A.The most frequent reason for rejection would be the lack of inventiveness according to Article 29 and/or the failure to the requirement of the descriptiveness of the specification, drawings, and appended claims in accordance with Article 42. To overcome the reason for rejection, you may sometimes narrow the claims in order to distinguish the invention from the cited references. In order to respond to the office action, it is highly recommended to consult the experienced patent attorneys. It is usual and highly recommendable to submit an amendment to the specification and narrowly revised claims rather than simply submitting an argument about the distinctiveness
of the invention, which may give rise to a adverse effect.
The time limit for the response to the office action is 2 month from the date of notification, which
may be extended with office fee upon the request of the applicant.
A.In accordance with the provisions of the KPA, each of claims must:
ⅰ) be supported by a detailed explanation of the invention;
ⅱ) describe the invention clearly and concisely; and
ⅲ) define only the features indispensable for the construction of the invention.
The “guideline for examiners” at KIPO provides that a claim including such terms as "preferably",
"specially", "and/or", "proper", "high", "about", "substantially", "most of" does not meet the requirement of ⅱ). However, such terms may be exceptionally allowed in case it is difficult to define the invention clearly and concisely without using such term, and the meaning of the terms
can be clearly understood from the detailed disclosure of the invention.
A.Yes. Generally speaking, functional claims are allowed unless they are classified in the cases
described below, i.e. ⅰ) and ⅱ) according to Korean patent practice.
In accordance with the provisions of the KPA, each of claims must include only matters which are requisite for the construction of the invention. According to the Examination Guideline the
followings are in contravention of the provisions:
ⅰ) a claim in which only purpose, function, and usefulness of the invention are mentioned,
omitting its construction; and
ⅱ) a claims which includes only one technical means and the means is explained functionally
A.In accordance with the Korean practice, an Examiner may make such a request. The ground of the request is that he thinks that it is difficult to figure out the subject matter of the claim without reference numerals and that the claim is not described clearly. However, it is not compulsory to put reference numerals to the claims in Korea. Some applicants concern if the claims with reference numerals may be narrowly interpreted because the wordings with reference numerals cover only the specific embodiment stated in the drawings. Do not worry about it! There are no precedents for the claim interpretation for such a case.
A.A precedent of the Supreme Court cited for the argument of the inventiveness is as follows:
"There is no solid standard for the judge of the inventiveness. However, the inventiveness is acknowledged if the invention exceeds the overall usefulness and effects of the prior arts because the Patent Act is to promote the innovation of technology. For an invention combining prior arts, its inventiveness can be acknowledged only (i) when the combination cannot be easily made by an ordinary skilled person in the art, or (ii) the effect of the invention is superior to prior
arts." (Supreme Court Case Nos. 89Hu1346 issued on Aug. 28, 1990)
As can be seen from the precedent, the evaluation of the inventiveness is strongly effect-oriented in Korea. For a case wherein more than one prior arts are cited by an examiner in the office action, the decision of the inventiveness should be based on whether the claimed invention has
new advantages and exceeds a mere addition of the advantage disclosed in each reference.
The usefulness and effect of the invention should be explicitly disclosed in the patent application. However, even if not clearly disclosed, the usefulness and effect of the invention may be argued by submitting experimental data for the invention to the examiner. In addition, the effect can be
stressed if it can be realized by an ordinary person skilled in the art without an explicit disclosure.
A.According to the Examination Guideline of KIPO:
ⅰ) if the prior art has contents contrary to ones which would lead to the invention, it can not
be used as a citation in the office action even if the claimed construction of the invention
is similar to the disclosure of prior art;
ⅱ) when more than one prior art is cited, the combination of the cited references must be
easily conceivable on the priority date to an ordinary person skilled in the arts;
ⅲ) a prior art falling in a different field from the claimed invention may be cited. However,
careful consideration should be made in regard to relevance, problem to be solved and
functions between the two fields;
ⅳ) The prior art mentioned in the specification of the application may be cited to reject the
claimed invention if the art is the one published prior to the priority date; and
ⅴ) Even though the prior art is incomplete as an invention, it can be cited as a reference.
A.In this regard, the Supreme Court has clearly pointed out that the standard of the “inventiveness” as well as the law for the patent and utility model in USA should be considered to be different from those of our country, even if the subject matter as this invention was allowed
to be registered as a patent in USA or other foreign countries.
However, under the Korean patent practice, the fact that the corresponding patents were registered in foreign countries could cast a favorable effect on the examination and it is recommended to submit a copy of such a foreign registration to the KIPO. However, if you want to pursue a claim broader than the one issued in other countries, such submission can give rise
to a negative effect.
A.The Supreme Court's precedent reads:
"Commercial success can be considered positively to acknowledge the inventiveness if the applicant proves that the success is due to the invention, not by other factors like marketing or advertising."
A.Yes. An interview with an examiner can be utilized for the following purposes:
ⅰ) in order to clarify the reason for refusal;
ⅱ) to understand how much the claims should be narrowed in order to be acceptable with
the examiner before submitting an argument and amendment in response to an
outstanding office action; and
ⅲ) to convince the examiner of the distinctiveness and features of the invention from the
references in an oral manner.
Telephone conference with an examiner is also possible.
A.Section 45 of the KPA provides "As for patent application, one application shall include only one invention. However, for a single group of inventions which forms one integrated invention
concept, it may be considered as one application."
Section 6 of Enforcement Decree of the KPA defines one application allowable for a group of
inventions as follows:
ⅰ) application which includes one independent claim regarding an article or a method; and
ⅱ) in case an application includes one independent claim regarding an article, any or all of
the following claims may be added to the application:
a. one independent claim regarding a method of producing the article;
b. one independent claim regarding a use of the article;
c. one independent claim regarding a method of handling the article;
d. one independent claim regarding a machinery, instrument or equipment for producing
e. one independent claim regarding an article for using its characteristics of the article;
f. one independent claim regarding an article for dealing with the article.
ⅲ) in case an application includes one independent claim regarding a method, one
independent claim regarding machinery, instruments or equipment to be used directly for
execution of the method may be added to the application: and
ⅳ) in case of the above ⅰ), ⅱ) and ⅲ), if only one independent claim cannot cover the
inventions, 2 or more independent claims may be added to the application only when the
claims fall to a group of inventions which forms one integrated invention concept.