A.Under the recently revised IP system in Korea, it is acceptable to file both a patent application and a utility model application for a single invention. That is, there exists dual application for the
same invention.
Since it takes too long (more than 30 months from the filing date) to obtain a patent registration, you are recommended to employ the dual utility application system of KPA in order to obtain the exclusive right as early as possible, for instance, 6 months, as mentioned above. When you obtain a patent right later on, you can abandon the utility model right and switch to the patent right. Therefore, the system is advantageous for an applicant who needs an early enforcement of
his/her invention.
However, inventions for methods, processes and chemical compositions are not statutory subject
matters of the Korean Utility Model Act, and thus, not applicable for the system.
A.The dual application procedures are the following:
ⅰ) applications for patent and new utility model are done at the same time;
ⅱ) before the issuance of allowance for a patent application or within 30 days of final
rejection to a patent application, you may apply for a new utility model registration; and
ⅲ) apply for a patent within one year after the registration of a new utility model.
As mentioned above, the dual application system can be used to switch the utility model registration to the patent, or vice versa. Therefore, the previous application conversion system
has been abolished.
A.Basically, a voluntary amendment to the description or the drawings can be made before a certified copy of a decision to grant a patent is issued by the Examiner. Furthermore, an amendment to a patent application may be made within the scope of disclosures in the
specification, claims and drawings at the filing:
ⅰ) at the same time as the request for substantive examination is filed;
ⅱ) within the time limit designated for the submission of an argument in response to a notice
of the reasons for refusal ; and
ⅲ) within 30 days from the filing date of an appeal against a decision of final rejection.
A.Basically, an amendment to the application is significantly restricted. An amendment to a description or drawings should be within the scope of the features disclosed in the description or drawings originally attached to the application. In other words, additions, deletions and/or changes of subject matters in the specification as well as claims and drawings are allowed for amendments as long as those are within the scope of the specification which was disclosed at
the time of the filing.
The Examiner may reject a proposed amendment by decision because the amendment includes new matters or violates the above guidelines. In this case an appeal may not be made against a
decision to reject of the Examiner except for an appeal against the final rejection of the patent.
A.A patent application shall be laid open in the Patent Gazette when it is one and a half year after the filing date (if a priority claimed, after the earliest priority date). An applicant may request his application to be laid open earlier that the prescribed time schedule (one and a half year). If early laid-open is requested, the application will be laid open in the gazette approximately 3
months after the time of request.
If a third party infringes the pending application that has been laid open, the patent applicant may warn him in writing indicating a patent application for the invention has been filed. The applicant may demand the infringer who is commercially or industrially worked the filed invention, after warning him that the invention has been laid open, to pay the compensation in an amount equivalent to what the applicant would have normally received for working the invention from the date of the warning or the date on which the infringer knew that the patent application of the
invention had been laid open to the date on which the patent was registered.
A.Where an application is laid open, any person including you may furnish the Commissioner of KIPO with information and evidence that the invention concerned is not patentable under Article
62.
A.The Commissioner of KIPO may direct an examiner to examine the application in preference to
other cases if the former meets either of the following conditions:
ⅰ) where a person other than the applicant is considered to commercially and industrially
work the invention claimed in the pending patent application after the laying open of the
patent application; or
ⅱ) where urgent processing of the patent application is considered necessary as described by
Presidential Decree.
A.The following applications may be preferentially examined upon request:
ⅰ) applications which are laid open to the public and infringed by a third party; and
ⅱ) applications which relates to either of the following items:
a. national defense-related industry;
b. pollution control;
c. promotion for export;
d. the national or local government duties;
e. a venture business model according to Article 25 of the Venture Promotion Act;
f. new technology development project supported by the Government;
g. quality control project supported by the Government;
h. applications whose corresponding foreign application claiming the Korean priority was
filed before a foreign Patent Office;
i. inventions being already commercialized or about to be commercialized by the applicant
in Korea; and
j. inventions related to an on-line commercial trading (E-commerce).
A.Applicants should submit a request form with explanation about the necessity for preferential examination as well as the evidences. The KIPO will let the applicant informed of the decision. If the preferential examination is allowed, the examination will proceed within a couple of months thereafter.
A.An examiner who refuses a patent application under Article 62 shall notify the applicant of the reasons and the applicant an opportunity to submit a written statement of arguments within a designated period. The KIPO has set out "A guide for notification of reasons for refusal" where
the guide includes the following items:
ⅰ) during the examination, all the reasons for refusal should be screened, and sent out in
the first notification;
ⅱ) a 2nd notification for refusal may be issued only in a case that new reasons for refusal
are found due to revisions made by the application. For the same reason for refusal, no
duplicate notice should be sent out, and instead, a final rejection should be sent out to
the applicant;
ⅲ) if there are more than 2 claims, reasons for refusal should be stated separately to each of
the claims; and
ⅳ) the examiner may give some piece of advice on the way to cure for the reasons for
refusal.
Most of the patent examiners stick to the above-mentioned guide lines of the KIPO. However, some examiners are not generous enough to give the applicant a clue to resolve the reason for
his refusal.
