After filing in Korea, applicants often consider U.S. protection. The U.S. generally follows a first-inventor-to-file system, so timely filing and a valid priority claim are important. Protection also depends on inventorship, prior art, and other legal requirements.
U.S. and Korean practice differ in prosecution, disclosure, claim interpretation, drawings, and fees. A specification accepted in Korea may still face U.S. objections or require different claim drafting, including to address indefiniteness.
Due to such institutional differences, it is not enough for Korean inventors and companies to simply translate the existing patent specification into English when preparing their U.S. patent. Strategic approaches are needed to ensure effective rights in the real U.S. market.
In this article, we will provide domestic applicants with Q&A format and practical tips on frequently asked questions and key points to keep in mind in the US patent application process.
I have a Korean patent, do I need to apply in the US?
If you have already applied for a patent in Korea, your rights are not automatically protected in the United States.
Patent rights are territorial. Korean protection does not itself provide a U.S. patent right; U.S. protection requires an appropriate U.S. application route and grant.
In particular, if you plan to sell your products directly in the U.S. market, or through a local distributor or partner, securing a U.S. patent is virtually essential. The reasons are as follows:
Risk of competitors.
Earlier effective filing dates can affect patentability. An invention should therefore be evaluated for timely U.S. filing, while any third-party patent must separately be assessed for validity and potential infringement.
Market Takeover and Investment Attraction
Gaining US patent rights not only prevents infringement, but also has a number of business advantages, including investor persuasion, licensing monetization, and brand value enhancement based on technology.
Under the Paris Convention, a qualifying U.S. utility patent application filed within 12 months of an initial Korean application may claim its priority date for subject matter properly disclosed in that earlier application.
Planning tip
- If you are planning to file a U.S. application, it is advisable to review your plans to enter the U.S. market at the same time as your Korean application.
- The 12-month priority period is shorter than you think, so it is safe to proceed with your U.S. application immediately after it is filed in Korea.
- A US application requires a patent specification, not a simple translation.
- If you plan to do business or sell products in the United States, you need to apply.
- Without U.S. patent protection, it may be harder to prevent competitors from using the technology. Freedom to operate is a separate question that requires review of third-party rights.
- A qualifying U.S. utility patent application filed within the 12-month priority period may benefit from the earlier Korean filing date.
Can an invention still be patented in the U.S. after public disclosure?
In both Korea and the United States, the safest approach is to apply for a patent first before it is released to the public. If the invention is made public, there is a risk that it will not be able to obtain a patent because it does not meet the ‘ Novelty’ requirement.
U.S. law provides a one-year grace period for certain inventor-originated disclosures, subject to the statutory conditions. Korea also has a novelty grace-period system. Neither should be treated as a substitute for reviewing disclosure and filing requirements before publication.
However, such a system is not recognized equally in all countries. Because some countries do not allow applications after disclosure in principle, if you are planning to file patent applications in several countries, completing an application before the disclosure of an invention is a virtually essential strategy.
Cases considered public
- Seminars and Workshops
- Disclosure at an exhibition
- Company homepage, blog, SNS posting
- Sell products or register an online store
- Press Release, News Release
The above acts, even for purposes of public relations or performance announcements, are legally referred to as “invention disclosures.” Once disclosed, it cannot be returned, so it is safe to disclose after signing a NDA (nondisclosure agreement) or filing.
Are the patent specifications different from those of Korea?
The U.S. Patent Act requires that inventions not only be described in terms of abstract concepts or principles, but also in terms of concrete embodiments that can be implemented in practice. This is based on the principle that at the time of application, the best form of implementation known to the inventor should be disclosed in a patent specification without hiding it.
South Korea also requires a patent specification, but the U.S. has stricter requirements and levels of detail. In the U.S. patent specification, it is preferable to include not only the shapes that the inventor actually implements, but also the applicability of various deformation embodiments or other materials and configurations. For example, in the case of mechanical inventions, it is safe to specify the material of the part, dimension range, coupling method, operating environment, etc. In the field of chemical and bio, it is advantageous to include composition ratio, reaction conditions, experimental results data, etc.
The U.S. patent also requires that “person skilled in the art be able to reproduce the invention by patent specification only.” For this reason, abstract expressions such as ‘appropriate size’ or ‘sufficient temperature’ or explanations with missing specific figures or conditions can be pointed out as reasons for rejection.
In particular, in AI and software-related inventions, simply explaining ‘analyzing with AI’ is likely to result in elimination in the patent subject-matter eligibility phase. It is important to clearly reveal specific technical elements such as the structure of the algorithm, data preprocessing methods, learning procedures, and performance enhancement mechanisms.
For example, presenting a technical effect in numerical terms, such as “a new network structure with a 15% improvement in image classification accuracy,” can make the evaluation process more positive.
