Amendments to the Korean Patent Act for Implementation

On March 19, 2015, a bill containing several important amendments to the Korean Patent Act was announced prior to its legislation.  This bill for amendments to the Korean Patent Act will go through the public hearing, and then will be submitted to the Korean National Assembly at the end of June 2015.  Implementation of this bill is expected in 2016 or 2017.  Of the changes made in this bill for amendments, the more notable ones are as follows: (1) a shortened period of filing a Request for Examination; and (2) a newly enacted provision regarding a Request for Cancellation of the Registered Patent which can be filed by public.  More detailed information for each of the primary changes made in this bill is explained below.

1. Shortened period of filing a Request for Examination 

A period of filing a Request for Examination is shortened from 5 years to 3 years, from the filing date (in case of PCT applications, from the international filing date) of the patent application.  This shortened period is intended to ease the third party’s difficulties in monitoring of the rights related to the pending application.  This amendment is also in accord with the recent trends in many developed countries (i.e., the United States: examination is performed in the order of the filing date; EPO: 6 months from publication of the search report; China: 3 years from the priority date; and Japan: 3 years from the filing date).      

2. Ex Officio Re-examination (New)

If the Examiner finds any new and obvious grounds for rejection after issuance of Notice of Allowance and before payment of the registration fees, he/she can withdraw the decision of allowance and open an ex-officio re-examination. 

3. Request for Cancellation of the Registered Patent (New)

A provision for cancellation proceedings (ex parte), apart from invalidation proceedings (inter parte) existing under the current Korean Patent Act, for the registered patents is newly enacted.  In other words, anyone who wants to cancel the registered patent can submit the grounds (i.e., detailed information for the prior art, etc.) for cancellation of the patent to the Korean Intellectual Property Trial and Appeal Board during a period starting from a date for establishment of patent rights and within 6 months from the announcement date of the patent registration.  Once such grounds for cancellation of the registered patent are filed to the Korean Intellectual Property Trial and Appeal Board, the Trial Examiner will re-examine the subject patent.  If the Trial Examiner determines that the patented claims lack novelty or inventive step upon re-examination of the patent, the patentee will be entitled to an opportunity to submit his/her arguments asserting patentability of the subject patent.  When filing such arguments, the patentee is also able to file an amendment to the claims with narrowed scope of the patent.  In addition, if the patentee appeals from the cancellation decision on the patent, a legal action against the Commissioner of the Korean Intellectual Property Office can be brought into the Korean Patent Court by the patentee.

4. Prior Notice of the Trial Decision on Invalidation of the Patent (New)

Prior to rendering its trial decision on invalidation of the registered patent, the Korean Intellectual Property Trial and Appeal Board should issue the patentee a Prior Notice of the Trial Decision on Invalidation of the Patent.  If the invalidation of the registered patent is likely according to the Notice, the patentee can try to find ways to avoid the actual invalidation of the patent by narrowing down the scope of the claims in the patent.  Enactment of the provisions requiring issuance of the Prior Notice of the Trial Decision on Invalidation of the Patent is intended to reduce the rate of patent invalidation by giving the patentee an opportunity to narrow down the scope of his/her own patent.