Changes in Patent Act - South Korea
The Korean Patent Act which set stricter requirements on filing an application and preparing the specification, the applicant or inventor failed to comply with certain procedures and received no protection. The Revised Act which will come into force from July 1, 2007 eases some of these requirements to the conveniences of the applicant or inventor which will lead to a more efficient way of achieving the scope of protection that the applicant or inventor seeks. The main features of the revised Act are as follows:
1.Grace Period:- At present, a patent application must comprise a specification and claim when filed with the Korean Intellectual Property Office (KIPO). However, under the revised Act, patent claims may be filed separately after the initial patent filing for which KIPO is to provide a grace period within 18 months of its filing. However, this time limit can be shortened if requested for the examination of the patent claim is made as early as possible before the third-party file an examination request. The advantage under the revised Act is that the applicant can file a patent application as early as possible without committing to a particular set of claims for up to 18 months. The extra time allows the applicant to garner information necessary to draft optimum claims.
2. Description requirement:- According to the current Korean Patent Act, the specification must describe the object, constitution and effect of an invention such that those skilled in the art can easily practise the invention. However, this requirement is removed under the revised Act i.e. the specification merely has to be described in a clear and detailed manner h that those skilled in the art can easily practise the invention, and allows flexibility to prepare the specification in a variety of ways that it finds convenient or familiar.
3. Recitation of claims:- The present Act prescribes that the claims must recite only the elements indispensable for the constitution of the invention, failing compliance of the same may lead to the claims being rejected or invalidated. Under the revised Act, claims only the essential elements of the invention such as, physical structures, methods, functions, materials or combinations must be specified in the claims. Further, the elements should relate to the constitution of the invention.
4. Notice of Rejection:- The current Act prescribes that examiners may issue a Notice of Rejection for only some of the claims that are not considered. However, under the revised Act, examiners should not only issue a Notice of Rejection for all claims, but also specify the rejected claims and provide the specific rejection grounds for each rejected claim in the Notice.
5. Petition for correction:- Under the current Korean Act, there are only limited measures to amend the allowed patent application for which a patentee may file a correction action with the IPT(Intellectual Property Tribunal). However, if an invalidation action has been filed and is pending before the IPT, the patentee is not allowed to file an independent correction action. The time for the patentee to file the petition is restricted. Under the revised Act, a patentee may also file a new petition for correction when it becomes necessary to respond to the petitioner's new evidence. When the new petition is filed, the previous petition is deemed to be withdrawn.
6. Abandonment of the benefit of deadline:- The current Act allows time adjustments in the form of extensions after the prescribed deadline for filing a response to an office action, thus shortening the deadline is not allowed even if the applicants requests it. This caused inconvenience especially to the applicant who wanted an expedited examination. Under the revised Patent Act, the examiner can shorten the deadline if the applicant requests it. Ultimately, the examiner may decide to allow a patent application even before the prescribed deadline for responding to the office action.
7. Refund of official fees:- The fees previously paid under the current Act are not refunded even after the withdrawal or abandonment of a patent application and the request for examination. However, the revised Act allows a refund of official fees incurred in filing the application and request for examination, provided that the application is withdrawn or abandoned within one month from the filing date.
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