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| Recent Changes In Korean Patent Act(effective as of July 1, 2009) |
The Korean Patent Act was amended on January 8, 2009. The amendments introduced a
Reexamination System and abolished the Reconsideration by the Examiner System after an
appeal against a Final Rejection. The new amendment also improved some imperfections in
the current Patent Act.
The amendments will be effective as from July 1, 2009.
I. The Main Changes of Korean Patent Act
1. Relaxation of Limitation on the Scope of Amendment
2. Abolition of Reconsideration by the Examiner after an appeal against a Final Rejection
and Introduction of Direct Reexamination by Examiner
3. Extension of the Time for Filing Divisional Application
4. Introduction of Correction by Examiner Ex Officio
5. Introduction of Differentiated Surcharges in Payment of Annuities within a Grace Period
of Six Months
II. The Detailed Changes of Korean Patent Act
1. Relaxation of Limitation on the Scope of Amendment
Under the current Patent Act, an amendment of specification after a final Office Action and
a Decision of Final Rejection must not contain new matters and must satisfy the requirements
that ⅰ) "it narrows the scope of claims", and that ⅱ) "it shall not substantially broaden
or change the scope of claims".
As a result of the strict and formal restrictions, even when grounds for rejection can be resolved
by an amendment narrowing the scope of claims, if the amendment is rejected for not satisfying
the requirement of the aforementioned ⅱ), the amendment cannot be accepted, thereby a patent
is not granted.
However, the revised Patent Act will allow amendments narrowing the scope of claims by deleting
the requirement of the aforementioned ⅱ). Therefore, an applicant now will have the opportunity
to narrow the scope of claims without any additional constraint.
This will be applied for amendments filed from July 1, 2009.
2. Abolition of Reconsideration by the Examiner after an Appeal against a Final Rejection and
Introduction of Direct Reexamination by Examiner
Under the current Patent Act, when an amendment of specification is submitted within 30 days
from the date of filing a request for an appeal against a Decision of Final Rejection, the Intellectual
Property Tribunal (IPT) returns the application to the examiner and a reexamination is conducted.
The current system of reconsideration by an examiner after the appeal against the Final Rejection
will be abolished. The reason for this is that it created for the applicant a burden of cost and
complicated the procedure.
In place of the reconsideration system, a reexamination request system will be introduced to
assure that an applicant has an opportunity to file amendment before the trial and reduce
unnecessary demand for such a trial.
Under the revised Patent Act, a direct reexamination is conducted by the examiner in charge of
the examination of the application. This is done when a request for reexamination, along with
the amendment of the specification, is filed within 30 days (extensible by two months) from the
date of receiving a Notice of Final Rejection.
This will be applied for applications filed from July 1, 2009.
3. Extension of the Time for Filing a Divisional Application
Under the current Patent Act, a divisional application can be filed ⓐ before a decision of patentability
on the original application (i.e., before the decision to either grant or reject a patent),
ⓑ within a prescribed period for filing a response to an Office Action or ⓒ within 30 days after
filing for a Trial Against a Final Rejection.
In addition to the above periods, under the revised Patent Act, a divisional application will be able to
be filed simultaneously with a request for the newly introduced reexamination. Further, it may also be
filed after the reexamination but before filing for a Trial.
This will be applied for applications filed from July 1, 2009.
4. Introduction of Correction by Examiner Ex Officio
Under the current Patent Act, the examiner could not correct obvious formal errors or omissions
in the specification or drawing Ex Officio.
However, the revised patent introduced that the examiner can do it Ex Officio.
After correcting these obvious typographical errors, the examiner will issue a Notice of Allowance.
In this case, the examiner should notify the applicant of the correction so that the applicant has
an opportunity to confirm the examiner's correction.
This will be applied for applications for which the examiner issues a Notice of Allowance from
July 1, 2009.
5. Introduction of Differentiated Surcharges in the Payment of Annuities within a Grace Period
of Six Months
Under the current Patent Act, when the due date for the payment of Registration fees and annuities
expires, an applicant or a patentee must pay a surcharge of twice the original official fee within
a grace period of six months irrespective of the number of passed days.
However, the revised Patent Act provides that the amount of the surcharge will be differentiated
according to the number of passed days within a range of twice of the original fee.
This will be applied for the cases where a payment is made from July 1, 2009.
Examples: 1 month passed: 120%, 2~3 months passed: 150%,
4~6 months passed: 200%.
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