Patent Examination Guidelines
July 2013
Korean Intellectual Property Office
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Contents
PART I ⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈ 3
PART II ⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈ 105
PART III ⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈ 196
PART IV ⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈ 309
PART V ⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈ 333
PART VI ⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈ 463
PART VII ⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈⵈ 527
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(Note) This English version of the Korean Intellectual Property Office’s Patent
Examination Guidelines is based on Korean Patent Examination Guidelines published in
July, 2013. If there is any inconsistency or ambiguity between the Korean version and
English version, the Korean version shall prevail.
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PART I. General Rules
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Chapter 1. Capacity
1. Relevant Provisions
Article 3 of the Patent Act (Capacity of Minors etc.) ① Minors, quasi-incompetents and
incompetents may not initiate a procedure for filing an application, requesting an
examination or any other patent-related procedure (referred to as "a patent-related
procedure") unless represented by a legal representative. However, this provision does not
apply where a minor or quasi-incompetent can perform a legal act independently.
② The legal representative referred to in paragraph ① may act without the consent of the
family council in any trial or retrial procedure initiated by another party.
③ Deleted
Article 4 of the Patent Act (Associations etc. Other than a Juristic person) A
representative or an administrator designated by an association or a foundation that is not a
juristic person may request an examination of a patent application, or appear as a plaintiff
or defendant in a trial or a retrial in the name of the association or foundation.
Article 5 of the Patent Act (Patent Administrator for Nonresidents) ① A person who
has neither a residential nor business address in the Republic of Korea (referred to as "a
nonresident") may not, except when the nonresident (or a representative of the nonresident
if a juristic person) is sojourning in the Republic of Korea, initiate any patent-related
procedure or appeal any decision taken by an administrative agency in accordance with this
Act or any decree under this Act, unless the person is represented by a representative
(referred to as "a patent administrator") who has a residential nor business address in the
Republic of Korea.
② A patent administrator shall, within the scope of powers conferred on the patent
administrator, represent the party involved in all procedures related to a patent and in any
appeal against a decision taken by an administrative agency in accordance with this Act or
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any decree under this Act.
③ Deleted.
④ Deleted.
Article 25 of the Patent Act (Capacity of Foreigners) Foreigners who have neither a
residential nor business address in the Republic of Korea are not entitled to enjoy patent
rights or other patent-related rights, except under any of the following circumstances:
(1) where their country allows nationals of the Republic of Korea to enjoy patent rights or
other patent-related rights under the same conditions as its own nationals;
(2) where their country allows nationals of the Republic of Korea to enjoy patent rights or
other patent-related rights under the same conditions as its own nationals when the
Republic of Korea allows their country's nationals to enjoy patent rights or other patent-
related rights; or
(3) where they may enjoy patent rights or other patent-related rights according to a treaty
or the equivalent of a treaty (referred to as "a treaty").
Article 26 of the Patent Act (Effects of a Treaty) Where a treaty contains a patent-related
provision that differs from this Act, the treaty prevails.
2. Patent-related procedures
(1) A patent-related procedure under the Patent Act, the Enforcement Decree of the Patent
Act and the Enforcement Rules of the Patent Act refers to the procedure for filing an
application, requesting an examination or any other patent-related procedure, as defined in
Article 3 of the Patent Act. The patent-related procedures are the procedures which are
carried out by an applicant, petitioner, requestor or another party (hereinafter referred to as
„an applicant, etc.‟) against the Commissioner of the Korean Intellectual Property Office, an
examiner, the President of the Intellectual Property Tribunal, an administrative patent judge,
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or a trial examiner (hereinafter, referred to as „the Commissioner of the Korean Intellectual
Property Office, etc.‟), including the procedures ①~③.
① Procedure for filing an application
Patent application, Divisional application, Converted application, Application filed by a
legitimate right holder, Application for registration of an extension of patent term, PCT
application, etc.
② Procedure for requesting an examination
Request for an examination, request for a reexamination, other requests for trial (including
request for trial filed by an examiner), request for technical evaluation, and request for retrial,
etc.
③ Other patent-related procedure
Procedures initiated by an applicant, etc. against the Commissioner of the Korean Intellectual
Property Office, etc. in conjunction with the abovementioned procedures ① and ②, and
other procedures such as request for accelerated examination and request for deferral of
examination
(2) A patent-related procedure excludes the procedure initiated by the Commissioner of the
Korean Intellectual Property Office, etc. against an applicant, etc. (notifications, requests, etc.),
the procedure of examination processing within the Korean Intellectual Property Office
(formality examination, classification, prior art search and substantive examination), the
procedure initiated by an applicant, etc. against a court (patent court), the procedure for an
administrative trial, ordinary complaints filed by the general public, the procedure (warning)
initiated by an applicant, etc. against a third party.
3. Incompetents
3.1 Purport of System
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The Civil Act defines a minor, a quasi-incompetent or an incompetent as a person without
capacity. For a person without legal capacity to perform a juristic action, obtaining the
consent of a legal representative is required. Based on the Civil Act, the Korean Patent Act
bans minors, quasi-incompetents or incompetents from initiating a patent-related procedure
unless a legal representative performs a juristic action on behalf of them, for the protection
of incompetents.
3.2 Capacity of Incompetent
(1) The term „an incompetent‟ used in the Patent Act is derived from the Civil Act. The term
includes ① a person under age of 20 (minor), ② a feeble-minded person or a spendthrift
who may bring poverty to himself or his family who is adjudicated quasi-incompetent by a
court (quasi-incompetent) and ③ a person in a habitual condition of mental unsoundness
who is adjudged incompetent by a court (incompetent).
(2) An incompetent can initiate a patent-related procedure only when represented by a legal
representative. However, Article 3(1) of the Patent Act stipulates that this provision does not
apply where a minor or quasi-incompetent can perform a juristic act independently. It
defines the case where a minor or quasi-incompetent makes an independent legal action
without representation of a legal representative.
The cases where an incompetent person can perform a legal action independently include
the act of merely acquiring rights or being relieved from obligations (Article 5(1) of the Civil
Act), the act of disposing of property permitted for disposal (Article 6 of the Civil Act), the
act of carrying on a special business permitted for operation (Article 8(1) of the Civil Act),
the act of agent (Article 117 of the Civil Act), the act of making will (Article 1062 of the Civil
Act), and the act done as a member with unlimited liability of a company (Article 7 of the
Commercial Act).
A possible act in conjunction with a patent-related procedure may include the act of a
specific business operation permitted by a legal representative and the act of a minor
regarded as a grown-up because of marriage even before the age of 20.
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(Note) A minor cannot initiate a patent-related procedure without the consent of a legal
representative, even through an agent designated for the minor.
3.3 Ratification of Procedure Initiated by Incompetent
Article 7bis of the Patent Act provides that patent-related procedures, initiated by a person
who lacks capacity, the power of legal representation or the authorization necessary to
initiate any such procedures, shall have effect retroactively to the time when such
procedures are performed if the procedures are ratifies by the party involved when he/she
has gained capacity to proceed. It means that procedures initiated by an incompetent
person or a person without authority of legal representation take effect retroactively from
the time of the initial act because of ratification by a legitimate party involved in a later time.
Where it is revealed during the formality examination procedure that a patent-related
procedure is initiated by a minor or other incompetents, an examiner shall order an
amendment within the designated period under Article 46 of the Patent Act in the name of
the Commissioner of the Korean Intellectual Property Office. Unless a party involved after
the amendment or a legal representative ratifies the procedure within the designated period,
the concerned patent-related procedure shall be invalidated.
(Note) An incompetent person shall initiate a patent-related procedure through a legal
representative even for any patent-related procedure which can be easily initiated by
anyone according to the provisions of the Patent Act, such as a request for an examination
and an act of providing information, etc.
4. Capacity of Association such as Juristic person
4.1 Capacity of Juristic Person
(1) A juristic person obtains rights and obligations granted based on the Act, independent
of its members. However, a juristic person cannot act as a natural person even though it can
become the subject of rights and obligations. Therefore, a juristic person designates a
particular organization (for example, the board of directors) and regards the acts of the
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organization as those of the juristic person.
Under the Patent Act, too, the scope of capacity of a juristic person is the same as that
under the Civil Act. Where a juristic person initiates a patent-related procedure, the name
and the business address of the juristic person shall be stated.
(2) Changing a juristic person to other types of business entity (from an incorporated
company to a corporation or from an unlimited partnership to a limited partnership, etc.)
does not mean to change the subject of substantive rights and obligations. Therefore, it
shall be deemed the change of name, other than the change of the holder.
In such a case, a written report of the change (correction) of applicant code information
(Annexed Form No.5) shall be submitted to change the type of business entity according
to Article 9(3) of the Enforcement Rules of the Patent Act.
(3) When it is decided to commence rehabilitation procedures under the Debtor
Rehabilitation and Bankruptcy Act, the authority to conduct the debtor‟s business and
manage and dispose of his/her assets shall be exclusively vested in a custodian. In a lawsuit
on the assets of the business, an administrator shall serve as a plaintiff or defendant (Case
No. 97 Hu 3371(Supreme Court, 26. January. 1999)).
4.2 Capacity of National or Local Government
(1) A nation shall serve as the subject of rights as a juristic person even though there are
no such provisions in the law. However, the legislative, judicial and administrative branches,
government-affiliated organizations, state-run research institutes, universities are not entitled
to be a juristic person. Therefore, they cannot become the subject of a patent-related right.
(Note) The Patent Act does not have provisions for a person who can become the subject of
a patent application or capacity of the party involved. Therefore, reflecting on the nature of
a patent right and the Patent Act, only a person with any capacity as well as capacity to be a
party involved defined in the Civil Act and the Law of Civil Procedure can become a patent
applicant or the subject of the trial and lawsuit. In this case, Kyungbook National University,
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the applicant, is not capable of becoming the applicant under the Civil Act. Therefore, the
university cannot become a patent applicant, claimant of appeals or appellant. If the
intention was to regard Korea as an applicant to file a patent application in the name of
Kyungbook National University, the university should have filed the application in the name
of the Republic of Korea. Or, if the university had intended to file the application in the
name of the president of the university, the president should have corrected the name of
the party involved by changing the name of the applicant and that of the requester (Case
No. 96 Hu 825(Supreme Court, 26. September. 1997)).
(2) Article 2 of the Local Autonomy Act defines that a local government shall be deemed to
be a juristic person. Therefore, local governments can become the subject of rights. Types of
local government include the Special Metropolitan City, Metropolitan City, Do, Si, Gun and
Gu. A Gu shall be confined to Gu within the jurisdiction of the Special Metropolitan City or a
Metropolitan City (autonomous Gu). Therefore, a Gu in Si (e.g. Yeongtong-Gu in Suwon-City),
other than autonomous Gu, shall not become the subject of rights.
4.3 Capacity of Associations etc. which are not Juristic Persons
Associations which are not juristic persons refer to those without legal personality because
they did not register the establishment of juristic person. Such associations include clan
gatherings, alumni meetings, churches, academies and so on. In principle, associations
without legal personality cannot initiate a patent-related procedure, such as filing a patent
application, because of their lack of capacity.
However, where an association or a foundation other than a juristic person has a
representative or an administrator, the association or the foundation can become the party
involved for the procedures of a request for examination of an application, a request for
technical evaluation on utility models, a request for trial, a request for reexamination or
procedures of being requested for trial or reexamination.
5. Capacity to Act of Overseas Residents
A person who has neither an address nor a place of business address in the Republic of
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Korea (hereinafter, referred to as overseas residents) shall not carry out any patent-related
procedure unless through a patent administrator. Also, the person shall not appeal any
decision taken by an administrative agency based on the Patent Act or any orders under the
Patent Act.
Where even a national of the Republic of Korea does not have an address or a place of
business domestically, patent-related procedures shall be carried out by his/her patent
administrator.
Where an overseas resident initiates a patent-related procedure without designating a
patent administrator, an examiner shall give him/her an opportunity for explanation and, if
not addressed, return the documents to the overseas resident according to Article 5 of the
Patent Act and Article 11 of the Enforcement Rules of the Patent Act.
6. Capacity of Foreigners
Foreigners can enjoy patent rights under Article 25 of the Patent Act only in the following
cases: ① where their country allows nationals of the Republic of Korea to enjoy patent rights
or other patent-related rights under the same conditions as its own nationals; ②where their
country allows nationals of the Republic of Korea to enjoy patent rights or other patent-
related rights under the same conditions as its own nationals when the Republic of Korea
allows their country's nationals to enjoy patent rights or other patent-related rights; or ③
where they may enjoy patent rights or other patent-related rights according to a treaty or
the equivalent of a treaty.
A foreigner or a stateless person who has an address or a place of business in the
Republic of Korea shall enjoy patent rights in Korea regardless of whether the country to
which they belong allows nationals of the Republic of Korea to enjoy patent rights or other
patent-related rights.
(Note) In principle, where a foreigner has neither an address nor a place of business
address in the Republic of Korea, his/her capacity of industrial property rights is not
recognized. However, as an exception, where a treaty or an agreement has been concluded
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or where the country where the foreigner belongs allows nationals of the Republic of Korea
to enjoy patent rights or other patent-related rights, even though the nationals of the
Republic of Korea have neither an address nor a place of business within the country, the
Republic of Korea, too, shall be deemed to allow the foreigner to enjoy industrial property
rights. It does not necessarily mean that the law of the country to which the foreigner
belongs defines the Republic of Korea as a country which recognizes trademark rights ((Case
No.74 Hu 61(Supreme Court, 27. April. 1976)).
7. Effect of Treaty
Article 6 of the Korean Constitution stipulates that treaties duly concluded and
promulgated under the Constitution and the generally recognized rules of international law
shall have the same effect as the domestic laws of the Republic of Korea.
Currently, the Republic of Korea is a member state to the Convention Establishing the
World Intellectual Property Organization (March 1, 1979), the Paris Convention (May 4, 1980),
the Patent Cooperation Treaty (August 10, 1984), Budapest Treaty on the International
Recognition of the Deposit of Microorganisms for the Purposes of Patent Procedure (March
28, 1988), and Strasbourg Agreement Concerning the International Patent Classification
(October 8, 1999). The joining to the Patent Law Treaty (PLT) adopted on June 1, 2000 is
under consideration.
The patent treaties to which the Republic of Korea has joined rarely conflict with the
Korean Patent Act. However, the treaties shall be referred to for examination since some of
the treaties contain more detailed contents than the Korean Patent Act. For example, even
though Article 54 of the Patent Act defines that only a patent application is eligible for an
application initially filed in one of the countries under the Treaty, the Paris Convention
provides that even if the initial application under the Treaty is an application for patent,
utility model or design or inventor‟s certificate, an applicant may file an application claiming
priority. Therefore, where an initial application falls under other types of applications such as
an application of utility model registration, other than a patent application, its priority claim
shall be recognized.
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Chapter 2. Agents
1. Relevant Provisions
Article 6 of the Patent Act (Scope of Power of Attorney) Unless expressly empowered, a
representative instructed to initiate a patent-related procedure before the Korean Intellectual
Property Office by a person whose residential or business address is in the Republic of
Korea may not change, abandon or withdraw an application for a patent, withdraw an
application to register an extension for the term of a patent right, abandon a patent right,
withdraw a petition, withdraw a request for a motion, make or withdraw a priority claim
under Article 55(1), request a trial under Article 132ter or appoint a sub-representative.
Article 7 of the Patent Act (Proof of Power of Attorney) The power of attorney for a
representative (including a patent administrator) who is initiating a patent-related procedure
must be confirmed in writing.
Article 7bis of the Patent Act (Ratification Regarding Defect in Legal Capacity, etc.)
Where the correct party or legal representative ratifies any procedure initiated by a person
with no legal capacity or authority of legal representation or by a person to whom the
authority required to initiate the patent-related procedure has been delegated defectively,
the ratified procedure is deemed to have been initiated at the time the procedure was
originally initiated.
Article 8 of the Patent Act (Continuation of Power of Attorney) The power of attorney of
a representative representing a person initiating a patent-related procedure is not
extinguished upon the death or loss of legal capacity of the party involved, the
extinguishment of a juristic person of the party involved due to a merger, the termination of
the duty of trust of the party involved, the death or loss of legal capacity of the legal
representative or the modification or extinguishment of the power of attorney.
Article 9 of the Patent Act (Independence of Representation) Where two or more agents
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of a person initiating a patent-related procedure have been designated, each of them may
independently represent the party involved before the Korean Intellectual Property Office or
the Intellectual Property Tribunal.
Article 10 of the Patent Act (Replacement of Agents etc.) ① Where the Commissioner of
the Korean Intellectual Property Office or the administrative patent judge considers that a
person initiating a patent-related procedure is not qualified to conduct the procedure or
make oral statements and so on, the Commissioner or administrative patent judge may
order ex officio the appointment of a representative to conduct the procedure.
② Where the Commissioner of the Korean Intellectual Property Office or the administrative
patent judge considers that a representative representing a person initiating a patent-related
procedure is not qualified to conduct the procedure or make oral statements and so on, the
Commissioner or administrative patent judge may order ex officio the replacement of the
agent.
③ The Commissioner of the Korean Intellectual Property Office or the administrative patent
judge may, in the case referred to in paragraphs ① or ② of this Article, order the
appointment of a patent attorney to conduct the procedure.
④ The Commissioner of the Korean Intellectual Property Office or the administrative patent
judge may invalidate any action taken before the Korean Intellectual Property Office or the
Intellectual Property Tribunal by a person initiating a patent-related procedure referred to in
paragraph ① of this Article or by a representative referred to in paragraph ② of this Article
before the appointment or the replacement of a representative referred to in paragraphs ①
or ②, respectively, after issuing the order referred to in paragraphs ① or ②.
Article 11 of the Patent Act (Representation of Two or More Persons) ① Where two or
more persons jointly initiate a patent-related procedure, any of them may represent the joint
initiators except for actions falling under any of the following subparagraphs, unless they
have appointed a common representative and have notified the Korean Intellectual Property
Office or the Intellectual Property Tribunal of the appointment of the representative:
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(i) change, abandonment or withdrawal of a patent application or withdrawal of an
application to register an extension for the term of a patent right;
(ii) withdrawal of a petition; claim or withdrawal of a priority claim under Article 55(1);
(iii) withdrawal of a request; and
(iv) a request for a trial under Article 132ter.
② Where a common representative has been appointed and notification has been given
under the proviso of paragraph ①, written proof that the representative has been appointed
must be presented.
