Lee International

The Korean Patent Act, the Trademark Act and the Design Protection Act all include provisions for restoration of lapsed rights.  An applicant may restore his or her rights in a patent, trademark or design that were lapsed or nullified due to unintentionally failing to meet a deadline if certain requirements are met.  This allows the proceeding to continue, or the extinguished rights to be restored to their original status.  As of April 20, 2022, the revised Acts have relaxed the requirements for the restoration of lapsed rights from “an unavoidable cause” to “a reasonable cause.” 

According to the revised Acts, a “reasonable cause” now refers to a reason for failing to comply with the prescribed time limit exercising ordinary care by the specific circumstances of the case.  It is evaluated comprehensively and specifically based on the individual case.  In this regard, the Korean Intellectual Property Office (KIPO) has provided guidelines for various situations and examples under the revised Acts.

Recently, Lee international has successfully restored a patent application lapsed due to failure to pay the issue fee by explaining that the failure was due to “a reasonable cause” under the revised Patent Act. 

In this case, a Russian company’s patent application was allowed in October 2021, and the issue fee was due 3 months from the date of the Notice of Allowance, i.e., by January 2022.  However, in December 2021, the applicant has received a notice from Russian banks stating they are unable to conduct overseas remittances, and was not able to open new accounts in other countries due to international economic sanctions against Russia.  It was only after the six-month grace period for the late payment of the issue fee had passed that the applicant was finally able to open a new foreign account in September 2022.  

The applicant contacted us to restore their patent rights.  Lee International filed a request for restoration arguing that the international economic sanctions preventing overseas remittances are “a reasonable cause” for failure to pay the issue fee as prescribed in the Patent Act, and paid the issue fee.  The KIPO accepted this request, and a patent was granted.