importing or offering for assignment, etc. any product to be used for producing of the said product without knowledge; and  (iii) where a patent has been granted for an invention of a product, possessing the said product for the purpose of assigning, etc. or exporting it without knowledge;  (iv) where a patent has been granted for the invention of a process, producing, assigning, etc., importing or offering for assignment, etc. any product to be used for the use of the said process without knowledge; and  (v) where a patent has been granted for an invention of a process of producing a product, possessing the product produced by the said process for the purpose of assigning, etc. or exporting it without knowledge. 

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Article 176   Where a patent right pertaining to an invalidated patent or a patent right pertaining to the invalidated registration of an extension of the duration thereof has been restored through a retrial or where the establishment of a patent right or the extension of the duration of a patent right with respect to a patent application or an application for registration of an extension of the duration of a patent right refused by a trial decision has been registered through a retrial, and where a person has, without knowledge, been working the invention in Japan or has, without knowledge, been making preparations therefore, after the trial decision became final and binding but before the registration of the demand for a retrial, such person shall have a non-exclusive license on the patent right, to the extent of the invention and the purpose of such business worked or prepared. 

Article 177  Deleted 

Chapter VIII Litigation 

 (Actions against trial decisions, etc.)  Article 178   (1) The Tokyo High Court shall have exclusive jurisdiction over any action against a trial decision, a ruling to dismiss a written request for a trial or a retrial or a written request for correction under Article 134-2(1).  (2) An action under paragraph (1) may be instituted only by a party in the case, an intervenor, or a person whose application for intervention in the trial or in the retrial has been refused.  (3) An action under paragraph (1) may not be instituted after the expiration of thirty days from the date on which a certified copy of the trial decision or the ruling has been served.  (4) The time limit as provided in the preceding paragraph shall be invariable.  (5) The chief appeal examiner may ex officio designate an additional period extending the invariable time limit under the preceding paragraph for a person in a remote area or an area with transportation difficulty.  (6) An action with regard to a matter for which a request for a trial may be made may be instituted only against a trial decision. 

 (Appropriate party as defendant)  Article 179   In an action under Article 178(1), the Commissioner of the Patent Office shall be the defendant; provided, however, that in the case of an action against a trial decision in a invalidation trial, or a trial for invalidation of the

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registration of extension of duration, or in a retrial under Article 171(1) against a final and binding trial decision in such trial, the demandant or the demandee in the trial or retrial shall be the defendant. 

 (Notice of institution of action, etc.)  Article 180   (1) Where an action under the proviso to the preceding Article has been instituted, the court shall notify the Commissioner of the Patent Office thereof without delay.  (2) In the case of the preceding paragraph, where an action is against a invalidation trial requested for each claim or a trial decision of a retrial against a final and binding trial decision of the trial, the court shall deliver to the Commissioner of the Patent Office the documents necessary for identifying claims pertaining to the said action. 

 (Opinion of the Commissioner of the Patent Office in litigation rescinding the trial decision)  Article 180-2   (1) Where an action under the proviso to Article 179 is instituted, the court may seek the opinion of the Commissioner of the Patent Office regarding the application of this Act or any other necessary matters relating to such case.  (2) Where an action under the proviso to Article 179 is instituted, upon the court's consent, the Commissioner of the Patent Office may express his/her opinions to the court regarding the application of this Act or any other necessary matters relating to such case.  (3) The Commissioner of the Patent Office may designate another Patent Office official to express the Commissioner's opinions for the purpose of the preceding two paragraphs. 

 (Rescission of the trial decision or ruling)  Article 181   (1) Where the court finds for the plaintiff in an action instituted under Article 178(1), it shall rescind the trial decision or ruling.  (2) Where the court's decision rescinding a trial decision or ruling or the court's ruling rescinding a trial decision under the preceding paragraph has become final and binding, the appeal examiners shall carry out further proceedings and render a trial decision or ruling. In this case, the court's decision rescinding the trial decision has become final and binding with regard to some claims in a group of claims for which a request for correction under Article 1342(1) has been filed, the appeal examiner shall, in carrying out the proceedings, rescind the trial decision on the other claims in the said group of claims.

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 (Delivery of original copy of judgment)  Article 182   Where the court procedures with respect to an action under the proviso to Article 179 have been concluded, the court shall, without delay, deliver the original copy of the judgment rendered by the court of each instance to the Commissioner of the Patent Office. 

 (Composition of panel)  Article 182-2   With respect to an action under Article 178(1), the ruling that proceedings and judgment shall be rendered by a panel consisting of five judges may be made if so determined by the said panel. 

 (Action against amount of compensation)  Article 183   (1) A person(s) who has received an award under Article 83(2), 92(3), 92(4), or 93(2) may, if not satisfied with the amount of the compensation determined in the award, institute an action demanding an increase or decrease of the said amount.  (2) An action under the preceding paragraph may not be instituted after the expiration of six months from the date on which a certified copy of the award has been served. 

 (Appropriate party as defendant)  Article 184   In an action under Article 183(1), the following person shall have standing as a defendant:  (i) in an action against an award under Article 83(2), 92(4) or 93(2), the nonexclusive licensee, patentee or exclusive licensee; and  (ii) in an action against an award under Article 92(3), the non-exclusive licensee or the other person under Article 72. 

 (Relationship between (administrative) objection and litigation)  Article 184-2  An action demanding the rescission of dispositions imposed by this Act or an order thereunder (excluding dispositions under Article 195(4)), may be instituted only after the rendering of a ruling or an award on an objection against the dispositions or on the request for examination thereof. 

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Chapter IX Special Provisions Concerning International Applications under the Patent Cooperation Treaty 

 (Patent application based on international application)  Article 184-3   (1) An international application (a patent application only) to which the international application date is accorded under Article 11(1), 11(2)(b) or 14(2) of the Patent Cooperation Treaty signed in Washington on June 19, 1970 (hereinafter referred to as the "Treaty" in this Chapter) and which specifies Japan as a designated State under Article 4(1)(ii) of the Treaty shall be deemed to be a patent application filed on the said international application date.  (2) Article 43 (including its mutatis mutandis application under Article 43-2(3)) shall not apply to the international application deemed to be a patent application under the preceding paragraph (hereinafter referred to as "international patent application"). 

