A number of important changes to the Korean Patent Act (KPA) are scheduled to go into effect from April 20, 2022. Read on to learn more about how these changes have been made to protect an applicant’s interests, provide further opportunities to obtain patent rights, and simplify a variety of procedures.
The New Separational Application System
The revised Patent Act introduces a new system where, even after IPTAB dismisses the appeal against a final rejection (in other words, the final rejection is affirmed), an applicant can split the claims that have not been finally rejected from the application and file them separately. This system will be applied to patent applications for which an appeal against a final rejection has been filed on or after April 20, 2022.
Previously, even if only one claim was dismissed in an appeal against a final rejection, all the claims would collectively be rejected. Consequently, in about 40% of these cases, applicants filed a divisional application when filing an appeal against the final rejection as a precautionary measure in case their appeal was dismissed. KIPO introduced the separational application system both to reduce the costs incurred by applicants when a final rejection is reversed in an appeal and to provide an opportunity to secure a patent even if an appeal is dismissed.
Specifically, a separational application can be filed within the period for filing a Petition with the Patent Court after receiving a trial decision dismissing the appeal against the final rejection. A request for examination can be made within three years of the filing date of the original application or within thirty days of the filing date of the separational application. A separational application can be filed with the following claims:
- Any claim which was not finally rejected
- In cases where a claim describes elements in a selective matter and some of the elements were a basis for the final rejection of the claim, any claim which was rejected but amended to remove one or more alternatively usable elements forming the basis of the final rejection
- Any claim which is amended to narrow the scope of claims under i) or ii), correct a clerical error therein, or clarify an indefinite description thereof
- Any claim which is amended to delete a new matter in any of claims under i), ii) or iii) above.
Applications that do not comply with the above requirement for a separational application will be rejected. A separational application with a new matter added will be both rejected and invalidated.
It is important to note that a separational application cannot be the basis for a further separational application, divisional application, or converted application. In addition, a request for re-examination cannot be filed for separational applications. As such, the utility of the new separational application system is more limited than filing a preemptive divisional application, but it can still serve to further an applicant’s interests in cases where such a divisional application has not been filed and there are allowable claims on offer.
Extension of period to file an appeal against a final rejection
KIPO has extended the period for filing an appeal against a final rejection from thirty days to three months after the date of receipt of the Notice of Final Rejection. The revised provision will be applied to applications that receive a copy of the Notice of Final Rejection on or after April 20, 2022.
The three-month response period can be further extended by an additional sixty days, as is currently allowed for foreign applicants, meaning that a response to a final rejection can be made within a maximum period of five months after the date of receipt of the Notice of Final Rejection. A request for re-examination, a divisional application, or a converted application may also be filed within the period for filing an appeal against the final rejection, so the deadline for each of these options has also been extended.
The previous thirty-day period for filing an appeal against a final rejection was shorter than that of most other major countries around the world, so a petitioner often had to extend the deadline in order to secure time to prepare for the appeal (time extensions were requested in about 32% of cases) or amend the grounds for the appeal after filing the appeal. With this revision, the period for filing an appeal against a final rejection is now the same as in the United States, Japan, and China.
Extension of applications subject to a request for re-examination and period for filing the request
Previously, a request for re-examination could only be filed for an application that had been finally rejected, but under the revised Patent Act, a request for re-examination can be also filed for an allowed application before it is registered. In addition, as mentioned above in Item 2, the period for filing a request for re-examination of a finally rejected application has been extended to three months, the same as the period for filing an appeal. The revised provision will be applied to applications that receive a copy of a Decision of Allowance, Notice of Final Rejection, or Decision to Reverse the Final Rejection (Decision to Grant a Patent) on or after April 20, 2022.
As such, it has become easier to secure strong patent rights suitable to market circumstances by filing a request for re-examination along with an amendment even after a patent is allowed. In addition, previously, the only way to correct a specification after a patent had been allowed was to file a trial for correction, and the scope for correction was more limited than the scope for amendment of a pending application. Through the revised Patent Act, more opportunities to amend the specification, including the possibility to pursue a broader claim scope, after allowance are now available. However, the notice of allowance is cancelled by a request for the re-examination. So, in practice, re-examination after a notice of allowance is primarily expected to be used to correct minor errors in the specification.
Bear in mind that a request for re-examination cannot be filed for a split application (see Item 1) but can be filed if the final rejection is revoked.
Simplified Priority Claim Process for Divisional Applications
As long as a priority has been claimed and a certified copy of the priority document has been submitted lawfully for the parent application, it is now deemed that the same has been submitted for any and all divisional applications derived therefrom. This will be applied to divisional applications filed on or after April 20, 2022.
Prior to the revision, divisional applications were required to go through the same procedures as the parent application, such as claiming a priority and submitting a certified copy of the priority document, which led to unnecessary administrative processing and inadvertent omissions of priority claims for divisional applications due to an applicant’s mistakes or misunderstanding. The revision was made to more easily resolve such problems.
Relaxed standards for restoration of patent rights
Where, due to a failure to submit documents, pay fees, or meet a due date, events such as
- a patent procedure being nullified,
- the patent application being deemed withdrawn (because a request for examination could not be filed),
- the final rejection becoming finalized (because a request for re-examination could not be filed), or
- a patent right being terminated (because annuity fees have not been paid)
occur, such could only previously be rectified when the failure was due to ‘a cause not attributable to the applicant or patentee,’ such as a natural disaster. However, KIPO has now relaxed the term ‘a cause not attributable to the applicant or patentee’ to ‘a justifiable cause.’ Examples of a justifiable cause may include an applicant/patentee’s impaired judgement due to a health issue or a system failure when submitting patent documents. Cancellation or restoration must be requested within two months after the justifiable cause is no longer in effect. However, the request for cancellation or restoration is not accepted if one year has passed from the due date of the designated or statutory period. This revision will also be applied to those who have received an order of correction or have failed to meet deadlines before April 20, 2022 (the date of implementation), as long as more than two months have not passed from the termination of the justifiable cause at the time of implementation.
Protection of Patent Co-owners
A co-owner of a patent who has practiced the patent but has since lost their share due to another co-owner’s petition for partition of a co-owned patent in the court is now allowed to obtain a non-exclusive license of the patent right. Naturally, this comes with the proviso that said co-owner must pay an appropriate fee to the holder of the transferred patent. This provision will be applied for cases where the partition of a jointly-owned patent has been requested on or after April 20, 2022.
Expansion of applications subject to a priority claim based on patent applications
It is now possible for an applicant to claim domestic priority based on an allowed application within one year from the filing date of the allowed application before it is registered. It is possible for an invention to be improved according to market circumstances; in this case, an applicant can file a patent application including the improved invention, even after the notice of allowance, while claiming domestic priority. The revised provision will be applied to applications that claim priority based on earlier applications for which a Notice of Allowance or a trial decision to grant a patent is received on or after April 20, 2022.
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