Korea Group Report for the Patent Committee By Sun-Young Kim The Korean Patent Law has been amended on January 2009 and will become enforceable on July 1, 2009. The amendment of the Patent Law may be summarized as follows: 1. EASE OF RESTRICTIONS ON THE AMENDMENT OF THE SPECIFICATION AND THE DRAWINGS Before the Korean Patent Law was changed in January 2009, an amendment filed in response to a final office action and an amendment filed within 30 days after filing an appeal against the examiner s final rejection were subject to the following restrictions, even if such amended claims reduced the scope of the claims: (1) The amendment must not substantially change the scope of the claims; and (2) The matters described in the claim(s) after an amendment must have been patentable when the patent application was filed. Accordingly, if an amendment added a matter described in the detailed description to the claims, such amendment may be rejected for changing the purpose and effect of the invention. Under the amended Korean Patent Law, the foregoing restrictions (1) and (2) were deleted. The permissible scope of amendments filed in response to a final office action and after filing an appeal against the examiner s final rejection would be as follows: (1) narrowing claims; 1
(2) correcting typographical errors; (3) clarifying ambiguous descriptions; or (4) amendment after a previous amendment that added a new matter, to revise the claims back to the state before the previous amendment that added a new matter, or such amendment made simultaneously with any one of the amendments mentioned in (1) to (3) above. Under the amended Korean Patent Law, amendments filed in response to a final rejection and after filing an appeal against the examiner s final rejection which reduce the scope of the claims by adding a matter in the detailed description to the claims would be allowed without limitation. Further, amendments which delete the new matter included through a prior amendment would be permitted although such amendment would increase the scope of the claims in form. Such rule will be applied to all amendments submitted on or after July 1, 2009. Accordingly, the foregoing rule will be applied to Korean patent applications and PCT international applications filed before July 1, 2009. However, as the re-examination system will be adopted through the amendment of the Korean Patent Law as described below, the specification and the drawings may not be amended for applications filed on or after July 1, 2009 at the stage of an appeal against the examiner s final rejection. 2. INTRODUCTION OF THE RE-EXAMINATION SYSTEM Before the Korean Patent Law was changed in January 2009, the applicants were required to file an appeal against the examiner s final rejection. Further, in order to have an application re-examined by the examiner, the applicant was required to submit an amendment after filing an appeal against the examiner s final rejection. Under the amended Korean Patent Law, the re-examination system was 2
adopted as a procedure for responding to final rejections. The applicant may choose to request re-examination or file an appeal against the final rejection. A request for re-examination should be filed 30 days after receiving the final rejection. The applicant must submit an amendment of the specification or the drawing(s) when filing a request for re-examination. The scope of such amendment would be limited to the following four cases, as we explained in Section 1 above. (1) narrowing claims; (2) correcting typographical errors; (3) clarifying ambiguous descriptions; or (4) amendment after a previous amendment that added a new matter, to revise the claims back to the state before the previous amendment that added a new matter, or such amendment made simultaneously with any one of the amendments mentioned in (1) to (3) above. If the examiner determines after re-examination that all of the reasons for the rejection have been overcome, the examiner will issue an official notice of allowance of a patent. However, if the examiner determines that there is still a reason for refusal to grant a patent, he will issue another final rejection. If the application is rejected after reexamination, the applicant will have no alternative but to file an appeal with the Intellectual Property Tribunal. The applicant would not be permitted to amend the specification and the drawings at such appeal stage. The foregoing rule will be applied to applications filed on or after July 1, 2009. Accordingly, requests for re-examinations may not be filed for Korean applications or PCT international applications filed before July 1, 2009. 3
3. EXPANSION OF THE OPPORTUNITY FOR FILING DIVISIONAL APPLICATIONS Before the Korean Patent Law was changed in January 2009, divisional applications could be filed only during the period for filing amendments. Accordingly, if an examiner re-examined the application after an amendment is submitted at the stage of appeal against the final rejection, divisional applications could not be filed even if the examiner maintained its final rejection. Under the amended Korean Patent Law, along with the adoption of the re-examination system, divisional applications may be filed (i) during the period for submitting amendments (i.e., the period for filing a response to an office action and the period for filing a request for re-examination); and (ii) the period for filing an appeal against the examiner s final rejection (i.e., within 30 days after receiving a written rejection, which may be extended by two months). Therefore, an applicant may file a divisional application after the examiner has issued another final rejection after re-examination. (Please see the diagram below.) [Prior Korean Patent Law] 4
[Amended Korean Patent Law] The foregoing rule will apply to applications filed on or after July 1, 2009. Accordingly, requests for re-examinations may not be filed for Korean applications or PCT international applications filed before July 1, 2009. 4. INTRODUCTION OF A SYSTEM FOR DISCRETIONARY AMENDMENT BY THE EXAMINER Under the previous examination practice in Korea, the examiners issued an office action even for minor typographical errors in the specification or the drawing(s) so that the applicant may amend the specification or the drawing(s). Under the amended Korean Patent Law, however, if an application may be allowed a patent but for certain minor typographical error(s) in the specification or the drawing(s), the examiner may amend the specification or the drawing(s) at his discretion and issue an official notice of allowance instead of issuing an office action. The foregoing rule will apply to applications for which a decision to grant a patent is rendered on or after July 1, 2009. The End 5