Lee International

Further to our newsletter in September 2021, the revised Korean Patent/Trademark/Design Acts including the following noteworthy changes will take effect on April 20, 2022.  
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A.  [Patent/Trademark/Design] The statutory period for appealing a Final Rejection is extended to three (3) months

Under the revised Acts, the statutory period for appealing a Final Rejection is extended from thirty (30) days to three (3) months from the date of receipt of the Final Rejection.  This revision will provide the applicants with the sufficient period for preparing and filing an appeal and minimize unnecessary time extensions.  (This revision is applicable to applications for which a Final Rejection is received on or after April 20, 2022.)

B.  [​Patent] The statutory period for requesting continued examination is extended 

Under the revised Patent Act, the statutory period for requesting continued examination in response to a Final Rejection is extended from thirty (30) days to three (3) months from the date of receipt of the Final Rejection.  In addition, continued examination may also be filed even after issuance of a Notice of Allowance but before payment of the issue fee.  With this revision, applicants may request continued examination to correct an error in the specification and the claims after a Notice of Allowance is issued.   (This revision is applicable to patent applications for which a Final Rejection or a Notice of Allowance is received on or after April 20, 2022.)  

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C.  [Patent] A split application is introduced 

Under the revised Patent Act, a split application is newly introduced to provide the applicants with an expanded opportunity to obtain protection for the patentable inventions after an unsuccessful appeal of a Final Rejection.  According to the newly introduced system, when the Intellectual Property Trial and Appeal Board (IPTAB) issues a decision dismissing an appeal against a Final Rejection denying patentability of some of the claims in a patent application, the claims that were not rejected in the Final Rejection can be separately filed as a split application within the time frame for appealing the IPTAB decision.  If, however, an Office Action is issued in the split application, the scope of allowable amendments will be limited and no other application (e.g., an additional split application or a divisional application) can be filed based on such split application.  (This revision is applicable to patent applications for which an appeal of a Final Rejection is filed on or after April 20, 2022.)  

D.  [Trademark/Design] Ex-officio re-examination procedure is introduced

Under the revised Acts, if the examiner identifies a definite basis for rejection after granting registration but before the trademark or design is registered (i.e., before issuance fee is paid), the decision of grant of registration can be withdrawn and the examiner may re-examine the application ex-officio.  By doing so, the examiner can prevent a trademark or design that has a ground for invalidation from being registered and avoid future disputes.  (This revision is applicable to trademark or design applications which are filed on or after April 20, 2022.)  
 

E.  [Design] The time period for submitting an amendment for continued examination is expanded 

Under the pre-revised Design Act, if an applicant wishes to file an amendment in response to a final refusal of a design application, the amendment should be filed “at the time of requesting continued examination.”  However, under the revised Act, it is possible to file an amendment “within the period for requesting continued examination,” thereby expanding the time period for submitting an amendment.  (This revision is also applicable to design applications, for which a final refusal is received before April 20, 2022 and the deadline for requesting continued examination is on or after April 20, 2022.)


The above revisions are expected to give applicants expanded opportunities for responding to a final rejection and to minimize unnecessary time extensions or precautionary actions.