Following an MOU between the Korean Intellectual Property Office (KIPO) and France’s National Institute of Industrial Property (INPI) signed during the World Intellectual Property Organization General Assembly held in Geneva, Switzerland in July earlier this year, the Patent Prosecution Highway (PPH) program between Korea and France has become effective as of September 1, 2022.

From this date onwards, applicants may request KIPO to conduct preferential examination based on INPI work products provided the normal requirements are met, namely:

1. The KIPO application and the application forming the basis of the PPH request must have the same “earliest date”

2. The INPI application must have one or more claims determined by INPI to be patentable/allowable

3. The claims in the KIPO application must correspond (or be amended to correspond) sufficiently to the claim(s) determined by INPI to be patentable/allowable

4. A request for examination must have been filed with KIPO by the applicant before, or together with, the PPH request

5. There must be no first office action issued against the KIPO application at the time of filing the PPH request

According to KIPO’s 2021 statistics France ranked fifth in terms of the number of patent applications filed by foreign applicants in Korea, so this development should be welcomed by French applicants. (For reference Korea already has PPH agreements in place with the four preceding countries in the list, namely the US, Japan, China and Germany). Vice versa, Korean applicants — who rank fourth among INPI applicants from outside of Europe — will also be able to benefit from accelerated examination of their French applications based on KIPO work products.

By utilizing the PPH program, applicants can typically expect to receive a first office action from KIPO within 2-5 months of filing the request for preferential examination, instead of the typical 12-15 months for standard applications.

The agreement between KIPO and INPI is formally a three-year pilot program ending August 31, 2025, with the offices to decide whether and how to fully implement the program after the trial period based on evaluation of its results.

Written by Jonathan MASTERS