Amendments to the Patent Act, Trademark Act, and Design Protection Act to Remedy Mistakes of Applicants and Expand Opportunities to Acquire Intellectual Property Rights Passed the National Assembly Plenary Session
The Korean Intellectual Property Office (KIPO) announced on September 29 (Wednesday), 2021 that partial amendments to the Patent Act, Trademark Act, and Design Protection Act have passed* the National Assembly plenary session in order to actively remedy the mistakes of individuals and small and medium-sized enterprises (SMEs) with weak intellectual property rights backgrounds and to maximize the opportunity to obtain rights.
* The amendment is expected to be made public in October → It will be enforced 6 months from the publication date
First, the period for requesting a trial against a decision to reject has been extended from the current 30 days to 3 months in order to provide sufficient trial preparation time* and to minimize unnecessary extensions of due date** (common to Patents, Trademarks and Designs).
* Request period for a trial against a decision to reject a patent in major countries: 3 months (US/Japan/China), 30 days (Korea)
** Rate of extension of due date for requesting a trial (2020): 32.1% (643 cases/2,001 cases), extension cost: 20,000 won per time (240,000 won for more than 5 times)
In addition, in the case that a right has expired due to the elapsing of a period for submitting documents or paying a fee, etc., the requirements for recovering the right have been relaxed from ‘due to a cause not attributable to the applicant’ to ‘due to a reasonable cause’. For example, in the case of a sudden hospitalization due to COVID-19 and being unable to proceed with a procedure, such case will receive relief in the future.
Moreover, in the case that priority has been claimed in a parent application, the priority is automatically recognized when a divisional application is filed in relation to the parent application, thereby preventing an application from being rejected due to a mistake such as omission* of priority claim.
* The average number of patent applications that omit the priority claim when filing a divisional application is 137 cases (annual average from 2016 to 2020)
Currently, if a trial against a decision to reject is in progress, even if some of the inventions of a patent can be registered, the entire inventions of the patent are rejected and thus it is impossible to obtain a patent even if the patent includes claims that could be registered. However, in the afore-mentioned amendment, even if the decision to reject is maintained (rejection decision) in the trial, the separate application system which has been newly introduced separates only the claims that can be registered, thereby expanding the opportunity for the applicant to obtain the right.
Also, if an invention is improved according to market conditions even after a patent decision has been made, a domestic priority claim application can be filed by adding the improved invention.
If an examiner finds an obvious reason for rejection before the registration of a trademark or design registration application is established, the examiner can cancel the registration decision and allow a reexamination ex officio to prevent disputes by preventing in advance the occurrence of defective rights with grounds for invalidation.
In addition, in response to a decision to reject a design registration, an amendment has had to be submitted at the time of requesting a ‘reexamination’, but this will be extended to ‘within the request period for reexamination’.
[Source: KIPO]
<Summary of Amendments to the Patent Act, Trademark Act, and Design Protection Act>
1. Relief requirements for recovering an applicant's right
- Relief of rights by easing the requirement for cancellation of an invalidation decision and restoration of a trademark right from ‘due to a cause not attributable to the applicant’ to ‘due to a reasonable cause’
Ex) reasonable cause: hospitalization due to chronic illness, error in automatic payment of fees, etc.
2. Introduction of automatic recognition system for claiming priority for divisional applications (common to Patents, Trademarks and Designs)
- If there is a priority claim in a parent application, it is automatically recognized even in the case of a divisional application, preventing cases of rejection due to omission of priority claim
3. Extension of due date for requesting a trial against a decision of rejection, etc. (period for requesting for reexamination) (30 days → 3 months) (common to Patents, Trademarks and Designs)
- Extension of due date: To provide sufficient preparation time and minimize unnecessary extensions
- Expansion of subjects available for requesting reexamination of a patent: It is possible to request a reexamination for correcting a specification, etc. even after a decision of registration
4. Protection of non-exclusive license (right of use) of co-owners following a transfer of rights (common to Patents, Trademarks and Designs)
- In the case of a division request (auction) for a co-owner’s patent right, etc., a business in operation is protected by granting non-exclusive license (right of use) to the remaining co-owners whose shares have been lost.
- If a trademark is being used before the establishment of a right pledge, a non-exclusive license is granted to the trademark owner even if the trademark right is transferred by auction (already introduced for patents/designs)
5. Introduction of separate application system (Patents)
- Introduced a system in which only claims that have not been rejected from the application can be filed separately even after receiving a trial decision to reject (maintain the decision to reject)
6. Expansion of scope of domestic priority claim applications under the Patent Act (Patents)
- Even after a decision of registration is made, the scope of domestic priority claim applications is expanded so that an invention that has been improved or added to the relevant patent application can be newly filed and patented by claiming priority.
7. Ex officio reexamination after decision on trademark registration (Trademarks/ Designs)
- Ex officio reexamination (already introduced for patents) can be conducted if a clear reason for rejection is found before the registration fee is paid
8. Expansion of amendment opportunity in the case of requesting reexamination (Design)
- Expansion of amendment opportunity: The available period for filing an amendment to an application following a request for reexamination is extended to the period for requesting reexamination.
9. Extinction of design right following a corporate liquidation procedure (Designs)
- If registration transfer is not made by the date of registration of the finalization of liquidation of a corporation, it will be extinguished on the day following the registration date.
<Outline of Introduction of Separate Application System
among Amendments to the Patent Act>
1. (Background of Introduction) Opportunity expanded to obtain patents for patentable inventions
- Even if some claims are patentable*, if one of all claims was rejected (maintain the decision to reject) in the trial stage, the entire claims (invention) have been rejected
* Percentage of rejection decisions in which only some claims were rejected (average over 5 years): 9.1% (4,407 cases/48,232 cases)
- In order to overcome this limitation, an applicant additionally filed a divisional application at the time of requesting a trial against a decision of rejection, separately from the request for trial, for a significant number of cases*
* Utilization rate of filing a divisional application (1,561 cases/year, 2016-2020) at the time of requesting a trial against a rejection (3,821 cases/year, 2016-2020): 40.8%
⇒ It is possible to prevent abuse of divisional application filing at the same time as a trial, while also giving an applicant the opportunity to obtain a right even after the trial stage
2. (Outline of introduction of separate application) New introduction of terms and phrases for separate application due to a differences from divisional application in the subjects of division, period, and restrictions (requirements for parent application and derivative application)
- (Period) Division: In the process of examination; Separation: Only after the end of the trial and before the filing of a suit
- (Scope) Division: within the entire scope of the parent application; Separation: Claims that have not been rejected
- (Limitation) Prohibition of derivation due to deferment of claims, non-approval of foreign language applications, and new divisional or separation changes
<Comparison between divisional and separate applications>
<Status of operation of separate application-related systems in major countries>
