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Practice Notes

Practice Notes

KIPO Extends Office Action Response Period and Opens Deferred Examination to Divisional Applications

Effective July 11, 2025, the Korean Intellectual Property Office (KIPO) introduced two notable procedural changes to patent and utility model practice: an extended response period for office actions and expanded eligibility for deferred examination and decision deferral. These updates are aimed at easing administrative burdens and giving applicants greater control over managing examination timelines. ▒  Extended Response Period: From Two to Four Months The default response period for office actions has been increased from two months to four months. Previously, applicants had to rely on monthly extension requests to match the initial response windows available in other jurisdictions:  ● United States and Japan: 3 months  ● Europe and China: 4 months With this change, Korea’s default response period now better aligns with international practice. The extension system remains unchanged: as before, applicants may request up to four additional months in one-month increments, allowing for a total response period of up to eight months. Applicants seeking quicker progress can still file early responses along with a request to shorten the designated response period—an option that may be useful in enforcement or parallel filing scenarios. ▒  Deferred Examination and Decision Deferral Now Available for Divisional Applications KIPO’s deferred examination system allows applicants to postpone substantive examination for strategic or commercial reasons. Under this system:  ● Examination may be delayed for up to two years after the request for examination is filed.  ● Examination must begin within five years of the application’s filing date.  ● The request to defer examination must be submitted within nine months of the request for examination. Separately, applicants may also request decision deferral, which allows KIPO to withhold the final decision on patentability for up to 12 months from the application’s filing date, provided the request is made within six months of filing. Importantly, examination—including office action issuance—can still proceed during the deferral period. Until now, divisional applications were excluded from both deferred examination and decision deferral. The July 2025 amendment removes that restriction, allowing divisional applications to benefit from both mechanisms on the same terms as original applications. These changes—particularly the expansion of deferred examination—will benefit applicants managing families of related applications, especially in industries with long development timelines, such as pharmaceuticals, biotechnology, and advanced communications, where examination timing is often coordinated with commercialization or regulatory schedules.

2025-07-15
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Practice Notes

Toward “K-Discovery”? Discovery Reform under South Korea’s New Administration and Its Implications for Patent Litigation

Discovery reform in South Korea has attracted growing attention in recent years—especially in the context of patent and trade secret disputes, where plaintiffs often struggle to access internal evidence critical to proving their claims. The absence of a general discovery framework is widely seen as a gap in Korea’s IP enforcement regime. During his campaign, the country’s newly elected president pledged to introduce a “Korean-style discovery system” as part of his judicial reform agenda. Now, with the new administration in place and relevant bills already on the table, the groundwork appears set for change that could reshape the contours of litigation in Korea. ▒  Background South Korea does not maintain a general pretrial discovery system akin to that of the United States. Whereas U.S. litigation features broad, adversarial, and largely party-driven discovery procedures, Korean civil litigation is tightly court-controlled, with limited mechanisms for evidence collection. These differences in procedural approach have meaningful implications for IP enforcement. In patent litigation, for instance, plaintiffs—despite bearing the burden of proving both infringement and damages—have few procedural tools to compel disclosure of internal materials such as technical schematics or manufacturing data. As a result, evidentiary asymmetries between plaintiffs and defendants are common, particularly in method-claim or trade-secret disputes where critical evidence is solely in the hands of the alleged infringer. Certain provisions in the Korean Patent Act are designed to alleviate the evidentiary burden on plaintiffs. Notably, a 2019 amendment introduced a new article requiring defendants to disclose relevant records when infringement is plausibly alleged, or risk having the allegations deemed established. However, as with similar provisions, courts retain wide discretion and remain cautious in exercising it, limiting the practical impact of these measures. ▒  Growing Institutional and Political Momentum Against this backdrop, calls for a more structured and proactive discovery system have continued to gain momentum, supported by years of institutional engagement by the Korean Intellectual Property Office (KIPO), the judiciary, and the legislature. A comprehensive 2023 report by the National Assembly Research Service (NARS), for instance, emphasized the need for discovery reform—while also cautioning that any Korean-style system must remain under judicial control and align with Korea’s civil law tradition. This issue was picked up in the recent presidential campaign. President Lee Jae Myung identified discovery as a key tool to combat technology theft and strengthen IP enforcement, pledging to introduce reforms aimed at addressing evidentiary asymmetries by enabling parties to effectively compel disclosure of relevant materials. This commitment was mentioned in his “Top 10 Key Policy Pledges” submitted to the National Election Commission, under the broader objective of restoring procedural fairness and advancing judicial reform. In this context, two significant discovery-related bills have already been introduced by the ruling Democratic Party—one in August 2024 and one in April 2025. Both propose amendments to the Civil Procedure Act and are currently pending before the National Assembly. ▒  Key Features of the Proposed K-Discovery System Based on the pending bills, the president’s campaign platform, and the prevailing discussions, the emerging contours of a Korean-style discovery system are likely to include:    ●   Strengthened court-ordered document production: Expanded authority for courts to compel production of relevant materials, with enforceable              sanctions for unjustified non-compliance.    ●   Court-appointed expert inspections: Authority for courts to designate neutral experts to conduct on-site investigations, particularly where                      documentary evidence is impractical.    ●   Pre-trial witness examinations: Procedures for early-stage witness testimony and evidence preservation to clarify key facts ahead of trial.    ●   Protective orders and confidentiality safeguards: Authority for courts to conduct closed hearings or limit access to sensitive materials in cases                involving trade secrets, balancing disclosure needs with confidentiality. Given the legislative alignment and lack of political opposition on this issue, these reforms appear poised to move forward. ▒  Implications for Patent Enforcement If enacted, these reforms could materially improve plaintiffs’ access to key evidence, significantly altering the patent litigation landscape. They would enable:    ●   Access to internal sales and production data critical for calculating damages.    ●   Inspection of manufacturing facilities or servers to confirm infringement.    ●   Pre-trial witness examination to clarify issues of control, knowledge, or willfulness.    ●   Greater leverage in settlement negotiations, backed by enforceable procedural rights. Taken together with recent substantive developments—such as the introduction of enhanced punitive damages for willful patent infringement (up to five times actual damages)—a more effective discovery regime would represent a significant procedural advance and enhance Korea’s standing as a forum for patent disputes.

