Executive Summary
A partial revision to the Patent Act of the Republic of Korea was enacted and went into effect on April 20, 2022. This partial revision if intended to help individual inventors as well as small and medium-sized enterprises (SMEs) more easily correct typical mistakes made by those who limited experience acquiring intellectual property rights. Accordingly, the partial revision to the Patent Act gives more opportunities to less experienced patent applicants to acquire intellectual property rights as a matter of public policy.
The following are highlights of the partial revision to the Patent Act.
1. The partial revision to the Patent Act expands the remedies available to patent applicants and holders of patent rights by relaxing the requirements for reviving abandoned patent applications and expired patents to a more reasonable standard. For example, if a patent application becomes abandoned or a patent expires due to a failure to submit documents or pay fees by the required deadline, then the new requirement under the partial revision to the Patent Act to revive the abandoned or expired rights is relaxed from the previous standard of “completely unavoidable reasons” to “the new more reasonable standard of justifiable reasons.”
2. The partial revision to the Patent Act minimize unnecessary administrative processing, such as previously having to petition to extend the deadline for filing an appeal or amending an appeal brief. The partial revision to the Patent Act now allows the patent applicant a longer period of time to file an appeal. The period for filing an appeal against a decision rejecting a patent application or requesting a reexamination has been extended from the previous 30 days to three months.
3. The partial revision to the Patent Act now prevents a divisional patent application from being rejected due to a mistake in an inadvertent omission of priority claims that were present in the parent patent application but inadvertently omitted in the divisional patent application. Under the partial revision to the Patent Act, priority claims that were present in the parent patent application are automatically acknowledged in the divisional patent application.
4. Previously, prior to the partial revision of the Patent Act, when a patent application was allowed, but not yet issued as a patent, it was not possible to make any changes in a claim for priority. Now, under the partial revision of the Patent Act, a priority claim can be changed or corrected after the patent application is allowed and before the corresponding patent issues. This new provision only applies to allowed patent applications that were filed less than one year from the date of correction or change of priority.
5. Previously, prior to the partial revision of the Patent Act, when an appeal of a rejection is pending, even if some of the patent claims are in condition to be issued as a patent right, the entire patent application remains rejected during the appeal process. In other words, no patent rights are granted even for the allowed claims that are not rejected or otherwise in dispute. Fortunately, under the partial revision of the Patent Act, in order to expand opportunities for applicants to acquire rights, a separate application system with only the allowed claims may be filed, even if the applicant loses the appeal on the rejected claims.