A.A divisional application for a patent application may be filed within the following time limits:
ⅰ) before a notification of reasons for refusal or an allowance for the registration;
ⅱ) at the same time as the request for substantive examination is filed;
ⅲ) within the time limit designated for submission of an argument in response to an office
action; and
ⅳ) within 30 days from the filing date of an appeal against a decision of final rejection.
A.After an allowance for registration is given by the examiner, amendment to the application is not allowed. When the registration of your patent is completed by the payment of the first three years' annuity, you (patentee) may amend the claims through the “trial for a correction” at Intellectual Property Tribunal (IPT). In the trial for a correction, however, a correction to the description or drawings must limited in scope to the subject matter disclosed in the description or drawings of the patented invention. No amendment to broaden and change the scope of claims
is allowed after an allowance of patent application.
A.The term of a patent right commences upon the registration of the patent and ends twenty years after the filing date of the patent application (international filing date for a PCT application). Therefore, the reference date is the registration date of a patent. However, since the KPA has been amended several times so far, the terms for the existing patents vary depending on its filing
date as follows:
ⅰ) if the application was filed before July 1, 1987, the term is 12 years from its publication
date for opposition or 20 years from the filing date, whichever is later. The reference date
for an annuity is the publication date;
ⅱ) if the application was filed on or after July 1, 1987 but before September 1, 1990, the
term is 15 years from the publication date for opposition or 20 years after the filing date,
whichever is later. The reference date for an annuity is the publication date;
ⅲ) if the application was filed on or after September 1, 1990 and before July 1, 1996, the
term is 20 years from the filing date, and the due date for patent annuity payment is
calculated based on the publication date for opposition; and
ⅳ) if the application was filed on or after September 1, 1996, the above current patent law
will apply.
A.Under the KPA, twice amounts of annuity may be paid to reinstate a patent within 6 months even after the lapse of due date for an annuity. This is so called "grace period of 6 months" based on
Article 5-bis of Paris Convention.
Even after the lapse of the 6 months' grace period, another 6 months' grace period may be given to reinstate a patent only if the failure of payment of an annuity is caused by a problem for which the patent owner is not responsible. In this case, twice amounts of annuity must be paid within 14 days from the date the problem is overcome. This provision is newly established in
Amendment of the KPA effective as of July 1, 2001.
A.Under the KPA, either an exclusive license or a non-exclusive license of a patent right can be granted to others and registered at KIPO. An exclusive license is established only by registering the license to the patent register of KIPO, in which case not even the patentee may exploit the patented invention - only the exclusive licensee may exploit unless a contrary remark is
contracted between the patentee and the licensee.
A non-exclusive license may be established by an agreement between the patentee and licensee,
and need not be necessarily registered to the patent register of KIPO.
A.No later than 3 months after publication of a patent registration by the commissioner of KIPO, anyone can file an opposition to the granting of a patent with reasons and supporting evidences. The opponent may supplement the grounds or evidences of a written opposition within 30 days
of the expiry of the period for an opposition.
When an opposition to the grant of a patent is filed, the presiding examiner from the group of 3 examiners to deal with the opposition should transmit a copy of the written opposition brief to
the patentee for a response within a designated period.
The patent owner may submit a written reply with/without an amendment to the claims. In case of an amendment attached, the amendment may not broaden or change the scope of claims as
mentioned in Question No. 32.
The group of 3 examiners examines the opposition brief and a reply from the patentee and makes a decision. The decision could be a cancellation of the patent if they find proper reasons for the opposition. The patent owner may file an appeal against the cancellation decision. Otherwise, the patent will be maintained. The opponent may not file an appeal against the decision to maintain the patent. Instead, the opponent may raise an invalidation trial on the
patent if he/she is an interested party to the patent.
A.When you received a decision to refuse or revoke a patent, you may request a trial at Industrial Property Tribunal (IPT) of KIPO within 30 day period immediately after the date on which the certified copy of the decision was received. The appeal may accompany an amendment to the claims. If an amendment is filed with the appeal, the examiner who has made the final rejection examines the application again, whose procedure is explained in Question No. 38 down below. When the rejection is made to a part of claims, the applicant may consider eliminating only the rejected claims from the application. The deleted claims may be filed as a divisional application
for further prosecution. Such process will guaranty a grant of patent for the allowed claims.
A.When a person who has received a ruling of refusal to grant a patent requests a trial at IPT and amends the description and/or the drawings attached to the application that is the subject of the request within 30 days of the request, the President of IPT shall notify the commissioner of KIPO before proceeding with trial. Where a notification is given to the KIPO, the commissioner of the KIPO shall order the examiner to reexamine the application that is the subject of the request.
A.Under the KPA, a trial at the IPT may be conducted through either a documentary examination or oral hearings. When a party makes a request for oral hearing, the IPT should take oral hearings except for the case when a decision on the trial could be sufficiently made only by a review of
submitted documents without oral hearings.
Under the Korean patent practices, trial examiners are usually reluctant to take oral hearings because they are not familiar with such procedures, and most of trials are completed through
review of documents submitted by each party.
A.No, I don’t think so. In the past when Korea was still a developing country, domestic industries used to receive more favorable treatment than foreigners. However, since Korea joined the Paris Convention in 1981, the KIPO and Korean courts act just like its counterparts in other advanced
countries.
In the recent years, there have been many litigation cases in which foreign patentee was protected against infringements. We are sure that you patent right can be safeguarded through
the IP system of Korea.