 (Translations of international patent application in foreign language)  Article 184-4   (1) An applicant of an international patent application in foreign language (hereinafter referred to as a "patent application in foreign language") shall submit to the Commissioner of the Patent Office Japanese translations of the description, scope of claims, drawings (the descriptive text in such drawings only, hereinafter the same shall apply in this article), and the abstract, as provided in Article 3(2) of the Treaty, as of the international application date as provided in paragraph (1) of the preceding Article (hereinafter referred to as the "international application date") within the period from the priority date under Article 2 (xi) of the Treaty (hereinafter referred to as the "priority date"), to two years and six months (hereinafter referred to as the "time limit for the submission of national documents") therefrom; provided, however, that the applicant of a patent application in foreign language who has submitted the document under paragraph (1) of the following Article during the period from two months before the expiration of the Time Limit for the Submission of National Documents to the expiry date thereof (excluding the case where the said translations have been submitted prior to the submission of the said documents) may submit the said translations within two months from the date of submission of the said document (hereinafter referred to as the "special time limit for the submission of translations").  (2) In the case of the preceding paragraph, where the applicant of the patent application in foreign language has made an amendment under Article 19(1) of the Treaty, the applicant may, in lieu of the translation of scope of the claim(s)

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as provided in the preceding paragraph, submit a translation of the amended scope of claim(s).  (3) Where the translation of the description as provided in paragraph (1) and the translation of the scope of claim(s) as provided in the preceding two paragraphs (hereinafter referred to as "translation of the description, etc.") have not been submitted within the Time Limit for the Submission of National Documents (in the case of a patent application in foreign language under the proviso to paragraph (1), the Special Time Limit for the Submission of Translations, hereinafter the same shall apply in this Article), the international patent application shall be deemed to have been withdrawn.  (4) An applicant of the international patent application that was deemed to have been withdrawn pursuant to the preceding paragraph, where there are justifiable reasons for having not been able to submit the said translation of the description, etc. within the Time Limit for the Submission of National Documents, may submit to the Commissioner of the Patent Office the translation of the description, etc. and the translations of the drawings and abstracts under paragraph (1) within two months from the date on which the reasons ceased to exist, but not later than one year following the expiration of the Time Limit for the Submission of National Documents.  (5) The translations submitted under the preceding paragraph shall be deemed to have been submitted to the Commissioner of the Patent Office at the time of expiration of the Time Limit for the Submission of National Documents expires.  (6) Where an amendment under Article 19(1) of the Treaty has been made, an applicant who has submitted the translation of the scope of claim(s) as provided in paragraph (1) may further submit a Japanese translation of the said amended scope of claim(s) no later than the date on which the Time Limit for the Submission of National Documents expires (the time of requesting where the applicant requests the examination of the application within the Time Limit for the Submission of National Documents, hereinafter referred to as the "national processing standard time").  (7) The main clause of Article 184-7(3) shall apply mutatis mutandis to the case where the translation under paragraph (2) or the preceding paragraph has not been submitted. 

 (Submission of documents and order to amend procedures)  Article 184-5   (1) An applicant of an international patent application shall submit a document to the Commissioner of the Patent Office within the Time Limit for the Submission of National Documents stating the following:  (i) the name, and the domicile or residence of the applicant;  (ii) the name, and the domicile or residence of the inventor; and

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 (iii) matters as provided by Ordinance of the Ministry of Economy, Trade and Industry, including the international application number.  (2) The Commissioner of the Patent Office may order the amendment of procedures for an applicant, designating an adequate time limit, in the following cases:  (i) where the document to be submitted under the preceding paragraph is not submitted within the Time Limit for the Submission of National Documents;  (ii) where the procedure as provided in the preceding paragraph does not comply with paragraphs (1) to (3) of Article 7or Article 9;  (iii) where the procedure as provided in the preceding paragraph does not comply with the formal requirements as provided by Ordinance of the Ministry of Economy, Trade and Industry;  (iv) where a translation of the abstract to be submitted under paragraph (1) of the preceding Article is not submitted within the Time Limit for the Submission of National Documents (in the case of a patent application in foreign language under the proviso to paragraph (1) of the preceding Article, the Special Time Limit for the Submission of Translations); and  (v) where the fees payable under Article 195(2) are not paid within the Time Limit for the Submission of National Documents.  (3) Where the person ordered to amend a procedure under the preceding paragraph does not make the amendment within the designated time limit under the said paragraph, the Commissioner of the Patent Office may dismiss the said international patent application. 

 (Effect, etc. of application, description, etc. of international application)  Article 184-6   (1) The application of an international patent application as of the international application date shall be deemed to be an application submitted under Article 36(1).  (2) The description of an international patent application in the Japanese language (hereinafter referred to as a "patent application in Japanese language") as of the international application date and translations of the description of a patent application in foreign language as of the international application date shall be deemed to be the description submitted with the application under Article 36(2); scope of claim(s) of a patent application in Japanese language as of the international application date and a translation of the scope of claim(s) of a patent application in foreign language as of the international application date shall be deemed to be the scope of claim(s) submitted with the application under the said paragraph; drawing(s) of a patent application in Japanese language as of the international application date, drawing(s) of a patent application in foreign language as of the

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international application date (excluding the descriptive text in the drawing(s)) and a translation of the descriptive text in the drawing(s) shall be deemed to be the drawing(s) submitted with the application under the said paragraph; and, the abstract of a patent application in Japanese language and a translation of the abstract of a patent application in foreign language shall be deemed to the abstract submitted with the application under the said paragraph.  (3) Where a translation of the amended scope of claim(s) under Article 19(1) of the Treaty is submitted as provided in Article 184-4(2) or (6), notwithstanding the preceding paragraph, a translation of the said amended scope of claim(s) shall be deemed to be the scope of claim(s) submitted with the application under Article 36(2). 

