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October 2021
October 2021Revision of Patent Act, Trademark Act, and Design Protection Act
The bill for revision of the Patent Act, the Trademark Act, and the Design Protection Act passed the plenary session of the National Assembly on September 29, 2021.
The revised texts of the laws will be published sometime in October and will go into effect six months from the date of publication. The key points of the revision are as follows.
1. (Common Changes Applicable to All Three Acts) The period during which the decision of rejection can be appealed is extended from 30 days, currently in effect, to 3 months
The period during which the decision of rejection can be appealed is extended from 30 days (currently in effect) to 3 months. This is to provide an applicant with sufficient time to prepare for an appeal, taking into consideration that the period during which the decision of rejection can be appealed is 3 months in the US, Japan, and China.
2. (Common Changes Applicable to All Three Acts) Relaxation of Requirements for Restoration of Extinguished Rights
The current provisions in the Patent Act, the Trademark Act, and the Design Protection Act allow additional relaxation of procedure within 2 months of occurrence in case rights are extinguished for “no fault of the applicant for which the applicant is responsible” when rights have been extinguished due to expiration of time for submission of documents or payment of official fees, etc. However, in practice, no case was recognized as “no fault for which the applicant is responsible.”
In the revised laws, “no fault for which the applicant is responsible” has been changed to “reasonable cause.” For example, it is expected that, if the applicant were hospitalized for Covid 19 and could not comply with the procedure, the case would be acknowledged as a “reasonable case,” which would allow an application for restoration of extinguished rights to be accepted.
3. (Patent Act) Newly Established Route for Divisional Application after the Decision in an Appeal against the Decision of Rejection
It has been the case that the decision of rejection is rendered against the entirety of a patent application even in case where only parts of claims contained matters subject to rejection and the remainder of claims are allowable. Under the Patent Act currently in effect, there was no way to obtain patent even for parts of claims that have been determined to be allowable by the examiner in case the appeal is dismissed after the decision of rejection is appealed because it is impossible to submit an amendment or file a divisional application once appealed.
In the Revised Act, a new divisional application scheme has been introduced to enable filing of a divisional application by separating allowable claims even if the decision of rejection is maintained at the appeal (the decision to dismiss the appeal).
4. Introduction of Sua Sponte Review Process after the Decision of Allowance
A new provision has been established to allow for cancellation of the decision of allowance and a sua sponte review in case the examiner discovers a clear reason for refusal before registration of establishment of rights of trademark / design application for which the decision of allowance has been made. This is to prevent establishment of defective rights containing a cause for cancellation.
An identical clause was established for patent applications in 2016, but cases are scanty where a patent was been reviewed sua sponte after the decision of allowance.
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