Patent Office "Expanding Opportunities for Intellectual Property Rights Relief and Acquisition... Legal Amendments"

Provided by the Korean Intellectual Property Office

[Asia Economy (Daejeon) Reporter Jeong Il-woong] A legal foundation has been established to remedy mistakes made by individuals and small and medium-sized enterprises (SMEs) with relatively weak intellectual property rights bases and to expand opportunities for acquiring rights.

According to the Korean Intellectual Property Office (KIPO) on the 1st, partial amendments to the Patent Act, Trademark Act, and Design Protection Act containing such provisions passed the National Assembly plenary session the day before. The amendments will be promulgated this month and will be fully implemented six months later.

Once the amendments take effect, the period for filing an appeal against a rejection decision (rejection appeal trial) will be extended from 30 days to up to three months across the patent, trademark, and design protection law sectors. This will allow for securing preparation time for intellectual property applications and registrations before the trial. In other advanced patent countries such as the United States, China, and Japan, the filing period is already set at three months.

KIPO expects that the number of rejection appeal trials will also be minimized as the filing period is extended. As of last year, 643 cases had their periods extended through domestic patent rejection appeal trials, accounting for 32.1% of the total 2,001 claims, with costs incurred amounting to 20,000 KRW per case.

However, KIPO anticipates that with the significant extension of the filing period, unnecessary rejection appeal claims will decrease, thereby reducing the cost burden on patent applicants.

The amendments also broaden the scope of relief by relaxing the conditions for restoring rights lost due to the expiration of deadlines for document submission and fee payment from "unavoidable reasons" to "justifiable reasons." For example, if an intellectual property applicant is suddenly hospitalized due to personal reasons and cannot proceed with application or registration procedures, they will now have a chance to be remedied.

Additionally, when an intellectual property applicant who can claim priority based on an earlier application files a divisional application for the earlier application, priority will be automatically recognized, preventing rejection due to mistakes such as omission of priority claims. From 2016 to 2020, an average of 137 patent application rejections per year were due to omitted priority claims.

A schematic diagram comparing divisional applications (current) and separate applications (including the revised bill). Provided by the Korean Intellectual Property Office.

Furthermore, the amendments expand applicants' opportunities to acquire rights through the Patent Act and strengthen functions to prevent disputes by preemptively blocking weak rights through the Trademark Act and Design Act.

For example, under the previous Patent Act, even if some patent claims were registrable during an ongoing rejection appeal trial, the entire application was rejected, preventing the registrable claims from ultimately obtaining a patent. However, with the introduction of the new "divisional application system" through the amendments, even if the rejection decision is upheld (dismissal of the appeal), applicants will be able to separate and file only the registrable claims, thereby expanding their opportunities to acquire rights.

Also, under the Trademark and Design Acts, if an examiner finds clear grounds for rejection during the application or registration process of a trademark or design that has been decided for registration, the registration decision can be canceled and re-examined ex officio, thereby preemptively blocking the occurrence of weak rights with invalidity grounds and preventing potential disputes, KIPO explained.

KIPO Commissioner Kim Yong-rae said, "Despite the COVID-19 situation, intellectual property applications in Korea have increased significantly this year following last year. This is part of efforts to overcome current difficulties through intellectual property, and the amendments will serve as a substantial support for individuals and SMEs with relatively weak intellectual property bases."

Meanwhile, the number of domestic intellectual property applications, including patents, trademarks, and designs (as of every August), increased from 324,244 in 2019 to 342,003 in 2020 (up 5.5% year-on-year), and to 378,509 this year (up 11% year-on-year).

This content was produced with the assistance of AI translation services.