 (Amendment under Article 19 of the Treaty with regard to patent application in Japanese language)  Article 184-7   (1) Where an applicant of a patent application in Japanese language has made an amendment under Article 19(1) of the Treaty, such applicant shall submit to the Commissioner of the Patent Office a copy of the written amendment submitted under Article 19(1) on or before the date which the National Processing Standard Time falls into.  (2) Where a copy of a written amendment has been submitted under the preceding paragraph, an amendment to the scope of claim(s) attached to the application shall be deemed to have been made under Article 17-2(1) by the said copy of the written amendment; provided, however, that where the written amendment has been served to the Patent Office under Article 20 of the Treaty within the time limit under the preceding paragraph, the amendment is deemed to have been made by the said written amendment.  (3) Where the procedure under paragraph (1) has not been taken by the applicant of a patent application in Japanese language within the time limit under paragraph (1), no amendment under Article 19(1) of the Treaty shall be deemed to have been made; provided, however, that this shall not apply to the case as provided in the proviso to the preceding paragraph. 

 (Amendment under Article 34 of the Treaty)  Article 184-8   (1) Where an applicant of an international patent application has made an amendment under Article 34(2)(b) of the Treaty, such applicant shall submit to the Commissioner of the Patent Office, in the case of amendment with regard to a patent application in Japanese language, a copy of the written amendment submitted under Article 34(2)(b) and, in the case of amendment with regard to a patent application in foreign language, a Japanese translation of the said

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written amendment, on or before the date which the National Processing Standard Time falls into.  (2) Where a copy of the written amendment or a translation of the written amendment has been submitted under the preceding paragraph, an amendment to the description, scope of claim(s) or drawing(s) attached to the application shall be deemed to have been made under Article 17-2(1) by the copy of the written amendment or the translation of the written amendment; provided, however, that where the written amendment with regard to a patent application in Japanese language has been served to the Patent Office under Article 36(3)(a) of the Treaty within the time limit under the preceding paragraph, the amendment is deemed to have been made by the said written amendment.  (3) Where the procedure under paragraph (1) has not been taken by the applicant of an international patent application within the time limit under paragraph (1), no amendment under Article 34(2)(b) of the Treaty shall be deemed to have been made; provided, however, that this shall not apply to the case as provided in the proviso to the preceding paragraph.  (4) Where, in accordance with paragraph (2), an amendment to the description, scope of claims or drawings attached to the application with regard to a patent application in foreign language has been deemed to have been made under Article 17-2(1), such amendment shall be deemed to have been made by submitting the written correction of incorrect translation as provided in Article 17-2(2). 

 (National publication, etc.)  Article 184-9   (1) The national publication of a patent application in foreign language, a translation of which has been submitted under Article 184-4(1) or (4), excluding a patent application in foreign language, gazette containing the patent of which has been published, shall be effected, without delay, by the Commissioner of the Patent Office after the lapse of the Time Limit for the Submission of National Documents (in the case of a patent application in foreign language under the proviso to Article 184-4(1), the Special Time Limit for the Submission of Translations, hereinafter the same shall apply in this paragraph) (in the case of an international patent application for which the applicant has requested an examination of the patent application within the Time Limit for the Submission of National Documents and of which the international publication under Article 21 of the Treaty (hereinafter referred to as "international publication") has been effected, after such request for the examination of the patent application).  (2) National publication shall be effected by publishing the following matters in

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the patent gazette:  (i) the name, and the domicile or residence of the applicant;  (ii) the filing number of the application;  (iii) the international application date;  (iv) the name, and the domicile or residence of the inventor;  (v) the matters stated in the translations of the description and the descriptive text in the drawing(s) as provided in Article 184-4(1); the matters stated in the translation of the scope of claim(s) as provided in the said paragraph (in the case where a translation has been submitted under paragraph (2) of the said Article, the said translation); the matters stated in the translation under paragraph (6) of the said Article; the contents of the drawing(s) (excluding the descriptive text in the drawing(s)); and the matters stated in the translation of the abstract (excluding matters, recognized by the Commissioner of the Patent Office, to be liable to contravene public order or morality by stating those in the patent gazette);  (vi) the number and the date of the national publication; and  (vii) other necessary matters.  (3) Article 64(3) shall apply mutatis mutandis where the matters stated in the translation of the abstract as provided in item (v) of the preceding paragraph are to be contained in the patent gazette under the preceding paragraph.  (4) Article 64 shall not apply to an international patent application.  (5) For the purpose of an international patent application, the term "the laying open of the patent application" in Articles 48-5(1), 48-6, the proviso to 66(3), 128, 186(1)(i) and (ii) and 193(2)(i), (ii), (vi) and (ix) shall be deemed to be replaced with "the international publication under Article 184-9(1)" in the case of a patent application in Japanese language and "the national publication under Article 184-9(1)" in the case of a patent application in foreign language.  (6) For the purpose of a request for a certificate, etc., with regard to a patent application in foreign language, the term "or the materials under Article 672(2)'' in Article 186(1)(i) shall be deemed to be replaced with "or an application, a description, scope of claim(s), drawing(s), or an abstract in an international application under Article 3(2) of the Patent Cooperation Treaty signed in Washington on June 19, 1970 (excluding those with regard to an international patent application where the establishment of a patent right has been registered has been made or those contained in the international publication)."  (7) For the purpose of the matters to be contained in the patent gazette with regard to an international patent application, the term "after the laying open of a patent application" in Article 193(2)(iii) shall be deemed to be replaced with "with regard to an international patent application, the international publication of which has been effected." 

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 (Effect etc., of international publication and National Publication)  Article 184-10   (1) After the international publication of a patent application in the case of a patent application in Japanese language, or after the national publication of a patent application in the case of a patent application in foreign language, where the applicant of the international patent application has given warning with documents stating the contents of the invention claimed in the international patent application, the applicant of the international patent application may claim compensation against a person who has worked the invention as a business after the warning, prior to the registration establishing a patent right, and the amount of compensation shall be equivalent to the amount the applicant(s) would be entitled to receive for the working of the invention if the invention were patented. Even where the said warning has not been given, the same shall apply to a person who worked the invention as a business prior to the registration establishing a patent right, in the case of a patent application in Japanese language, with knowledge of the invention having been claimed in the international patent application that the international publication has been effected, or, in the case of a patent application in foreign language, with knowledge of the invention having been claimed in the international patent application that the national publication has been effected.  (2) Paragraphs (2) to (6) of Article 65 shall apply mutatis mutandis to the exercise of the right to claim compensation under the preceding paragraph. 

