Date 28-04-2010

 

Promulgated on January 30, 2009, and effective from July 1, 2009

Revisions of the Korean Patent and Utility Model Acts

 

 

1. Relaxation of Limitation on the Scope of Amendment to the specification or the Drawings (Article 47)

 

※ Article 47 of the Patent Act is applied mutatis mutandis to Article 11 of the Utility Model Act.

□ Relaxation of Restrictions on the Scope of Amendment after an Issuance of a Final Preliminary Rejection

(Previous) After issuance of a Final Preliminary Rejection, the scope of amendment was previously very strictly restricted, for example amendments narrowing the claims were rejected if they were considered as constituting a substantial change.

(Revised) It is possible to make an amendment narrowing the claims since the substantial change prohibition condition is deleted from the amendment requirements after an issuance of a Final Preliminary Rejection.

☞ This will be applied to all cases amended on or after July 1, 2009.

 

 

2. Introduction of Re-examination Request System (Article 67(2))

 

※Article 67(2) of the Patent Act is applied mutatis mutandis to Article 15 of the Utility Model Act

□ Abolition of re-examination by the original examiner before appeal proceedings and the introduction of a Re-examination Request System

(Previous) If the applicant files a Notice of Appeal against the Final Rejection and submits an Amendment to the specification, etc., the relevant application is returned to the original examiner for re-examination.

(Revised) Even if the applicant does not file the Notice of Appeal against the Final Rejection, if the applicant files a Request for Re-examination along with an Amendment to the specification, etc., the relevant application can be reexamined by the examiner.    

☞ This will be applied to applications filed on or after July 1, 2009.

 
 

3. Extension of Time for Filing a Notice of Appeal against a Final Rejection (Article 15(1))

 

※ Article 15 of the Patent Act is applied mutatis mutandis to Article 3 of the Utility Model Act

□ Anyone can extend the period for filing a Notice of Appeal against a Final Rejection one time within 30 days.

(Previous) An extension of time to file a Notice of Appeal against a Final Rejection(Article 132(3)) is allowed only to those residing overseas.

(Revised) Anyone can extend the period for filing a Notice of Appeal against a Final Rejection one time within 30 days. (Filing Period: 30 days→30 days+30 days)

※ The existing act continues to apply to overseas residents.

☞ This will be applied to all cases in which a Notice of Appeal against a Final Rejection is possible after the effective date of the revised Patent Act (July 1, 2009).

 

 

4. Extension of the Allowed Time to File a Divisional Application (Article 52)

 

Article 52 of the Patent Act is applied mutatis mutandis to Article 11 of the Utility Model Act

□ An additional opportunity to file a divisional application even after a Final Rejection

(Previous) Since it was allowed to file a divisional application only within the prescribed period for filing amendments, it was not possible to file the divisional application for allowable claims after the final rejection (if the examiner maintains the original decision after the re-examination before the appeal proceedings).

(Revised) In addition to the allowed amendment period, applicants will have an additional opportunity to file a divisional application for the period of filing a Notice of Appeal against a Final Rejection, and the revised act will allow an applicant to file a divisional application even after the final rejection (re-rejection decision according to the re-examination after the introduction of the Re-examination Request System).
This will be applied to divisional applications based on applications filed after the effective date of the revised Patent Act (July 1 2009).
 
 
 

5. Introduction of Ex Officio Correction by an Examiner (Article 66(2))

 

Article 66(2) of the Patent Act is applied mutatis mutandis to Article 15 of the Utility Model Act

□ Examiners can correct slight errors in the specification ex officio.

(Previous) Even though the specification contained only minor errors, examiners issued a Notice of Refusal so that applicants could directly amend the errors.

(Revised) If the examiners have no reason to reject the application except for obvious errors in the specification or drawings, the examiner may correct these errors ex officio and decide to grant a patent.

This will be applied to applications that mature into patents after the effective date of the revised Patent Act (July 1 2009).

 

 

6. Introduction of Differential Surcharges for Late Payment of Annuities (Article 81(2) & 81(2)(iii))

 

Articles 81 and 81(2) of the Patent Act are applied mutatis mutandis to Article 20 of the Utility Model Act.

□ Under the existing Patent Act, a surcharge within a grace period of six months is twice the official fee, but the amount of the surcharge will be differentiated according to the number of lapsed days.

(Previous) Even though a single day passes from the deadline for the annuity payment, an applicant or a patentee must pay a surcharge of twice the official fee.

(Revised) The amountprescribed by the Decree of the Ministry of Knowledge Economy should be differentiated According to the number of passed days.

* Decree of Ministry of Knowledge Economy: 1 month passed (120%), 2~3 months passed (150%), 4~6 months passed (200%)

This will be applied to surcharges for annuities to be paid after the effective date of the revised Patent Act (July 1 2009).

 


7. Regulations on the allowed time period for an amendment to an application for registration of a patent term extension for pharmaceuticals (proviso of Article 90(6))

 

□ As the allowed period for an amendment to an application for registration of a patent term extension is specifically limited and provided in the revised Patent Act, problems such as examination delays caused by an amendment after examination are improved.

○ (Previous) An amendment can be made before a certified copy of the decision on registration of the extension is transmitted.

○ (Revised) After issuance of a Notice of Rejection, an amendment can be made only within the period of submitting an Argument.

This will be applied to applications for registration of a patent term extension, which are initially filed after the effective date of the revised Patent Act (July 1 2009).

  

8. Relaxation of formal requirements for amendments made by a petitioner (defendant) regarding a Request for a Trial (Articles 140 & 140(2))

 

Articles 140 & 140(2) of the Patent Act are applied mutatis mutandis to Article 33 of the Utility Model Act.

○ In order to prevent a trial from being dismissed by mistake, it is allowed to amend descriptions of a patentee of an inter-parties trial or a petitioner of an ex parte trial.

This will be applied to cases in which a trial is initially requested after the effective date of the revised Patent Act (July 1 2009).

 

  


* If you have any inquiries or comments, please feel free to contact us:

 

LEES & Co.

Fax: +82 2 2183 0060, Tel: +82 2 2183 0050, E-mail: lhipo@leespat.com

Postal address:     

Central P.O Box 926, Seoul, Korea

Street address:     

Suite 1309, West wing, Hanshin Inter Valley Bldg., 707-34

Yeoksam-dong, Gangnam-gu, Seoul, Korea


THE FIRM | LOCATION | E-mail:lhipo@leespat.com | Tel:+82 2 2183 0050 | Fax:+82 2 2183 0060