September 2016

 
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SIGNIFICANT CHANGES TO THE KOREAN PATENT ACT

Jin Hwan Kim, MAPS IP Law Firm (Korea)

Amendments to the Korean Patent Act ("KPA”) were promulgated on March 1, 2016 and will be effective as of March 1, 2017. The amendments include a number of important changes to Korean patent procedures, such as introduction of a patent cancelation system, a shortened period for lodging an examination request and introduction of an ex officio re-examination system. These major changes will be discussed below.

Introduction of a Patent Cancellation System

Under the current KPA, the only way to revoke a patent is through an invalidation action filed against a patent with the Intellectual Property Tribunal ("IPT"). However, such invalidation action is conducted through written and oral arguments between the two parties, and thus, there is significant time and expense before the IPT issues a decision.

According to the amended KPA, for patents registered on or after March 1, 2017, anyone can now file a request to cancel a patent with the IPT from the registration date until six (6) months after the publication of the registered patent. The cancelation grounds should be based on prior publications that have not been cited by the KIPO Examiner during the prosecution of the patent. Following a review of the patent, if the IPT renders a decision to cancel the patent, the patentee shall be notified of the reasons for cancellation and given an opportunity to submit a response to correct the claim(s) within a designated period.

The IPT decision to cancel the patent can be appealed to the Patent Court. A decision not to cancel the patent cannot be appealed. Instead, the petitioner who filed the cancellation request, may proceed to file an invalidation action with the IPT. In that case, the petitioner must have legal standing of an "interested party."

Shortened Period for filing an Examination Request

The Korean patent system is a deferred examination system. A filed patent application does not undergo substantive examination until a request for examination is filed. Under the current KPA, the request for examination may be filed concurrently with the application or at any time within five (5) years from the (international) filing date. If the request for examination is not filed within this time limit, the patent application will be deemed to have been withdrawn.

According to the amended KPA, the time limit to file an examination request will be reduced to three (3) years for applications filed on or after March 1, 2017. However, an applicant may still defer initiation of substantive examination up to five (5) years from the filing date by filing a petition for delayed examination.

Introduction of an ex officio Re-examination System

Under the current KPA, once the Examiner issues a Notice of Allowance for a patent application, it is not possible for the Examiner to reopen the examination even when he/she finds a critical reason to reject the application after allowance.

According to the amended KPA, if the Examiner determines that there are clear grounds for rejection of a patent application after the application is allowed, but before the application is registered as a patent, the Examiner may withdraw the Notice of Allowance ex officio and reopen examination. To reopen examination, the Examiner should notify the applicant of the reason(s) for cancelling the Notice of Allowance and issue a preliminary rejection based on the new grounds of rejection.

 

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