From January 1, 2024, the Korean Intellectual Property Office (KIPO) ceased accepting expedited examination based on a prior art search conducted by a KIPO designated search institution for trademark applications as well as patent and design applications. While the Patent Prosecution Highway (PPH) remains an option to expedite patent examination, expedited examination based on alternative criteria, including use-based expedited examination, is still available for trademarks.
The decision to discontinue expedited examination based on a trademark search comes as a response to the significant rise in the trademark application filings in recent years and KIPO’s efforts to reduce the average first action pendency. Currently, trademark applications without expedited examination face an average first action pendency of approximately 16 months. The KIPO aims to shorten this pendency by eliminating expedited examination based on a trademark search.
According to statistics released by KIPO, expeditated examination based on a trademark search increased approximately 60 times to 14,827 cases in 2022, compared to 2019.
(Unit: Case)
Year | 2019 | 2020 | 2021 | 2022 |
Cases | 238 | 1,456 | 8,202 | 14,827 |
(Source: KIPO)
This increase has led to a backlog in trademark examinations without expedited examination based on a trademark search. To address this issue, KIPO has decided to discontinue expedited examination based on trademark searches, with the goal of reducing average first action pendency and resolving backlogs.
Nevertheless, expedited examination remains accessible under other criteria specified in the Trademark Enforcement Decree is still available, as follows:
- In case that the applicant is clearly using or preparing to use the applied trademark for all designated goods/services.
- In case that the applicant has issued warning letters against the use of the applied trademark to third parties.
- In case that the applicant has received warning letters from other applicants alleging the use of identical or similar trademarks for identical or similar goods/services.
- In case that the application is a basis for an international application under Article 167 of the Trademark Act, and the international registration date or subsequent designation date according to the Madrid Protocol has been registered in the International Register.
- In case that the application is a basis for a claim of priority under a treaty, and procedures of a trademark application based on claim of priority is pending by a foreign patent office.
If an applicant of a trademark application can satisfy any of the above criteria, they are eligible to request expedited examination and expect to receive a first action within 4-5 months. In particular, if a trademark filed with KIPO is in use or intended to be used in Korea, it is advisable to seek expedited examination on that basis.
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