2. Overview of Representation
(1) The representation system under the Patent Act is derived from the representation
system in the Civil Act or the Law of Civil Procedure. However, there exist some differences
in the representation system under the Patent Act because of unique characteristics of a
patent-related procedure. The provisions of the representation system under the Patent Act
include Articles 3(Capacity of Minors etc.), 5(Patent Administrator for Nonresidents), 6(Scope
of Power of Attorney), 7(Proof of Power of Attorney), 8(Continuation of Power of Attorney),
9(Independence of Representation), 10(Replacement of Agents etc.) and 12(Mutatis Mutandis
Application of the Civil Procedure Act).
(2) Agents include legal representatives and designated representatives. Legal
representatives refer to those provided under the legal provisions regardless of the subject‟s
own intention, whereas a designated representative holds the power of attorney by the
subject‟s own intention, as defined in Article 6 『Scope of Power of Attorney』 and Article 5
『Patent Administrator for Overseas residents』 of the Patent Act.
Generally, a patent attorney is designated as a designated representative. However, a
designated representative for a patent or utility model registration under the Korean
Intellectual Property Office can be anyone unless he/she serves as a representative by
profession.
(3) A patent attorney shall engage in the business of acting as a representative on the
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matters to be directed to the Korean Intellectual Property Office or courts concerning patent,
utility model, design, or trademark at the patent office or the court of patent, or perform
appraisal and other acts thereon.
Even if a person is a qualified patent attorney, an unregistered patent attorney cannot carry
out procedures as a patent attorney. There should be punishment if that person has
conducted business as a patent attorney.
Also, a parent attorney shall not handle a case which he has previously handled as a
representative of the other party of the same case. A person who is not a patent attorney
shall not use the title of patent attorney or similar titles.
If a patent attorney violates Article 7 of the Patent Attorney Act (Case which shall not be
handled) by handling the case of the other party in a patent-related procedure, or if a
patent attorney violates Article 124 of the Civil Act (Representation on His Own Behalf,
Representation of Both Parties), it shall be viewed as inadequacies in granting the power of
attorney. In such a case, an examiner shall order both parties and the agent for amendment
to a patent-related procedure under Article 46 of the Patent Act. If inadequacies are not
addressed, the procedure for designating a representative shall be invalidated.
(Note) Article 7 of the Patent Attorney Act stipulates that a patent attorney shall not handle
a case which he has previously handled as a representative of the other party of the case.
This should be translated that a patent attorney shall not handle the same case as a
representative of the other party of the case, holding the position against the party he
initially worked for in the case. For example, Patent Attorney “L” handled the filing of the
application and registration of Trademark A of Party A, but Party A initiated a lawsuit of
invalidation, citing Trademark A of Party A is similar to Trademark B of Party B. However,
Attorney L‟s representation of Party B as a representative of the case cannot be seen as the
violation of Article 7 of the Patent Attorney Act ((Case No. 81 Hu 51 (Supreme Court, 27.
April. 1982)).
3. Legal Representative
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(1) A legal representative refers to someone provided as a representative by the legal
orders, without the consideration of his/her intention. The legal representative system is
designed to protect the rights of a person who is incapable of initiating a lawsuit.
Whether a right of legal representation is granted by law or by designation of the offices
such as the court does not affect the way of the designation.
Meanwhile, a representative designated by the legal order of the court(Article 144 of the
Civil Procedure Act) or by the designation (replacement) order of the Korean Intellectual
Property Office(Article 10 of the Patent Act) is a designated representative, other than a
legal representative, because the designation of a representative was made by the party
itself.
(2) In principle, the generation, change and extinguishment of the authority for legal
representation shall be carried out according to the Civil Act. Based on the Civil Procedure
Act, where the authority of legal representation is extinguished or changed, the party
involved or agent cannot claim the effects of the extinguishment or change of the right
unless it is notified to the other party, as in the examples of the Civil Procedure Act.
Grounds for extinguishment of the authority of legal representation include death of the
party involved or legal representative, adjudication of incompetency or bankruptcy of legal
representative, resignation or removal of guardian.
Meanwhile, a patent-related procedure shall be interrupted when a legal representative dies
or loses an authority of legal representation.
(3) Under the Civil Act, the authority of legal representation of legal representatives such as
a person with parental authority or a guardian is widely acknowledged, since they are less
likely to do damage to the party involved in transactions. Under the Patent Act, too, even
though a legal representative does not obtain the special power of attorney when initiating
a patent-related procedure in representation of the party involved, he/she may perform an
act of representation for the special power of attorney under Article 6 of the Patent Act.
However, a person with parental authority and a guardian have different scopes of
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authority even though both are legal representatives. A person with parental authority under
Article 3 of the Patent Act can initiate any patent-related procedure including trial or retrial,
let alone the special power of attorney, without the consent of family council. On the other
hand, a guardian may initiate procedures filed at the request of the other party, such as trial
or retrial, without the consent of the family council. However, he/she shall obtain the
consent of family council to perform any act for the purpose of a right to obtain a patent or
acquisition, forfeit or alteration of a patent right, as well as an act of requesting a trial or
retrial.
(Note) Under the Civil Act, too, a guardian has more restricted powers of attorney than a
person with parental authority in performing one of the following acts: ① an act to conduct
business; ② an act to contract a debt or to stand surety; ③ an act which aims at acquisition,
forfeit and alteration of right and title on immovables or important property; and ④ an act
to bring an action to the court. Where a guardian performs such acts in place of the ward
or allows minors or quasi-incompetents to perform such acts, the guardian shall obtain the
consent of family council.
(4) Where a legal representative initiates a patent-related procedure, he/she shall state such
facts in the „Agent‟ box in a written patent application, etc. and submit the evidential
documents. Generally, if a person with parental authority intends to serve as a legal
representative, submitting a certified copy of resident registration or family relations
certificates would suffice.
Where a guardian intends to serve as a legal representative, the guardian shall submit the
evidential document for such intention. Moreover, for a guardian to initiate procedures other
than the ones defined in Article 3(2) of the Patent Act, the consent of family council shall be
obtained. Therefore, the guardian shall submit the evidential documents of the consent of
family council. Also, it is possible to secure the consent of family council for procedures
either individually, or all at once.
(Note) Where an examiner can confirm through the system of the interorganizational use of
the resident registration database whether the person acting in place of the ward is a legal
representative, the examiner shall not require an applicant, etc. to submit the evidential
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documents.
4. Designated Representative
(1) A designated representative refers to a person who receives a credential of a party
involved and becomes a representative by the intention of a party involved. The definition of
a designated representative includes not only a representative with power of attorney, but
also a representative on a contract of conduct of practices, let alone a contract of power of
attorney. Patent administrators and designated agents are also designated representatives.
(2) The power of representation of a designated representative is created when a party
involved grants power of attorney to another party.
(3) The power of representation is extinguished when a party involved withdraws the
delegation of authority.
Unlike causes for lapse of the power of representation specified in Article 127 of the Civil
Act, the Patent Act stipulates that the power of representation shall not lapse for the causes
of the death or loss of legal capacity of the party involved, extinction of a juristic person of
the party involved due to a merger, the termination of the duty of trust of the party
involved, the death or loss of legal capacity of the legal representative, or the modification
or extinction of his/her authority of representative. If the Patent Act had the same article as
Article 127 of the Civil Act, a procedure initiated by a legal representative without noticing
the death of a party involved would become invalidated and an urgent procedure could not
be initiated, leading to doing an unexpected damage to an heir of the party involved and
adversely affecting all the examination- and trial-related procedures. Considering all the
possible problems, the system of a designated representative is designed to address such
issues.
(4) A representative representing a person initiating a patent-related procedure (except a
patent administrator of an overseas resident) cannot perform any of the following acts
unless he/she obtains the special power of attorney: the change, abandonment or
withdrawal of an application (withdrawal of application for registration of patent term
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extension); the abandonment of a patent right, withdrawal of a patent application,
withdrawal of request, claim or withdrawal of Domestic Priority under Article 55(1) of the
Patent Act and the request for trial or designation of subagent under Article 132(3) of the
Patent Act. For example, where the scope of power of representation is written as „all
matters regarding to the application‟ in the Designation of Power of Representation box, the
scope of power of representation does not include the power of attorney.
The delegation of special power of attorney is required to represent an Domestic Priority
claim. The special power of attorney is stated as in the following examples to specify a prior
application.
Case Written Power of Attorney
of Prior Application
Written Power of Attorney
of Domestic Priority Application
Where the
special power
of attorney is
granted to
priority claim at
filing a prior
application
Any matter regarding to
Application○○
(Special power of attorney related
to priority claim)
Priority claim or its withdrawal
under Article 55(1) of the Patent
Act according to Application○○
or under Article 11 of the Utility
Model Act applied with Article
55(1) of the Patent Act
Any matter regarding to
Application○○
※ Description on special power of
attorney unnecessary
Where the
special power
of attorney is
granted to
priority claim
at filing an
Domestic
Priority
application
Any matter regarding to
Application○○
※ No description on special power
of attorney related to priority claim
Any matter regarding to
Application○○
(Special power of attorney related
to priority claim)
Priority claim or its withdrawal
under Article 55(1) of the Patent
Act according to Application No.
○○ filed in (Year) or under Article
11 of the Utility Model Act applied
with Article 55(1) of the Patent Act
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(Note) A patent-related procedure refers to all procedures after the registration of a patent
right such as application, request, etc. In the case of a utility model registration, a procedure
regarding technical evaluation after the registration of utility model, too, is included in a
patent-related procedure. Therefore, if a representative has power of attorney regarding
matters related to technical evaluation at the time of submitting a written application, the
agent can represent the matters regarding requests for technical evaluation.
5. Patent Administrator
(1) A person who has a residential or business address in the Republic of Korea can initiate a
patent-related procedure without designating a legal representative. However, an overseas
resident cannot initiate a patent-related procedure or file a lawsuit against the decision
made by an administrative office unless he/she resides in the Republic of Korea.
However, despite the provision of Article 5(1) of the Patent Act, if an overseas resident files
an international patent application, he/she can initiate a patent-/utility model-related
procedure, such as submission of the translation of the application, etc., even without a legal
representative by the relevant date (the period for submitting domestic documents in the
Republic of Korea, if an applicant makes a request for examination within the domestic
document submission period, the date of request for examination). In such a case, the
overseas resident shall designate a legal representative within two months from the
expiration date of the submission period and notify the Commissioner of the Korean
Intellectual Property Office of the appointment of a legal representative. When no
notification of the appointment of a legal representative is made to the Commissioner of the
Korean Intellectual Property Office, the international patent application shall be deemed to
have been withdrawn.
A patent administrator of an overseas resident shall be distinguished from a legal
representative of a resident in the Republic of Korea because of the different level in power
of attorney.
(Note) Where an overseas resident initiates a patent-related procedure without the
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designation of a patent administrator, an examiner shall give the foreigner an opportunity to
explain within the designated period according to Article 5 of the Patent Act as well as
Article 11 of the Enforcement Decree of the Patent Act. If he/she fails to give the
explanation, the examiner shall return the relevant documents to the foreigner. In such a
case, addressing the irregularities through amendments, such as designating a patent
administrator, is not acceptable.
Also, where an overseas resident‟s patent administrator no longer exists because of death,
removal or other reasons, an examiner shall immediately contact the party involved
(overseas resident) to urge him/her to initiate the procedure for designating a patent
administrator. In such a case, until a new patent administrator is appointed, the relevant
documents can be delivered to the party involved by registered airmail. However, a warning
note (including the translation of the warning note) can be attached with the following
notices: ① the documents shall be seen as having been delivered on the date when the
documents were sent; ② a new patent administrator shall be designated and notified under
Article 5(1) of the Patent Act because of the death of the previous patent administrator; and
③ subsequent procedures shall be initiated by a patent administrator.
(2) Where an application is jointly filed by a resident and an overseas resident, a resident
can solely initiate a patent-related procedure, except for the procedures defined in Article
11(1) of the Patent Act, whereas an overseas resident cannot initiate a patent-related
procedure alone, without designating a patent administrator.
As for a patent-related procedure under the provisions of Article 11(1) of the Patent Act, a
resident shall jointly initiate the procedures with a patent administrator designated by an
overseas resident.
Meanwhile, where an overseas resident chooses a resident who is a co-applicant, as a
patent administrator, the overseas resident can initiate a patent-related procedure alone
within the scope of powers conferred on the resident. Also, a resident and an overseas
resident can appoint the same person as a legal representative or a patent administrator.
(3) A patent administrator of an overseas resident can represent the party involved in all the
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patent-related procedures or a lawsuit on a decision made by an administrative office based
on all the Patent Act or any order under the Patent Act.
A patent administrator holds comprehensive powers within the scope of powers conferred
on him/her, unlike a legal representative through ordinary designation. A patent
administrator can conduct disadvantageous actions, such as withdrawal of an application or
withdrawal of request for a trial, without any special power of representation. For example, if
„all of the procedures related to a patent‟, „all procedures related to patent registration‟ and
„all procedures regarding a trial‟ are written in the 〔Power of Attorney〕 box of Annexed
Form No. 1 of the Enforcement Decree of the Patent Act, a legal representative through
ordinary designation is not deemed to have the special power of attorney under Article 6 of
the Patent Act, whereas a patent administrator is deemed to have the special power of
attorney. It is because even though a patent administrator of an overseas resident is also a
kind of designated representatives with power of attorney created by an act of designation,
the act of designation itself is required by the law and a patent administrator features a
distinct characteristic in carrying out patent-related procedures. Therefore, a wider range of
power of attorney is conferred on a patent administrator of an overseas resident than a
designated representative through ordinary designation.
(Note) When making a notification on the designation of a patent administrator, if matters
for delegation and a power to initiate particular patent-related procedures are limited, even
a patent administrator cannot conduct an act of representation for such procedures.
6. Designation or Replacement of Representative
6.1 Designation of Representative
(1) A designated representative shall submit a power of attorney and a report of designation
of a representative to prove the designation. A report of removal or change of a
representative, too, shall be submitted in order to remove or change the designated
representative. The procedures for designation, removal or change of a representative are
specified in Article 5 of the Enforcement Rules of the Patent Act.
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(2) When a legal representative is designated or changed while undertaking a procedure for
filing an application, etc., a report of the designation of a representative or a report of
change of representative shall be submitted with a power of attorney attached. Where a
procedure is initiated by a representative with only a power of attorney attached (including
the case where the intention of granting all the patent-related powers of attorney is stated)
to a written argument or other intermediate documents, a legal representative shall be
treated to hold power of attorney only for the intermediate procedure (when another
intermediate procedure is being taken at the same time, the concerned procedure shall be
also included). In such a case, when the legal representative continues to take patent-related
procedures after the intermediate procedure, another notification of the designation of a
representative shall be separately filed. Also, where no change has been made to the
content of the previously-submitted power of attorney, a copy of a power of attorney can be
submitted with the indication of its source.
Also, where the designated agent intends to continue to initiate a patent-related procedure
for an application in which the name of the applicant has been changed, a notification of
designation of a representative shall be submitted with a power of attorney of the successor
in title attached.
Where any deficiency is found in the evidential documents for the power of attorney, an
examiner shall order an amendment within a designated period. If deficiency is not
addressed, an examiner shall invalidate the procedure for the designation of a representative
as well as the procedure taken by the legal representative with irregularities in the power of
attorney.
(3) A power of attorney shall include the indication of the case for representation, the names
and addresses of the assignor and assignee, matters for delegation and the date of drawing
up the power of attorney. And then the assignor shall sign or write his/her name and affix
his/her seal on the documents.
Where the content of the submitted documents such as an application is different from the
content described in a power of attorney, or where any deficiency is found in a report of
delegation of a representative, a report of subattorney attorney or a report of removal of a
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representative, an examiner shall request an amendment to the concerned procedure. If
irregularities are not addressed, an examiner shall invalidate the procedure.
(Note) Where 『all matters regarding …』 and 『all the other matters regarding …』 are stated
in the „Matters for Delegation‟ box, it shall be deemed that special powers of attorney under
Article 6 of the Patent Act are not included. Also, where 『change of name of applicant
regarding …』 and 『all matters related to the change of name of applicant regarding …』 are
stated in the „Matters for Delegation‟ box in a power of attorney attached to a report of
change of name of applicant, but where the procedure after the notification of the change
of name of applicant is not indicated, it shall be deemed only as a notification of change of
name of applicant.
(4) The authority of representative of a representative of a person who initiates a patent-
related procedure (including a patent administrator) shall be proved in writing. Where
evidential documents for the authority of representative are not attached, where a power of
attorney states an incorrect name of the party involved or where the seal on the document
is different from the registered seal shall be deemed to be representation by agent without
authority. In such cases, an examiner shall request an amendment as well as the submission
of a correct power of attorney. Where amendment is made and a correct power of attorney
is submitted, the power of attorney shall be deemed to be ratified by the party involved. If
the power of attorney is not ratified, an examiner shall invalidate a patent-related procedure
initiated by the party involved.
6.2 General Power of Attorney System
(1) The general power of attorney system is designed to grant power of attorney to cover all
the proceedings to a representative who is designated to initiate a patent-related procedure.
(2) Where general power of attorney is to be granted, evidential documents of the authority
of representative (hereinafter, referred to as „a general power of attorney‟) shall be attached
to an application for the registration of general power of attorney and be submitted to the
Commissioner of the Korean Intellectual Property Office.
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Where an application for the registration of general power of attorney is filed, the
Commissioner of the Korean Intellectual Property Office shall grant the registration number
of general power of attorney and notify the registration number to the applicant who has
registered the general power of attorney. A person who intends to initiate a patent-related
procedure after obtaining general power of attorney shall state the registration number of
general power of attorney in the documents submitted to the Commissioner of the Korean
Intellectual Property Office or the President of the Intellectual Property Tribunal.
(3) Where a person who has registered general power of attorney intends to restrict the
reliance of general power of attorney for particular proceedings or to withdraw general
power of attorney, the person shall submit a report of restriction of reliance on general
power of attorney or a report of withdrawal of registration of general power of attorney,
respectively, to the Commissioner of the Korean Intellectual Property Office.
Meanwhile, where a report of removal of a representative is submitted for an application
filed by a representative who has registered general power of attorney, it shall be deemed
that a report of restriction of reliance of general power of attorney is submitted.
(Note) Where a representative holding general power of attorney intends to resign from
particular proceedings or resign from the position of the agent with general power of
attorney, he/she shall submit a written withdrawal of registration of general power of
attorney defined in the provision of Article 5(4) of the Enforcement Rules of the Patent Act
(Annexed Form No.3 of the Enforcement Rules of the Patent Act).
6.3 Replacement of Representatives, etc.
(1) Where the party involved or a legal representative is recognized not to perform
administrative procedures because of the lack of capacity to perform actions, it shall be
recommended to designate a representative to protect the benefits of the party involved or
to order another representative to initiate a patent-related procedure under the system for
replacement of representative.
