1. Can a Korean Patent Attorney Handle Your U.S. Patent Filing?
Korean professional qualifications alone do not authorize practice before the USPTO. Under 37 C.F.R. § 1.31(a)(2)-(3), applicants and patent owners domiciled outside the United States or its territories generally need a registered patent practitioner. Effective July 20, 2026, this requirement applies to papers submitted on or after that date, including papers in older applications.
Verify Registration and Scope of Practice
Someone may know Korean patent procedures well without being authorized to act before the USPTO. Check the practitioner's registration and whether it covers the work you need.
| Professional Qualification | USPTO Representation |
|---|---|
| Korean patent attorney only | Korean credentials alone do not authorize U.S. patent prosecution. |
| USPTO-registered patent attorney | May represent applicants in patent matters within the scope of registration. |
| USPTO-registered patent agent | May practice in authorized USPTO patent matters, but registration does not authorize court litigation. |
Korean patent attorney only
- USPTO RepresentationKorean credentials alone do not authorize U.S. patent prosecution.
USPTO-registered patent attorney
- USPTO RepresentationMay represent applicants in patent matters within the scope of registration.
USPTO-registered patent agent
- USPTO RepresentationMay practice in authorized USPTO patent matters, but registration does not authorize court litigation.
Registration may be limited to design patent matters. Learn more about patent counseling and prosecution.
Check Who Must Sign the Filing Papers
The rule focuses on the applicant's domicile, not necessarily the inventor's address. If any named applicant is domiciled abroad, registered representation is required. An improperly signed response may not be entered, although the rule does not change filing-date requirements.
- Read the latest filing receipt to identify each applicant.
- Confirm whether an individual or business owns the filing.
- Have the authorized practitioner handle required signatures and submissions.
Business applicants already face separate USPTO representation requirements, regardless of domicile.
2. How Does a Korean Patent Filing Affect U.S. Priority?
A Korean patent certificate does not establish a U.S. priority claim by itself. Under 35 U.S.C. § 119 and 37 C.F.R. § 1.55, a qualifying U.S. nonprovisional application generally must follow the relevant foreign filing within 12 months, or six months for a design application. Certain unintentional delays may qualify for restoration within a limited additional period.
Start with the Earliest Relevant Filing
The Korean grant date does not restart the priority period. More importantly, each U.S. claim must find adequate support in the earlier disclosure to benefit from its date.
- Locate the Korean application number and original filing receipt.
- Compare the original description and drawings with proposed U.S. claims.
- Flag public demonstrations, publications, and sales for review.
Direct and PCT filings follow different procedures. The separate international patent filings guide explains those routes.
Confirm the Applicant's Right to File
A founder may invent a product while a company holds the application rights. Under 35 U.S.C. § 261, patent rights may be transferred by written assignment. Contracts can also raise ownership questions under applicable state law.
| Record | What to Confirm |
|---|---|
| Korean application | Inventors, applicant, and filing date |
| Employment agreement | Terms addressing employee inventions |
| Assignment | Written transfer of the relevant U.S. rights |
Korean application
- What to ConfirmInventors, applicant, and filing date
Employment agreement
- What to ConfirmTerms addressing employee inventions
Assignment
- What to ConfirmWritten transfer of the relevant U.S. rights
If the names or rights do not match, examine the patent assignment documents before filing.
3. What Should You Search before Selling in the United States?
A patent application does not give its owner permission to sell a product. Patentability searches address novelty and nonobviousness under 35 U.S.C. §§ 102 and 103. A separate freedom-to-operate review considers whether planned sales, imports, or manufacturing could implicate another owner's enforceable U.S. patent claims.
Ask Two Different Questions about Existing Patents
A new improvement may qualify for its own patent even when an earlier patent covers part of the product. That is why one patent search cannot answer every business question.
- Patentability: What earlier publications disclose similar technology?
- Claim support: Does the Korean filing support the proposed U.S. claims?
- Freedom to operate: Which active U.S. claims may cover the product?
Have the review reflect the product you actually plan to make or import, rather than a general description of the invention.
Know What Rights Exist before a Patent Issues
Under 35 U.S.C. § 271, certain unauthorized activities involving a patented invention may constitute infringement. A pending application generally cannot support an ordinary infringement claim. Section 154(d) allows limited provisional rights only when its specific conditions are satisfied.
- Check whether any relevant U.S. patent has issued and remains in force.
- Compare the patent claims with product features or process steps.
- Identify planned U.S. manufacturing, imports, offers, and sales.
For broader enforcement issues, consult the patent law overview.
4. Frequently Asked Questions
Must a Korean inventor create a U.S. company to apply for a patent?
No. An eligible foreign inventor or business can apply without forming a U.S. company. The applicant must still meet the applicable representation and filing requirements.
Can a U.S. provisional application claim priority to an earlier Korean application?
No. Under 35 U.S.C. § 111(b)(7), a U.S. provisional application cannot claim the priority of an earlier foreign application. A different filing route may be needed to preserve a qualifying foreign priority claim.
Can the USPTO accept a patent application written in Korean?
A nonprovisional application may initially be filed in a language other than English. Under 37 C.F.R. § 1.52(d), an English translation, an accuracy statement, and the applicable processing fee are required.
5. Review Your U.S. Patent Filing with SJKP
If you already have a Korean patent or pending application, bring the earliest filing records, ownership agreements, and a description of your intended U.S. product. SJKP's attorneys can assess the federal filing and ownership questions and help determine which matters require a USPTO-registered patent practitioner. Contact SJKP to discuss the documents and deadlines before choosing your next filing step.
05 Nov, 2026
