Transfer of a Korean Patent Portfolio to New Counsel

A change of Korean patent counsel requires more than delivery of the prosecution files. The client must also reconcile deadlines, ownership records, annuity responsibility, pending instructions and the representative recorded for each matter.

The transfer should use one agreed matter list and assign responsibility for every open action until the change is complete.

Portfolio scope

The matter list should include pending applications, granted patents, divisional applications, appeals, recordals and any relevant licences or proceedings. A matter believed to be closed should remain on the list until its status and remaining obligations are confirmed.

For each matter, record:

• the client and foreign references;
• the Korean application, publication and patent numbers;
• the title, applicant and owner;
• priority and family information;
• the current representative;
• the official status;
• the next official deadline and internal instruction date;
• the examination status;
• responsibility for annuities or other renewal payments; and
• any open invoice or official-fee issue that may affect an action.

Conflict review and engagement scope

New counsel should complete a conflict review before receiving substantive confidential material or accepting instructions. The required information may include owners, affiliates, licensees, known adverse parties and the relevant technology. Sensitive information can be disclosed in stages.

The engagement terms should identify the matters and services accepted, including whether granted patents, annuities, appeals and recordals are within scope.

Immediate deadlines

Open deadlines should be reviewed before the historical file is complete. The first review should cover Office Action responses, appeals, examination requests, grant fees, annuities, divisional filing periods and formalities notices due in the next 60 to 90 days.

A change of counsel does not alter a MOIP deadline. For each near-term event, the transfer record should state whether incumbent counsel or new counsel will act. General instructions to coordinate do not establish responsibility.

Authority and representative record

An applicant or owner without a residence or business address in Korea generally acts through a Korean representative. New counsel should confirm the required power of attorney, revocation or appointment filing for each application and registered right. The documents and filing may differ according to the status of the matter and the action to be taken.

For a PCT national-phase application, the WIPO PCT Applicant's Guide states that an agent is appointed by filing a power of attorney and that a power in a language other than Korean requires a Korean translation.

A new engagement letter does not change the representative shown in the MOIP record. Acceptance of the appointment or representative change should be checked for every matter within scope.

Electronic prosecution file

The transfer file should include:

• filed specifications, claims, abstracts and drawings;
• Korean translations and available source files;
• official receipts and notices;
• Office Action translations, advice, client instructions and filed responses;
• examiner-interview records;
• priority documents and access information;
• powers of attorney, assignments and name-change documents;
• decisions, appeal papers and grant records;
• annuity-payment history;
• current docket reports; and
• client terminology and prosecution instructions relevant to future work.

Editable files are useful for maintaining consistent Korean terminology and reviewing changes made to the claims during prosecution.

Matter-by-matter reconciliation

New counsel should compare the incumbent counsel's docket, the client's list, official MOIP records and the received file. Differences should be recorded and resolved rather than silently selecting one source.

The reconciliation should identify:

• matters appearing on only one list;
• different dates recorded for the same deadline;
• missing official notices;
• instructions received but not filed;
• payments awaiting confirmation;
• granted rights without assigned annuity responsibility; and
• related applications omitted from the transfer request.

Prosecution history and pending decisions

The formal record may not explain why a claim was amended, an examiner interview was declined or a divisional filing was reserved. For a material case, the client may request a transition memorandum or a handover call with incumbent counsel, subject to the client's instructions and applicable professional duties.

Before the next substantive filing, new counsel should review relevant prosecution statements, translation corrections, divisional plans and corresponding family cases.

Written completion record

The completion record should list the matters accepted, representative changes recorded, deadlines entered, missing documents and excluded responsibilities. Final instructions to incumbent counsel should identify the effective cutoff and any remaining action assigned to that firm.

After new official communications are issued, confirm that they reach new counsel and use the correct client and matter references.

Recurring transfer errors

Recurring errors include transferring pending applications but omitting granted patents, assuming that annuity responsibility follows prosecution automatically, relying on a spreadsheet without checking official records, and changing counsel near a deadline without identifying who will file the response.

Public MOIP records are necessary but do not contain all client instructions, legal advice, editable translations, billing terms or internal deadlines. The official record and the complete working file serve different purposes.

Official references

• MOIP foreign-applicant and patent FAQ
• MOIP patent fees and payment schedule
• WIPO PCT Applicant's Guide for the Republic of Korea

Related Korean patent guidance

• Conflicts, Deadlines and Client Instructions at Korean Patent Firms
• Power of Attorney Requirements for Foreign Patent Applicants in Korea
• Communication, Reporting and Billing by Korean Patent Associates

Last reviewed: July 16, 2026.

This article provides general information and does not replace advice on a specific application, deadline or engagement.