(2) Where a person initiating a patent-related procedure or his/her representative is
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recognized not to be capable of initiating such procedure or making oral statements, the
Commissioner of the Korean Intellectual Property Office or the President of the Intellectual
Property Tribunal can designate a new representative or order ex officio another
representative to initiate the procedure. Also, a patent attorney can be designated to initiate
the procedure.
Even if a patent attorney is designated to initiate a patent-related procedure, but when
he/she is recognized to lack capacity to perform actions, regardless of the formality
requirements under Article 10 of the Patent Act, the Commissioner of the Korean Intellectual
Property Office or the President of the Intellectual Property Tribunal can order ex officio the
appointment of another representative for administrative convenience and protection of the
party involved. Where a patent attorney cannot initiate a patent-related procedure because
of health conditions or where a patent attorney is incapable of making oral statements,
he/she is deemed to be incapable of initiating a patent-related procedure.
(3) The Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal can invalidate the procedure initiated by the party involved or
representative before the Korean Intellectual Property Office or the Intellectual Property
Tribunal in the period after the order for designation or replacement of representative or
before the designation or replacement of representative is carried out.
6.4 Sub-agency
(1) Sub-agency refers to an act of representation carried out by another person designated
by a legal representative in order for the representative to conduct the acts within the scope
of representation by making the person represent the representative. In such a context, the
person appointed by the representative is a subagent. The right to appoint a subagent is
granted based on approval of the party involved or legal provisions, other than the right of
representation itself.
(2) Since a legal representative is appointed as a representative against his/her intention, the
authorities granted to a legal representative are generally broad. Also, a legal representative
is incapable of accepting or resigning of the position. Therefore, it is interpreted that a legal
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representative always holds the right to appoint a subagent and is allowed to designate a
subagent.
If a designated representative (except for a patent administrator) fails to obtain special
power of attorney, he/she is not allowed to appoint a subagent. Considering that only a
legal representative of a resident in the Republic of Korea holds the special power of
attorney for the appointment of subagent, it is interpreted that a patent administrator holds
the right to appoint a subagent.
(3) In principle, a legal representative is responsible for all of the acts of his/her subagent
regardless of whether a legal representative makes a mistake in the appointment or
supervision of a subagent. However, where an unavoidable reason exists, a legal
representative is only accountable for the appointment and supervision of a subagent.
A designated representative is responsible for the payment of damages incurred to the
party involved only when he/she is negligent in the appointment and supervision of a
subagent. Where a designated representative has appointed a subagent who is designated
by the party involved, he/she shall incur responsibility only when he knew such subagent to
be unfit or untrustworthy and neglected to notify the party involved thereof or to remove
him.
(4) The scope of authority exercised by a subagent cannot exceed the scope of authority of
a legal representative. Where a representative is granted with the power of appointment of a
subagent and the special power of attorney from the party involved, he/she can grant even
the special power of attorney to the subagent.
Meanwhile, in principle, the power of appointment of a subagent designated by a
representative is not accepted. However, where the party involved has granted a
representative the power of attorney and power of appointment and, at the same time, has
indicated that a subagent can appoint another subagent, it is allowed that a subagent can
designate another subagent.
A subagent shall represent the party involved in respect of acts within the scope of his/her
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authority and hold the same rights and duties as the agent towards the party involved and
third parties. The party involved can remove a subagent since a subagent, too, holds the
main rights and duties of the prudent administrator in accordance with the original purpose
of the representation system.
(5) Where a legal representative holds the authority to appoint a subagent by the power
granted from the party involved, a subagent designated by the authority shall be deemed to
be a representative of the party involved. In such a case, the evidential documents for the
authority of representation, „the document which proves that the party involved has granted
the authority to appoint a subagent to the agent‟ and „the document which proves that the
agent has appointed a subagent by the power of appointment of subagent‟, shall be
submitted. It is common that a power of attorney is submitted as the evidential document
since whether the power to appoint a subagent is granted or not can be confirmed in the
〔Matters for Delegation〕 in a power of attorney.
(6) Like the power of representation, the authority of a subagent to initiate a patent-related
procedure shall not be extinguished upon the decease or loss of legal capacity of the party
involved, the extinction of a juristic person of the party involved due to a merger, the
termination of the duty of trust of the party involved, the decease or loss of legal capacity of
the legal representative, or the modification or extinction of his/her authority of
representative despite the causes for lapse of power of representation under Article 127 of
the Korean Civil Act (death of the party involved; and death, adjudication of incompetency,
or bankruptcy of the agent). Also, the power of representation of a subagent shall not be
extinguished even for the causes for lapse of power of representation under Article 127 of
the Korean Civil Act (death, adjudication of incompetency, or bankruptcy of the agent) or the
resignation or removal of a subagent.
The authority of a subagent shall be extinguished for the causes for lapse of power of
representation under Article 127 of the Korean Civil Act or the appointment or removal of a
legal representative or a subagent.
(Note) Unlike the Korean Civil Act where the power of representation of a subagent is
extinguished in case of death of a legal representative because of absence of supervision by
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the representative, the Korean Civil Procedure Act stipulates that the power of appointment
of a subagent shall not be extinguished even in case of death of a legal representative of
the procedure based on the original purpose of the swift and smooth execution of the
procedures. Except for the special provisions regarding a representative stipulated in the
Patent Act, the provisions of the Civil Procedure Act shall apply mutatis mutandis. Therefore,
the power of representation of a subagent in a patent-related procedure shall not be
extinguished in case of death of a legal representative.
7. Other Provisions for Representation
(1) The Korean Civil Procedure Act states that where there exist many attorneys, each of
them shall represent the party involved and where the parties involved have concluded an
agreement in contrary to the above-mentioned provision, such agreement shall not take any
effect. The Korean Patent Act, too, provides that where two or more representatives of a
person initiating a patent-related procedure have been designated, each of them shall
independently represent the party involved before the Korean Intellectual Property Office or
the Intellectual Property Tribunal.
Therefore, the principle of individual representation shall apply to the acts conducted
between designated representatives; the party involved and designated representative; the
designated representative and subagent; the party involved and subagent as well as the
procedures initiated by the same representative several times.
(Example) Where more than two representatives have submitted a written amendment
individually in response to a notification of the grounds for rejection made by an examiner,
all the amendments shall be deemed to be legitimately submitted. In such a case, the
examiner shall conduct an examination after confirming the specification to be examined
with reference to Part 5, Chapter 3 『6.3.1 Confirmation Method for Amended Specification』.
(2) Article 7(2) of the Patent Act stipulates that a patent-related procedure, initiated by a
person who lacks capacity, the power of legal representation or the authorization necessary
to initiate any such procedures, shall have effect retroactively to the time when such
procedures are performed if the procedures are ratified by the party involved when he/she
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has gained capacity to proceed. Therefore, procedures initiated by an incompetent or an un-
entitled agent shall take effect retroactively based on the ratification by a legitimate party
involved or legal representative. „The party involved after amendment‟ in this context refers
to someone who was a minor when the procedure was initially performed, but now has
reached 21 years old and become a person with legal capacity.
(3) Where more than two parties involved jointly initiate a patent-related procedure, each of
them shall represent the joint initiators except for certain actions that could incur
disadvantages to other parties involved. Matters for which more than two parties involved
should jointly initiate the procedure are similar to those which an authorized representative
can represent after obtaining a special power of attorney in accordance with Article 6 of the
Patent Act.
Where more than two parties involved have appointed a common representative and have
notified such fact to the Korean Intellectual Property Office, only the common representative
can initiate a patent-related procedure. Also, more than two common representatives can be
appointed. Where a common representative is to be appointed, the designated
representative shall submit to the commissioner of the Korean Intellectual Property Office or
the president of the Intellectual Property Tribunal the evidential documents of the status of a
representative and the power of representation (only when a procedure is initiated by a
representative) attached to the Report on Agent〔Representative〕 in Annexed Form No.2 of
the Enforcement Rules of the Patent Act.
(Note) Even a common representative cannot initiate a patent-related procedure under the
provisions of Article 11(1) of the Patent Act without the special powers of attorney of
multiple parties involved. Therefore, where a common representative initiates a patent-
related procedure without the special power of attorney, the commissioner of the Korean
Intellectual Property Office shall request amendment. When irregularities are not addressed,
the commissioner of the Korean Intellectual Property Office shall invalidate the procedure.
Whether a common representative is granted with the power to initiate a patent-related
procedure shall be confirmed in a power of attorney, etc.
(4) When only some of the parties involved appoint a representative, the designated
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representative can initiate a patent-related procedure on behalf of all the parties involved.
However, he/she shall initiate the procedures mentioned in the provisions of Article 11(1) of
the Patent Act, jointly with the other parties involved.
(Note) Where a common representative does not represent all of the applicants, his/her
name shall be specified as Applicant ○○○„s representative in 〔Reference〕 below 〔Address〕
in the 〔Representative〕 column of a written application.
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Chapter 3. Period
1. Relevant Provisions
Article 14 of the Patent Act (Calculation of Time Limits) A time limit in this Act or in any
decrees under this Act is calculated as follows:
(i) the first day of a period is not counted unless the period starts at midnight;
(ii) when a period is expressed in months or years, it is counted according to the calendar;
(iii) when the start of a period does not coincide with the beginning of a calendar month or
year, the period expires in the final month or year of the day preceding the date that
corresponds to the starting date of the period; however, if no corresponding date occurs in
the final month, the period expires on the last day of that month; and
(iv) when the last day of a period for executing a patent-related procedure falls on an official
holiday(including Saturday and Labor Day, as designated by the Labor Day Designation Act),
the period expires on the first working day after the holiday.
Article 15 of the Patent Act (Extension of Time Limits etc.) ①The Commissioner of the
Korean Intellectual Property Office or the President of the Intellectual Property Tribunal may,
upon request or ex officio, extend the period for demanding a trial under Article 132ter for
once and for up to 30 days. However, the number and period of extension may be further
extended for a person residing in an area that is difficult to access.
②The Commissioner of the Korean Intellectual Property Office, the President of the
Intellectual Property Tribunal, a administrative patent judge or an examiner who has
designated a period for a patent-related procedure to be initiated under this Act may
shorten or extend the period upon request or extend the period ex officio. In such cases,
the Commissioner of the Korean Intellectual Property Office and so on shall decide whether
to shorten or extend the period in a way that does not unduly violate the interests of the
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parties involved in the relevant procedure.
③An administrative patent judge or an examiner who has designated a date for initiating a
patent related procedure under this Act may change the date upon request or ex officio.
2. Type of Period
Periods are divided into statutory periods and designated periods. Statutory periods refer
to periods defined in the Patent Act or any order under the Patent Act. Designated Periods
mean periods which the Commissioner of the Korean Intellectual Property Office, the
President of the Intellectual Property Tribunal, a presiding trial judge or an examiner sets
based on the Patent Act or any order under the Patent Act towards a person initiating a
patent-related procedure for filing an application, making a request, and so on.
Statutory periods and designated periods regarding the examination of a patent application
are as follows.
Statutory Period Designated Period
º Period for requesting withdrawal of
invalidation of procedure (Article 16)
º Period for retroactively recognizing the
filing date of a lawful right holder
(Articles 34, 35)
º Period in case of inventions not
deemed to be publicly known (Article
30)
º Period for amendment of description
or drawings (Article 47)
º Period for filing a divisional application
(Article 52)
º Period for filing a converted application
(Article 53)
º Period for priority claim under Treaty
º Period designated by KIPO
commissioner
º Period for amendment of procedure
(Article 46)
º In case of request for consultation on
the identical invention, etc. (Articles 36,
38)
º In case of request made to the party
involved for submission of documents
and articles
(Article 222)
ⅻ Period designated by examiner
º When an examiner notifies a ground
for rejection and provides an applicant
with an opportunity to present his/her
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(Articles 54,55,56)
º Period for request for examination of
patent application (Article 59)
º Time for laying open an application
(Article 64)
º Application to register the extension of
term of patent right (Article 90)
º Trial against the decision to reject a
patent application (Article 132(3))
º Time for service by public
announcement coming into force
(Article 219)
º Period for request for re-examination
(Article 67(2))
written opinions (Article 63)
º When an examiner requests the party
involved to submit documents and
articles(including model, sample, test
report) necessary for examination
(Article 222)
3. Calculation of Periods
The periods shall be calculated according to Article 155 of the Korean Civil Act, except for
special cases. However, Article 14 of the Patent Act separately defines the method of
calculating periods based on the Patent Act and any order under the Patent Act. Therefore,
the calculation of periods under the Patent Act is primarily governed by Article 14 of the
Patent Act and Article 155 of the Civil Act supplementally applies.
(Note) The methods of calculating the periods are divided into two types: natural calculation
and calculation according to calendar. Natural calculation is precise but inconvenient,
whereas calculation according to calendar is somewhat imprecise but convenient.
(1) In calculating the period under the Patent Act, the first day of the period is not counted.
However, if the period starts at midnight, the first day of the period shall be counted.
(2) When the period is expressed in months or years, it shall be counted according to the
calendar regardless of the length of a month or a year.
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(3) When the start of the period does not coincide with the beginning of a month or year,
the period shall expire on the day preceding the date in the last month or year of the
period corresponding to the date on which the period started. However, where a month or
year is used and there is no corresponding day in the last month, the period shall expire on
the last day of that month. In this context, the day on which the calculation begins refers to
the first date counted in calculating the period and the expiration date means the last day
counted in calculating the period.
In a patent-related procedure, where the last day of the period falls on a public holiday, the
period shall be expired on the day after the last day. It should be noted that the period
expired on the day after the last day is a statutory period or designated period in a patent-
related procedure. In other words, a statutory or designated period irrelevant of a patent-
related procedure is not governed by Article 14(4) of the Patent Act. For example, as for an
application claiming Domestic Priority, the time on which an earlier application is deemed to
have been withdrawn and the date of expiration of the patent term shall not be extended by
one more day even if the last day of such period falls on a public holiday.
(Example) Where the expiration date of the designated period according to the notification
of grounds for rejection is January 27 and where January 27 is Lunar New Year‟s holiday and
January 28 is Sunday, the amendment period shall be expired on January 29. Therefore,
when a written amendment is submitted on January 29, the amendment is deemed to have
been submitted within the legitimate period (Case No. 90 Hu 1680(Supreme Court, 28.
February. 1991)).
(Note) Where the day on which the calculation begins falls on a public holiday, the period
shall start from the public holiday.
(4) Where a person who intended to submit electronic documents through a computerized
network has sent the electronic documents, but failed to deliver them within the period
because of the network glitch, the period shall mature on the following day when the glitch
has become removed. The network glitch refers to the failure of the computerized network
as well as the malfunction of computers or relevant devices used in the Korean Intellectual
Property Office. However, if the Korean Intellectual Property Office has notified of the
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network glitches in advance, they are not deemed to be glitches. Article 9(4) of the
Enforcement Rules of the Patent Act and „the Announcement of Term Extension for Failure of
Computerized Network‟ shall be referred to for the detailed information.
(5) When a period is expired in accordance with Article 15 of the Patent Act and even when
the last day of a period falls on a public holiday, the initial period shall mature on the
concerned public holiday and the extension of the period shall be counted from the day
after the expiration day of the period. Moreover, when more than two requests for extension
of a period(one request of extension means the request of term extension by one month,
hereinafter the same) have been made, the period by each request shall be calculated in the
above-mentioned manner.
The detailed example about the extension of a period below shall be referred.
Where there is no concerned date in the last month of the period
In calculating a period under the Patent Act, the first day of the period is not counted.
However, when the period starts at midnight, the day on which the calculation begins
does not start on the following day, but starts on the first day of the period. In the
above-mentioned case, a written notification is hardly delivered at midnight, therefore,
the day on which the calculation begins falls on December 31.
Moreover, where there is no day concerned in the last month of the period, the last
day of the month shall be expiration date. As in the above case, since February 30 does
not exist, the last day of that month, February 28, shall be the expiration date of the
designated period.
Where the extension date of a period is counted from the first day of a month or a
year
Transmittal of
Notification
Date on which
computation begins
Expiration date of
Designated Period
12. 30. 12. 31. (Designated
Period: 2
months)
2. 28.(29)
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When a period is not counted from the beginning of a month or a year, the period
shall mature on the day before the day on which the calculation begins in the last
month or year (the expiration date of the designated period). Also, the day on which
the calculation begins for the extension of the period is counted from the first day of a
month or year, the period shall mature on the last day of the last month or year of the
period (the expiration date when term extension is conducted twice).
When the expiration date of the designated period falls on a public holiday and the
period is extended
When the last day of a period in a patent-related period falls on a public holiday, the
period shall mature on the following day. Therefore, if the extension of the period had
not been conducted in the above case, the period is expired on September 25.
Even when the day on which the calculation begins falls on a public holiday, the day
on which the calculation begins of a period starts from a public holiday. Therefore, the
extended period shall mature on October 22.
As in the above case, of the designated period matures on September 25, the request
for extension of the period can be made only by September 25. Even when the request
is made on September 25, the day on which the calculation begins for extension of the
Transmittal
of
Notificatio
Date on which
computation
begins
Expiration date
of Designated
period
Expiration date
of First
extension
Date on which
computation for
second extension
begins
Expiration date
of Second
extension
12.
28.
12.
29.
(Designated
Period: 1
month)
1.
28.
(Extension
: 2)
2.
28.
3. 1. 3.
31.
Transmittal
of
Notification
Date on
which
computation
for
designated
Expiration date of
Designated
period
(Sunday
)
Expiration date
of First
extension
7. 22. 7.
23.
(Designated
Period: 2
months)
9.
22.
9.
23.
9.
25.
10.
22.
9.
24.
(Extension period:
1 month)
(Chuseok:
Korean
thanks
giving
day)
Date on
which
computation
for first
extension
begins
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period shall fall on September 23 and the extended period shall mature on October 22.
4. Extension of Periods
The system of the extension of a period is designed to enable a person who intends to
initiate a patent-related procedure within a statutory or designated period to undertake the
procedure smoothly by allowing the extension of the period, because the person resides in
an area with poor transportation or it takes a great deal of time for preparation to initiate
the procedure.
Meanwhile, it is hard to fulfill an applicant‟s demand that the decision to grant a patent be
made before the expiration of the designated period only by granting the extension of the
period. Therefore, the period reduction system was designed to allow for the reduction of
the designated period by request.
A statutory period can be extended if it is the period for request of trial under Article 132(3)
of the Patent Act, whereas a designated period can be extended regardless of its kind. Also,
a statutory period cannot be shortened, while a designated period can be reduced upon
request by a party involved.
