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Revised Enforcement Decree of the Patent Act – Amendment of the provision regarding period of time of delay caused by applicant
Under the current Enforcement Decree of the Patent Act, the period of time (a period of time of delay attributable to an applicant) that is excluded when an extension of the term of a patent right or a utility model right attributable to a delay in registration is requested is narrowly defined in other major countries. The current period of time of delay attributable to an applicant defined in those countries is as shown below.
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Korea |
USA |
Japan |
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(Request for reexamination) Only a period of time until the date on which reexamination is requested after a decision of rejection is rendered is excluded. |
(Request for continued examination) The full period of time from the date on which a request for continued examination is made to the date on which a decision to grant a patent is rendered is excluded. |
(Reexamination before a trial) The full period of time from the date on which the decision of rejection is issued to the date on which the decision to grant a patent according to reexamination before a trial is issued is excluded. |
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(Delay submitting examination documents) Only a period of time for amendment according to an order to make an amendment is excluded. |
(Delay submitting examination documents) A period of time from the date exceeding 8 months from the filing date to the date on which documents are submitted is excluded. |
(Delay submitting examination documents) Only a period of time for amendment according to an order to make an amendment is excluded. |
Since the system of extension of duration of a right according to delayed registration similar to the US system was introduced with the signing of the FTA between Korea and the US, “the period of time of delay attributable to an applicant” that is excluded when the duration of a right is extended under the revised provisions compared with the current provisions is expanded taking into account equity with the US. In order to prevent delayed registration in advance, the applicant as well as the KIPO should exert its best endeavor, and thus the period of time of delay for examination resulting from the applicant’s failure to engage in reasonable efforts is excluded. The main revision details are as shown below.
- A period of time from the date on which the certified copy of the decision of rejection is served to the date of determination of whether a patent is granted or not shall be calculated as the period of time of delay attributable to an applicant.
- In the event that documents required for examination are submitted 8 months after the date on which a request for examination is filed, the excess period of time shall be calculated as the period of time of delay attributable to an applicant.
- When an incorrect translation of an application filed in a foreign language is corrected, a period of time from the date following the passing of 8 months after filing of a request for examination to the date on which a final correction of the incorrect translation is submitted shall be defined as the period of time of delay attributable to an applicant.
With these revisions to the provisions regarding the period of time of delay attributable to an applicant, the period of time that is excluded from the term of a patent right is adjusted to be similar to that of the other party of the Agreement, the US, which will enhance the equity between the patent systems of the two countries. The revisions will come into force 3 months after proclamation.