 (Special provisions concerning patent administrators for overseas residents)  Article 184-11   (1) Notwithstanding Article 8(1), an applicant of an international patent application who is an overseas resident may, prior to the National Processing Standard Time, undertake procedures without being represented by a patent administrator.  (2) The person prescribed in the preceding paragraph shall appoint a patent administrator and notify the Commissioner of the Patent Office thereof on or after the National Processing Standard Time, but not later than the time limit as provided in Ordinance of the Ministry of Economy, Trade and Industry.  (3) Where no appointment of a patent administrator has been notified within the time limit as provided in the preceding paragraph, the international patent application shall be deemed to have been withdrawn.  (4) Where an applicant under paragraph (1) has undertaken procedures under Article 184-4(4) with being represented by a patent administrator, two preceding paragraphs shall not apply. 

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 (Special provisions concerning amendment)  Article 184-12   (1) Notwithstanding the main clause of Article 17(1), no amendment of the procedures shall be allowed (excluding those under Articles 184-7(2) and 1848(2)) unless, in the case of a patent application in Japanese language, the procedure under Article 184-5(1) has been taken and the fee payable under Article 195(2) has been paid, and, in the case of a patent application in foreign language, the procedures under Articles 184-4(1) and 184-5(1) have been taken, the fee payable under Article 195(2) has been paid, and the National Processing Standard Time has lapsed.  (2) For the purpose of the allowable scope of amendment to the description, scope of claims or drawings with regard to a patent application in foreign language, the term "a foreign-language-written-application as provided in Article 36-2(2)" in Article 17-2(2) shall be deemed to be replaced with "a patent application in foreign language as provided in Article 184-4(1)"; the term "the description, scope of claims or drawings originally attached to the application (in the case of a foreign-language-written-application under Article 36-2(2), the translation of foreign-language-documents as provided in Article 36-2(2) that is deemed to be the description, scope of claims and drawings under Article 362(6) (in the case where the amendment to the description, scope of claims or drawing has been made through the submission of the statement of correction of incorrect translation, the said translations or the amended description, scope of claims or drawings), the same shall apply in Articles 34-2(1) and 34-3(1))" in Article 17-2(3) shall be deemed to be replaced with "a translation as provided in Article 184-4(1) of the description or drawings (limited to the descriptive text in the drawings) of an international patent application as provided in Article 184-3(2) (hereinafter referred to as an "international patent application" in this paragraph) as of the international application date as provided in Article 184-4(1) (hereinafter referred to as the "international application date" in this paragraph), a translation as provided in Article 1844(1) of scope of the claims of an international patent application as of the International Application Date (in the case where a translation of the scope of claim(s) amended under Article 19(1) of the Patent Cooperation Treaty signed in Washington on June 19, 1970 has been submitted under Article 184-4(2) or (6), the said translation) or drawings (excluding the descriptive text in the drawings) of an international patent application as of the International Application Date (hereinafter referred to as the "translations, etc." in this paragraph) (in the case where an amendment to the description, scope of claim(s) or drawing(s) has been made through the submission of the statement of correction of incorrect translation, the Translations, etc. or the said amended description, scope of claims or drawings)".

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 (3) Notwithstanding Article 17-3, an applicant of an international patent application may amend the abstract attached to the application only within one year and three months from the priority date (in the case of a patent application in foreign language, a translation of which has been submitted under Article 184-4(1), where such application falls under an international patent application of which the applicant has requested an examination within the Time Limit for the Submission of National Documents and the international publication has been effected, excluding the time after the request for an examination of the application has been filed). 

 (Special provisions for registration in the patent registry)  Article 184-12-2   Notwithstanding Article 27(1)(iv), provisional exclusive license shall not be registered, unless, in the case of a patent application in Japanese language, procedures under Article 184-5(1) have been undertaken and the fee relating to the procedures under Article 195(2) has been paid, and, in the case of a patent application in foreign language, procedures under Articles 184-4(1) or (4) and 184-5(1) have been undertaken, the fee relating to the procedures under Article 195(2) has been paid, and the National Processing Standard Time has lapsed. 

 (Special provision concerning patentability)  Article 184-13   For the purpose of the application of Article 29-2, in the case where another patent application or a utility model registration application as provided in Article 29-2 is an international patent application or an International utility model registration application under Article 48-3(2) of the Utility Model Act, the term "another patent application or a utility model registration application " under Article 29-2 of this Act shall be deemed to be replaced with "another patent application or utility model registration application (excluding a patent application in foreign language under Article 184-4(1) or a utility model registration application in foreign language under Article 48-4(1) of the Utility Model Act which has been deemed to have been withdrawn in accordance with Article 184-4(3) of this Act or Article 48-4(3) of the Utility Model Act)," the term "the laying open of the patent application or" shall be deemed to be replaced with "laying open of the patent application," the term "published" shall be deemed to be replaced with "published or where international publication under Article 21 of the Patent Cooperation Treaty signed in Washington on June 19, 1970 has been effected," and the term "the description, scope of claims or drawings originally attached to the application" shall be deemed to be replaced with "the description, scope of claims, or drawings of an international application as of the International Application Date under Article

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184-4(1)of this Act or Article 48-4(1) of the Utility Model Act." 

 (Special provision concerning exception to lack of novelty of invention)  Article 184-14   Notwithstanding Article 30(3), an applicant of an international patent application who requests the application of Article 30(2) may submit to the Commissioner of the Patent Office, after the National Processing Standard Time, but not later than the time limit as provided in Ordinance of the Ministry of Economy, Trade and Industry, a document stating thereof and a document proving the fact that the invention which has fallen under any of the paragraphs of Article 29(1) has become applicable is an invention to which Article 30(2) may be applicable. 

