Expansion of Request for Examination Fee Refunds
Depending on the Timing of Patent Application Withdrawal or Abandonment
The Korean Intellectual Property Office (KIPO) announced that an amendment to the Patent Act will come into effect from November 18, 2021 (Thursday) that refunds the request for examination fee for a patent application withdrawn or abandoned by an applicant, excluding examination services actually provided.
This amended law was implemented to provide active administrative services to applicants, and is intended to reduce the cost to applicants for applications that are not used in the field or that are difficult to register for a patent.
First, before an examiner notifies a reason for rejection, regardless of any prior art search conducted by KIPO, the applicant can receive a full refund of the request for examination fee (an average of approximately 450,000 won*) because no examination service has yet been provided.
* Amount of examination fee in the case that there is no reduction or exemption, based on an average of 10 claims per patent application
In addition, even if an examiner notifies a reason for rejection, 1/3* of the request for examination fee (an average of approximately 150,000 won) can be refunded if within the deadline for filing a response against a notice of preliminary rejection.
* Determined considering that the amount of examination services provided to this point, except for initiation of examination, is approximately 1/3
According to the amended law, it is anticipated that an applicant will be able to receive a notice of reason for rejection from the examiner first and withdraw or abandon early an application that is expected to be rejected, get a refund of some of the fees, improve the invention and then file a new patent application.
In the future, in the case of applications withdrawn or abandoned for a reason for rejection notified for the first time, under the amended law, it is expected that up to KRW 2 billion* of request for examination fees will be returned to applicants. From a policy perspective, KIPO will be able to concentrate its examination capacity on new applications by inducing withdrawal and abandonment of unnecessary applications.
* 13,426 cases(rejected cases due to applicant’s non-response in 2020)☓150,000 won = 2.014 billion won
<Changes in Scope of Refund of Request for Examination Fee Before and After Amendment of Patent Act>
In addition, this amended law also includes a regulation* that considers an ex officio amendment invalid if an examiner's ex officio amendment is incorrect.
* In the stage of patent trial or infringement litigation, it can be judged that there was no ex officio amendment from the beginning.