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| Easement of Amendment Requirements at the revised Korean Patent Act (Effective from July 1, 2009) |
The revised Patent Act, effective on July 1, 2009, has eased the requirements for amendments. We are going to provide you with the amended part of the revised Patent Act for comparison with the current Patent Act.
Under the current Patent Act, the period and scope of amendments are as shown in the table below.
As shown in the table, an amendment filed before receiving a Decision of Patentability and filed as a
response to a non-final Office Action may expand the scope of claims as long as it is not introducing a new
matter (within the scope of disclosure in the specification).
However, an amendment after a final Office Action or within 30 days after requesting a Trial Disputing a
Decision of Rejection must satisfy much stricter requirements, as opposed to amendments made in
response to a non-final Office Action, where the requirements have much more leeway.
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 the reason that it substantially
modifies the scope of the claims, the amendment cannot be accepted, thereby a patent will not be granted.
For example, the following amendment has been rejected under the formal reason that it substantially
changes the scope of the claim, even if it narrows the scope of claim.
[Before Amendment]
1. A composition comprising A and B
[After Amendment]
1. A composition comprising A, B and C.
Claim 1 was amended to a composition comprising A, B and C. This is a narrowing of the scope of claim,
however, the amendment would not be accepted under the reason that it substantially modifies the scope of
claim (because the composition comprising A, B and C is not within the scope of the original claim).
Therefore, even though the composition comprising A, B and C is disclosed in the original application, the
above amendment is rejected in whole for violating the rule of "an amendment must neither substantially
expand nor modify the scope of the claims," and reexamination will proceed based on the claim before the
amendments, and as a result, a final Office Action or Decision of Rejection is sustained.
In sum, under the current Patent Act, even when grounds for rejection could be resolved by an amendment
narrowing the scope of claims, if the amendment violates the formal restriction that it must not substantially
change the scope of claims, the amendment will be rejected.
As a result, considering the need for improvement of the amendment system, the revised Patent Act, which
will take in effect on July 1, 2009, has eased the requirements of amendments.
The revised Patent Act will allow an amendment narrowing the scope of claims by deleting, "it shall not
substantially broaden or change the scope of the claims," from the requirements of amendments after a
final Office Action or a Decision of Rejection, without any additional constraint. Therefore, are able to resolve
the final Office Action much more easily by narrowing the scope of claims.
The revised Patent Act will be effective on July 1, 2009, and the easement on requirements of amendment
will be applied for all amendments submitted on or after July 1, 2009.
Therefore, starting from July 1, 2009, when preparing an amendment as a response to a final Office Action or a Decision of Rejection, it is possible for an applicant to narrow the scope of claims without any formal
restraints, and it is expected that the burden for reviewing rightness of amendment will be eased.
In addition, if a final Office Action or a Decision of Rejection is issued prior to July 1, 2009, it is recommended that you file an amendment after July 1, 2009 and take advantage of the eased requirements for
amendments, if possible, by requesting the extensions of time (4 months of extension for a final Office Action
and 2 months of extension for a Decision of Rejection are possible respectively).
We hope this information regarding the eased requirements for amendments under the revised Patent Act is of assistance to you. If you have any questions or need more information, please feel free to contact us.
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