Introduction
On September 29, 2021, a bill to revise the Korean Patent Act was passed at the National Assembly. The revisions were promulgated on October 19, 2021 and will go into effect from April 20, 2022. The 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: 1) extending the period for requesting trial or re-examination in response to a final rejection; 2) enabling re-examination to be requested along with an amendment to the claims after allowance; 3) introducing a “split application” so that if an appeal from a final rejection is dismissed by the IP Trial & Appeal Board, the non-rejected subject matter can be split off from the rejected application; and 4) easing of the requirements for re-establishment of patent applications and patent rights on a reasonable basis in order to expand the remedies of patent applicants and patent holders. These will be discussed in turn below.
1. 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 instead may directly appeal to the IP Trial & Appeal Board (IPTAB) without making an amendment.
Under the current provisions of the Patent Act, following a final rejection the applicant is given thirty days to respond. Within this thirty-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 3 months. A maximum extension of sixty days will still be available per the current Patent Act.
2. 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 do exist which 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 canceling a claim or adding a limitation to a claim, correcting a clerical error, or clarifying an ambiguous description.
3. Split applications
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 canceling the rejected claims. If an applicant still wishes to pursue the rejected claims, then an applicant may file a divisional application with the canceled 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’. A split application 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 thirty days of receiving the trial decision.
4. Easing of requirements for re-establishment of rights
The Patent Act provides for re-establishment of rights that have been invalidated, or deemed withdrawn or abandoned, due to a failure to observe a time limit set forth 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 hospitalized for a long time due to a serious disease. Under the current law, such hospitalization may be deemed attributable to the applicant, and so it is not possible to apply for re-establishment of rights based on this cause. In the KIPO press release regarding the revised Patent Act, hospitalization was exemplified as a justifiable cause.