Introduction
Extension of response period following final rejection
Re-examination after allowance
Split applications
Easing of requirements for re-establishment of rights
On 29 September 2021, a bill to revise the South Korean Patent Act was passed at the National Assembly. The revisions were promulgated on 19 October 2021 and will take effect from 20 April 2022. The South Korean IP office (KIPO) announced that the purposes of the revisions are to help remedy applicant mistakes and expand opportunities to acquire IP rights.
The revisions meaningful to foreign applicants include:
- an extension of the period for requesting trial or re-examination in response to a final rejection;
- the possibility to request re-examination along with an amendment to the claims after allowance;
- the introduction of a "split application" so that if an appeal from a final rejection is dismissed by the IP Trial & Appeal Board (IPTAB), the non-rejected subject matter can be split off from the rejected application; and
- the easing of the requirements for the re-establishment of patent applications and patent rights on a reasonable basis in order to expand the remedies of patent applicants and patent holders.
This article discusses these revisions.
Extension of response period following final rejection
In response to a final rejection, an applicant may request re-examination along with an amendment (for further consideration by the KIPO examiner) or directly appeal to the IPTAB without making an amendment.
Under the current provisions of the Patent Act, following a final rejection, the applicant is given 30 days to respond. Within this 30-day period, the applicant has to determine whether the rejection is reasonable and how to amend the claims. However, this is often not long enough to carry out the required work.
The revised Patent Act will extend the response period from 30 days to three months. A maximum extension of 60 days will still be available as under the current Patent Act.
Re-examination after allowance
Under the revised Patent Act, it will be possible to request re-examination and amend the allowed claims even after receiving a notice of allowance. For example, any errors in the allowed claims may be corrected.
Under the current Patent Act, some procedures exist to enable an applicant or patentee to amend the allowed claims – for example, a trial for correction. However, re-examination after allowance is more advantageous compared to other existing procedures in view of time and cost.
The allowed scope of amendment in re-examination is limited to:
- narrowing the claims by cancelling a claim or adding a limitation to a claim;
- correcting a clerical error; or
- clarifying an ambiguous description.
Under the current Patent Act, for first final rejections, the easiest way to secure the unrejected or allowable claims is to request re-examination while cancelling the rejected claims. If an applicant still wishes to pursue the rejected claims, an applicant may file a divisional application with the cancelled claims. For second final rejections, however, the applicant has to proceed with an appeal.
If the appeal succeeds, it is possible to retain the subject matter in a single patent, which may be advantageous in terms of administration and management. However, if the appeal fails, the application is rejected as a whole. At this stage, it is not possible to file a divisional application, and there are no procedures to secure the unrejected claims.
The revised Patent Act introduces a "split application", which is a unique application that can be filed only when an appeal against a final rejection is dismissed. The subject matter that is not rejected in the final rejection can be claimed in a split application. Split applications may be filed within 30 days of receiving the trial decision.
Easing of requirements for re-establishment of rights
The Patent Act provides for the re-establishment of rights that have been invalidated, or deemed withdrawn or abandoned, due to a failure to observe a time limit set out by law. These provisions are applied when the time limit was unable to be observed due to a cause "not attributable" to an applicant or patentee. For example, a breakdown of communication resulting from a natural disaster may be a cause deemed not attributable to the applicant. In this case, the applicant is given an opportunity to take action to re-establish their rights. The re-establishment actions should be taken within two months after the cause of the failure has terminated. However, under the current Patent Act, the requirements of acts deemed "not attributable to an applicant or patentee" are too strict and have rarely been applied in practice.
The revised Patent Act eases the requirement to "a justifiable cause". For example, assume that an applicant has been hospitalised for a long time due to a serious disease. Under the current law, such hospitalisation may be deemed attributable to the applicant, and so it is not possible to apply for the re-establishment of rights based on this cause. In the KIPO press release regarding the revised Patent Act, hospitalisation was exemplified as a justifiable cause.
For further information on this topic please contact Jeong-seok Lee or Ji-woong Kim at NAM & NAM by telephone (+82 2 753 5477) or email ([email protected] or [email protected]). The NAM & NAM website can be accessed at www.nampat.co.kr.