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Presented by Hyeon-Seog Cho,Ph.D. - Senior Partner/Patent Attorney
Jiwu Int'l Patent & Law Firm
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A. Request for Examination |
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1. General Aspects
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Request for Examination
A request for examination must be filed within five years (or three years in case of a utility model application) from the Korean filing date (or from the international filing date for a PCT application), otherwise the patent application concerned shall be deemed to have been irretrievably withdrawn.
It is to be noted that when filing the request for examination the applicant should contemplate the number of claims to be presented in the application, since the expense not only for filing the request for examination, but also for paying the patent annuities after being granted a patent, increases as the number of claims remaining in the application increases.
It is also to be noted that an applicant should determine the appropriate time to file the request for examination, since the term of the patent right shall be 20 years (15 years for a utility model application) from the Korean filing date, and the examination procedure is first initiated after about two to three years from the date of filing the request for examination.
With respect to a divisional application, or an application converted from a utility model application or a design application, a request for examination must be made within a non-extendible period of thirty (30) days from the date on which such application has been filed, even after the said period of five (or three) years has expired.
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2. The Order of Examination
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The examination of patent applications will be carried out in the order of receipt of the requests for examination. However, due to a backlog in examinations, even when such examination requests are filed upon filing the application, examination will not take place for at least about two to three years after the filing date of such application.
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3. Amendments to be filed with the Request for Examination
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The applicant can change the specification of his application by filing an amendment concurrently with the request for examination. Such an amendment can be filed (a) when the request for examination is filed by the applicant, or (b) within a three-month response term given to the applicant if the request for examination is filed by a third party. In such a situation, it is advantageous to authorize the request in the name of a person other than the applicant since the applicant then has a three-month response term, from the date of the official notification indicating that a request for examination has been filed by the third party, to file the amendment. |
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B. Laying-open of Applications |
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The patent application shall be laid open in the Patent Gazette at the expiration of one year and six months from the priority date of the application, or from the actual filing date in Korea if no priority date is claimed, regardless of the examination proceedings of the application.
Under the old law, the laying-open of a patent application was possible only after eighteen months have passed from either the filing date or priority date, whichever was earlier. However, from July 1, 1996 an application can be laid open in the Gazette at any time prior to 18 months from the effective filing date, if the applicant so desires. The intent of this system is to provide the patent applicant with provisional protection during early stages of the application by enabling the applicant to claim retroactive compensation for damage which occurred from the date of laying-open of the application in the Gazette, in the event that the application is granted publication.
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C. Preferential Examination |
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The applicant can request "preferential examination", when the Commissioner of KIPO recognizes that a person, other than the applicant, is commercially and industrially working the invention claimed in a pending application after the application has been laid open or when an invention claimed in an application falls under the following categories:
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1. Application in the field of defense
2. Application useful for the prevention of environmental pollution;
3. Application directly related to the encouragement and improvement of export; and
4. Application related to official services of the central or local government or government-funded research institutes. The preferential examination can also be requested with respect to utility model applications and design applications.
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1. General Aspects
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It is possible that the invention for which the applicant seeks protection will vary from the one originally filed, due to continuing development of the invention, or as a result of research of competitors' development activities and/or market demands. In such cases, the applicant can change any part of the application including the specification, claims, and drawings. However, the periods for filing amendments are limited under the Korean Patent Law.
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2. Possible Periods for filing Amendments
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a) Voluntary Amendments
A voluntary amendment can be filed any time within fifteen months from the effective filing
date.?The first publication Gazette is issued eighteen months after the effective filing date,
and the?fifteen-month time limit on voluntary amendments is set to give KIPO the time it
needs to?include such amendments in the publication Gazette.
b) With the Request for Examination
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After fifteen months have passed from the effective filing date, an amendment can be filed together with a request for examination (or within three months after receiving a Notice from KIPO that the Request for Examination was filed by a third party).
Filing of an amendment together with the Request for Examination is allowed so as to provide the applicant with an opportunity to make the changes required to obtain a patent right which may differ from that originally sought.
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c) In Response to Official Actions
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When an Official Action is received, the applicant is again presented with an opportunity to file an amendment in response. The term for response for a foreign applicant is normally two months, which can be extended up to two times for one month each time.
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e) In Response to Final Rejection
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If an application is finally rejected, the applicant can file an appeal within thirty days from the receipt of the Final Rejection. Within thirty days from the filing date of the appeal, an amendment can be filed. At that time, the applicant is presented with an opportunity to make further amendments, in view of the results of the examination. If such an amendment is filed, the rejected application is returned to the Examiner for reexamination of the amended application. If the Examiner considers that the application is then allowable, the Examiner will overturn the rejection and render the grant decision for the patent.
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3. Extent of Amendments
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Before the transmittal of a certified copy of the grant decision, both the detailed description and the claims can be amended to any extent within the scope of the original disclosure of the application. In other words, any kind of amendment can be made to the claims or disclosure, including the drawings, so long as it does not introduce new matter. The amendment can be made within the scope of what was originally disclosed in the application and what is obvious or self-evident from the original disclosure. If the amendment goes beyond this scope, it will be regarded as introducing new matter, i.e. it shall be deemed to change the subject matter of the specification. |
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