4.1 Extension and Acceptance of Statutory Period
Anyone can extend a statutory period of request for appeal trial for a decision to reject a
patent application or a utility model registration application one time for less than thirty
days. Meanwhile, a person residing in an area with poor transportation can further extend
the statutory period. If an application for extension of a statutory period has been
submitted, the President of the Intellectual Property Tribunal (the Trial Policy Division) shall
determine whether the requirements for extension are fulfilled and whether to accept the
written application.
4.2 Extension and Acceptance of Substantive Examination-related Designated Period
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(1) A request for extension of a designated period under Article 16 of the Enforcement Rules
of the Patent Act can be filed for one month each time or for more than two months all at
once. When a request for extension of the period for less than one month is filed, the
desired extension period shall be deemed to be one month.
A request for extension of a period shall be deemed to be accepted when the application
for extension of the period is submitted, except for the period for submission of a written
argument in response of a notification of grounds for rejection (hereinafter, referred to as
„submission period for written argument‟). However, if an examiner concluded that the
interests of an interested person are unlawfully infringed, the examiner shall approve the
extension of the period only for the necessary amount of time and can disapprove the
extension of the rest of the period after a warning of disapproval of period extension.
(2) A request for extension of the submission period for a written argument shall be deemed
to be accepted when the written application for extension of the submission period for a
written opinion is submitted, if the expiration date of the desired extension period is within
four months from the expiration date of the period designated in the initial notification of
submission of written opinion (hereinafter referred to as „period allowed for extension
request‟). However, where the period allowed for extension request has elapsed, an examiner
shall consider reasons for period extension and approve the extension if necessary.
When the expiration date of the desired extension period in a request for extension of the
period for the submission of a written argument has elapsed the period allowed for
extension request, an examiner shall approve the extension of the period only within the
period allowed for extension request. An examiner shall determine whether to approve the
extension of the period after examining whether the reasons presented by an applicant for
extension of the period fall under the reasons mentioned below. Where an applicant intends
to submit the intention of extension of the period and make a further request for period
extension after the examiner has decided to approve the extension of the period, the
examiner shall order the applicant to explain the reason for an additional request for
extension of the period.
① Where an applicant has appointed a representative for the first time or removed or
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changed the appointed representatives within one month before the expiration of the
period.
② Where an applicant has submitted a notification of change of applicant within one
month before the expiration of the period. However, it is only limited to the addition of a
new applicant.
③ Where an applicant has received examination results from a foreign patent office and
submitted the results along with a request for extension of the period within two months
before the expiration of the period.
④ Where the delivery of a written argument has delayed over a month.
⑤ Where an earlier application or subsequent application is pending in a trial or lawsuit.
⑥ Where more time is needed for conducting examinations relating to grounds for
rejection as well as analyzing the results of such examinations.
⑦ Where extension of the period is recognized to be necessary inevitably.
※ If request for extension of the period is related to an application filed by a third party,
the request shall be disapproved even the request corresponds to the reasons of no. ①
~⑤.
(3) Where fees for a request of extension of the period have not been paid, an examiner
shall and order an amendment within a designated period. When unpaid fees have been
paid within the designated period, it shall be deemed to be a legitimate request for
extension of the period. However, if the late fees are not paid within the designated period,
the request for extension of the period shall be invalidated. Such guidelines shall apply to all
of statutory periods and designated periods regarding substantive examinations as well as
formalities examinations.
(4) Where a request for extension of the designated period is submitted after the expiration
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of the designated period regarding substantive examinations (the concerned extended
period when the period is extended because of a request for extension of the designated
period), an examiner shall give the applicant an opportunity to explain and return the
written application. The fees paid along with the submission of the request for extension of
the designated period shall be returned.
(Note) Where a request for extension of the period is not approved, the paid fees shall be
returned.
4.3 Extension and Approval of Designated Period regarding Formalities Examination
(1) The extension of the amendment period under Article 46 of the Patent Act can be
requested for one or more than two months each time. When a period requested for
extension is for less than one month, the period requested for extension shall be deemed to
be one month.
(2) The period allowed for extension is four months in total. However, where a situation in
which an applicant cannot bear responsibilities for or where additional requests for
extension of the designated period are deemed necessary for an international patent
application entering the national phase, additional extensions of the designated period shall
be allowed.
(3) When the period requested for extension has not exceeded four months in total and fees
have been paid, the request for extension shall be deemed to be approved when the
request for extension of the period was submitted. Where the requested period is for four
months, an examiner shall state a notice that „any further extension of the period shall not
be allowed‟ in the written approval for extension of the period and notify it to the applicant.
When another request for extension of the designated period is submitted, the examiner
shall disapprove the request for extension of the period.
(4) Where a request for extension of the designated period is submitted after the expiration
of the designated period regarding formalities examinations (the extended period where the
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period is extended because of the request for extension of the designated period), an
examiner shall give the applicant an opportunity to explain and return the written
application. The fees paid along with the submission of the request for extension of the
designated period shall be returned.
(Note) Where a request for extension of the period is not approved, the paid fees shall be
returned.
4.4. Reduction of Designated Period
When the period for initiating a patent-related procedure has been set, the period can be
shortened upon request. Where a request for reduction of the period is submitted, or where
the intention of reduction of the period is written in an amendment and is submitted, an
examiner shall deem the concerned designated period to have expired on the day when the
request or the amendment has been submitted and carry out the examination.
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Chapter. 4 Invalidation of Procedure and Return of
Document
1. Relevant Provisions
Article 46 of the Patent Act (Amendment of Procedure) The Commissioner of the Korean
Intellectual Property Office or the President of the Intellectual Property Tribunal shall order
an amendment to a patent-related procedure within a designated period if the procedure
falls under any of the following subparagraphs:
(i) where the procedure does not comply with Articles 3(1) or 6;
(ii) where the procedure does not comply with the formalities prescribed in this Act or by
Presidential Decree; or
(iii) where fees required under Article 82 have not been paid.
Article 16 of the Patent Act (Invalidation of Procedure) ① Where a person who has
been instructed to make an amendment under Article 46 fails to do so within the
designated period, the Commissioner of the Korean Intellectual Property Office or the
President of the Intellectual Property Tribunal may invalidate the patent-related procedure.
However, where a person who has been instructed to make an amendment for not paying
the fees for requesting an examination under Article 82(2) fails to pay the fees for
requesting an examination, the Commissioner of the Korean Intellectual Property Office or
the President of the Intellectual Property Tribunal may invalidate the amendment to the
description attached to the patent application.
② Where a patent-related procedure is invalidated under paragraph (1), if the delay is
considered to have been caused by unavoidable reasons, the Commissioner of the Korean
Intellectual Property Office or the President of the Intellectual Property Tribunal may revoke
the disposition of invalidation at the request of the person instructed to make the
amendment, provided the request is made within two months of the date on which the
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reasons for the delay cease to exist and not more than a year after the designated period
expired.
③ Where the disposition of invalidation is revoked under the proviso of paragraph (1) or
paragraph (2), the Commissioner of the Korean Intellectual Property Office or the President
of the Intellectual Property Tribunal shall issue a copy of the disposition notification to the
person who was instructed to make an amendment.
Article 17 of the Patent Act (Subsequent Completion of Procedure) Where a person
who has initiated a patent-related procedure fails to observe either the period for requesting
a trial under Article 132ter or the period for demanding a retrial under Article 180(1) for
unavoidable reasons, the person may complete the procedure within the fourteen-day
period immediately after the date on which the reasons ceased to exist, if not more than
one year has elapsed since the designated period expired.
Article 67-3 of the Patent Act (Restoration of Patent Application) ① Where a patent
applicant fails to comply with one of the following periods due to reasons unattributable to
him or her and this leads to the revocation of a patent application or confirmation of a
decision to reject a patent right, the applicant may file a request on examination or
reexamination of the application within two months from the date on which such grounds
cease to exist. However, if one year has passed from the expiration date of the concerned
period, the applicant shall not file a request on examination or reexamination of the
application:
1. the period allowed for a request of examination on an application in accordance with
Article 59(2) or (3) of the Patent Act
2. the period allowed for a request of reexamination on an application in accordance with
Article 67(2)(ⅰ) of the Patent Act
② Notwithstanding Article 59(5) of the Patent Act, where there is a request for examination
or reexamination on an application under paragraph 1, the patent application shall be
deemed not to have been withdrawn or the decision of rejection of the patent right shall be
deemed not to be confirmed.
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Article 11 of the Enforcement Rules of the Patent Act (Return of Illegitimate Application
Document) ① Where a patent application or an application to register an extension of the
term of a patent right, a trial-related document or article such as sample, etc.(hereinafter in
this Article referred to as „application documents, etc.‟) under Articles 42, 90, 140 or 140(2)
of the Patent Act falls under any of the following subparagraphs, the Commissioner of the
Korean Intellectual Property Office of the President of the Intellectual Property Tribunal shall
not deem such application documents to be legitimate, except for special provisions in the
Enforcement Rules of the Patent Act.
1. Where Article 2 of the Enforcement Rules of the Patent Act is violated and one document
for each application is not written.
2. Where the type of an application or a document is not clear.
3. Where the name (the title in case of a juristic person) or the applicant code of a person
who initiates a patent-related procedure〔In absence of application code, the name and
address of the applicant(in case of a juristic person, its title and business address〕 is not
described.
4. Where an application is not written in Korean
5. Where a description is not attached to a written application (including the case where the
detailed explanation of the invention is not disclosed in a description).
5-2. Where a description which does not specify claims is attached to a patent application
and the amendment period of the description under Article 42(5)(1) of the Patent Act has
already elapsed when the patent application was filed as a divisional application, converted
application as well as application by the lawful holder of a right.
6. Where an application document was submitted by a person who has neither an address
nor a place of business in the Republic of Korea, other than a patent administrator under
Article 5(1) of the Patent Act.
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7. Where the documents were not submitted within the designated period under the Patent
Act or any order under the Patent Act.
8. Where a request for extension of the period was submitted for the period not allowed for
extension among the designated periods under the Patent Act or any order under the
Patent Act.
9. Where a request for extension of the period was submitted after the expiration of the
period for requesting a trial under Article 132(3) of the Patent Act or the period designated
by the Commissioner of the Korean Intellectual Property Office, the President of the
Intellectual Property Tribunal, an administrative patent judge or an examiner.
10. Where documents regarding a patent-related procedure have been submitted after the
termination of such patent-related procedure.
11. Where a person not entitled to initiate a patent-related procedure has submitted
application documents regarding the procedure.
12. Where the concerned documents are not clear and cannot be accepted when an
application code should be granted based on a report in Annexed Form No.2 (only for
restriction of reliance on general power of attorney), an application for registration of
general power of attorney in Annexed Form No.3, an application for change/withdrawal of
registration of general power of attorney, an application for grant of the applicant code in
Annexed Form No.4 or ex officio.
13. Where a patent application or any document submitted over a computerized network or
via electronic recording device is not written by using the software offered by the Korean
Intellectual Property Office or the KIPO website, or where documents in an electronic form
have been submitted in a condition where they cannot be handled in the electronic data
processing system.
13-2. Where documents required to be submitted under Article 3(2)(2) of the Enforcement
Rules of the Patent Ace have not been submitted within the designated period.
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14. Where documents required to be submitted under Article 8 of the Enforcement Rules of
the Patent Act have not been submitted within the period allowed for explanation without
any legitimate explanation.
15. Where a patent applicant has submitted a request for examination on a patent
application attached with a description which does not specify claims.
16. Where a request for early publication has been submitted for a patent application
attached with a description which does not specify claims or a patent registered for
publication under Article 87(3) of the Patent Act.
17. Where a decision to grant a patent cannot be delayed since the application falls under
any of sub-subparagraphs of Article 40 (2)(1) of the Enforcement Rules of the Patent Act.
18. Where an examination on a patent application cannot be delayed since the application
falls under any of the sub-subparagraphs of Article 40(3)(3) of the Enforcement Rules of the
Patent Act.
19. Where a request for re-examination without amendment of a description or drawing(s)
attached to a patent application has been made or where a request for re-examination
cannot be made since the application falls under the provision of Article 67(2)(1) of the
Enforcement Rules of the Patent Act.
② Where application documents deemed to be illegitimate under the provision of Article
11(1) of the Enforcement Rules of the Patent Act are to be returned, the Commissioner of the
Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall
deliver a notice containing the intention to return the application documents, grounds for
return and period for explanation to the applicants who have submitted the application
documents. However, where application documents fall under Article 11(1)(14) of the
Enforcement Rules of the Patent Act, the commissioner or the president shall notify the
applicants of the grounds for return the documents and return the documents immediately.
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③ Where an applicant who has received the returned application documents under Article
11(2) of the Enforcement Rules of the Patent Act intends to give explanation, he/she shall
submit to the Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal an explanation in Annexed Form No.24 of the Enforcement
Rules of the Patent Act within the period for explanation. When an applicant wishes to
receive the returned application documents without giving any explanation within the period
allowed for explanation, the applicant shall submit a request for return of documents in
Annexed Form No.8 of the Enforcement Rules of the Patent Act to the Commissioner of the
Korean Intellectual Property Office or the President of the Intellectual Property Tribunal. In
such a case, the commissioner or the president shall immediately return the application
documents when a request for return has been made.
④ When an applicant has failed to submit an explanation or a request for return within the
period for explanation or where the submitted explanations are deemed to be groundless,
the Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal shall return the application documents right after the expiration
of the period for explanation.
2. General Principles of Formalities Examination
(1) A formalities examination refers to a review procedure conducted by the Commissioner of
the Korean Intellectual Property Office or the President of the Intellectual Property Tribunal
regarding a patent-related procedure under Article 46 of the Patent Act and Article 11 of the
Enforcement Rules of the Patent Act. If irregularities are found in the results of the formalities
examination, the commissioner or the president shall order to amend and invalidate the
concerned patent-related procedure or return the application documents after giving the
applicant an opportunity to explain.
(2) In principle, formalities examinations are conducted by divisions in charge of formalities
examination (Application Division, International Application Division, Registration Division or
Trial Policy Division) under the name of the Commissioner of the Korean Intellectual Property
Office or the President of the Intellectual Property Tribunal. However, where irregularities
found in formalities examinations are closely linked to substantive examinations and the
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division which has received the document found it inappropriate to process such documents
(such as non-prejudicial disclosure), the formalities examination shall be conducted by an
examiner.
Where irregularities in formalities related to application, subsequent requests, claim
procedures are omitted and transferred as general items to be processed in divisions in
charge of formalities examination, an examiner shall describe the irregularities and transfer
the documents to divisions in charge of formalities examination. The division in charge of
formalities examination which has received the documents from the examiner shall complete
the formalities examination by reviewing the irregularities and re-transfer the relevant
documents to the examiner.
3. Invalidation of Procedure
(1) Where a patent-related procedure falls under any subparagraph of Article 46 of the Patent
Act, an examiner shall request an amendment of such procedure in the name of the
Commissioner of the Korean Intellectual Property Office.
Where bibliographic data of an application, amendment period, documents to be amended,
written amendments are not submitted within the designated period, an examiner shall state
the intention to invalidate the concerned procedure and items to be amended in detail in a
request for amendment. Items to be amended shall contain the contents in violation of
procedural requirements defined in the Patent Act or other relevant provisions. If necessary,
amendment methods shall be stated in detail.
The amendment period for a patent-related procedure designated in a request for
amendment shall be within one month.
(2) Where irregularities in a patent-related procedure have been addressed through the
submission of an amendment within the designated period, the application shall be deemed
to have been amended when the procedure was conducted. Where an amendment is not
submitted within the designated period, or where irregularities are not addressed, an
examiner can invalidate the concerned procedure.
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Where an amendment has been submitted, an examiner shall examine the application in
consideration of the followings.
① Where a procedural amendment is submitted after the expiration of the designated
period
After the expiration of the designated period, where irregularities are addressed through
the submission of an amendment before the delivery date of a notice of invalidation
(hereinafter, referred to as „date of invalidation‟), an examiner shall not invalidate the
application, but accept the application. An amendment submitted after the date of
invalidation shall be returned.
Where an amendment was submitted by mail before the date of invalidation, but an
examiner invalidated the application without noticing the submission of the amendment,
or where irregularities are addressed by reviewing amended items, an examiner shall
revoke the disposition of invalidation and accept the amendment. An amendment
submitted on the date of invalidation shall be treated in the same manner.
② A procedural irregularity is newly found
Where any new irregularities are found when the amendment is completed by the
request for amendment, an examiner shall set the period for such irregularities and
request amendment again. In this case, an applicant shall pay the amendment fees for
each amendment. However, where the items which would have been amended for the first
time have been omitted and an examiner orders an amendment to such items again, any
additional fees for amendment to such items shall not be required. (Article 3 of the
Instruction on the Payment of amendment fee among Patent fee, Registration fee and
other fees and KIPO Notification No. 2009-19 shall be referred.)
③ Where an amendment including the amended items which are irrelevant of the
amendment request is submitted
Where a voluntary amendment irrelevant of the intention of the amendment request has
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been submitted while a written amendment by the request for amendment has not been
submitted, an examiner shall accept the amendment. If the amended items fall under the
items for which the amendment fees are paid, the amendment fee shall be paid.
④ Where only parts of the items required for amendment are amended
Where an examiner requests amendment to more than two procedures in a single request
for amendment, but an amendment containing only parts of the procedures are amended
is submitted within the designated period, an examiner shall invalidate only the
procedures of which irregularities are not addressed. Where more than two items required
for amendment have been amended in two or more separate amendments, it shall be
deemed to be separate amendments. Therefore, fees for separate amendments shall be
paid.
⑤ Where only the amended items are submitted without an amendment
Where only the amended items are submitted without using the formalities of an
amendment, an examiner shall accept the document first, and then request amendment to
the amendment procedure, citing the procedure is in violation of the formalities of an
amendment. If the type of the document is unclear, an examiner shall return the
document. Where irregularities are minor, an examiner can accept the document without
requesting an amendment.
Where an amendment in violation of the formalities of amendment has not been
corrected based on the formalities within the designated period, an examiner shall
invalidate the amendment procedure for the concerned amendment. Where irregularities
indicated by the decision to invalidate the amendment procedure are not addressed, an
examiner shall invalidate the concerned procedure.
(3) The person who can invalidate a patent-relate procedure is the Commissioner of the
Korean Intellectual Property Office or the President of the Intellectual Property Tribunal, not
an examiner. Subjects of invalidation are not limited to application procedures. All the
patent-related procedures shall be subject to invalidation.
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When an examiner intends to invalidate a patent-related procedure, he/she shall state the
grounds for invalidation and notify the reasons to the person who has initiated the
procedure. A notice stating that an applicant can initiate an administrative trial or lawsuit
shall be attached to a notification of invalidation of the procedure.