 (Special provisions concerning priority claim based on a patent application, etc.)  Article 184-15   (1) The proviso to Articles 41(1), 41(4) and 42(2) shall not apply to an international patent application.  (2) For the purpose of application of Article 41(3) to a patent application in Japanese language, the term "or the laying open of the patent application" in the said Article shall be deemed to be replaced with "or the international publication under Article 21 of the Patent Cooperation Treaty signed in Washington on June 19, 1970."  (3) For the purpose of the application of Article 41(3) for a patent application in foreign language, the term "the description, scope of claims or drawings originally attached to the application in a patent application" in the said Article shall be deemed to be replaced with "the description, scope of claims or drawings of an international application as of the international application date under Article 184-4(1)," and the teem "or the laying open of the application" shall be deemed to be replaced with "or the international publication under Article 21 of the Patent Cooperation Treaty done in Washington on June 19, 1970."  (4) For the purpose of application of paragraphs (1) to (3) of Article 41 and 42(1), in the case where the earlier application under Article 41(1) of this Act is an international patent application or an international utility model registration application under Article 48-3(2) of the Utility Model Act, the term "the description, scope of claims for a patent or utility model registration and drawings originally attached to the application" in Articles 41(1) and 41(2) shall be deemed to be replaced with "the description, scope of claims or drawings of an international application as of the international application date under Article 184-4(1) of this Act or Article 48-4(1) of the Utility Model

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Act,"; the term "the description, scope of claims for patent or utility model registration and drawings originally attached to the application in the earlier application " in Article 41(3) shall be deemed to be replaced with "the description, scope of claims or drawings of an international application of the earlier application as of the International Application Date under Article 1844(1) of this Act or Article 48-4(1) of the Utility Model Act,"; the term "the laying open of the patent application relating to" in Article 41(3) shall be deemed to be replaced with "the international publication under Article 21 of the patent Cooperation Treaty signed in Washington on June 19, 1970 relating to,"; and the term "when one year and three months from the filing date has lapsed" in Article 42(1) shall be deemed to be replaced with "at the later of the time of the National Processing Standard Time under Article 184-4 (6) of this Act or Article 48-4(6) of the Utility Model Act or the time when one year and three months has lapsed from the International Application Date under Article 184-4 (1) of this Act or Article 48-4 (1) of the Utility Model Act". 

 (Special provision concerning conversion of application)  Article 184-16   An international application that has been deemed to be an application for utility model registration under Article 48-3(1) or 48-16(4) of the Utility Model Act may be converted to a patent application, only after the fees payable under Article 54(2) of the said Act have been paid (or, in the case of an international application that is deemed to be a Utility Model registration application under Article 48-16(4) of the said Act, after the ruling as provided in Article 48-16(4) has been rendered), and, in the case of a Utility Model Registration Application in Japanese Language under Article 48-5(4) of the said Act, the procedures under Article 48-5(1) of the said Act has been completed, or, in the case of a Utility Model Registration Application in Foreign Language under 48-4(1) of the said Act, the procedures under Article 48-4(1) or 48-4(4) and Article 48-5(1) and of the said Act have been completed. 

 (Restriction on the time for request for examination of application)  Article 184-17   A request for an examination of an international patent application shall not be allowed unless, for an applicant of the international patent application, the procedure under Article 184-5 in the case of a patent application in Japanese language or the procedures under Article 184-4(1) or (4) and 184-5(1) in the case of a patent application in foreign language have been taken and the fee payable under Article 195(2) has been paid, and, for any person who is not the applicant of the international patent application, the Time Limit for the Submission of National Documents (in the case of a patent application in

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foreign language under the proviso to Article 184-4(1), the Special Time Limit for the Submission of Translation) has lapsed. 

 (Provisions for reasons for refusal, etc.)  Article 184-18   For the purpose of an examiner's decision of refusal and a invalidation trial, with respect to a patent application in foreign language, the term "foreignlanguage-written-application" in Articles 49(vi), and 123(1)(i) and (v) shall be deemed to be replaced with "patent application in foreign language referred to in Article 184-4(1)," and the term "foreign-language-documents" in Article 49(vi) and 123(1)(v) shall be deemed to be replaced with "the description, scope of claim(s) or drawing(s) of the international application as of the international application date referred to in Article 184-4(1)." 

 (Special provisions concerning correction)  Article 184-19   For the purpose of the request for correction under Article 134-2(1) and the request for a correction trial with respect to a patent application in foreign language, the term "foreign-language-written-application" in Article 126(5) shall be deemed to be replaced with "foreign-language-written-application referred to in Article 184-4(1)" and the term "foreign-language-documents" shall be deemed to be replaced with "the description, scope of claim(s) or drawing(s) of the international application as of the international application date referred to in Article 184-4(1)." 

 (International application deemed to be patent application by decision)  Article 184-20   (1) Where a refusal under Article 25(1)(a) of the Treaty or a declaration under Article 25(1)(a) or (b) of the Treaty has been made by the receiving Office under Article 2(xv) of the Treaty, or a finding under Article 25(1)(a) of the Treaty has been made by the International Bureau under Article 2(xix) of the Treaty in relation to an international application (a patent application only) which specifies Japan as a designated State under Article 4(1)(ii) of the Treaty, the applicant of the international application under Article 2(vii) of the Treaty may make a request to the effect that the Commissioner of the Patent Office shall render a decision under Article 25(2)(a) of the Treaty in accordance with Ordinance of the Ministry of Economy, Trade and Industry within the time limit provided in Ordinance of the Ministry of Economy, Trade and Industry.  (2) A person making a request under the preceding paragraph with regard to an international application in foreign language shall submit at the time of the request to the Commissioner of the Patent Office Japanese translations of

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documents concerning the international application as required by Ordinance of the Ministry of Economy, Trade and Industry, including the description, scope of claims, drawings (limited to the explanations in the drawings), and abstract.  (3) Upon receiving the request under paragraph (1), the Commissioner of the Patent Office shall rule on whether the refusal, declaration or finding relating thereto was justified under the provisions of the Treaty and the Regulations under the Patent Cooperation Treaty.  (4) Where the Commissioner of the Patent Office has rendered a ruling under the preceding paragraph to the effect that the refusal, declaration or finding under the said paragraph was not justified under the provisions of the Treaty and the Regulations under the Patent Cooperation Treaty, the international application for which the decision is rendered shall be deemed to be a patent application filed on the day which would have been be accorded as the international application date if no such refusal, declaration or finding had been made for the international application.  (5) For the purpose of laying open of an international application that is deemed to be a patent application under the preceding paragraph, the term "the date of the filing of a patent application" in Article 64(1) shall be deemed to be replaced with "the priority date under Article 184-4(1)", the term "foreignlanguage-written-application" and "foreign-language-documents and the Abstract in foreign language" in Article 64(2)(vi) shall be deemed to be replaced with "international application in foreign language " and "description, scope of claim, drawing and abstract of an international application filed on the day to be accorded as the International application Date under Article 184-20(4)".  (6) Article 184-3(2), 184-6(1) and (2), 184-9(6), 184-12 to 184-14, 184-15(1), (3) and (4), 184-17 to 184-19 shall apply mutatis mutandis to an international application that is deemed to be a patent application under paragraph (4). In such a case, the replacement of terms necessary for the application of the said provisions shall be made as prescribed by Cabinet Order. 