Planning tip
- Include the most complete version in your patent specification right before your application.
- Instead of simply translating the Korean patent specification, add an American description and a variety of variations.
- AI/SW inventions must be described as a ‘technical implementation process’.
How should U.S. patent claims be drafted?
The creation of a U.S. patent claim is a key step in determining the scope of rights.
Claims that are too broad may be rejected over the prior art, while unnecessarily narrow claims may be easier to design around. Drafting should reflect the invention, relevant prior art, commercial objectives, and U.S. practice.
In particular, U.S. examiners attach great importance to terminology definition and consistency. If you write a Korean patent specification and then simply translate it into English, the meaning may be altered or ambiguous.
For example, in Korean, the term “connector” can be translated into several terms, such as “connector”, “joint”, and “coupling”, depending on the selection of these terms, the interpretation of rights may be different.
Means-plus-function language also requires care. Under 35 U.S.C. §112(f), a claim may express an element functionally, such as “means for” performing a function. Its scope is then limited to the corresponding disclosed implementation and equivalents.
If the patent specification does not fully explain the specific structure or algorithm that performs the function, the patent claim can be invalid or extremely narrow.
Planning tip
- For US applications, it is safe to write with English patent claims in mind from the start.
- Unify terms across the document for the same technical elements.
- When using functional expressions, be sure to include specific structures, methods, and algorithms that perform those functions in the patent specification .
Can I use the Korean version?
In most cases, Korean patent drawings can be used for U.S. patent applications. However, the U.S. patent office (USPTO) has stricter drawing format regulations than in South Korea, so you can get an Informal Drawings notice if you submit it as it is.
US drawing requirements are set out in 37 C.F.R. §1.84 and §608.02 of the USPTO Manual of Patent Examining Procedure (MPEP). Key differences are discussed below.
1. Number notation rule
- Each component shown in the drawing must be given a unique number, and the same component must use the same number in all the drawings.
- Numbers use Arabic numerals and must be clearly marked so that they are not confused with other information in the drawing.
2. Drawing Line Thickness
- The line should be drawn with uniform thickness, generally 0.2~0.7mm thick recommended
- If it’s too thick or too thin, it can be a reason for rejection.
3. Margins
- Must have a minimum margin of 2.5 cm at the top, 2.5 cm at the left, 1.5 cm at the right and 1.0 cm at the bottom.
Planning tip
- Although the mechanical and electronic sector often recycles Korean drawings, it is recommended that the design patent be remanufactured from scratch in the US standard.
How does U.S. patent prosecution differ?
In the U.S. patent review process, Office Action (grounds for refusal notice) may be sent multiple times, rather than ending in one. Each Office Action can contain a variety of reasons, such as novelty / inventive step rejection according to the prior art, insufficient patent specification, and unclear patent claim, so you should be prepared for appropriate response logic each time.
Prosecution can take several years, depending on the technology and the case. Each response should explain the legally relevant distinctions from the cited prior art; a literal translation of a Korean response may be insufficient.
Even if the final rejection is notified during the review process, the RCE (Request for Continued Examination) will allow you to continue the review. RCE is not only possible once, you can submit it repeatedly if you want, but you will be charged a fee each time. Using this scheme, you can submit a corrected patent claim or additional argument to increase the likelihood of patent registration.
Office actions have strict deadlines. Extensions may be available, often up to a total response period of six months from the action's mailing date, with applicable fees. Failure to respond can lead to abandonment.
How much does it cost?
U.S. patent applications and maintenance are subject to both local and domestic patent attorney costs. Local costs are generally more expensive than national applications. You can add hundreds of dollars for each process, such as responding to Office Action, submitting an RCE, or conducting an interview.
Budget for the full lifecycle, including filing, prosecution, possible continued examination, and maintenance. This helps avoid having to abandon a valuable application because later costs were not anticipated.
Frequently Asked Questions Q&A
Q1. Does a Korean patent automatically provide U.S. protection?
No. U.S. protection requires a separate application route and examination under U.S. law.
Q2. Should U.S. patent protection be considered before entering the market?
Yes. Review patent protection and freedom to operate before launch. Owning a patent does not itself establish freedom to sell a product without infringing others' rights.
Q3. How long does the application process take?
It takes an average of 2-3 years. If you want a quick review, you can take advantage of the PPH Scheme or Track One program, which can be done within one year.
A U.S. patent application is not just a translation, but a strategic design tailored to U.S. law and procedures. A well-written patent specification in South Korea may reduce or decline the scope of its rights if it does not meet U.S. examination standards.
It is desirable to have a comprehensive consideration of business plan, technical completion, competitive environment, and budget to create an application strategy.
This article reflects the information available when it was published. Contact us to discuss your circumstances.