Changing Korean Patent Counsel: Transfer Controls and Records
A Korean patent applicant or owner may replace the law firm or patent attorney handling an application or patent. The change concerns representation before the Ministry of Intellectual Property and does not change ownership of the application or patent.
Change of representative and assignment
A change of representative replaces the person authorized to conduct patent procedures before the Ministry. The applicant or patentee remains unchanged. The incoming and outgoing representatives submit the appointment, revocation, or related documents required for the circumstances.
An assignment transfers ownership and requires separate recordal documents and official fees. The Ministry’s current FAQ identifies an assignment application, a Korean-language assignment instrument, a power of attorney when a representative is used, and supporting documents for foreign parties. Ownership-transfer forms should not be used solely to change counsel.
Timing and cutover responsibility
Counsel may generally be changed during prosecution, after grant, or for an entire portfolio. A pending office action, appeal, grant fee, national-phase entry, or annual-fee deadline requires coordinated action by the outgoing and incoming firms.
The client should set a written cutover date and identify which firm remains responsible for each open action. The outgoing firm should continue protecting urgent deadlines until the incoming firm has accepted the matter and confirmed the transferred docket.
Portfolio transfer record
The transfer list should include every Korean application and registered right within scope. Each record should state the official number, title, applicant or owner, current status, next deadline, annual-fee responsibility, and related family reference.
The transition should include the following controls:
- completion of the incoming firm’s conflict review and engagement documentation;
- execution of the required power of attorney and representative documents;
- filing of the applicable appointment, change, or revocation documents;
- delivery of the complete prosecution file and material correspondence;
- reconciliation of every active deadline among the client and both firms;
- written allocation of pending official fees and annual fees; and
- confirmation that the new representation is reflected in the official record.
A large portfolio may be transferred in phases. The reconciliation record should identify missing documents, conflicting dates, and matters that require immediate action.
Documents for handover
The incoming firm should receive filed Korean documents, source-language documents, translations, filing receipts, office actions, responses, cited references, examiner-interview records, grant documents, assignment records, powers of attorney, annual-fee history, and unresolved invoices or official-fee issues.
Nonpublic work product may also be necessary for continuity. Relevant material includes claim charts, terminology records, related foreign prosecution, product mapping, internal instructions, and known licensing or enforcement issues.
Effect on rights and operational risk
A properly recorded change of representative does not alter patent ownership, priority, term, or validity. The principal risks are operational: a missed deadline, inconsistent instructions, incomplete translation history, or unclear responsibility for official fees.
The incoming firm should verify each matter against the official record rather than relying solely on a transfer spreadsheet. The client should retain evidence showing when the incoming firm accepted each deadline and when the outgoing firm’s responsibility ended.
Initial portfolio review
The incoming firm should first review matters with an approaching statutory or designated deadline. The review normally covers:
- applications for which examination has not been requested and the three-year deadline is approaching;
- pending office actions and any extension history;
- grant decisions and registration-fee dates;
- available divisional filings and identified claim gaps;
- inconsistencies in applicant names, ownership, or priority data;
- upcoming annual fees; and
- the relationship between Korean claims, current products, and licensing priorities.
Urgent docket corrections should be completed before a broader review of claim strategy and portfolio value.
Related guidance for Korean patent matters
- Selecting Korean Patent Counsel for Foreign Applicants
- Korean Local Counsel Requirements for Foreign Patent Applicants
- Working Arrangements Between Global IP Teams and Korean Counsel
Official source
Legal and editorial review: July 16, 2026. Korea’s patent authority is the Ministry of Intellectual Property (MOIP), formerly KIPO.
This article provides general information and does not constitute legal advice. Deadlines, fees, and procedures may change, and the current requirements should be confirmed for each matter.