Chapter X Miscellaneous Provisions 

 (Special provisions for patent or patent right covering two or more claims)  Article 185   Pertaining to the patent or patent rights covering two or more claims, for the purposes of the application of Article 27(1)(i), Article 65(5) (including its application under Article 184-10(2)), 80(1), 97(1), 98(1)(i), 111(1)(ii), 123(3), 125, 126(8) (including its application under Article 134-2(9)), 128 (including its application under Article 134-2(9)), Article 132(1) (including its application under Article 174(2)) or 175, 176 or 193(2)(iv) of this Act, or of Article 20(1) of

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the Utility Model Act, the patent shall be deemed to have been granted, or the patent right shall be deemed to exist, for each claim. 

 (Request for certificate, etc.)  Article 186   (1) Any person may file a request with regard to patents to the Commissioner of the Patent Office to issue a certificate, a certified copy of documents or an extract of documents, to allow the inspection or copying of documents, or to issue documents stored on the magnetic tapes that constitute the part of the Patent Registry; provided, however, that if the Commissioner of the Patent Office considers it necessary to keep such documents confidential, this provision shall not apply in the case of the following documents:  (i) an application, or the description, scope of claims, drawings or abstract attached to an application, foreign-language-documents, an foreign-languageabstract or any document pertaining to the examination of a patent application (except where the establishment of a patent right has been registered or where the laying open of a patent application has been effected), or the materials under Article 67-2(2);  (ii) documents concerning a appeal against an examiner's decision of refusal (except where the establishment of the patent right has been registered or where the laying open of a patent application has been effected);  (iii) documents concerning a invalidation trial, a trial for invalidation of the registration of extension of the duration or a retrial of the final and binding trial decision in the such trials, with respect to which a party in the case or intervenor has given notice that a trade secret owned by the said party in the case or intervenor has been described (trade secret as provided in Article 2(4) of the Unfair Competition Prevention Act (Act No. 47 of 1993));  (iv) documents which are liable to cause damage to an individual's reputation or peaceful life; and  (v) documents which are liable to cause damage to public order or morality.  (2) Where the Commissioner of the Patent Office approves of the request under the main clause of the preceding paragraph with regard to the documents as provided in items (i) to (iv) of the said paragraph, the Commissioner of the Patent Office shall notify the person who submitted the said documents thereof and reasons therefor.  (3) Provisions of the Act on Access to Information Held by Administrative Organs (Act No. 42 of 1999) shall not apply to the documents concerning patents and the part of the Patent Registry stored on magnetic tapes.  (4) Provisions in Chapter 4 of the Act on Protection of Personal Information Possessed by Administrative Organs (Act No. 58 of 2003) shall not apply to the possessed personal information (refers to the possessed personal information

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as provided in Article 2(3) of the said Act) recorded in the documents concerning patents and the part of the Patent Registry stored on magnetic tapes. 

 (Mark of Patent)  Article 187   A patentee, exclusive licensee or non-exclusive licensee shall make efforts to place a mark (hereinafter referred to as a "mark of patent") as provided by Ordinance of the Ministry of Economy, Trade and Industry, on the patented product, product produced by the patented process (hereinafter referred to as a "patented product"), or package thereof, indicating that the product or process is patented. 

 (Prohibition of false marking)  Article 188   It shall be prohibited for a person to do the following acts:  (i) putting a mark of patent or a mark confusing therewith on or in a nonpatented product or the packaging thereof;  (ii) assigning, etc. or displaying for the purpose of assignment, etc. a nonpatented product or the packaging thereof on or in which a mark of a patent or a mark confusing therewith is put;  (iii) giving in an advertisement an indication to the effect that a non-patented product is related to a patent or an indication confusing therewith for the purpose of having the product produced or used, or assigning, etc. the product; or  (iv) giving in an advertisement an indication to the effect that a non-patented process is related to a patent or an indication confusing therewith for the purpose of having the process used, or assigning or leasing the process. 

 (Service)  Article 189   Documents to be served shall be as provided in this Act and by ordinance of the Ministry of Economy, Trade and Industry. 

Article 190   Articles 98(2), 99 to 103, 105, 106, 107(1) (excluding items (ii) and (iii)), 107(3) and 109 (Service) of the Code of Civil Procedure shall apply mutatis mutandis to the service of documents as provided in this Act or Ordinance of the Ministry of Economy, Trade and Industry under the preceding Article. In this case, the term "a court clerk" in Articles 98(2) and 100 of the Code of Civil Procedure shall be deemed to be replaced with "an official designated by the

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Commissioner of the Patent Office or a trial clerk", the term "mail or court enforcement officer" in Article 99(1) of the said Act shall be deemed to be replaced with "mail", the term "where ... the court clerk" in Article 107(1) of the said Act shall be deemed to be replaced with "where ... and where documents concerning the examination are to be served, an official designated by the Commissioner of the Patent Office or a trial clerk" and the term "Supreme Court Rules" in Article 107(1) of the said Act shall be deemed to be replaced with "an Ordinance of the Ministry of Economy, Trade and Industry". 

Article 191   (1) Where the domicile or residence of the person who is to be served or any other place to which service is to be made is unknown, or where the service is unable to be effected under Article 107(1) (excluding items (ii) and (iii)) of the Code of Civil Procedure as applied mutatis mutandis under Article 190 of this Act, service may be effected by public notification.  (2) Service by public notification shall be effected by publishing in the Official Gazette and the patent gazette and posting on the noticeboard of the Patent Office a notification stating the fact that documents to be served are ready to be served at any time to the person who is to be served.  (3) Service by public notification shall take effect following the duration of 20 days from the day the notification is published in the Official Gazette. 

