The potential to reduce patent fee expenditure will be of interest to most, if not all, corporations, as the aim of patent departments is normally to build and maintain as strong a patent portfolio as possible within a fixed budget. With this in mind, I would like to share some ways to have already-paid fees refunded and also potentially reduce future costs in Korea.
In principle, already-paid official fees are not refundable. However, there are some exceptions to this rule, specifically with regard to examination request fees and appeal fees. Post-registration, it is also possible to reduce annuity fee expenditure by abandoning specific claims.
Examination request fees
Fees paid to request examination can be refunded to the applicant if the application is actively withdrawn or abandoned before the examination process begins.
Specifically, an applicant may request a refund of the examination fees upon officially withdrawing or abandoning a patent application before any of the following events occur: (i) KIPO issues an order for consultation to resolve double patenting issues; (ii) KIPO receives prior art search results from a KIPOdesignated agency; (iii) a first preliminary rejection is issued; or (iv) a Notice of Allowance is issued.
[Example for 20 claims: ₩1,023,000 KRW | Approx. $930 USD]
If a rejection decision is revoked by the Intellectual Property Trial and Appeal Board (IPTAB) upon appeal, the fees paid for filing the appeal can be refunded.
[Example for 20 claims: ₩450,000 KRW | Approx. $410 USD]
Alternatively, if the petitioner withdraws their petition for an appeal before they are notified of the conclusion of appeal examination, 50% of the fees paid to file the appeal can be refunded.
[Example for 20 claims: ₩225,000 KRW | Approx. $205 USD]
If a patentee abandons a patent right, the patent fees (issue fees or annuity fees) will be refunded for the years following the year in which the right was abandoned.
Also, when paying patent registration fees or annuity fees, individual claims can be abandoned to reduce the registration fee or annuity. The following example shows the potential saving throughout the life of the patent if 20 claims are abandoned.
If a patentee does not wish to pursue a pending application, in the case that examination has been requested but the results have not yet been issued, fees may be recouped by actively withdrawing the application rather than allowing it to simply lapse through inaction. Similarly, if an IPTAB administrative trial has been filed to appeal a refusal decision, a portion of the fees paid may be recouped if the trial request is withdrawn.
In addition, when paying patent registration or annuity fees, the fees payable to KIPO can be reduced by abandoning any claims which are no longer required.
On a related note, the period for requesting examination in Korea was reduced from five to three years starting from March 1 2017. However, by filing a request for deferred examination, the issuance of the examination result may be delayed until up to five years after the application filing date. In this case, the examination request fees do not have to be paid when filing the request, and payment can be delayed until two months prior to said five-year cutoff.