When patent, utility model, trademark and/or design rights (collectively, IP rights) are invalidated or extinguished following a rights holder's inability to meet a statutory deadline, in certain circumstances it is possible to "restore" the IP right to its pre-invalidation or pre-extinguishment state and continue prosecution.
Compared with other systems around the world, South Korean IP laws have traditionally applied strict standards for the restoration of IP rights. However, recent revisions have relaxed these requirements, shifting the acceptable standard from "unavoidable reasons" to "justifiable reasons". These changes came into effect from 20 April 2022.
The previous "unavoidable reasons" were applicable only in very limited situations, such as natural disasters or wars, while "justifiable reasons" are applicable in emergency situations where the applicant cannot undertake the necessary procedures, for example due to hospitalisation for covid-19.
The detailed requirements for the restoration of IP rights are as follows:
- substantive requirements – there must be "justifiable reasons" for failing to comply with the relevant deadline in spite of all due care demanded by the circumstances having been taken. The key requirement, therefore, is to prove that "due care" was taken. The obligation to exercise due care must be considered in light of the situation as it stood before the missed deadline expired. "All due care" means all reasonable care – that is, that which a reasonably competent patentee, applicant or representative would employ in the relevant circumstances; and
- procedural requirements – under current IP laws, actions to restore IP rights must be filed within two months from the date on which the justifiable reasons for non-compliance with the original deadline cease to exist, and at the latest within one year of the original deadline.
In order to achieve the restoration of IP rights, a petition for restoration of IP rights must be filed within the aforementioned periods together with a statement and evidence showing the "justifiable reasons". The petition will be examined by the South Korean IP office (KIPO) division handling the case in question.
While it is certainly a positive development that the KIPO is being more lenient in its approach to IP rights restoration, with more varied causes not attributable to the rights holder being accepted as a justification for a missed deadline, the specific standards for the required statement and evidence have not been clearly stipulated and so there still remains some uncertainty about the practical implications. However, it is expected that these standards will become established based on precedent in the weeks and months to come.
For further information on this topic please contact Jonathan Masters at NAM & NAM by telephone (+82 2 753 5477) or email ([email protected]). The NAM & NAM website can be accessed at www.nampat.co.kr.