Article 192   (1) Where an overseas resident has a patent administrator, service shall be made to the patent administrator.  (2) Where an overseas resident has no patent administrator, documents may be dispatched by registered mail, etc. (refers to service of registered mail under Article 2(2) of the Act on service of Mail by Private Business Operator (Act No. 99 of 2002) provided by a general mail delivery service operator under Article 2(6) of the said Act or by a special mail delivery service operator under Article 2(9) of the said Act that is equivalent to registered mail by Ordinance of the Ministry of Economy, Trade and Industry, hereinafter the same shall apply in paragraph (3)).  (3) Where documents are dispatched by registered mail, etc., under the preceding paragraph, the documents shall be deemed to have been served at the time of dispatch. 

 (Patent Gazette)  Article 193   (1) The Patent Office shall publish the patent gazette (Tokkyo Koho).  (2) In addition to the matters provided for in this Act, the patent gazette shall

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contain:  (i) the examiner's decision to the effect that an application is to be refused, or the waiver, withdrawal or dismissal of a patent application after the laying open of the patent application, or the withdrawal of an application for the registration of an extension of the duration of a patent right;  (ii) successions to the right to obtain a patent after the laying open of a patent application;  (iii) amendments of the description, scope of claims or drawings attached to an application under Article 17-2(1) after the laying open of a patent application (in the case of an amendment under any of the items in the proviso to the said paragraph, limited to an amendment made through the submission of a statement of correction of an incorrect translation);  (iv) the extinguishment of patent rights (excluding extinguishment upon expiration of the duration and under Article 112(4) or 112(5)) or the restoration thereof (limited to restoration under Article 112-2(2));  (v) filings for a request for trials or retrials, or withdrawals thereof;  (vi) final and binding trial decisions or retrial decisions (limited to patent applications in which the establishment of a patent right has been registered or which have been laid open);  (vii) matters stated in the corrected description and scope of claims and the contents of drawings (limited to those corrected following a final and binding trial decision to the effect that the correction was to be made);  (viii) requests for an award, the withdrawal thereof or a Commissioner's decision; and  (ix) final and binding judgments in an action under Article 178(1) (limited to cases where the establishment of a patent right has been registered or the laying open of the patent application has been effected). 

 (Submission of documents, etc.)  Article 194   (1) The Commissioner of the Patent Office or the examiner may request a party in a case to submit documents or other materials necessary for a procedure other than one relating to a trial or a retrial.  (2) The Commissioner of the Patent Office or the examiner may commission related administrative agencies, educational institutions or any other organizations to conduct an investigation necessary for an examination. 

 (Fees) Article 195   (1) Fees shall be paid by the following persons in an amount to be provided by Cabinet Order in view of the actual costs:

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 (i) persons filing a request for an extension of the duration under Article 4, 5(1), 108(3), or a change of the date under Article 5(2);  (ii) persons filing a request for the re-issuance of the certificate of patent;  (iii) persons notifying of succession under Article 34(4);  (iv) persons filing a request for the issuance of a certificate under Article 186(1);  (v) persons filing a request for the issuance of a certified copy of documents or an extract of documents under Article 186(1);  (vi) persons filing a request to allow the inspection or copying of documents under Article 186(1); and  (vii) persons filing a request for the issuance of documents whose contents are stored on the magnetic tapes that constitute the part of the Patent Registry under Article 186(1).  (2) The persons listed in the center column of the attached table shall pay fees in the amount as provided by Cabinet Order within the range of the amounts specified in the corresponding right-hand column of the table.  (3) Notwithstanding the provisions of the preceding paragraph, where, after a request for the examination of an application has been filed by a person who is not the applicant of the patent, the number of claims is increased due to the amendment of the scope of claims attached to the application in the said patent application, the fees for the request for the examination of the patent application payable under the preceding paragraph regarding the increased claims shall be paid by the applicant of the patent.  (4) The three preceding paragraphs shall not apply where the person to pay the fee in accordance with these paragraphs is the State.  (5) Where the State has joint ownership of a patent right or a right to obtain a patent with a person other than the State, and the portion of their respective shares of the said right has been agreed, notwithstanding the provisions of paragraph (1) or (2), the fees payable thereunder (limited to those provided by Cabinet Order excluding the fees for the request for an examination) shall be determined as the sum of the provided fees multiplied by the ratios of the share of each person other than the State, and, the person(s) other than the State shall pay such sum.  (6) Where the State has joint ownership of a right to obtain a patent with person(s) including a person entitled to receive a reduction of the fees for the request for an examination or exemption therefrom under the following Article or provisions of any other laws and ordinances (hereinafter in this paragraph referred to as a "reduction/exemption"), and the portion of their respective shares of the said right has been agreed, notwithstanding the provisions of paragraph (2), the fees for the request for an examination payable by such person for their right to obtain a patent thereunder shall be determined as the

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sum of the amounts calculated for each person other than the State jointly owning the right, by multiplying the applicable fees for the request for an examination provided thereunder (in the case of a person who receives the reduction or exemption, the amount after the said reduction/exemption) by the ratios of the share of each person other than the State, and the person(s) other than the State shall pay such sum.  (7) Where the amount of the fees calculated under the two preceding paragraphs has a fractional figure of less than ten yen, the said portion shall be discarded.  (8) The payment of the fees under paragraphs (1) to (3) shall be made by patent revenue stamps as provided by Ordinance of the Ministry of Economy, Trade and Industry; provided, however, that where so provided by Ordinance of the Ministry of Economy, Trade and Industry, a cash payment thereof shall be accepted.  (9) After the request for examination of an application, where the said patent application has been waived or withdrawn, upon the request of the person who paid the fees for the request for examination under paragraph (2), such fees in the amount prescribed by Cabinet Order shall be refunded, provided that the certified copy of the examiner's decision has not been served, and none of the following orders or notices has been made.  (i) an order under Article 39(6);  (ii) notice under Article 48-7;  (iii) notice under Article 50; and  (iv) service of a certified copy of the examiner's decision under Article 52(2).  (10) No request for a refund of fees under the preceding paragraph may be filed after six months from the date on which a patent application has been waived or withdrawn.  (11) Fees paid in excess or in error shall be refunded upon the request of the person who made payment thereof.  (12) No request for a refund of the fees under the preceding paragraph may be filed after one year from the date on which the payment thereof has been made. 

 (Reduction of or exemption from fees for request for examination of application)  Article 195-2   Where the Commissioner of the Patent Office recognizes that a person who files a request for examination of an application and meets the requirements of Cabinet Order considering his/her financial resources has difficulties paying the fees for a request for the examination of an application, the Commissioner of the Patent Office may, in accordance with Cabinet Order, grant the person a reduction of or exemption from the payment of the fees for the request for the examination of the person's own patent application payable under paragraph

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(2) of the preceding Article. 

