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| Requirements for Preferential Examination Made More Stringent (Effective from September 1, 2009) |
The Korean Intellectual Property Office (KIPO) has a principle that a patent application will be examined
according to the chronological order of the request for examination. As an exception, however, an
examination for a particular category of patent application is preferentially made upon an applicant's request.
Up until this time the benefit of the preferential examination has been offered very easily without any special
restraints. Also, applicants have requested preferential examinations without reviewing the patentability of
their inventions in advance, thus the original purpose of Preferential Examination System has been
degenerated.
Thus, KIPO has made the requirements for the preferential examination more stringent. The new
requirements are as follows:
(1) When requesting a preferential examination, an applicant should search for the prior arts pertaining to the application and submit the search report to KIPO. But, if the preferential examination request is based on the Patent Prosecution Highway (PPH)1) or prior-art search report by a certified search organization,
the submission of the search report is unnecessary.
(2) When requesting a preferential examination for the reason that an applicant is currently or planning to
utilize the claimed invention, the applicant should submit a document specifically proving the fact that the
claimed invention is now being used or under preparation for use.
(3) When the government-certified New Technology Based Firm, Technology Innovation Company or
Specialized Parts & Materials Company requests a preferential examination, it should show that a claimed
invention relates to the certified business and submit relevant documents proving such an assertion.
The updated Preferential Examination System applies to requests for preferential examination as of
September 1, 2009.
1) The PPH is an agreement between USPTO, JPO and KIPO for providing accelerated patent prosecution
procedures by sharing information. An applicant who wants to request a preferential examination according
to PPH should submit the required documents such as 'copies of all claims determined to be allowable',
'copies of all office actions', 'prior art referenced in the office actions' from the other patent office and
'a table list including explanation of the corresponding claims.'
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