IP Report

Reinforced Examination Guidelines for Parameter Inventions

  • Writer: 특허법인아주
  • Date: 2021-06-18 17:19

Proposed Revision of Patent Examination Guidelines – Revision of examination guidelines for parameter inventions and accelerated examination

(1) Tightened examination guidelines for parameter inventions

In order to induce patent applications to fully disclose parameter inventions and claim appropriate scopes of rights, the Korean Intellectual Property Office (KIPO) has clarified the examination guidelines for the description requirements of parameter inventions and presented specific examples of non-compliance therewith, resulting in tightened examination of the description requirements. The major revisions are as follows.

Additional cases of deficiencies in the description of the invention

  •  When the definition and technical meaning of a parameter are not clearly described
  •  When the method for producing the subject matter qualified by a parameter is not described
  •  When examples and comparative examples by which the effect of a parameter can be verified are not described
  •  When there is no description of methods, conditions, or instruments for measuring variables related to a parameter

Additional cases of description deficiencies in the claims

When, although the claims limit a numerical range of a parameter, the description of the invention does not describe specific examples across the entire numerical range, and the effect cannot be recognized in a range other than the numerical range in which a better effect has been confirmed through the examples.

When the description of the invention only describes examples of compositions and processes that not only satisfy the characteristic values ​​of a parameter but also derive certain effects, while the claims describe a configuration that satisfies only the characteristic values ​​of the parameter


(2) Clarification of by whom an application should be practiced for it to be qualified for accelerated examination

With respect to ‘an application being practiced in business,’ which is currently qualified for accelerated examination, only when there is a license agreement between the licensee and the applicant, will the licensee also be recognized as the one practicing the application. In this regard, in the event that the applicant is the representative of the practicing company, it is unclear whether the practicing company will be regarded as the ‘practitioner.’ In consideration of this, the KIPO has revised the Accelerated Examination Guidelines such that submission of separate documents for proving the license agreement is not required if the applicant is the representative of the practicing company (licensee).