Lee International

On August 24, 2023, the Korean Intellectual Property Office (KIPO) announced a bill revising the Enforcement Decrees of the Korean Patent Act and the Korean Utility Model Act, with key revisions of (i) reducing options for requesting accelerated examination and (ii) expanding delays attributable to the applicant that are excluded from the calculation of patent term adjustment (PTA). 

Below is a summary of the key revisions. 

1. Reduced Options for Requesting Accelerated Examination

In Korea, accelerated examination can be requested for patent/utility model applications based on certain grounds, including PPH, practice of an invention by a third party or by the applicant, prior art search, etc.  Under the current Enforcement Decrees of the Patent/Utility Model Acts, it is possible to request accelerated examination by submitting the results of a prior art search conducted by a specialized institute designated by the KIPO.  According to the recent bill, accelerated examination cannot be requested based on the option of using prior art search results.  However, this revision is expected to have a limited impact on foreign applicants since accelerated examination can still be requested via the PPH.

2. Additional Applicant Delays for Exclusion from PTA

In Korea, if a patent is issued more than 4 years after the filing of the patent application or more than 3 years after a request for examination is filed, whichever is later, the patent is eligible for patent term adjustment (PTA) to compensate for KIPO-caused delays during prosecution.  As shown below, term for PTA is reduced by delays attributable to the applicant, which include the time period for responding to an office action, time extension requested by the applicant, etc.

[PTA] = [period from the extension base date to the patent registration date (marked in orange)] – [applicant delays (marked in green)]

According to the bill, the following two periods will be added as applicant delays.

a. In the case of requesting continued examination after the issuance of a Notice of Allowance, the period from the receipt of the Notice of Allowance until the issuance of a new Notice of Allowance

In Korea, it is possible to request continued examination within 3 months from the receipt of a Notice of Allowance but before the payment of the issue fee.  The results of continued examination are generally issued within 3 months from the date continued examination is requested.  According to the bill, PTA can be additionally reduced by up to approximately 6 months (period ⓐ in green below) as delay attributable to the applicant.

b. In the case of appealing a Final Rejection, the period from the receipt of the Final Rejection until the filing of a Notice of Appeal

In Korea, it is possible to appeal a Final Rejection within 3 months from the date the Final Rejection is received, and this deadline can be extended for up to 60 days.  According to the bill, PTA can be additionally reduced by up to approximately 5 months (period ⓑ in green below) as delay attributable to the applicant.

In view of the above, if an applicant anticipates filing an application for PTA after a patent is granted, it would be beneficial for the applicant to request continued examination or appeal a Final Rejection without delay to obtain the maximum PTA possible.

The revision is expected to take effect as of January 1, 2024 after public opinion gathering and legislative review.  We will keep monitoring the progress of the bill and update you on any developments.