From April 20, 2022 several amendments to the Korean Patent Act, Trademark Act, and Design Protection Act have taken effect.
The main goal behind this legislative reform is to improve the IPR laws and make it more accessible to the applicant which often incurred in formality mistakes in detriment of their IP Rights.
The Covid19 outbreaks happened around the word in recent two years definitely turned the tables and gave the chance to introduce some remarkable changes. As an example, from the beginning of the outbreak, not rarely international companies failed to meet the deadline requirements, due to a sudden quarantine or being affected by the virus and having the pointed deadline expired.
The amendments to the Trademark Law are intended to minorize the problem and can be summarized as follows.
Extension of Trial Request Period
When a preliminary rejection is issued to an application for failing to meet the grant requirements, the Korean Trademark Law just gives 30 days to file the appeal.
It has been noticed that such short time period used to push attorneys to file “by default” the appeals, without any deep analysis on the chance of success of possible appeal or other different (and more successful solutions).
Under the amendments to the law, the deadline has been extended from 30 days to three months.
Petition for Restoration of Trademarks
The grounds to restore trademark rights that have been extinguished due to invalidity of trademark procedures and non-payment of registration have been relaxed. Under the amended law, the trademark owner can now apply for restoration for “justifiable reasons”. This has to be intended as emergency situations where the applicant cannot undertake trademark procedures due to hospitalization or COVID-19.
Priority claims in divided applications
Another remarkable change to the IPR law is the Priority claims in divided applications. As consequences of the amendment, when dividing applications with a priority claim, the date of priority of the resulting applications will be automatically recognized. However, this rule only applies to domestic applications.
Furthermore, we mention the ex-officio reexamination. If an examiner identifies obvious grounds to refuse an application for which registration is granted before its trademark right is established, the decision to register may be cancelled and the application reexamined.
In addition to the amendments already mentioned, there are additional amendments to the Trademark Act that will take effect February 4, 2023. These include:
Partial Refusal to register
If the refusal to register is limited to certain goods or services only, then the application will be granted as to the remaining goods or services.
In limited circumstances, a reexamination will be allowed after a registration rejection. This is where the reasons for rejection can be readily overcome.
From the reading of the amended IPR Laws, it's clear the favor towards the applicant, strengthening the protection of the IP rights of the applicants especially but not only the international companies, clearly showing that Korea is increasing the value of the 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.