The Korean Intellectual Property Office (KIPO) has recently enacted amendments to the Regulations on the Handling of Examination Affairs for Patents and Utility Models (hereinafter referred to as the “Regulations”). These amendments pertain specifically to the order of examination and the deadlines for the commencement of examination.

Firstly, KIPO has revised the provisions concerning the order of examination for divisional applications. Historically, the previous version of the Regulations provided that “applications shall be examined in the order of their examination requests,” with an exception stating that “where an application is lawfully divided and an examination request is filed, the divisional application shall be examined based on the examination request date of the original application.” Consequently, divisional applications were prioritized according to the examination request date of the parent application, rather than that of the divisional application itself. This practice led to a scenario wherein, despite another regular application having a prior examination request, the divisional application would take precedence if the examination request date for the parent application preceded that of the regular application.

For illustration, if a parent application (A) was filed with an examination request on January 1, 2021, and a regular application (B) was filed and requested examination on January 1, 2022, then under the previous Regulations, should a divisional application (A’) be filed from A on January 1, 2023, with a concurrent examination request, the examination of A’ would be expedited ahead of B due to the examination request date of A.

This practice led to significant challenges, as the increasing number of divisional applications examined prior to regular applications resulted in considerable delays and backlogs in the examination of regular applications. In response, KIPO has amended the Regulations, effective January 1, 2025, to eliminate the aforementioned exception for divisional applications. As a result, future examinations of divisional applications will occur in accordance with their own examination request dates, independent of their parent application. Consequently, applicants seeking to expedite the securing of rights for their divisional applications are strongly encouraged to proactively file a divisional application during the first Office Action stage, as this may enhance their chances of a timely examination outcome.

Additionally, KIPO has revised the deadlines associated with the commencement of examination for applications filed under the Patent Prosecution Highway (PPH) program (hereinafter referred to as “PPH applications”). Previously, the commencement deadline for PPH applications was set as the last day of the month in which four months had elapsed from the date of the PPH decision. Under the new Regulations, effective January 1, 2025, this deadline has been shortened to the last day of the month following three months from the PPH decision date. As such, PPH applications are anticipated to be examined more swiftly than before.

In conclusion, these recent amendments are expected to lead to prolonged examination periods for divisional applications, while expediting the process for PPH applications. Notably, even if the examinations of divisional applications experiences delays under the revised Regulations, applicants whose applications have been deemed patentable in foreign jurisdictions recognized as PPH partner countries by the KIPO Commissioner can still benefit from the expedited PPH examination system, which now features shortened commencement deadlines, thereby facilitating prompt patent grants comparable to previous practice.