Lee International

A bill revising the Korean Patent/Trademark/Design Acts was passed on September 29, 2021, and the revised Acts will take effect on April 20, 2022.  Below is a summary of key revisions.

[Patent/Trademark/Design] The Statutory Period for Appealing a Final Rejection is Extended to Three (3) Months.

The statutory period for appealing a Final Rejection (or for requesting continued examination) is extended from thirty (30) days to three (3) months from the date of receipt of the Final Rejection.  This revision will provide the applicants with the sufficient period for preparing and filing an appeal and minimize unnecessary time extensions.

[Patent/Trademark/Design] Requirements for Restoring Lapsed Rights have been Relaxed.

Under the revised Act, a right lapsed from failing to submit required documents or pay official fees by a deadline can be restored if the failure is due to “a reasonable cause,” which is changed from “a non-imputable cause” under the current Act.  Examples of “reasonable causes” include applicant’s illness, misinformation provided by the Korean Intellectual Property Office (KIPO) customer service center and an error while transferring official fees.

[Patent/Trademark/Design] A Separate Priority Claim is No Longer Required When Filing a Divisional Application.

If a parent application claims priority to a domestic (Korean) or foreign application, a divisional application based on the parent application is automatically acknowledged to have the same priority claim as the parent application.  This revision may prevent a divisional application from being rejected due to an unintentional error of not claiming priority at the time of filing. 

[Patent] A Separated Application Can be Filed with Patentable Claims.

Under the current Act, when the Intellectual Property Trial and Appeal Board (IPTAB) issues a decision affirming a Final Rejection denying patentability of some of the claims, the entire patent application is rejected even if there are some patentable claims.  Under the revised Act, the patentable claims can be separated and filed in a new separated application within the time frame for appealing the IPTAB decision.  This will provide the expanded opportunities for the applicants to secure their rights for the patentable inventions.

[Patent] The Statutory Period for Requesting Continued Examination is Expanded.

Under the current Act, an applicant may only request continued examination within the time frame for responding to a Final Rejection.  Under the revised Act, this statutory period for requesting continued examination is extended from thirty (30) days to three (3) months from the date of receipt of the Final Rejection, as mentioned above.  In addition, continued examination may also be filed even after issuance of a Notice of Allowance but before the payment of the registration fee.  As a result, applicants may request continued examination to correct an error in the specification or claims after a Notice of Allowance is issued.

[Patent] The Scope of Domestic Priority Claim is Expanded

Under the revised Act, even after a Notice of Allowance is issued in an earlier Korean application (“earlier application”), a patent application claiming priority to the earlier application may be filed within one year from the filing date of the earlier application but before the payment of the registration fee for the earlier application.  As such, the scope of patent applications that can be the basis for a priority claim is expanded to include those for which a Notice of Allowance has been issued.  Under the current Act, if an earlier application is allowed within one year from its filing date, it is not possible to file a new application for an improvement invention claiming priority to the earlier application.  Under the revised Act, even after a Notice of Allowance is issued for the earlier application, it is now possible to file a new application for an improvement invention claiming priority to the earlier application before the payment of the registration fee for the earlier application within one year from the filing of the earlier application.  

[Patent] Experts may Testify in Trials.

The presiding trial judge of a patent trial may designate ex officio one or more outside experts in the relevant technical field to testify in the trial proceedings before the IPTAB, as necessary.  The parties in the case may request the judge to retain outside experts, but it is at the discretion of the presiding trial judge to finally decide whether to allow the experts to testify.  The IPTAB now may consider the neutral opinions presented by outside experts in trials to make swift and accurate decisions.

[Trademark/Design] Ex Officio Re-Examination is Introduced.

Under the revised Act, an examiner can cancel his/her decision to grant a trademark or design and re-examine the trademark or design application ex officio, if he/she finds an obvious ground for rejection even after issuance of a Notice of Allowance, but before the payment of the registration fee.  By doing so, the examiner can prevent an invalid trademark or design from being registered and unnecessary future disputes may be avoided.

[Design] The Time Period for Submitting an Amendment for Continued Examination is Expanded.

Under the current Act, if applicants wish to file an amendment in response to a Final Refusal of a design application, the amendment should be filed “at the time of requesting continued examination.”  However, under the revised Act, it is now possible to file an amendment “within the period for requesting continued examination,” and thus, the time period for submitting an amendment is expanded.