Procedure after Final Rejection Reflecting Revisions to Korean Patent Act
Jeongwoo Choi, GV IP Law Firm (Korea)
Under the revised Korean Patent Act promulgated on October 19, 2021, which became effective from April 20, 2022, an applicant who wishes to obtain a patent registration in Republic of Korea will be able to take advantage of more favorable opportunities after a final rejection.
First, a response period after the final rejection is now extended from 30 days to 3 months so that the applicant would have sufficient time to review and determine whether to file (a) a re-examination request with amendments thereto, or (b) an appeal to the Intellectual Property Trial and Appeal Board (IPTAB) instead. Accordingly, the response period for requesting a trial in Korea becomes in line with such comparable period in other major international jurisdictions such as the United States, Japan, and China. Considering that the rate of requesting a 30-day extension reaches 32% in 2020, it is expected that the extended request period will help reducing costs as well as the burden of working on such extension.
Second, a separate application has been newly introduced. According to the previous system, when a rejection decision is maintained through a trial against the decision of rejection, even if there may have been some claims that could be determined as patentable, the entire patent application was rejected and there was no chance to get a patent for the patentable claims. For this reason, applicants optionally filed a divisional application separately from the trial request in order not to lose the chance for obtaining the patentable claims. Over the past five years, the rate of rejecting only some claims among rejection decisions has been an average of 9.1%, and applicants had filed divisional applications in more than 40% of trial cases. Now, based on the revised system, after a rejection decision is made in IPTAB, the applicant can file a separate application with claims that have been determined as patentable. Therefore, applicants no longer have to file such a preliminary divisional application, and can reduce costs.
As far as a procedural aspect is concerned, a separate application can be filed after receiving a decision of the trial and before initiating an appeal to the court. However, it is not allowed to file a new divisional application, separate application, or modified application based on the separate application. Therefore, it is desirable for the applicant to understand the difference in each filing opportunity between a divisional application and a separate application.
Lastly, from June 30, 2022, fees related to the trial against the decision of rejection will be paid based on the number of claims that have been rejected rather than the number of all pending claims. Therefore, applicants will be able to pay lower fees based on the number of rejected claims as not all claims are rejected.
Overall, the recent revisions of the Korean Patent Law focus on interests of applicants, rather than simplification of administrative procedures. We hope that the revisions will provide patent filers with more and better opportunities to obtain patent rights in Korea.