Korean Patent Act Development of 2022

Major revisions to the South Korean Patent Act (KPA) came into effect on April 20, 2022.

The period for filing an appeal against a rejection decision in Korea will be extended from 30 days to three months.

Under the amended Korean Patent Act (KPA), applicants can save costs by avoiding time extensions that earlier had a narrow time period of 30 days. The time period was extended to three months from the date of receipt of a Notice of Final Rejection. Applicants can apply for an extension of an additional 60 days even after the three-month period. For information on Korean Trademark Act amendments for 2022 please: 2022 Trademark Act of Korea Amendments. For information on how to file a Patent in Korea, please see: Filing a Patent in Korea: Basics of Korean Patent Law.

Requesting a re-examination of a Korean patent application even after allowance.

Under the revised KPA, requesting re-examination of an application even after a period of allowance is now available to applicants. But, this is only before the application is registered as a patent. This is an easier way to resolve any errors or clarify issues that were discovered later or can be amended after the allowance period to meet any needs that may have occurred in the market. When a request for re-examination is filed, the notice of allowance would be deemed to have been canceled, and the examination procedure would be re-opened. The scope of the amendment is limited to: (a) narrowing the scope of a claim(s); correcting a clerical error(s); clarifying an unclear description(s); or deleting a new matter added by a previous amendment.

These limitations are less restrictive than those in a correction trial in Korea. However, if the allowance was issued after the re-examination following a rejection, requesting another re-examination is not allowed. That rejection would be counted as the final rejection.

A new separate Korean patent application system

Korean patent applications that were filed on or after April 20th, 2022, can now be filed for a separate application for claims that were not rejected in the final rejection when a subsequent appeal has been dismissed. A separate patent application in Korea has a wider set of limitations than a divisional application. A separate patent application is not allowed if all claims are rejected. Another divisional or separate application cannot be filed based on the separate application. Due to such limitations, a divisional patent application, in Korea, remains the top choice. However, a separate patent application comes in handy when the applicant has missed the window to file a Korean divisional patent application.

Relaxed requirements for reviving lapsed rights in Korea

For justifiable reasons, the requirements for restoring, reinstating, or re-establishing lapsed rights have been relaxed. “Justifiable reasons” include situations such as the sudden hospitalization of the applicant due to COVID-19, as explained by KIPO. The standard for justifiable reason is similar to the “due care” standard of other jurisdictions.

There are no remedies, however, available or restoration of rights when an applicant has failed to comply with the deadlines for PCT nationalization or for claiming priority based on the Paris Convention. The request for the remedy or completion of the missed procedures must be completed within two months of the date on which the “justifiable reason” ceases to exist. In addition to that, it must be made within one year after the expiry of the deadline that was not observed.

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