APAA e-Newsletter (Issue No. 39, February 2024)

Decreasing of Subjects for Expedited Examination and Delay in Examination for Patent Applications in Korea

Jongsun Kim, KLP IP Firm (Korea)

According to the Patent Act of the Republic of Korea, the applicant should request substantive examination in a separate process from filing a patent application. Failure to file a Request for Examination of a patent application with the Korean Intellectual Property Office (KIPO) within three years from the filing date of the application, the designated period for such action, results in the patent application being deemed withdrawn.

In addition, the Patent Act also provides for Accelerated Examination procedures, which allow for the expedited examination of patent applications under certain conditions, for the sake of public interest or the rights of the applicant.

As one of the Accelerated Examination processes, the KIPO had shown a flexible way for Accelerated Examination that simply requires simultaneously conducting a prior art search with authorized institutes designated by the KIPO. In cases where Requests for Accelerated Examination were submitted to the KIPO while concurrently conducting a prior art search with the authorized institutes, it was allowed to proceed with the Accelerated Examination by paying additional fees, including an official fee and the cost of prior art search (approximately USD 450), without facing any special restrictions. Once accepted, the KIPO prioritized such requests over regular examination requests, with the aim of expediting processing. Consequently, applicants were able to receive an Office Action or a Decision to Grant a Patent within two to three months from the submission of the Request for Accelerated Examination.

However, the number of requests for Accelerated Examination, which was approximately 24,000 in 2012, surged to around 39,000 in 2022, leading to delays in the general examination timelines for patent applications. With the exception of certain technology fields, such as semiconductors, where the KIPO pursued expedited examination, the regular examination of patent applications had to experience more delays than in the past. Particularly in technology fields where Accelerated Examination was allowed, the backlog in regular examination proceedings brought more requests of Accelerated Examination.

In response, the KIPO tried to change the relevant internal regulations so that, in the case of Accelerated Examination requests that concurrently conduct a prior art search with authorized institutes, the degree of acceleration was relaxed so that the examination results could be issued within 9 months, distinguishing them from other Accelerated Examination requests. Despite these efforts, the backlog in examination was not addressed. Therefore, starting January 2024, the KIPO abolished this type of the Accelerated Examination. The accelerated examination involving a prior art search conducted by authorized institutes is no longer eligible in KIPO.

Although there is an expectation that the examination period will be slightly shortened in the future, it is still anticipated to receive an examination result in approximately 17 months in average after requesting examination, owing to the backlog of pending examination cases.

For patent applications requiring expedited examination results, it is highly recommended that applicants utilize Accelerated Examination under the Patent Prosecution Highway (PPH) or PCT-PPH program.