(4) Where an additional payment of examination fees is required to an applicant since the
number of claims is increased because of the amendments to the description after a request
for examination made by a person other than the applicant, but the applicant has not paid
the examination fees, an examiner shall invalidate the amendment procedure for a
description.
(5) When an application is invalidated, the application is deemed to have never filed in
applying Articles 36(1) to (3) of the Patent Act. Also, an application claiming Domestic
Priority cannot be filed based on inventions disclosed in the description or drawing(s)
originally attached to the concerned application.
Also, when an application is invalidated, the right to request compensation shall be
deemed never to have existed.
4. Revocation of Invalidation
(1) Where a patent-related procedure is invalidated, but if the failure to amend within the
designated period is recognized to have been caused by reasons not imputable to a person
ordered to amend, the Commissioner of the Korean Intellectual Property Office can revoke
the disposition of invalidation if a request for revocation is made within two months of the
day when such unavoidable grounds are extinguished. However, when one year has elapsed
after the designated period expires, the commissioner or the president cannot revoke the
disposition of invalidation. In such a case, 「causes not imputable to a person ordered to
amend」 refer to the reasons that an ordinary person cannot avoid even if he/she is cautious,
such as natural disasters and other unavoidable reasons, as well as the case where an
invalidation document has been delivered to a party uninvolved. An applicant‟s unawareness
of service by notification shall not be included to unavoidable grounds, unless there is a
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particular reason for an applicant to be unaware of the service by notification.
(Note) The so-called „laches waiver‟ defined in Article 32(2) of the Patent Act* shall apply
only where the Commissioner of the Korean Intellectual Property Office invalidates a patent-
/request-related procedure, except for cases where a person who has initiated a patent-
/request-related procedure has intentionally passed the designated period for the
subsequent actions or has failed to pay the patent fees at the time of registration as defined
in Article 32(1). However, the „laches waiver‟ shall not apply where a patent right is deemed
to have been extinguished since a registered parent right holder has failed to pay the
patent fees in the additional payment period and the period for patent fee payment has
elapsed, as defined in Article 77(3) of the Patent Act ((Case No. 82 Nu 264(Supreme Court,
14. December 1982)).
(Footnote) Article 32(2) of the Patent Act* was the provision of the previous Patent Act at
the time when the ruling of the case was made. It now corresponds to Article 16(2) of the
current Patent Act.
(2) If an applicant wishes to receive the revocation of the disposition of invalidation, he/she
shall attach a copy of the evidential document for reasons of laches to a written request for
relief of the expiration of the period in Annexed Form No.10 of the Enforcement Rules of
the Patent Act and submit the request to the Commissioner of the Korean Intellectual
Property Office. In the presence of a legal representative, a copy of the evidential document
of the power of representation shall be attached to the written request, too.
(3) Whether to revoke the disposition of invalidation shall be determined by an examiner (or
a division) that has invalidated the application in the first place under the name of the
Commissioner of the Korean Intellectual Property Office or the President of the Intellectual
Property Tribunal. Then, the examiner or the division shall notify such decision to the person
who requested the revocation of invalidation. Also, the examiner or the division shall state in
a notification of the revocation of the disposition of invalidation that amendment can be
made within the period corresponding to the original amendment period from the time of
the revocation of invalidation.
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Where a patent-related procedure or examination is initiated during the period after the
disposition of invalidation before the revocation of the disposition of invalidation, an
examiner shall review the procedure or examination and determine whether such procedure
or examination takes effect by considering the effect made by the revocation of the
disposition of invalidation and the confidence protection principle.
5. Return of Documents
(1) The Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal shall deliver a notification stating the intention to return
application documents, the ground for rejection of the documents and the period for
explanation to the applicant, requester for trial or submitter (hereinafter referred to as „an
applicant, etc.‟) of application documents deemed to be illegitimate under Article 11 of the
Enforcement Rules of the Patent Act.
(2) Where an applicant, etc. who has received a notification containing the intention to
return application documents wishes to give explanations, he/she shall submit a written
explanation in Annexed Form No.24 of the Enforcement Rules of the Patent Act to the
Commissioner of the Korean Intellectual Property Office within the period for explanation.
Where an applicant, etc. wishes to get his/her application documents returned without
giving any explanation within the period for explanation, he/she shall submit a request for
return of application documents in Annexed Form No.8 of the Enforcement Rules of the
Patent Act to the Commissioner of the Korean Intellectual Property Office.
When a request for return of application documents is made, the Commissioner of the
Korean Intellectual Property Office or the President of the Intellectual Property Tribunal shall
return the documents immediately. Also, even when an applicant, etc. fails to submit the
documents required for submission under Article 8 of the Enforcement Rules of the Patent
Act without giving any legitimate explanation within the period for explanation, the
commissioner or the president shall state the grounds for rejection of documents and return
the application documents immediately.
Where an applicant, etc. fails to submit a written explanation or a request for return of
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application documents within the period for explanation, or where the explanation is
recognized to be groundless, the Commissioner of the Korean Intellectual Property Office or
the President of the Intellectual Property Tribunal shall immediately return the application
documents right after the expiration of the period for explanation.
When the Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal intends to return application documents to an applicant, etc.,
he shall notify the applicant, etc. of the ground for rejection of the documents. A notice that
an applicant, etc. can initiate an administrative trial or lawsuit shall be written in the
notification of the return of documents.
(3) An applicant, etc. can submit an explanation or opinion on the notification of grounds
for rejection of application documents within the period for explanation. However, he/she is
not allowed to submit an amendment in order to address the grounds for rejection of
application documents.
(Note) The matters to be amended in procedures include irregularities in the items of
applications, failure to prepare required documents. Other than the above-mentioned
irregularities in formalities, substantive issues such as whether foreigners hold any capacity
or whether an applicant can obtain a patent (in the case of a joint invention) shall not be
included. Therefore, a decision not to accept such substantive matters immediately shall not
be made. Application documents containing such substantive matters shall be accepted first,
and then an examiner shall conduct a substantive examination on the application
documents.
6. Subsequent Completion of Procedure
(1) Where a person who initiated a patent-related procedure has failed to comply with the
period for requesting a trial under Article 132(3) or the period for demanding a retrial under
Article 180(1) of the Patent Act because of a cause not imputable to the person, he/she may
subsequently complete the procedure within the designated period. It is based on the
reason that where a person who initiated a patent-related procedure is not allowed to
challenge the decision or the ruling because the period for requesting a trial or retrial has
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expired due to a cause not imputable to the person, he/she would get harshly
disadvantaged in such procedures. Also, it is the same purport as Article 16(2) of the Patent
Act.
(2) The period allowed for subsequent completion of a patent-related procedure is within 14
days of the day when a cause not imputable to the person who initiated the patent-related
procedure ceases to exist. When one year has elapsed from the day of the expiration of the
period for subsequently completing a patent-related procedure, the procedure cannot be
completed subsequently.
7. Restoration of Patent Application
Where a patent applicant fails to comply with one of the following periods due to reasons
unattributable to him or her and this leads to the revocation of a patent application or
confirmation of a decision to reject a patent right, the applicant may file a request on
examination or reexamination of the application within two months from the date on which
such grounds cease to exist. However, if one year has passed from the expiration date of the
concerned period, the applicant shall not file a request on examination or reexamination of
the application. (Article 67(3)(ⅰ) of the Patent Act)
1. the period allowed for a request of examination on an application in accordance with
Article 59(2) or (3) of the Patent Act
2. the period allowed for a request of reexamination on an application in accordance with
Article 67(2)(ⅰ) of the Patent Act
② Notwithstanding Article 59(5) of the Patent Act, where there is a request for examination
or reexamination on an application under paragraph 1, the patent application shall be
deemed not to have been withdrawn or the decision of rejection of the patent right shall be
deemed not to be confirmed.(Article 67(3)(ⅱ) of the Patent Act)
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Chapter 5. Discontinuation and Resumption of Procedure
1. Relevant Provisions
Article 18 of the Patent Act (Succession of Procedural Effects) The effects of a procedure
taken in relation to a patent or other rights relating to a patent shall extend to the successor
in title.
Article 19 of the Patent Act (Continuation of a Procedure by a Successor) Where a
patent right or other patent-related right is transferred while a patent-related procedure is
pending before the Korean Intellectual Property Office or the Intellectual Property Tribunal,
the Commissioner of the Korean Intellectual Property Office or the presiding administrative
patent judge may require the successor in title to continue the patent-related procedure.
Article 20 of the Patent Act (Interruption of a Procedure) If any patent-related procedure
pending in the Korean Intellectual Property Tribunal falls under any of the following
subparagraph, it shall be interrupted: Provided, That this shall not apply where there is a
representative authorized to conduct the procedure:
1. When the party involved is deceased;
2. When the juristic person involved ceases to exist by merger;
3. When the party involved loses the ability to conduct the procedure;
4. When the legal representative of the party involved is deceased or loses his/her authority;
5. When the commission of a trustee given by the trust of the party involved terminates;
6. When the representative as provided for in the proviso of Article 11(1) is deceased or
loses his/her qualification; or
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7. When the trustee in bankruptcy, etc. who acted on behalf of the party involved in his/her
own name under a certain qualification loses his/her qualification or is deceased.
Article 21 of the Patent Act (Resumption of an Interrupted Procedure) When a
procedure pending in the Korean Intellectual Property Office or the Intellectual Property
Tribunal has been interrupted in the manner referred to in Article 20, a person who falls
under any of the following subparagraphs shall resume the procedure:
1. In cases of subparagraph 1 of Article 20, the deceased person‟s successor, administrator of
inheritance, or any other person authorized to pursue the procedure under other Acts:
Provided, That the his/her right to succession is subject to renunciation;
2. In cases of subparagraph 2 of Article 20, the juristic person established by a merger or
survived a merger;
3. In cases of subparagraphs 3 and 4 of Article 20, the party whose ability to take necessary
procedure has been restored or any person who becomes the legal representative of the
party;
4. In cases of subparagraph 5 of Article 20, a new trustee;
5. In cases of subparagraph 6 of Article 20, a new representative or each party;
6. In cases of subparagraph 7 of Article 20, a new trustee in bankruptcy, etc. holding the
same qualification.
Article 22 of the Patent Act (Request for a Resumption) ① A request to resume a
procedure interrupted under Article 20 may be made by an opposing party.
② When a request to resume a procedure interrupted under Article 20 is made, the
Commissioner of the Korean Intellectual Property Office or the presiding administrative
patent judge shall notify the opposite party thereof.
③ If the Commissioner of the Korean Intellectual Property Office or the administrative
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patent judge deems that no grounds exist to accept a request to resume the procedure
interrupted under Article 20, after examining the request ex officio, he/she shall dismiss the
request by decision.
④ The Commissioner of the Korean Intellectual Property Office or the administrative patent
judge shall decide, upon request to resume, whether to permit resumption of the
interrupted procedure after a certified copy of the decision or trial decision was sent.
⑤ If a person referred to in Article 21 fails to resume the interrupted procedure, the
Commissioner of the Korean Intellectual Property Office or the administrative patent judge
shall, ex officio, designate a period and order to resume such procedure within the period.
⑥ If no request for resumption is made within the period designated in paragraph (5), the
resumption is deemed to have been made on the day after the designated period expires.
⑦ Having determined that a resumption has been made in accordance with paragraph (6),
the Commissioner of the Korean Intellectual Property Office or the administrative patent
judge shall notify the party involved.
Article 23 of the Patent Act (Suspension of a Procedure) ① If the Commissioner of the
Korean Intellectual Property Office or the administrative patent judge is unable to carry out
his/her duties due to a natural disaster or other extenuating circumstances, the procedure
pending in the Korean Intellectual Property Office or the Intellectual Property Tribunal shall
be suspended until such impediments cease to exist.
② If a party involved is unable to pursue a procedure pending in the Korean Intellectual
Property Office or the Intellectual Property Tribunal on account of impediments of indefinite
duration, the Commissioner of the Korean Intellectual Property Office or the administrative
patent judge may order its suspension by decision.
③ The Commissioner of the Korean Intellectual Property Office or the administrative patent
judge may cancel the decision issued under paragraph (2).
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④ If a procedure is suspended under paragraphs (1) or (2), or a decision is canceled under
paragraph (3), the Commissioner of the Korean Intellectual Property Office or the presiding
administrative patent judge shall notify the parties involved thereof.
Article 24 of the Patent Act (Effects of Interruption or Suspension) The interruption or
suspension of a patent-related procedure pending in the Korean Intellectual Property Office
suspends the running of a term and the entire term shall start to run again from the time of
the notification of the continuation or resumption or pursuit of the procedure.
2. Discontinuation of Procedure
Discontinuation of a patent-related procedure refers to a condition where a patent-related
procedure such as filing an application, making a request has not been legally initiated while
an application is pending before the Korean Intellectual Property Office or the Intellectual
Property Tribunal. The Patent Act divides the discontinuation of a patent-related procedure
into interruption of procedure and suspension of procedure.
Interruption of a procedure means that when a cause not attributable to a party involved
happens, the concerned legal procedure is interrupted until another party can reinitiate a
procedure interrupted.
Suspension of a procedure refers to the condition where a cause not imputable to the
Korean Intellectual Property Office or a party involved happens in pursuing the concerned
procedure, the procedure is suspended legally or by the decision of the Korean Intellectual
Property Office.
2.1 Interruption of Procedure
(1) A patent-related procedure shall be interrupted because of legal reasons regardless of
intention of the Korean Intellectual Property Office or a party involved who initiates the
concerned procedure. When a procedure is interrupted, a legitimate successor in title shall
make a request for resumption of the interrupted procedure. However, even in the presence
of a cause of interruption of a patent-related procedure, the concerned procedure shall not
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be interrupted if there is a legal representative with power of attorney.
Parties who can resume the interrupted patent-related procedure based on ground for
interruption are listed below.
① Where a party involved is deceased, a successor in title or an administrator of inherited
property of the party involved or a person who is legally required to pursue the interrupted
procedure
However, a successor in title shall not resume the concerned procedure until he/she
renounces inheritance.
(Note) Article 1019 of the Korean Civil Act (Period for Acceptance and Renunciation) ① An
inheritor to property may, within three months after he is informed of the commencement
of an inheritance, effect an acceptance, absolute or qualified, or a renunciation.
② Where a juristic person involved ceases to exist by merger, the juristic person established
by merger or continuing to exist after merger
③ Where a party involved loses the ability to conduct a patent-related procedure, the party
involved who has recovered the ability to conduct the procedure, or a person who has
become a legal representative
④ Where a legal representative of a party involved is deceased or loses his/her authority,
the party involved who has recovered the ability to conduct a patent-related procedure or a
legal representative or a person who has been newly appointed as a legal representative
⑤ Where the commission of a trustee given by the trust of the party involved is terminated,
a newly-appointed trustee
⑥ Where a representative under the proviso to Article 11(1) of the Patent Act is deceased or
loses his/her qualification, a new representative or each party involved
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⑦ Where a trustee in bankruptcy, etc. who acted on behalf of a party involved in his/her
own name holding a certain qualification loses his/her qualification or is deceased, a person
with the same qualification
(2) An interrupted procedure can be resumed by submitting a written application stating
such intention of resumption. When a request for resumption of an interrupted procedure is
made, the Commissioner of the Korea Intellectual Property Office or the President of the
Intellectual Property Tribunal shall notify such request to the opposing party in the
concerned procedure.
A person who intends to request the resumption of an interrupted procedure shall attach
evidential documents of grounds for resumption to a written request for resumption of an
interrupted procedure and then submit them to the Commissioner of the Korean Intellectual
Property Office or the President of the Intellectual Property Tribunal. Also, a resumption of
an interrupted procedure can be requested by an opposing party. The Commissioner of the
Korean Intellectual Property Office or the administrative patent judge shall dismiss the
request of resumption when a request for resumption of an interrupted procedure is
recognized to be groundless recognizing based on the result of an ex officio investigation.
The Commissioner of the Korean Intellectual Property Office or the administrative patent
judge shall determine, upon request to resume, whether to permit resumption of an
interrupted procedure after a certified copy of the decision to grant a patent was sent.
Meanwhile, where the party involved who was supposed to resume an interrupted
procedure failed to do so, the Commissioner of the Korean Intellectual Property Office or
the administrative patent judge shall order a resumption of the interrupted procedure within
a designated period. Where the interrupted procedure is not resumed within the designated
period, the interrupted procedure shall be deemed to be resumed on the day following the
expiration of the designated period and be notified to the party involved.
(3) In general, even when grounds for interruption of a patent-related procedure generate
or cease to exist, the commissioner or the administrative patent judge cannot be aware of
such fact when a report of change of rights is not submitted by an applicant. Therefore, in
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an ordinary examination, an examiner shall conduct the examination on a patent-relate
procedure without an additional investigation into whether the procedure has been
interrupted or not.
Where the Commissioner of the Korean Intellectual Property Office has become aware of
the fact that a ground for interruption of a patent-related procedure was generated in the
middle of an examination, he shall suspend the examination until the point when the
procedure is resumed under Article 21 of the Patent Act. An interrupted procedure can be
resumed when a request for resumption has been made or when the commissioner has
become aware that the ground for resumption of the procedure has been addressed.
Where an examiner is aware of a ground for resumption of an interrupted procedure,
he/she shall order a resumption of the procedure within the designated period in the name
of the Commissioner of the Korean Intellectual Property Office. Where a request for
resumption of a patent-related procedure is not filed within the designated period, the
request for resumption shall be deemed to have been filed. Then, the examiner shall notify
such fact to the party involved and carry out the examination.
(4) Where an examiner overlooks a ground for interruption of a patent-related procedure
and continues an examination procedure, he/she shall invalidate such procedure and initiate
the procedure from the beginning.
(Example) Where an applicant without any representative has died, but an examiner has sent
a notice of ground for rejection and made a decision of rejection without awareness of
death of the applicant, the decision of rejection is illegitimate since the procedure for
submission of a written opinion according to a notice of ground for rejection is supposed to
be halted under Article 20 of the Patent Act, even when the Korean Intellectual Property
Office or a successor of the applicant does not take additional actions. Therefore, an
examiner shall revoke the decision of rejection and give an opportunity to submit a written
opinion by delivering a notification of submission of a written opinion after resumption of
the interrupted procedure.
2.2 Suspension of Procedure
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(1) If the Korean Intellectual Property Office is unable to carry out its duties due to a natural
disaster or other extenuating circumstances, the procedure shall be suspended without any
decision of suspension.
(2) If a party involved is unable to pursue a procedure pending in the Korean Intellectual
Property Office on account of impediments of indefinite duration, the Commissioner of the
Korean Intellectual Property Office or the administrative patent judge may order its
suspension by decision. In this context, „impediments of indefinite duration‟ refer to the
condition in which the Korean Intellectual Property Office is able to conduct its duties but a
party involved faces impediments in initiating a patent-related procedure. Such examples
include where communications of a region in which a party involved is residing have been
disrupted because of a war or other extenuating conditions and there is no sign of recovery
from disruption anytime soon or where a party involved suddenly falls ill and is unable to
contact the Korean Intellectual Property Office.
