Few weeks ago, we have written about the changes to the Korean Trademark Act (KPA) that come into effect from April 20, 2022. At that time we mentioned that some amendments also concern the Patent side. Here we are with a short piece on the recent amendments to the South Korean Patent Law.
The New Separational Application System
The revised Patent Act introduces a new system for applications filed on or after April 20, where, if the final rejection is affirmed, an applicant can split the claims that have not been finally rejected from the application and file them separately. Under the precedent version, even if only one claim was dismissed in an appeal against a final rejection, all the claims would collectively be rejected.
Extension of period to file an appeal against a final rejection
When a preliminary rejection is issued to an application for failing to meet the grant requirements, the deadline to appeal such rejection has been extended from 30 days to three months.
The three-month response period can be further extended by an additional sixty days, as is currently allowed for foreign applicants. Extension of applications subject to a request for re-examination and period for filing the request. Under the revised Patent Act, a request for re-examination can be filed for an allowed application before it is registered. In addition, 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.
In addition, through the revised Patent Act, more opportunities to amend the specification, including the possibility to pursue a broader claim scope, after allowance are available. However, the notice of allowance is cancelled by a request for the re-examination.
Simplified Priority Claim Process for Divisional Applications
When 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.
Relaxed standards for restoration of patent rights
Korean Intellectual Property Office has now relaxed the term ‘a cause not attributable to the applicant or patentee' to ‘a justifiable cause' allowing applicant to request the restoration within two months after the justifiable cause is no longer in effect.
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.
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.
After having analyzed the changes introduced by the amended patent Act it is undeniable that the mentioned modifications are made to protect an applicant's interests, provide further opportunities to acquire patent rights, and simplify the burocratic formalism of the procedures.
HFG Law&Intellectual Property
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.