Executive Summary
1. The main amendments of the Amended Patent Act that went into force on February 18, 2022.
(1) Reduction of the patent fees and charges, and strengthened of sanctions against those who illegally receive reductions.
In the Amended Patent Act, in order to alleviate the burden on small and medium sized enterprises (SMEs) suffering from national disasters such as COVID-19, the national disasters have been added to the reasons for reduction of patent fees and charges. Sanctions have been strengthened to twice the amount of any reduction or exemption received from those who illegally receive a reduction or exemption, and excluding them from future reductions or exemptions for a certain period of time.
(2) New article established for referring a case to arbitration by a presiding judge during appeal.
In the Amended Patent Act, regulations were introduced to resolve difficulties that small and medium sized enterprises face resulting from prolonged trials. When it is deemed to be necessary by the presiding judge, the presiding judge shall establish a grounds on which the trial procedure can be suspended with the consent of the parties, and the corresponding case referred to the board of arbitration for a decision. In addition, to ensure effectiveness of referring a case to arbitration, a newly established provision regarding sending records, regarding an appeal as being withdrawn when arbitration is completed and an exception for exporting documents is newly established.
(3) Provision renders ex officio amendments invalid.
In the Amended Patent Act, in order to prevent unintended rights of an applicant from occurring as a result of an examiner’s incorrect amendment ex officio, the scope of ex officio amendments are explicitly limited to the scope of the specification and drawings in the originally filed application, which is the same as amendments made by applicants. At the same time, with respect to an ex officio amendment made on a matter that is within the scope and is not obviously incorrect, the ex officio amendment shall be disregarded as having never been made.
2. Main amendments of the Amended Patent Act that went into force on April 20, 2022.
(1) Introduction of a separate application system.
In the previous application system, when a decision is appealed, even if a part of an invention is patentable, the entire patent is rejected, and therefore a patent for the patentable claims is not granted. However, under the new Amended Patent Act, in order to expand applicants’ opportunities to obtain rights, a system in which, even if a decision of rejection is maintained (a decision to dismiss) in an appeal, patentable claims are identified, and a new application including the allowed claims may be separately filed and prosecuted.
(2) Extension of the period of time for requesting re-examination and period of time for filing appeal to decision
In order to minimize unnecessary administrative processing, the period of time for filing an appeal to the decision and a period of time for filing a request for reexamination is extended from 30 days to 3 months. This provision avoids unnecessary administrative procedures, such as extending the period of time for a request or amending an appeal brief by providing an applicant with a sufficient period of time for requesting a trial after a decision to reject a patent application.