(3) Where the examination procedure of a patent application is related to a trial or litigation
and where conducting the examination procedure on the concerned application after the
completion of the trial or litigation procedure is deemed appropriate, an examiner can
suspend such procedure by discretion.
(4) Where the condition in which the Korean Intellectual Property Office is unable to
conduct its duties, such as a natural disaster, ceases to exist, the interrupted procedure shall
be resumed under Article 23(1) of the Patent Act.
As for a suspended procedure under Article 23(2) of the Patent Act, where it is recognized
that the ground for suspension ceased to exist or other patent-related procedures can be
resumed, an examiner can revoke the decision of suspension.
Where a patent-relate procedure is suspended under Article 23(1) or (2) of the Patent Act
or where a decision of suspension is revoked, the Commissioner of the Korean Intellectual
Property Office or the presiding administrative patent judge shall notify the party involved
thereof.
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2.3 Effect of Suspension of Procedure
The interruption or suspension of a patent-related procedure shall suspend the running of a
period for such procedure and the entire period shall start to run again from the time of the
notification of the continuation or resumption or pursuit of the procedure. In other words,
the period which elapsed before the interruption or suspension of the period shall not be
calculated and the entire term of the designated period or statutory period shall commence
anew, instead of that the designated period or statutory period is completed by the running
of the remaining period before the interruption or suspension of the period.
(Example) Where an examiner ordered to amend a patent-related procedure within one
month under Article 46 of the Patent Act in the name of the Commissioner of the Korean
Intellectual Property Office, but the procedure was interrupted when 15 days elapsed after
the request for amendment and then was resumed, the period allowed for amendment after
the resumption of the period shall be one month.
(2) In principle, while a patent-related procedure is interrupted or suspended, the
Commissioner of the Korean Intellectual Property Office or an examiner shall not initiate the
procedure.
3. Resumption of Procedure and Succession of Effect
(1) Where a patent right or any patent-related right is transferred while a patent-related
procedure is pending in the Korean Intellectual Property or the Intellectual Property Tribunal,
the Commissioner of the Korean Intellectual Property Office or the presiding administrative
patent judge may require the successor in title to the patent right or the patent-related right
to continue the patent-related procedure.
Where an examiner intends to make the successor in title resume a patent-related
procedure, he/she shall notify the party involved of such intention in the name of the
Commissioner of the Korean Intellectual Property Office.
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(2) Where a patent right or any patent-related right is transferred, the effect of the already-
initiated patent-related procedure shall reach the successor in title. In other words, where a
patent right or any patent-related right is transferred, the procedure does not need to
commence anew since the already-initiated procedure is effective. Therefore, a party
involved does not need to restart the patent-related procedure which was already initiated.
(Example) Where a notice of change of applicant was filed within the designated period
after an examiner sent a notification of submission of a written opinion, the examiner does
not need to send a notification of submission of a written opinion to the successor in title
again. Also, the period for submission of a written opinion shall become a period designated
in the original notification of submission of a written opinion.
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Chapter 6. Submission and Delivery of Documents
1. Relevant Provisions
Article 28 of the Patent Act (Effective Date of Submitted Documents) ① Written
applications, written requests or other documents (including articles; hereinafter the same
shall apply in this Article) submitted to the Korean Intellectual Property Office or the
Intellectual Property Tribunal under this Act, or any order thereunder, shall be effective as of
the date on which they are delivered to the Korean Intellectual Property Office or the
Intellectual Property Tribunal.
② Where written applications, written requests or other documents under paragraph (1) are
submitted by mail to the Korean Intellectual Property Office or the Intellectual Property
Tribunal, they are deemed to be delivered to the Korean Intellectual Property Office or the
Intellectual Property Tribunal on the date stamped by the mail service if the date stamp is
clear. However, if such stamped date is unclear, they are deemed to have been delivered on
the date on which the mail was submitted to a post office, which is proved by a receipt
therefor. Provided, That this shall not apply where written applications for requesting
registration of a patent right and other rights related thereto, and documents concerning an
international application under Article 2(vii) of the Patent Cooperation Treaty (hereinafter
referred to as "international application") are submitted by mail.
③ Deleted.
④ Matters concerning the submission of documents with regard to the delay of mail, loss of
mail, or interruption of the mail service, other than paragraphs (1) and (2), shall be
presented by Ordinance of the Ministry of Knowledge Economy.
Article 28-3 of the Patent Act (Procedure for Filing Patent Applications by Electronic
Documents) ① A person who initiates a patent-related procedure may, pursuant to the
means prescribed by Ordinance of the Ministry of Knowledge Economy, convert a written
application for a patent or other documents to be presented to the Commissioner of the
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Korean Intellectual Property Office or the President of the Intellectual Property Tribunal
under this Act into electronic documents, and may present them by means of any
information and communication network or any electronic recording medium, such as a
floppy disk or an optical disk.
② Electronic documents presented under paragraph (1) shall have the same effect as other
documents presented under this Act.
③ When a presenter thereof confirms a receipt number through an information and
communication network, such electronic documents presented through an information and
communication network under paragraph (1) shall be deemed to have been received as the
details written in a file for receipt saved on a computer system operated by the Korean
Intellectual Property Office or the Intellectual Property Tribunal.
④ The kinds of documents capable of being presented by means of electronic documents
under paragraph (1) and the means of such presentation or other necessary matters therefor
shall be prescribed by Ordinance of the Ministry of Knowledge Economy.
Article 28-4 of the Patent Act (Report on Use of Electronic Documents and Electronic
Signature) ① A person who intends to initiate a patent-related procedure by electronic
documents shall first report the use thereof to the Commissioner of the Korean Intellectual
Property Office or the President of the Intellectual Property Tribunal, and shall affix his/her
electronic signature so that the presenter may be discerned.
② Electronic documents presented under Article 28-3 shall be deemed to have been filed
by a person who affixes his/her electronic signature under paragraph (1).
③ Matters necessary for procedures of report on use of electronic documents and the
methods of electronic signature under paragraph (1) shall be prescribed by Ordinance of the
Ministry of Knowledge Economy.
Article 28-5 of the Patent Act (Notification, etc. through Information and
Communication Networks) ① If the Commissioner of the Korean Intellectual Property
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Office, the President of the Intellectual Property Tribunal, a presiding administrative patent
judge, an administrative patent judge, a presiding examiner, or an examiner intends to give
notification and make transmission (hereinafter referred to as a “notification, etc.”) of any
pertinent documents to a person who reports the use of electronic documents under Article
28-4 (1), he/she may do so through information and communication networks.
② The notification, etc. of any pertinent documents given through information and
communication networks under paragraph (1) shall have the same effect as that given in
writing.
③ The notification, etc. of any pertinent documents under paragraph (1) shall, if it is written
in a file of a computer system operated by a person who receives the said notification, etc.,
be deemed to reach as the details written in a file of a computer system for transmission
operated by the Korean Intellectual Property Office or the Intellectual Property Tribunal.
④ Matters necessary for the classification and the means of notification, etc. given through
information and communication networks under paragraph (1) shall be prescribed by
Ordinance of the Ministry of Knowledge Economy.
Article 218 of the Patent Act (Service of Documents) Necessary matters related to
procedures for service of documents, etc. in this Act shall be prescribed by Presidential
Decree.
Article 219 of the Patent Act (Service by Public Announcement) ① In cases where
documents cannot be served because the domicile or place of business of a person to be
served is unclear, service shall be made by public announcement.
② Service by public announcement shall be implemented by publishing a notice in the
patent gazette to the effect that the documents will be served at any time to the person to
be served.
③ The initial service by public announcement shall come into force after the expiry of two
weeks from the date it is published in the Patent Gazette: Provided, That subsequent service
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by public announcement on the same party shall come into force from the date following its
publication in the Patent Gazette.
Article 220 of the Patent Act (Service of Documents to Overseas Residents) ① For an
overseas resident having a patent administrator, documents shall be served on his/her
patent administrator.
② For an overseas resident without a patent administrator, documents may be sent to
him/her by registered airmail.
③ When documents have been sent by registered airmail under paragraph (2), such
documents shall be deemed to have been served on the mailing date.
2. Submission of Documents
2.1 Effective Date of Submitted Documents
Written applications, written requests or other documents (including articles) submitted to
the Korean Intellectual Property Office shall be effective as of the date on which they are
delivered to the Korean Intellectual Property Office and „the date on which they are
delivered‟ can be defined as follows:
(1) Where written applications, written requests or other documents are submitted by mail
to the Korean Intellectual Property Office, they are deemed to be delivered to the Korean
Intellectual Property Office ① on the date as stamped by the mail service if the stamped
date is clear, ② on the date when the mail was submitted to a post office, which is proved
by a receipt therefor, if the stamped date is unclear or ③ on the date the documents are
delivered to the Korean Intellectual Property Office if the stamped date is unclear or if there
is no receipt for the mail.
(Note) Where documents are submitted by mail, the distance between the Korean
Intellectual Property Office and the place where each party involved resides may differ,
leading to unfairness to a party involved who lives a long distance away. Therefore, the time
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when the documents are submitted to a post office is deemed to be the time when the
documents are delivered to the Korean Intellectual Property Office.
(2) Where written applications, written requests or other documents (including articles) are
submitted by other means except for by mail, they are deemed to be delivered to the
Korean Intellectual Property Office when the office has received such documents.
(3) Where documents regarding an international application (an international application
under Article 2 (vii) of the Patent Cooperation Treaty) are submitted by mail, such
documents shall take effect from the date when they are delivered to the Korean Intellectual
Property Office despite the above-mentioned provision (1) regarding the submission of
documents by mail.
However, this shall apply to only an international application. Where a translation is
submitted to enter the national phase or where a written opinion is submitted in the
examination phase, an examiner shall determine based on the above-mentioned (1) or (2).
(4) In the cases of delay of mail, loss of mail, or interruption of the mail service of an
international application in the international phase, the application shall be prescribed by
Articles 86 to 88 of the Enforcement Rules of the Patent Act. However, where other
provisions on an international application exist in the PCT Rules (Article 82) other than the
above-mentioned articles, the PCT Rules shall apply preferentially.
(5) Where there is a delay of mail, loss of mail of an internal application, or interruption of
the mail service, Articles 86-88 of the Enforcement Rules of the Patent Act shall apply.
2.2 Execution of Patent-Related Procedure by Electronic Documents
(1) A patent-related procedure can be initiated by using electronic documents. A person who
wishes to initiate a patent-related procedure by electronic documents shall first report the
use thereof to the Commissioner of the Korean Intellectual Property Office or the President
of the Intellectual Property Tribunal. The report of use of electronic documents under Article
9(3) of the Enforcement Rules of the Patent Act shall be prescribed by Annexed Form No.6
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of the Enforcement Rules of the Patent Act.
(2) Electronic documents hold the same effect as other paper documents submitted.
Electronic documents presented through an information and communication network shall
be deemed to have been received as the details written in a file for receipt saved on a
computer system operated by the Korean Intellectual Property Office or the Intellectual
Property Tribunal when a presenter of the documents confirms a receipt number through an
information and communication network.
(3) Documents submitted by a person who initiates a patent-related procedure by electronic
documents through an information and communication network or any electronic recording
medium exclude a written submission of articles, such as attached electronic documents, a
written request for correction and assignment, documents related to an international
application written in Japanese (including submission of Annexed Forms No.35 and 51
attached with original copies of the documents), a written request for ruling under Article
214(1) of the Patent Act and a written request for correction of the digitized contents.
Meanwhile, an applicant who files an application related to national defense under secrecy
orders cannot file an application electronically. However, where an applicant has received a
notification to cancel the maintenance of secrecy or a notice to cancel secrecy, he/she can
file an electronic application.
(4) Electronic documents shall be electronically signed by using the software operated by
the Korean Intellectual Property Office or the KIPO webpage and be submitted.
Also, a person who wishes to submit documents online shall enter the applicant code and
password to the electronic data processing system by using the software provided by the
Korean Intellectual Property Office.
(5) Where electronic documents are submitted in an electronic recording medium, „a written
submission of articles such as attached electronic documents‟ of Annexed Form No.7 of the
Enforcement Rules of the Patent Act shall be submitted to the Commissioner of the Korean
Intellectual Property Office or the President of the Intellectual Property Tribunal. In this case,
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documents which cannot be submitted in an electronic recording medium shall be attached
to „a written submission of articles such as attached electronic documents‟ and be submitted.
(6) Where a person initiating a patent-related procedure submits the documents online and
there are some documents that have not been attached in online submission among the
documents which are required to be submitted, he/she shall attach the documents which
are not submitted to „a written submission of articles such as attached electronic documents‟
in Annexed Form No.7 of the Enforcement Rules of the Patent Act within three days of the
day when the applicant confirmed a receipt number of his/her online submission and submit
the documents in writing.
(7) Where two or more patent-related procedures which are required to be initiated at the
same time by ordinance are submitted online, they shall be entered consecutively. Among
two or more patent-related procedures required to be initiated at the same time by
ordinance, where one of such procedures are submitted online and the rest are submitted in
an electronic recording medium or in writing, all of the concerned patent-related procedures
shall be conducted on the same day.
3. Service of Documents
Under the Patent Act and the subordinate statutes, where the results of a patent-related
procedure which is being carried out affect the gain or loss of a patent right or the interest
of a party involved, the document containing such results shall be notified and served to a
party involved in a certain procedure. It is to avoid possible conflicts in advance by serving
the documents to a person who is supposed to receive such documents.
The Patent Act and the subordinate statutes define documents which affect the gain or loss
of a patent right in a patent-related procedure as documents subject to service and also
specify methods for service of such documents. The Patent Act and the subordinate statutes
prescribe that service of documents other than those subject to service shall be prescribed
by the Commissioner of the Korean Intellectual Property Office.
3.1 Service Procedure of Documents
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(1) Documents subject to service related to examination under the Patent Act and the
subordinate statutes include a certified copy of the decision to grant a patent right, a
notification of invalidation under Article 16(2) of the Patent Act, as well as a certified copy of
the decision under Article 214(3) of the Patent Act.
(2) Methods of service of documents include personal service, service by mail and service by
public notification. Such methods of service of documents shall be prescribed in Article 18
of the Enforcement Decree of the Patent Act.
Meanwhile, under Article 18(11) of the Enforcement Decree of the Patent Act, the sending,
etc. of documents other than those subject to service under the Act shall be made under
the conditions as prescribed by the Commissioner of the Korean Intellectual Property Office.
However, currently the sending, etc. of documents related regulations for practice of the
Korean Intellectual Property Office as well as operation of installation of dispatch boxes,
regulations for administrative practices on examination, regulations for administrative
practices on filing an application and the PatentNet system are operated in the same way as
the sending etc. of documents subject to service. Therefore, such documents shall be treated
the same as documents subject to service.
Moreover, even though a format such as in a notification to cancel of the decision of
invalidation is not reflected in the patent examination processing system, where examination
results affect the gain or change of a patent right, an examiner shall notify the examination
results to a party involved by using the 「Government Electronic Document System(On-nara
system)」.
(3) Personal service refers to a method of serving documents to a party involved or his/her
representative in person. In such a case, an examiner shall obtain a receipt stating the date
of receipt and the name of recipient from the person who has received the documents.
Where a recipient writes the date of receipt and the name of recipient on the document
service registry (Annexed Form No.3) and the registry of postage payment by addressee
(Annexed Form No.4) placed at the dispatch box in the General Services Division and
confirms them with the registered seal, the presentation of a receipt can be replaced with
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the stamping of the registered seal. When the above-mentioned recipient is not a patent
attorney, the patent attorney‟s registered seal and a representative‟s seal shall be stamped
together (Article 7 of the Regulation for Administrative Practices of Dispatch Box of the
Korean Intellectual Property Office).
(4) Service of documents shall be conducted by registered mail, except for the cases where a
party involved or his/her representative receives documents in person or via an information
and communication network. Where documents are served by mail, a receipt of the
registered mail of such documents issued by a post office shall be placed.
(Note) Where a written ruling or decision on trial, retrial or revocation of a patent right is to
be served, an examiner shall follow a special service method as prescribed the Postal Service
Act. However, an examiner may use the information and communication network when
serving a ruling or decision on trial, retrial or revocation of a patent right to a person who
filed the documents in the electronic form.
(5) The recipient of documents to be served shall be a person to whom the documents are
to be served. Where an applicant has a legal representative, the recipient shall be the legal
representative. Where an applicant has a sub-attorney or a representative appointed in the
middle of a procedure, the recipient shall be the sub-attorney or the agent appointed in the
middle of a procedure, except for some special reasons. In this context, some cases with
special reasons refer to where a representative not subject to preferential notification or a
party involved directly initiated a procedure related to examination, such as a procedure for
amendment or a written opinion, right before the notification by an examiner.
Where there are two or more legal representatives, the representative firstly written in an
application shall become the recipient of the documents, except for some special reasons.
Where there is a representative with general power of attorney among two or more
representatives, documents shall be served case by case to each representative in charge.
Where a person to be served is an incompetent person, documents shall be served to
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his/her legal representative.
Where two or more persons jointly initiate a patent-related procedure and a common
representative has been appointed, documents shall be served to the common
representative. Where there is no notification of appointment of common representative, the
applicant firstly written in the documents shall receive such documents, except for some
special reasons.
Any service to a person who is put in a prison or detention house shall be made to the
head of such prison or detention house.
Meanwhile, where there are more than two parties involved or legal representatives and one
legal representative is designated to receive documents and the fact is notified to the
Commissioner of the Korean Intellectual Property Office (the president of the Intellectual
Property Tribunal), any service of documents shall be made to the legal representative.
(6) Documents shall be served to the domicile or business office of a person to be served.
However, where a person wishing to receive documents has made a report on another place,
documents shall be served to the place where the recipient wanted to receive them. When
the place where the documents are originally to be served is changed, it shall be reported
without delay to the Commissioner of the Korean Intellectual Property Office.
(Note) Where a person to be served refuses to receive the documents without any justifiable
reason and it is thereby impossible to make a service, the service shall be considered to
have been made on the day of sending.
3.2 Service by Public Announcement
Where documents cannot be served because the domicile or place of business of a person
to whom the documents are to be served is unclear, service shall be made by public
announcement. In this context, „where documents cannot be served because the domicile or
place of business of a person to be served is unclear‟ refers to the case where the domicile
of a person to be served cannot be confirmed even by using the resident registration
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number sharing system. Where two or more persons initiate a patent-related procedure,
documents shall be served by public announcement when the domiciles of all of the
persons cannot be identified.
