KIPO to amend practice to facilitate international applications

South Korea

The Korean Intellectual Property Office (KIPO) is considering accepting broad goods descriptions from next year in international applications designating Korea under the Madrid Protocol. This possible practice change was prompted by statistics published at the end of last year, which show that 91.9% of international applications designating Korea are refused ex officio - in most cases because the designation of goods does not comply with the particular goods specification required by KIPO.

Year
Provisional Refusals
Publications
Total
April-December 2003
29
5
34
January-September 2004
4,280
377
4,657
Total
4,309 (91.9%)
382 (8.1%)
4,691 (100%)

KIPO's examination of international applications designating Korea

KIPO is also considering relaxing its practice with regard to other procedures: firstly, notifications, such as the notification of ex officio provisional refusal, would no longer be sent to the applicant - only the World Intellectual Property Organization (WIPO) would receive them. Secondly, the terms for responding to ex officio provisional refusals (about two months) and for filing appeals of refusal decisions (about one month) would be extended as they are not considered long enough at the moment.

The Madrid Protocol became operational in Korea on April 10 2003. The number of international applications designating Korea from April 2003 to September 2004 is as follows:

April-December 2003
January-September 2004
Number of applications (including multi-class applications)
1,548
3,184

These figures can be broken down by country in the following way:

Country
China
France
Germany
Japan
Switzerland
United Kingdom
United States
Others
Total
Number of applications
152
636
1,138
281
546
189
300
1,490
4,732
Percentage (%)
3.21
13.44
24.05
5.94
11.54
3.99
6.34
31.49
100

As of September 2004, Germany had filed the most applications designating Korea, followed by France and Switzerland. The type of goods for which each country filed shows the country's competitiveness in a particular industry. For instance, for Germany a large proportion of the goods are types of machinery, for France the main products are cosmetics and for Switzerland they are usually goods made from precious metals, such as watches.

The United States has filed few applications designating Korea since the Madrid Protocol became operational in the United States in November 2003. However, WIPO statistics show that Korea is designated in 50% of international applications filed with the US Patent and Trademark Office.

The number of international applications filed through KIPO under the Madrid Protocol is as follows:

Year
April-December 2003
January-September 2004
Number of applications
(including multi-class applications)
108
91
Number of total designated countries
813
637

The number of applications is broken down by country as follows:

Country
China
France
Germany
Japan
Switzerland
United Kingdom
United States
Others
Total
Number of applications
127
82
87
115
29
74
49
887
1,450
Percentage (%)
8.8
5.7
6.0
7.9
2.0
5.1
3.4
61.1
100

The number of international applications filed through KIPO between April 2003 and September 2004 is 199. China, Japan and Germany were the most frequently designated countries. This corresponds to Korea's main trading partners for 2003. A total of 57 countries were designated in these international applications, which is close to the total number of Madrid Protocol contracting parties.

Jay Young-June Yang, Kim & Chang, Seoul

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