 (Exclusion of application of Administrative Procedures Act)  Article 195-3   Chapters II and III of the Administrative Procedures Act (Act No. 88 of 1993) shall not apply to dispositions under this Act or an order issued under this Act.  

 (Restriction on appeals under Administrative Appeal Act)  Article 195-4   No appeal shall be available under the Administrative Appeal Act against an examiner's decision or a trial decision, or a ruling to dismiss a written request for a trial or retrial or a written request for correction under Article 134-2(1), or against dispositions against which no appeal lies in accordance with this Act. 

Chapter XI Penal Provisions 

 (Crime of infringement)  Article 196   An infringer of a patent right or exclusive license (excluding one who has committed an act that shall be deemed to constitute infringement of a patent right or an exclusive license under Article 101) shall be punished by imprisonment with work for a term not exceeding ten years or a fine not exceeding 10,000,000 yen or combination thereof. 

Article 196-2   Any person who has committed an act that shall be deemed to constitute infringement of a patent right or an exclusive license under Article 101 shall be punished by imprisonment with work for a term not exceeding five years or a fine not exceeding 5,000,000 yen or combination thereof. 

 (Crime of fraud)  Article 197   Any person who has obtained a patent, a registration of extension of the duration of a patent right or a trial decision by means of a fraudulent act shall be punished by imprisonment with work for a term not exceeding three years or a fine not exceeding 3,000,000 yen. 

 (Crime of false marking)  Article 198   A person(s) who fails to comply with Article 188 shall be punished by imprisonment with work for a term not exceeding three years or a fine not

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exceeding 3,000,000 yen. 

 (Crime of perjury, etc.)  Article 199   (1) A witness, an expert witness or an interpreter who has sworn under this Act and made a false statement or given an expert opinion or interpretation to the Patent Office or the court commissioned thereby shall be punished by imprisonment with work for a term between three month and ten years.  (2) Where a person who has committed the crime in the preceding paragraph has made a voluntary confession before a certified copy of the judgment on the case has been served or a trial decision has become final and binding, the punishment may be reduced or exculpated. 

 (Crime of divulging secrets)  Article 200   A present or former official of the Patent Office who has divulged or appropriated any secret relating to an invention claimed in a pending patent application that has become known to him/her in the course of performing his/her duties shall be punished by imprisonment with work for a term not exceeding one year or a fine not exceeding 500,000 yen. 

 (Crime of breach of protective order)  Article 200-2   (1) A person who fails to comply with a protective order shall be punished by imprisonment with work for a term not exceeding five years or a fine not exceeding 5,000,000 yen or combination thereof.  (2) The prosecution of the crime under the preceding paragraph may not be initiated unless a complaint is filed.  (3) The crime under paragraph (1) shall apply to a person who commits the crime outside Japan. 

 (Dual liability)  Article 201   (1) Where a representative of a juridical person or an agent, employee or other worker of a juridical person or an individual has committed in the course of performing his/her duties for the juridical person or individual, any act in violation prescribed in the following items, in addition to the offender, the juridical person shall be punished by a fine as provided in the corresponding item and the individual shall be punished by a fine as provided in the Article prescribed in the corresponding item:  (i) Article 196, Article 196-2 or 200-2(1), a fine not exceeding 300 million yen;

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and  (ii) Article 197 or 198, a fine not exceeding 100 million yen.  (2) In the case of the preceding paragraph, the complaint under Article 200-2(2) against the offender shall have effect on the juridical person or individual and the complaint against the juridical person or individual shall have effect on the offender.  (3) Where a fine is imposed on a juridical person or individual under Article 2002(1) with regard to a violation of Article 196, 196-2 or 200-2(1), the period of prescription shall be governed by the same rules as for crimes in the provisions thereof. 

 (Civil fine)  Article 202   Where a person who has sworn under Article 207(1) of the Code of Civil Procedure as applied under Article 151 (including its application under Articles 71(3), and 174(1) to (3) of this Act) has made a false statement before the Patent Office or a court commissioned thereby, the said person shall be punished by a civil fine not exceeding 100,000 yen. 

Article 203   A person(s) who has been summoned by the Patent Office or a court commissioned thereby in accordance with this Act, and fails to appear or refuses to swear, make a statement, testify, give an expert opinion or interpret without a justifiable reason shall be punished by a civil fine not exceeding 100,000 yen. 

Article 204   A person(s) who has been ordered by the Patent Office or a court commissioned thereby to submit or present documents or other materials for the purpose of examination or preservation of evidence in accordance with this Act and fails to comply with the order without a justifiable reason shall be punished by a civil fine not exceeding 100,000 yen. 

Supplementary provisions (Extract) 

Appended Table (In relation to Article 195)  A person(s) who shall pay fees Amounts 1 A person filing a patent application (excluding one in the following item) 16,000 yen per case 2 A person filing a written application in foreign language 26,000 yen per case

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3 A person responsible for the procedures under Article 1845(1)

16,000 yen per case

4 A person responsible for the procedures under Article 18420(1)

16,000 yen per case

5 A person filing an application for the registration of extension of the duration of a patent right

74,000 yen per case

6 A person requesting an examination of an application

168,600 yen per case plus 4,000 yen per claim

7 A person amending a description, scope of claims or drawings through the submission of a statement of correction of incorrect translation

19,000 yen per case

8 A person requesting an advisory opinion under Article 71(1)

40,000 yen per case 9 A person requesting an award 55,000 yen per case 10 A person requesting canceling of an award 27,500 yen per case 11 A person filing a request for a trial or retrial (excluding one in the following item) 49,500 yen per case plus 5,500 yen per claim 12 A person filing a request for a trial against an examiner's decision of refusal of the registration of extension of the duration of a patent right, a trial for invalidation of the registration of extension of the duration of a patent right, or a retrial against the final and binding appeal examiner's decision in these trials. 55,000 yen per case 13 A person filing a request for a correction of the description, scope of claim(s) or drawing(s)  49,500 yen per case plus 5,500 yen per claim 14 A person applying intervention in a trial or retrial. 55,000 yen per case

 

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