An examiner shall make a service by public announcement based on the following
procedure.
① Where documents are returned, the director of the chief division of the examination
bureau shall enter the dispatch number and the grounds for return of the documents into
the data processing system and notify such facts to the director of the examination division
or the head of the examination team.
After being notified of the above-mentioned facts, the director of the examination division
or the head of the examination team shall confirm the domicile of a person to be served by
entering such information into the administrative data sharing system and notify such results
to the examiner in charge of the application.
② Where an examiner cannot confirm a new domicile of the applicant even by using the
method mentioned in the above paragraph ①, the examiner shall try to confirm the
applicant‟s domicile by calling the phone number written in the application or by other
means.
③ When the domicile of the applicant is identified by using the methods mentioned in the
above paragraph ① or ②, an examiner shall, once again, send “a guide for notification of
change(correction) in applicant information” attached with a notification of applicant
information in Annexed Form No.5 of the Enforcement Rules of the Patent Act and the
returned document to the newly-identified domicile of the applicant.
④ Where the domicile of the applicant cannot be identified even by using the method
mentioned in the above paragraph ②, an examiner shall service the returned documents by
public announcement. However, where a ground for return of the document is the recipient‟s
absence, the examiner can serve “a guide of notification of change in applicant information”
attached with a notification of applicant information in Annexed Form No.5 of the
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Enforcement Rules of the Patent Act and the returned documents to the domicile of the
applicant again.
※ Where a person to be served is a juristic person, the resident registration number
sharing system cannot be used. Therefore, an examiner shall try to find the correct
domicile and serve the documents to the statutory domicile of the recipient at least
once before serving documents by public announcement.
(Notice) Despite procedures reflected in the regulations for examination practices and the
patent net system, where an examiner can serve documents to a person to be served by
reviewing documents by each application, he/she can serve such documents by the above-
mentioned method.
(Note) Currently, when a certified copy of a written request is served once to the address of
the plaintiff originally written on the register, but is returned, an examiner immediately
obtains internal approvals for the return of the document and then services the document
by public announcement. However, there are other ways to identify the address of the
plaintiff by ex officio investigation, such as looking up the information of the plaintiff in
other relevant administrative institutions, since his/her resident registration number is written
in the register. Therefore, the decision of service of documents by public announcement
without trying to find the address of the plaintiff cannot be deemed to be the proper
proceeding of the procedure (Case No. 91 Hu 59(Supreme Court, 8. October 1991)).
3.3 Instruction of Service of Documents by Public Announcement
(1) Where the address of an applicant has changed after documents were served to the
applicant by public announcement, the documents served by public announcement shall be
delivered to the applicant again. However, where a patent-related procedure in respect with
the document to be re-served is terminated, such documents do not need to be delivered
to the applicant again. Then, a designated period or statutory period shall be calculated
starting from the effective date by service of documents by public announcement. Where
service of documents by public announcement was made for the first time, the service shall
become effective two weeks after such documents are disclosed in the patent gazette.
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However, any subsequent service of documents by public announcement to the same party
involved shall take effect on the following date of the disclosure of the documents in the
patent gazette.
(2) After the initial public announcement, where an examiner intended to deliver relevant
documents to the same party involved, but ① there was no notification of change of
applicant information despite a notice on report of change of applicant information and ②
the grounds for return of the documents at the time of public announcement were
„Recipient Absence‟, „Moved‟ or „Address Unknown‟, he/she shall immediately make a public
announcement, rather than delivering the documents by mail.
(3) Where a party involved makes a request for the notification of documents to be
publically announced without changing his/her address, an examiner shall deliver the
documents by stating the contents of the documents or attaching the documents to be
publically announced at the announcement of the report on change of applicant information.
Also, where an examiner recognizes that such decisions are necessary, he/she shall do the
same.
(4) Where a party involved is absent from the submitted address for a long time or a
business of a party involved is temporarily shut down without change of domicile or
business address, the treatment of returned documents shall apply mutatis mutandis to the
service of such documents.
(5) Among documents delivered from the Korean Intellectual Property Office regarding
examination, documents under Article 218 of the Patent Act and under Article 18 of the
Enforcement Decree of the Patent Act shall be served by public announcement. However,
documents other than the above-mentioned documents for public announcement shall not
be necessarily served by public announcement if they have little influence on the right to
obtain a patent and future notifications on such procedures are possible.
(Example) Where an examiner intends to deliver a notification for the possibility of use of
documents to an information provider, he/she can skip the service of such notification by
public announcement.
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(6) Where there are more than two parties involved to be served, such as two or more
applicants and if the delivered documents are returned, an examiner shall serve the
documents again to the other party involved, rather than serving the documents by public
announcement.
(Notice) Where documents are delivered to a representative of more than two parties
involved, but are returned, an examiner shall not directly deliver the documents to the
parties involved, other than the representative. It is because any other person, other than a
representative, cannot initiate the concerned procedure.
(7) Where a party involved requests the direct delivery of documents after the service of the
documents by public announcement, a receipt for a written application shall be stored in
the file wrapper. As for an electronically-filed application, an examiner shall make a request
for the history of a written application to the Information Development Division of the
Korean Intellectual Property Office and a receipt shall be kept in each examination division.
3.4 Service of Document to Overseas Resident
For an overseas resident having a patent administrator, documents shall be served on
his/her patent administrator.
For an overseas resident without a patent administrator, documents may be sent to
him/her by registered airmail and when the documents have been sent by registered airmail,
such documents shall be deemed to have been served on the mailing date. In other words,
the sending theory is adopted to the mail service to an overseas resident.
3.5 Special Service of Document
If an adjudication or decision on trial, review, ruling on the establishment of non-exclusive
license and revocation of patent right are to be served, they shall be delivered by a special
service method as prescribed by the Postal Service Act and the Enforcement Decree thereof.
As for a utility model registration, if an adjudication or decision on technical evaluation of a
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utility model, trial, review, ruling on the establishment of non-exclusive license and
revocation of a utility model right are to be served, they shall be delivered by a special
service method as prescribed by the Postal Service Act. However, where a special service is
to be made to a person who has filed a report of using the electronic filing system, the
information and communications network can be utilized.
Article 15 of the Postal Service Act, Article 25 of the Enforcement Decree of the Postal
Service Act and Articles 62, 63 of the Enforcement Rules of the Postal Service Act shall be
referred as for a special service method.
3.6 Service of Electronic Document
Where an examiner wishes to serve documents to a person who has made a notification of
use of electronic documents to the Korean Intellectual Property Office, he/she can do so
through an information and communication network. Service of documents through an
information and communication network shall have the same effect as service of written
documents. Also, all documents can be served in an electronic form, except for there are
special relevant provisions in the Patent Act (Example: Document by Special Service).
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Chapter 7. Fees
1. Relevant Provisions
Article 82 of the Patent Act (Official Fees) ① A person initiating a patent-related
procedure shall pay official fees.
② Where the number of claims is increased because of the amendments to the description
after a request for examination made by a person other than the applicant, the applicant
shall pay the fees for the request for examination corresponding to the increased number of
claims.
③ Matters necessary for the payment of official fees, the payment method and deadline
thereof under paragraph (1) and other necessary matters shall be prescribed by Ordinance
of the Ministry of Knowledge Economy.
Article 83 of the Patent Act (Reduction or Exemption of Patent Fees or Official Fees) ①
Notwithstanding Articles 79 and 82, the Commissioner of the Korean Intellectual Property
Office shall grant an exemption from paying any of the following patent fees or official fees:
1. Official fees or patent fees corresponding to the patent applications or patent rights
belonging to the State; or
2. Official fees related to requests for an invalidation trial made by an examiner under Article
133(1), 134(1) or 137(1).
② Notwithstanding Articles 79 and 82, where a patent application has been filed by a
person eligible for assistances in accordance with Article 5 of the National Basic Living
Security Act or a person prescribed by Ordinance of the Ministry of Knowledge Economy,
the Commissioner of the Korean Intellectual Property Office may reduce or exempt the
payment of the official fees prescribed by Ordinance of the Ministry of Knowledge Economy
and the patent fees for obtaining the establishment registration of a patent right for the first
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three years.
③ A person who intends to take advantage of reduction or exemption of patent fees or
official fees in accordance with paragraph (2) shall submit documents prescribed by
Ordinance of the Ministry of Knowledge Economy to the Commissioner of the Korean
Intellectual Property Office.
Article 84 of the Patent Act (Refund of Patent Fees etc.) ① No patent fee and official fee
paid shall be refunded: Provided, That in any of the following cases, such fees shall be
refundable upon a request by the person who made such payment:
1. Patent fees or official fees paid erroneously;
2. Portions corresponding to the patent fees for the years subsequent to the year in which a
trial decision of invalidation on the patent becomes final and conclusive;
3. Portions corresponding to the patent fee for the years subsequent to the year in which a
trial decision of invalidation on the registration of patent term extension becomes final and
conclusive; or
4. Application fees for a patent and fees for the request for examination among official fees
already paid where the patent application concerned was withdrawn or abandoned within a
month after such application is filed (excluding a divisional application, converted
application and patent application with a request for accelerated examination).
② When any patent fee or official fee paid falls under any subparagraph of paragraph (1),
the Commissioner of the Korean Intellectual Property Office shall issue a notification to the
party who paid such fees.
③ Refund of patent fees and official fees under the proviso to paragraph (1) may not be
claimed if more than three years have elapsed from the date of receiving the notification
under paragraph (2).
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2. Payment of Fees
Official fees are paid by a person initiating a patent-related procedure, such as filing a
patent application or a request for trial, as a benefit in return for the service or rewards
provided by the State. These fees have different characteristics from other ordinary taxes.
Grounds for collection of fees and a person entitled to payment of fees are prescribed in
Article 82(1) and (2) of the Patent Act. The payment method and deadline thereof are
prescribed in paragraph (3) of the same article of the Patent Act by Ordinance of the
Ministry of Knowledge Economy. „The Rule for Collection of Patent fee, etc. (hereinafter,
referred to as Fee Collection Rules)‟ specifies the amount of official fees including patent
fees, registration fees and the payment methods.
(1) Patent-related fees shall be paid by a person initiating the patent-related procedure.
Therefore, if a person other than or an applicant or a patentee initiates a patent-related
procedure, the person initiating the patent-related procedure shall pay the fees (fees of a
request for trial or fees for accelerated examination, etc.).
However, if fees of a request for examination are increased because of amendment after
the request for examination made by a third party (where the addition of a new claim leads
to the increase of fees of a request for examination for the new claim), an applicant shall
pay the additional fees for examination of the newly-added claim.
(2) Types and amounts of official fees are defined under Articles 2 and 3 of the Fee
Collection Rules and the fees related to examination are listed below. The amount of each
fee by type shall be referred to the KIPO website (http://www.kipo.go.kr).
① Application Fee: Fee for Patent Application, Fee for Registration of Patent Term Extension,
Fee for Utility Model Registration, Fee for Division of Application, Fee for Conversion of
Application
② Fee for Priority Claim: Fee for Request for Priority Claim of Patent Application
③ Fee for Request for Examination: Fee for Request for Patent Examination, Fee for Request
for Retrial, Fee for Request for Accelerated Examination
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④ Fee for Change of Applicant Name
⑤ Fees for Amendment
⑥ Fee for Extension of Statutory Period, Fee for Extension of Statutory Period
(3) When documents are submitted, the registration number of the documents shall be
deemed as the payer number. Then, fees shall be paid to a bank collecting taxes or a post
office by the following day of receipt of the documents. Additional fees shall be paid along
with basic fees.
Fees can be paid through electronic payment means, such as Internet Giro, or in cash along
with the description in Annexed Form No. 1(2) of the Rules for Collection of Patent fee.
However, when fees are paid by mail, they shall be paid with a postal money order attached.
Fees paid after the period for payment of fees has elapsed shall be returned.
(4) When a request for examination is made, fees of a request for examination under Article
2(1)(7) and 3(1)(6) of the Fee Collection Rules shall be paid by a person who has made the
request for examination. When fees of a request for examination are unpaid, an examiner
shall order amendment. Where irregularities are not addressed after amendment, an
examiner may invalidate the concerned request for examination.
In estimating fees of a request for examination, the number of claims shall be counted by
each claim, regardless of an independent claim and dependent claim. Even if a claim is
dependent on more than two claims, the claim shall be counted as one claim.
After making a request for examination, where fees of a request for examination are
increased because of amendment (It refers to the case where fees of a request for
examination are increased because a new claim is added or the previously-deleted claim is
corrected to disclose an invention), an applicant shall pay the additional fees when
submitting a written amendment. Even when claims are deleted because of amendment, the
fees already paid shall not be returned.
The calculation manners of the number of claims when counting fees of a request for
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examination are as follows:
① When filing an application and a request for examination is conducted at the same time
or where no amendment is made until a request for examination is made, fees shall be
counted based on the claims in the initial application.
(Example) Initial claims: 3 → No amendment → Fee for examination request: based on 3
claims
② Where claims are increased or decreased because of amendment until a request for
examination is made, fees shall be counted based on the final claims after amendment.
(Example) Initial claims: 3 → Claims after amendment: 5 → Fee for examination request:
based on 5 claims
Initial claims: 3 → Claims after amendment: 2 → Fee for examination request: based on 2
claims
③ Where filing a request for examination and submitting amendment to claims are made at
the same time, fees shall be counted based on the claims at the time of submission of
amendment.
(Example) Initial claims: 3 → Amendment (one deleted, three newly added) → Fee for
examination request: based on 5 claims (3-1+3)
④ Where claims are increased because of amendment after a request for examination is
made, fees shall be counted based on the increased number of claims regardless of the
deleted claims.
(Example) Initial claims: 3 → Fee payment for examination request → Increased claims
because of amendment (one deleted, five newly added) → Additional fee for examination
request: based on the newly-added 5 claims (excluding one deleted claim).
3. Reduction of Patent Fees or Official Fees
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3.1 Exemption of Fees
The Commissioner of the Korean Intellectual Property Office shall grant an exemption from
the payment of patent fees or official fees related to a patent application belonging to the
State (except for regional governments) or a request for invalidation trial by an examiner as
well as all the fees for the patent-related procedures.
However, where the State and a person other than the State jointly initiate a patent-related
procedure, patent fees or official fees shall be paid according to the fee collection rules,
rather than an exemption from the payment of fee granted.
(Note) Where a patent application is filed by a special organization in state/public
universities as an employee‟s invention of the state/public universities, the payment of
patent fees or official fees shall not be exempted.
3.2 Complete Exemption of Patent Fees or Official Fees
The following persons shall not pay application fees and fees of a request for examination
for 10 cases each for a patent and utility model registration as well as patent fees or fees for
utility model registration for the first three years when he/she files a patent application or
utility model registration or registers the establishment of the right.
However, it should be noted that amendment fees other than application fees and fees
related to a request for examination are collected.
Each requirement for exemption from payment of patent fees or official fees shall be met
when the concerned documents are submitted. Therefore, where an applicant fell under the
exemption from payment of patent fees when filing an application, but is excluded from
exemption at the time of registration of the right, patent fees for the first three years shall
not be exempted.
Subject of Exemption Requirement Evidential Document
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1. National Basic Livelihood
Security Recipient
Only when
the inventor
and the
applicant
are identical
Evidential documents under National
Basic Livelihood Security Act
2. Person with National Merit and
the surviving/bereaved family,
Person with National Merit of
5.18 Democratic Uprising and the
surviving/bereaved family, Agent
Orange Victim, Patient suspicious
for Agent Orange, Second-
generation victim of Agent
Orange, Government special
agent and the bereaved, etc.
One copy of evidential documents of
the concerned qualification
3. The registered disabled person
under Welfare of Disabled
Persons Act
Copy of the Identification Booklet for
the Physically Handicapped or
evidential documents of registered
disabled person under Welfare of
Disabled Persons Act
4. Student 〔only under-
graduates(including polytechnic
college students), except for
graduate students〕
Certificate of Attendance
5. Minor younger than 19 years
old
None
(1) Recipients receiving National Basic Livelihood Security Act benefits are only limited to
those who are designated as recipients under Article 2 of the National Basic Livelihood
Security at the time of submission of documents such as a patent application.
(2) Persons of National Merit and the surviving/bereaved families are only limited to those
who are designated as persons with national merit and the surviving/bereaved families
under Articles 4 and 5 of the Act on Honorable Treatment, etc. to Persons of National Merit
at the time of submission of documents such as a patent application.
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(3) The handicapped are only limited to those who are designated as the handicapped
under Article 32(1) of the Welfare of Disabled Persons Act at the time of submission of
documents such as a patent application.
(4) Students are only limited to those who are designated as students of the schools under
Article 2 of the Elementary and Secondary Education Act and Article 2 of the Higher
Education Act(except for graduate students) at the time of submission of documents such as
a patent application.
Schools under Article 2 of the Elementary and Secondary Education Act include elementary
schools and civic schools, middle schools and high civic schools, high schools and high
technical schools, special schools, etc.
Schools under Article 2 of the Higher Education Act include universities and colleges,
industrial colleges, teachers‟ colleges, air colleges, air and correspondence colleges and
cyber colleges, technical colleges, etc.
(5) Students of polytechnic colleges are only limited to those who are attending the
polytechnic colleges under the proviso of Article 2(1) of the Polytechnic College Act at the
time of submission of documents such as a patent application.
3.3 Partial Exemption of Patent Fees or Official Fees
Partial exemption from the payment of application fees, fees for a request for examination,
patent fees for the first three years or fees for utility model registration shall be granted to
an individual as well as a middle- and small-sized company (hereinafter, referred to as SMEs)
under the proviso of Article 2 of the Framework Act on Small and Medium Enterprises, a
joint research between conglomerates and SMEs, a public research organization, a
technology transfer task force.
In calculating the exemption amount, less than 100 won shall not be included in the
amount to be exempted.
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In this context, if an applicant who has filed an application personally wishes to obtain
exemption from the payment of patent fees or official fees, he/she shall be an inventor or
designer.
Payment of application fees, fees for a request for examination, patent fees for the first
three years and utility model registration fees shall be exempted by 70% in the following
cases.
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Subject for
Exemption
Requirement Evidential Document
1. Individual Only when the inventor is the applicant None
2. Small
Enterprise
º Small Enterprises under the proviso of
Article 2 of the Framework Act on Small and
Medium Enterprises
1. Company with less than 50 full-time
employees in mining, manufacturing,
construction or transportation
2. In the businesses other than those defined
above, company with less than 10 full-time
employees
※Business classification under the Appendix of
the Enforcement Decree of the Framework Act
on Small and Medium Enterprises
※Only in the case of employees‟ invention
(design) · creation
º Evidential documents of
small enterprise
-A copy of business
registration certificate
-Document proving the
number of full-time
employees
e.g.) Report for state of
withholding tax payment, etc.
