Amendments to the Korean Patent Act (Shortened Period of filing a Request for Examination)

Amendments to the Korean Patent Act have been passed by the Korean National Assembly on February 4, 2016, followed by the proclamation on February 29, 2016.  These amendments will come into effect from March 1, 2017.  Of the many changes made in these amendments, the more notable changes are introduced as follows:

1. Shortened Period for Filing a Request for Examination of the Patent Applications

Under the current Korean Patent Act, a Request for Examination shall be filed within five (5) years from the filing date (in case of the PCT application, from the international filing date).  However, in order to avoid any issues relating to delayed confirmation of the applicant’s rights to the patent application caused from the lengthy period of filing a Request for Examination, under the newly revised Korean Patent Act, such a period is shortened to three (3) years from the filing date.  This new provision applies to the patent applications filed on or after March 1, 2017, and the patent applications filed before March 1, 2017 are subject to the current regulation of five (5) years in filing a Request for Examination.

2. Ex Officio Re-examination (New)

Under the newly revised Korean Patent Act, if the Examiner finds any new and obvious grounds of rejection after issuance of Notice of Allowance, he/she can withdraw the decision of allowance and open an Ex-Officio Re-examination.  The newly enacted provision for the Ex Officio Re-examination applies to the patent applications allowed for registration after the effective date of enforcement of this provision.

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

Under the current Korean Patent Act, within three (3) months from the publication date of the patent registration, any party against such a registration can initiate an invalidation proceeding. After such a 3-month period, only an “interested party” to the subject patent registration can bring an invalidation proceeding.  Invalidation proceeding against the registered patent is an inter partes proceeding, wherein the burden of proof for the grounds of invalidation is on the party bringing such a proceeding. 

A provision enabling a Request for Cancellation of the Registered Patent is newly enacted as a simplified ex parte proceeding under the newly revised Korean Patent Act.  Thus, under this newly enacted provision, within six (6) months from the publication date of the patent registration, anyone can file a Request for Cancellation of the Registered Patent for the following reasons:

(i)            No industrial applicability;

(ii)           Lack of novelty and/or inventive step over the publication which had become available in public before the filing date of the subject patent application; and

(iii)          Against the first-to-file rule.

Note: A Request for Cancellation of the Registered Patent cannot be filed merely based upon the references cited by the Examiner in his/her rejection during the prosecution on the patent application for the subject patent.

Once a Request for Cancellation of the Registered Patent is filed to the Korean Intellectual Property Trial and Appeal Board (“KIPTAB”), any further procedure in this proceeding at the KIPTAB involves with the patentee only, and the initiating party filing such a request is not actually involved with the proceeding.  The newly enacted provision for the Request for Cancellation of the Registered Patent applies to the patent rights to the patents registered after the effective date of enforcement of this provision.