The Korean National Assembly passed a revision bill to the Korean Patent Act (“KPA”) that will go into effect on April 20, 2022. The revision primarily pertains to measures designed to ease the prosecuting and acquiring of patents by way of, inter alia, introducing: extension of time to respond to a final rejection; relaxation of the requirement for reviving abandoned applications and patents; request for continued examination after a notice of allowance; and introduction of a split application, which is a unique application after an appeal against a final rejection is dismissed. The revision is applicable to applications pending as of April 20, 2022.

Extension of Time to Respond to Final Rejection from Thirty (30) Days to Three (3) Months

Under the current provisions of the KPA, applicants have thirty (30) days from the date of receipt of a final rejection before filing a request for continued examination (“RCE”) with amendment or filing an appeal to the IP Tribunal without amendment. Although it was possible to extend to a total of 60 days, the 30-day window had been criticized as being too short compared to the three (3) month period of other countries like the U.S., Japan and China.

To give applicants sufficient time to decide whether to file an RCE or an appeal, the revision extends the period for responding to a final rejection from thirty (30) days to three (3) months.

Relaxation of Requirement for Reviving Abandoned Applications and Patents

Under the current KPA, applications and patents are deemed abandoned, withdrawn or extinguished if applicants or patent holders fail to act within the time periods set forth in the relevant provisions of the KPA. If the failure is caused by reasons not attributable to the applicants or patent holders, such as an earthquake or other natural disasters, then the abandoned or extinguished applications or patents may be revived upon the request within two (2) months from the date after the reasons have subsided.

However, the high hurdle of showing the presence of such non-attributable causes have made the revival provisions practically useless, rendering the revival of abandoned or extinguished applications or patents virtually impracticable. The revision, therefore, lowers the bar from non-attributable causes to “reasonable causes,” making the revival provisions more invokable.

Request for Continued Examination after Notice of Allowance

Under the current KPA, once the notice of allowance is issued, the only option to amend the claims and/or specification is a trial for correction, which consumes time and cost. Therefore, there has been a strong demand for opportunities to amend the claims and/or specification in addition to the trial for correction.

In response to such demand, the revision to the KPA provides opportunities to amend the claims and/ or specification by allowing an applicant to file an RCE after receiving a notice of allowance. With such revision, the applicant may cure any errors in the claims not found or overlooked during prosecution.

Further, the applicant may proactively amend the claims to catch competitors’ possible infringing activities that are belatedly uncovered, e.g., after the notice of allowance has been issued.

Split Application

Under the current KPA, when an applicant receives a notice of final rejection that indicates some claims are allowable, the applicant has several options including: (1) filing an RCE with an amendment to the rejected claims; (2) filing an appeal (of course, without amendment); or (3) filing an appeal with a divisional application using the allowable claims.

If the applicant chooses option 2 mindful of additional cost for filing the divisional application, and, unfortunately, the result of the appeal is negative, then the application as a whole would be rejected despite some of the claims having been indicated as allowable. To obviate such forfeiture of the allowable claims that could have survived if the applicant had chosen option 3, the revision of the KPA introduces a unique application that may be termed as a “split” or “sheltered” application.

The sheltered application is unique in that: (1) it should contain only the claims the Examiner indicated as allowable in the final rejection; (2) the result of the appeal was negative, i.e., the appeal against the final rejection was dismissed; (3) the time window for filing the split application is within 30 days from the date of receipt of the IPTAB decision; and (4) the split application cannot be any basis for further subsequent split application(s) or divisional application(s).

Thanks to the newly introduced split application device, an applicant who has received a final rejection in which some claims were indicated as allowable may choose option 2 without taking the risk that all the claims, including the allowable claims, would be rejected as a whole.

From FIIRSTLAW IP

January 2022