2025-06-24
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Practice Notes

Is Fertilizer Eligible for Patent Term Extension in Korea?

Background   Patent Term Extension (PTE) systems worldwide aim to compensate patent holders for the time lost during regulatory approval processes for certain products. In Korea, the Patent Act allows for patent term extensions for inventions that require regulatory approval before commercialization. However, the scope of eligible products is specifically defined and limited by the Patent Act Enforcement Decree.   The question of whether fertilizers registered under Korea's Fertilizer Control Act qualify for PTE has gained attention as the agrochemical industry seeks clarity on patent protection strategies. This issue becomes particularly relevant when considering that internationally, the term "agrochemicals" encompasses both pesticides and fertilizers, leading to potential confusion about the scope of patent term extensions.   Understanding the answer requires examining the specific legal framework governing PTE eligibility and the policy rationale behind limiting coverage to certain categories of agricultural products.   Current Legal Framework   Under the current Korean Patent Act Enforcement Decree, PTE eligibility is explicitly defined. The Decree specifies that patent term extensions are available for inventions implementing patented technology where agricultural chemicals have been registered under the Pesticide Control Act pursuant to Articles 8(1), 16(1), or 17(1) of that Act. Importantly, this applies only to agricultural chemicals or active ingredients containing new substances as active ingredients and registered for the first time.   The Korean Pesticide Control Act defines "pesticides" as including: (i) fungicides, insecticides, and herbicides used to control pests that harm crops; (ii) agents used to promote or inhibit the physiological functions of crops; and (iii) other agents prescribed by Ordinance of the Ministry of Agriculture, Food and Rural Affairs.   Notably absent from this framework is any mention of the Fertilizer Control Act. The Enforcement Decree does not include product approvals under the Fertilizer Control Act as qualifying for PTE applications, creating a clear regulatory distinction between pesticides and fertilizers for patent term extension purposes.   Regulatory Separation: Pesticides vs. Fertilizers   Korea maintains separate regulatory frameworks for pesticides and fertilizers, reflecting different safety and efficacy concerns. The Pesticide Control Act, administered by the Rural Development Administration, governs substances designed to control pests or regulate plant physiological functions. In contrast, the Fertilizer Control Act regulates substances primarily intended to provide plant nutrition or improve soil conditions.   This regulatory separation has important implications for patent term extensions. While some substances might theoretically fall within the boundary between pesticide and fertilizer regulations—such as plant growth regulators, microbial soil conditioners, or trace element complexes with physiological effects—the PTE framework specifically requires registration under the Pesticide Control Act.   The distinction becomes clearer when considering that fertilizer registration with local authorities (city-/county-/district-level) follows a different pathway than pesticide registration, which requires national-level approval and extensive safety and efficacy testing similar to pharmaceutical products.   Policy Rationale and International Practice   The limitation of patent term extensions to pesticides rather than fertilizers reflects a consistent international approach. Similar to other major jurisdictions, including the European Union's Supplementary Protection Certificate (SPC) system, patent term extensions are typically reserved for products requiring extensive regulatory testing and approval processes comparable to pharmaceuticals.   This policy choice recognizes that pesticides, like medicines, must undergo rigorous safety and efficacy evaluations that can significantly delay market entry, thereby eroding the effective patent protection period. Fertilizers, while subject to registration requirements, generally follow different approval pathways that do not involve the same level of extensive testing.   Boundary Areas and Complexity   Some substances present classification challenges that highlight the complexity of the regulatory landscape. Plant growth regulators, for instance, may be regulated as pesticides under the Pesticide Control Act when used for specific physiological effects (such as flowering promotion or fruit drop prevention), while similar substances might be classified as fertilizers when used primarily for nutritional purposes.   Despite these boundary areas, the legal framework for PTE remains clear: registration under the Fertilizer Control Act alone does not qualify a product for patent term extension, regardless of the substance's potential dual regulatory pathways or its classification in international contexts.   Implications   The answer to whether fertilizers are eligible for PTE in Korea is definitively no. Products registered solely under the Fertilizer Control Act do not qualify for patent term extension under the current legal framework.   This limitation reflects a consistent international approach and has several important implications for the agrochemical industry. Patent holders must carefully consider their regulatory strategy when seeking both patent protection and market approval for agricultural products in Korea. The choice of regulatory pathway may affect not only the approval timeline and requirements but also the availability of patent term extension.   The scope of Korea's PTE system, while limited to pesticides, aligns with international practice in focusing on products that require extensive regulatory testing similar to pharmaceuticals. This approach provides clarity and administrative efficiency while ensuring that patent term extensions are available where the regulatory approval process most significantly impacts the effective patent protection period.   For substances that might qualify for registration under both pesticide and fertilizer regulations, the regulatory pathway chosen could determine PTE eligibility. However, such choices must be made based on the substance's actual intended use and regulatory requirements, not solely for patent term extension purposes.   Understanding these limitations is crucial for patent practitioners and agrochemical companies operating in Korea, as it affects both patent prosecution strategies and commercial planning for agricultural innovations. While the exclusion of fertilizers from PTE eligibility may initially appear restrictive, it reflects a well-established international approach that balances the need for innovation incentives with clear regulatory boundaries.

2025-06-20
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