Revision of the Korean Patent Act and the Korean Utility Model Act (Enforcement as of July 1, 2009)

1. Relaxation of Requirements for Claim Amendment after Final Notice of Rejection Reason or final rejection, Giving More Flexibility to Applicant in Response to the Office Action
(1) An applicant may amend, broaden or add claim(s) in response to a first office action within the scope of the original disclosure. Under the current practice, if the examiner finds rejection reason(s) that is necessitated by applicant's amendment in response to a first office action, he/she issues Final Notice of Rejection Reason or Final Rejection (Final Office Action), while he/she may issue a second office action (non-final) if the examiner introduces a new ground of rejection that is not necessitated by applicant's amendment of the claims.
An applicant's response to the Final Notice of Rejection Reason or Final Rejection may include claim amendments that narrow the scope of the pending claim, but it must not substantially modify the scope of the pending claim.
Under the Patent Examination Guideline, not allowing any substantial modification is often very strictly interpreted to mean as not allowing an addition of elements to the pending claim. Such strict restriction on amendment has been facing complaints.
(2) The revised Patent Act allows an amendment if it narrows a claim when responding to a final notice of rejection reason or a final rejection regardless of whether the amendment is substantial modification of the claim, thereby giving more flexibility to an applicant in preparing a claim amendment compared to the current Patent Act.
(3) The provision will be applied to claim amendments filed after July 1, 2009.

2. Introduction of Request for Reexamination Procedure and Abolition of Pre-Appeal Stage Reexamination System
(1) Under the current Patent Act, a patent applicant who received a final rejection has no other option but to file an appeal if he/she wishes to contend the decision. If an amendment to the application is submitted along with filing a notice of appeal together with a payment of appeal fee, the examiner re-examines the application as to whether the amendment places the application in condition for allowance or not. Since more than 60% of cases on an appeal are allowed through this Pre-Appeal Stage's Re-examination procedure, there is a need for a more simple procedure for reexamination without filing an appeal.
(2) The revised Patent Act introduces a Reexamination Procedure which is separate from an appeal procedure. An applicant who receives a final rejection for the first time may choose between a reexamination and an appeal.
For requesting a reexamination, he/she must submit an amendment to the specification, claims and/or drawings. Then, the examiner reexamines the application and decides between allowance and refusal. An applicant who receives a final rejection for the second time as a result of the reexamination; however, may not request a reexamination and may only file an appeal.
An applicant who receives a final rejection may also file an appeal. In an appeal procedure, however, he may not submit an amendment; and the application is never reexamined by the examiner who issues the refusal decision.
(3) The provision will be applied to patent applications filed on or after July 1, 2009.

3. Time Period for Divisional Application
(1) In Korea, a divisional application is possible within the amendment period. Since an amendment is no longer possible when filing an appeal, the revised Patent Act places an exception to the possible period for a divisional application; and a divisional application may be filed within 30 days from receiving a Final Rejection.
(2) The provision will be applied to a divisional application based on a patent application filed on or after July 1, 2009.

4. Examiner's Correction to Specification, Claims, Drawings, and Abstract
(1) Under the current Patent Act, when there are errors, even if those are not substantive, the examiner must issue an office action and the applicant must submit an amendment to correct the errors.
(2) The revised Patent Act stipulates that if a specification, claims, drawings or abstract contain obvious errors and without the errors the application is in condition for allowance, the examiner may correct the errors. The examiner notifies the applicant of such correction along with a notice of allowance. The applicant may object to the Examiner's corrections if they are substantial.
(3) This provision will be applied to a patent application for which a notice of allowance is issued on or after July 1, 2009.

5. Selection of Korean Language as One of PCT International Publication Languages 
(1) As the WIPO adopted the Korean language as one of the PCT international publication languages in October 2007, provisions have been added to enable filing PCT applications in Korean.
(2) A PCT filing in Korean is possible as of January 1, 2009.

6. Revision of the Korean Utility Model Act
The Korean Utility Model Act also has been amended in accordance with the Patent Act Revision.