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REVISION OF THE KOREAN PATENT LAW

 

        The following is a brief summary of the significant parts of the revised Korean Patent Law, which came into effect as of July 1, 2001.  The revised law is applicable to the patent applications filed on or after July 1, 2001 unless indicated otherwise.

 

 

 1. Another ground of denying novelty of an invention [Article 29(1)(i) and (ii) of the revised law]

 

        The revised law added a new ground of denying novelty of an invention if the invention has become available to the public through electric communication circuits (e.g., Internet) designated by the Presidential Decree.  The purpose of adding this condition to the patent requirements is to provide a ground of rejecting patent applications that have been disclosed to the public through the Internet.

 

 

 2. Enhanced period for voluntary amendment [Article 47(1) of the revised law]

 

        The current law limits the period for voluntary amendment to a specification or drawings attached to a patent application to be within one year and three months from the application filing date (or from the priority date).  By contrast, the revised law extended the period to the date of receiving a notice of decision for patent (or a first preliminary notice of rejection).

 

 

  3. Restricted scope of amendment [Article 47(2) of the revised law]

 

        Article 48 of the old law provided that an addition of new matter to a specification or drawings of a patent application can be made unless the addition changes the scope of claims.  This provision is still effective for the patent applications filed prior to July 1, 2001.  However, the revised law abolished this provision so as not to allow an addition of new matter to the specification (detailed description of the invention) or drawings of a patent application.  Therefore, an amendment to the specification or drawings can be made only within the scope of an original patent application (in case of a PCT application, within the scope of original translation of the specification, claims or drawings of the PCT application).  Failure to meet the revised requirements constitutes a ground of rejecting a patent application, opposition to a patent, or invalidation of a patent.

 

 

 4. Changed manner of issuing office actions [Article 47(1)(i) and (ii) of the revised law]

 

Another significant change in the revised law regards the manner of issuing office actions against patent applications.  As under the conventional practice, a first preliminary notice of rejection is issued against a patent application where a ground of rejecting a patent application is found.  Under the revised law, however, a final preliminary notice of rejection is to be issued where any new matter has been added to a specification or drawings of a patent application submitted as an amendment in response to a first preliminary notice of rejection.

 

        If a new ground of rejection is found against an amended application, the KIPO newly issues a first preliminary notice of rejection once again.

 

 

  5. Restrictions to the allowable scope of amendments filed in response to the final preliminary notice of rejection or within 30 days after filing a trial against the final rejection [Article 47(3) of the revised law]

 

        Where an amendment is filed in response to a final preliminary notice of rejection or within thirty days after filing a trial against the final rejection, the old law did not limit the scope of amendment unless the amendment changes the subject matter.  However, the revised law limits the allowable scope of amendment to the following effects only:

 

        i) narrowing the scope of claims (including deletion of claims);

        ii) correcting erroneous descriptions; or

        iii) clarifying ambiguous descriptions that have been questioned by an examiner.

 

        As this provision is in sharp contrast to the old law, careful attention needs to be paid in actual practice.

 

 

  6. Dismissal of an amendment and a remedy therefor [Article 51(1)(iii) of the revised law]

 

        Where an amendment to a patent application filed in response to a preliminary notice of rejection changes the subject matter of the application, the amendment was dismissed under the old law, while the applicant was given a chance to file a trial against the dismissal.  Under the revised law, however, an amendment to a patent application is dismissed if the amendment contains new matter or the claims that are beyond the allowable scope.  No appeal against the dismissal is permitted under the revised law due to an abolishment of the pertinent system.  Instead, the applicant may deal with this issue in a trial against the final rejection of the application.

 

 

  7. Addition or correction of a priority claim(s) [Article 54(7) of the revised law]

 

        Whereas the old law did not allow an addition of a priority claim(s), the revised law does allow the same so long as it is made within one year and four months from the priority date.

 

 

  8. Extended period for opposition [Article 69(1) of the revised law]

 

        The old law provided that an opposition to a patent may be filed within three months from the date the patent is published.  However, the revised law extended the period of time to file an opposition to begin from the date the patent is registered until three months after the patent is published.

 

 

  9. Correction of a patent while a trial to invalidate a patent is pending [Article 133(2) of the revised law]

 

        Under the old law, a patentee was required to file a trial for correction of his/her patent if any correction was to be made for the patent while a trial to invalidate the patent was pending.  By contrast, the revised law allows a patentee to demand a correction of the patent, instead of filing a separate trial for that purpose, if any correction is to be made for the patent while a trial to invalidate the patent is pending.  The new provision is also applicable to the patents, for which the applications were filed prior to July 1, 2001.

 

 

  10. Reinstatement of a patent right nullified due to failure to pay a registration fee including annuities [Article 81(2) of the revised law]

 

        Where an applicant or a patentee has failed to pay a patent registration fee by the expiry date of the grace period of six months after lapse of the initial period for paying the registration fee due to a cause not attributable to the applicant or the patentee (e.g., natural disaster, etc. as provided under Article 81(1) of the law), the revised law allows the applicant or the patentee to pay the registration fee within fourteen days from the date when the cause was eliminated, unless six months have elapsed from the expiry date of the grace period.

 

        Once the registration fee of a patent is paid according to the above provision, the patent right is considered to have existed since the original expiry date of paying the registration fee.  However, the patentee is not entitled to exercise his/her patent right against a third partys working of the patent during the period between the expiry date of the grace period of paying the registration fee and the date when the registration fee (enforcement restriction period) was paid.  A non-exclusive license is granted to a person who has worked the invention in Korea in good faith during the above restrictive period.

 

        This provision is also applicable to the patents registered under the old law.  For instance, the revised provision is applicable to a patent, for which a registration fee is to be paid during the grace period falling on or after July 1, 2001.

 

 

  11. Disclaimer of partial claims when paying a registration fee after grant of a patent [Article 215-2]

 

        A new provision was established to the effect that an applicant may disclaim one or more claims of the patent application when paying a registration fee if more than one claim has been claimed in the application.  This provision is applicable to the patent applications, for which registration fees are to be paid on or after July 1, 2001.

 

 

  12. Abolishment of the system of appointing a patent administrator [Article 5 of the revised law]

 

        The conventional system of obligating appointment of a patent administrator was abolished as of July 1, 2001.  As a result, foreign patentees are not entitled to appoint their own patent administrators in Korea after July 1, 2001.  This means that, where an opposition to or a trial to invalidate a Korean patent has been filed by a third party after registration of the patent, the KIPO is supposed to deliver the related documents directly to the foreign patentee.  If a patent administrator has already been appointed for a patent, however, the documents related to an opposition to or a trial to invalidate the patent will be delivered to the appointed patent administrator.

 

 

 

 

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