3.Medium
Enterprise
º Medium Enterprises under the proviso of
Article 2 of the Framework Act on Small and
Medium Enterprises
1. Manufacturing: Company with less than 300
full-time employees or 8 billion won in capital
2. Mining, Construction, Transportation:
Company with less than 300 full-time
employees or 3 billion won in capital
3. Retail Sale in Non-Specialized large Stores,
Hotel, Condominium, Telecommunications,
Other Information Technology and Computer
Operation Related Services, Engineering
Service, Hospital, Broadcasting: Company with
less than 300 full-time employees or 30 billion
won in sales
4. Growing of Crop Seeds and Nursery
Products, Fishery, Electricity·Gas and Water
Supply, Wholesale of Medicine and Medical
Goods, Wholesale of Solid, Liquid and Gaseous
º Evidential documents of
medium enterprise
- A copy of business
registration certificate
- Documents corresponding
to the subparagraph 1
· Document proving the
number of full-time
employees
e.g.) Report for state of
withholding tax payment, etc.
· Document proving the
amount of capital or sales
e.g.) Balance sheet, etc.
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Fuel and Related Products, Retail Sale via Mail
Order Houses , Door to Door Retailing of
Merchandise, Supporting and Auxiliary
Transport Activities; Activities of Travel
Agencies, Supporting and Auxiliary Transport
Activities ; Activities of Travel Agencies, Storage
and Support Activities for Transportation,
Professional, Scientific and Technical Activities,
Business Support Services, Motion Picture,
Amusement and Theme Park Operation:
Company with less than 200 full-time
employees or 20 billion won in sales
5. Wholesale Trade and Commission Trade,
Except of Motor Vehicles and Motorcycles,
Renting of Industrial Machinery and
Equipment, Research and Experimental
Development On Natural Sciences, Research
and Experimental Development On Natural
Sciences, Public Performance, News Agency
Activities, Operation of Botanical and
Zoological Gardens and Natural Parks, Sewage
and Refuse Disposal, Sanitation and Similar
Activities: Company with less than 100 full-
time employees or 10 billion won in sales
6. Other businesses: Company with less than
50 full-time employees or 5 billion won in
sales
※Business classification under the Appendix of
the Enforcement Decree of the Framework Act
on Small and Medium Enterprises
※Only in case of employees‟ invention (design)
· creation
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Payment of the concerned fees shall be exempted by 50 % in the following cases.
Subject of
Exemption
Requirement Evidential Document
1. Joint
Research
between
Conglomerates
and SMEs
º Application fee and fee for a request for examination
where a joint research is conducted based on the
contract between conglomerate and small/medium
enterprise
※ Only application fee and fee for a request for
examination where application or a request for
examination was filed after May 1, 2006
º A copy of business
registration certificate
of conglomerate
º Evidential document
of small/medium
enterprise
2. Public
Research
Organization
º Public research organization under the proviso of
Article 2(6) of the Technology Transfer and
Commercialization Promotion Act
1. National · Public research organization
2. State-funded research organization established under
the Act on the Establishment, Operation, and Fosterage
of Government-invested Research Institutions
3. Specific research organization under the Support of
Specific Research Institutes Act
4. Schools under the Higher Education Act (public
schools established and operated by the State, civic
schools established and operated by local governments
and private schools established and operated by
educational foundations)
5. Juristic person · organization related to R&D
established under the Civil Act or other acts
- Juristic person · organization funded or supported
with half of the annual research budget by the State,
local governments or state-invested firms
- Juristic person funded with half of the capital or
wealth invested or funded by the State, local
governments or state-invested firms
- Juristic person · organizations necessary for
promotion of technology transfer recognized and
designated by other relevant central administrative
º Evidential document
º None
º None
º None
º Evidential document
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agencies
※ Application fees, Examination request fees, Patent
fees for the first three years, Utility model registration
fees
3. Technology
Transfer Task
Force
º Task forces under the proviso of Article 11(1) of the
Technology Transfer and Commercialization Promotion
Act(only when a task force established in public/civic
schools under the Higher Education Act is a juristic
person)
※ Application fees, Examination request fees, Patent
fees for the first three years, Utility model registration
fees
º Evidential document
of task force
2. Local
Government
º Local governments under Article 2(1) of the Local
Autonomy Act
※ As for application, a request for examination or
registration of establishment of rights made after July
28, 2010, only application fees, fees for a request for
examination or registration fees for establishment of
rights
º None
3.4 Procedure for Reduction of Patent fee or Official fee
(1) A person taking advantage of reduction or exemption of payment of application fees, etc.
shall state grounds for reduction or exemption and the subject for fee reduction or
exemption in a written application, a written request for examination or annual fee payment
documents submitted at the time of filing an application, making a request for examination
or registration of establishment of patent right. Then, he/she shall submit the concerned
evidential documents to the Commissioner of the Korean Intellectual Property Office.
(2) An applicant shall state grounds for reduction/exemption of patent fees or official fees
when initiating the patent-related procedure such as filing an application, making a request
for examination, etc. in order to take advantage of reduction of payment of patent fees or
official fees. If a person failed to apply for reduction of payment of patent fees or official
fees at the time of filing an application or making a request for examination, but later
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applied for reduction on the ground that he/she was subject to reduction of payment of
patent fees or official fees, his/her application for reduction of payment of paten fees or
official fees shall not be recognized.
(3) Where evidential documents for a person with national merit or a registered
handicapped person have been already submitted to the Commissioner of the Korean
Intellectual Property Office, the documents may not need to be re-submitted. Where
evidential documents of a recipient of National Basic Livelihood Security benefits, a person
with national merit (the bereaved) or a registered handicapped person have already
submitted, the submission of the evidential documents can be skipped by stating the
intention of skipping the submission of such documents and the index information on the
submitted documents.
4. Refund of Patent Fees or Official Fees
(1) Patent fees or official fees shall be refundable upon a request by the person who has
made the payment in the following cases:
① Any fees paid by mistake
º All fees submitted when an application is not accepted (refunded)
º Where an application is invalidated, all fees paid at the time of filing an application, other
than an application fee (fees for making a request for examination, fees for making a
request for technical valuation, fees for application for priority claim, etc.)
º Fees paid by mistake or in excess
º Fees in case of invalidation or disapproval of the procedure
Where a priority claim and an additional request for priority claim have become invalidated
or where a request for extension of the designated period and statutory period, and a
request for change of the due date have become disapproved
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② The amount of patent fees for the following years after the decision to revoke a patent
right has been made or a ruling of invalidating a patent right has become final and
conclusive
③ The amount of patent fees for the following years after a ruling invalidating the
registration for extension of a patent term has become final and conclusive
④ Fees for filing an application and fees for a request for examination already paid where a
patent application (except for divisional application, converted application and patent
applications filed after a request for accelerated examination) is filed and then the
application is invalidated or abandoned within one month from the filing date 〔applied to
patent applications filed after July 1, 2007〕
(2) A request for refund of patent fee or official fee paid by mistake shall be made to the
Korean Intellectual Property Office by a person whose name is written in the signature box
on the receipt of fee payment documents or a person with power of attorney. Meanwhile, a
person whose name is stated in the signature box on the receipt of fee payment
documents, a registered patent right holder or a person with power of attorney shall make
a request for refund of the patent (registration) fees for the following years after the
decision to revoke a patent right has been made or a ruling of invalidating a patent right
has become final and conclusive.
Also, where an examiner intends to make a decision of invalidation which would lead to
refund of patent fee or official fee under the name of the Commissioner of the Korean
Intellectual Property Office, he/she shall deliver a written invalidation with the guide for the
procedure of refund of patent fee or official fee to the concerned payer.
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Chapter 8. Other Patent-Related Procedures
1. Relevant Provisions
Article 216 of the Patent Act (Inspection of Documents etc.) ① A person who intends
to receive a certificate for a patent or a trial, a certified copy or extract of documents, or
inspect or copy the Patent Register or documents may request the Commissioner of the
Korean Intellectual Property Office or the President of the Intellectual Property Tribunal to
that effect.
② The Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal may refuse to permit the request referred to in paragraph (1) if
it relates to a patent application, the establishment of which has not been registered or
which has not been laid open for public inspection, or if it relates to matters liable to
contravene public order or morality.
Article 217 of the Patent Act (Prohibition of Documents Relating to Patent Application,
Examination, Trial, Retrial or Patent Register, etc. from being Taken out or Opened to
Public) (1) Documents relating to a patent application, examination, trial or retrial or the
Patent Register shall be prohibited from being taken out except for any of the following
cases:
1. Where documents relating to patent applications or examinations are taken out for the
purpose of searching prior art, etc. under Article 58(1) or 58(2) of this Act are removed;
2. Where documents relating to patent applications or examinations are taken out for the
purpose of entrusting the affairs of digitizing patent documents under Article 217-2(1) of
the Patent Act;
3. Where documents relating to patent applications, examinations, trials or retrials or the
Patent Register are taken out for the purpose of online remote working under Article 32(2)
of the Electronic Government Act.
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② A response shall not be given to a request for an expert opinion, testimony or any
inquiry as to the contents of a pending patent application, examination, trial, or retrial that
is in process, or as to the contents of an examiner‟s decision, trial decision or ruling.
Article 226 of the Patent Act (Offense of Divulging Confidential Information, etc.)
Where any present or former employee of the Korean Intellectual Property Office or the
Intellectual Property Tribunal has divulged confidential information on inventions or
appropriated the invention disclosed in a pending patent application (including an invention
for which an international application is pending) to which he/she had access during the
course of his/her duties, such employee shall be punished by imprisonment not exceeding
five years or by a fine not exceeding 50 million won.
Article 226bis of the Patent Act (Executives and Employees of Specialized Institutions,
etc. Deemed to be as Public Officials) A person who is or was an executive or employee of
any specialized institution or any agency of digitizing patent documents under Article 58(1)
shall be deemed one who is or was an employee of the Korean Intellectual Property Office
for purposes of applying Article 226.
2. Inspection of Documents
A person who intends to receive a certificate for a patent or a trial, a certified copy or
extract of documents, or inspect or copy the Patent Register or documents may submit a
written application under Annexed Form No.29 of the Enforcement Rules of the Patent Act
to the Commissioner of the Korean Intellectual Property Office.
However, the Commissioner of the Korean Intellectual Property Office or the President of
the Intellectual Property Tribunal shall not allow the inspection of documents relating to a
patent application which have not been registered or disclosed yet or in case allowing the
inspection of such documents would contravene public order or morality.
3. Prohibition of Documents from Being Taken or Open to Public
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Documents relating to a patent application, examination shall be prohibited from being
taken out except for where a patent application is taken out for prior art searches or patent
classification by a special agency or for entrusting the affairs of digitizing patent documents
or for on-line remote performance of duties.
Also, it shall be noted that an examiner cannot give a response to a request for an expert
opinion, testimony or an inquiry on the contents of a pending patent application,
examination, trial.
4. Indication of Source of Document
(1) Indication of source of patent-related documents means where a person initiates more
than two patent-related procedures simultaneously or consecutively and the contents of the
evidential documents for such procedures are the same, he/she can submit the original
copies of the evidential documents for one of the procedures or the procedure which was
initiated first. Then, the documents for the rest of the procedures or subsequent procedures
can be replaced by submitting a copy of the evidential documents with the same content or
stating the intention of indication of the source of the original document in the box for the
attached documents in the concerned form.
Source of the documents can be indicated in the following cases:
① A power of attorney where a patent-related procedure is initiated by a legal
representative (including a patent administrator)
② Evidential documents where an invention is deemed to have not been disclosed
③ Documents of priority claim where a priority claim under the Treaty is made
④ Evidential documents of a legal representative of more than two parties involved
⑤ Evidential documents of a successor in title where a person succeeding a patent right
initiates procedures of patent application, request, etc.
⑥ Evidential documents where a person initiating a patent-related procedure needs
permission, approval, agreement, or consent from a third party in initiating procedures
for patent applications, requests, etc.
⑦ Evidential documents if a patent-related procedure is initiated by a juristic person, or a
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certificate of nationality or evidential documents submitted by a national of a non-
member state to the Treaty where a foreigner initiates a patent-related procedure
⑧ Evidential documents where a person initiating a patent-related procedure changes or
corrects the name and domicile (in case of a juristic person, the title and business
address) or changes his/her seal
Where copies of evidential documents are submitted instead of the original copies of the
documents, the intention to indicate the source of documents shall be stated in the box
for attached documents. The intention of indication shall be stated as in the following
example.
(Example) A power of attorney 〔Indication of Document attached to Patent application No.
00-00000 submitted on (Month) (Day), (Year)〕
(2) Where a person initiating a patent-related procedure intends to indicate the source of
the already-submitted evidential documents, he/she can state the intention of indication in
the box for attached documents in the concerned documents to replace the evidential
documents.
(3) Evidential documents for authority of representative under Article 7 of the Patent Act do
not need to be submitted in the following cases:
① Where a legal representative who has made a notification of designation of a
representative under Article 5(2) of the Enforcement Rules of the Patent Act initiates a
patent-related procedure within the scope of the power of attorney
② Where a legal representative who has made a registration of general power of attorney
under Article 5(2)(2) of the Enforcement Rules of the Patent Act initiates a patent-related
procedure within the scope of the general power of attorney
5. Offense of Divulging Confidential Information, etc.
Employees of the Korean Intellectual Property Office are regarded as public officials.
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Therefore, they have an obligation to protect the confidentiality of information acquired in
the course of their work. Anyone shall be charged with divulging of confidential information
if he/she divulges confidential information defined in the law. However, the protection of
confidentiality of information on an invention in the course of filing a patent application is
vital for the benefits of applicants. Therefore, the Patent Act contains the special provision
regarding the offense of divulging confidential information.
A present or former executive and employee of a special institution or agency for digitizing
patent documents under Article 58(1) of the Patent Act, too, shall be regarded as present or
former staff of the Korean Intellectual Property Office, considering that they have easy
access to the contents of undisclosed inventions in the course of their work.
(1) The subject of the offense of divulging confidential information includes a present and
former public official of the Korean Intellectual Property Office and the Intellectual Property
Tribunal. In this context, public officials refer to „employees working for national or regional
government agencies under the Act‟. However, conventional wisdom and precedents dictate
that „employees of a public corporation equivalent to an administrative institution after
individual consideration‟ are deemed to be public officials. Article 226(2) of the Patent Act
specifies that an executive and employee of a special institution or agency for digitizing
patent documents under Article 58 can be recognized as employees of the Korean
Intellectual Property Office and they, too, can be subject to the offense of divulging
confidential information.
(2) The object of the offense of divulging confidential information is confidential information
on an invention in a patent application acquired in the course of work. In this context,
confidential information on an invention in a patent application acquired in the course of
work includes items to be kept confidential under the Patent Act and other relevant acts and
items with considerable benefits when kept secret.
(3) Divulgence of confidential information means the act of informing a third party of
confidential information. Such acts of informing a third party of confidential information
include intentional divulgence as well as accidental divulgence. Misappropriation refers to
the act of working an invention in a patent application acquired in the course of work
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against the intention of a right holder or the act of filing a patent application or utility
model registration with a subservient invention or utility model related to the concerned
invention.
(Note) Offenses related to the duties of public officials under the Criminal Act are defined in
Articles 122-135 of Chapter 7 of Part 2 <Individual Provisions> of the Criminal Act. Offenses
related to the duties of public officials have three types: the violation of the duties of public
officials, the offense of harming the fairness of national function by power abusing and the
offense of bribery.
① Violation of duties: Abandonment of duties, Publication of facts of suspected crime,
Divulgence of official secrets
② Abuse of power: Abuse of authority, Unlawful arrest, Violence and cruel act
③ Bribery: Acceptance of bribe, Advance acceptance, Bribe to third person, Improper action
after acceptance of bribe, Subsequent bribery, Acceptance of bribe through good offices,
Offer, etc. of Bribe
A person who commits offenses related to the duties of a public official shall be a public
official at the time of such acts. However, subjects of offenses of divulging of official secrets
and advance acceptance of bribe shall include former and as soon-to-be government
officials.
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PART II. Patent Application
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Chapter 1. Patent Applicant
1. Relevant Provisions
Article 33 of the Patent Act (Persons Entitled to Obtain Patent) ① Anyone who makes a
new invention or his/her successor shall be entitled to obtain a patent in accordance with
this Act: Provided, That employees of the Korean Intellectual Property Office and the
Intellectual Property Tribunal shall not obtain patents while in office excluding cases of
inheritance or bequest.
② If two or more persons jointly make an invention, the right to obtain a patent shall be
jointly owned.
Article 34 of the Patent Act (Patent Application Filed by Unentitled Person and
Protection of Lawful Holder of Right) If a patent cannot be granted because an
application was filed by a person who is not the inventor or a successor to the right to
obtain a patent (hereinafter referred to as “unentitled person”) under the main sentence of
Article 33 (1) falls under subparagraph 2 of Article 62, a subsequent application filed by a
lawful holder of the right shall be deemed to have been filed on the date of filing of the
initial application filed by the unentitled person: Provided, That this shall not apply where
the subsequent application is filed by the lawful holder of the right more than 30 days after
the date on which the application filed by the unentitled person was rejected.
Article 35 of the Patent Act (Patent Granted to Unentitled Person and Protection of
Lawful Holder of Right) If a trial decision invalidating a patent has become final and
conclusive due to the lack of entitlement under the main sentence of Article 33(1) as
prescribed in Article 133(1)(2), a subsequent application filed by the lawful holder of the
right shall be deemed to have been filed at the time the invalidated patent application was
filed: Provided, That this shall not apply where the subsequent application is filed more than
two years after the publication date of the first application or more than 30 days after the
decision of invalidation becomes final and conclusive.
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Article 37 of the Patent Act (Transfer, etc. of Right to Obtain Patent) ① The right to
obtain a patent may be transferred.
② The right to obtain a patent shall not be the subject of a pledge.
③ In cases of joint ownership of the right to obtain a patent, a joint owner shall not assign
his/her share without the consent of all the joint owners.
Article 38 of the Patent Act (Succession to Right to Obtain Patent) ① The succession to
the right to obtain a patent before the filing of the patent application shall not be effective
against third persons unless the successor in title filed the patent application.
② Where two or more applications for a patent are filed on the same date with respect to
the right to obtain a patent for the same invention derived by succession from the same
person, the succession to the right to obtain the patent by any person, other than the
agreed upon by all the patent applicants, shall not be effective.
③ Paragraph (2) shall also apply where a patent application and a utility model registration
application are filed on the same date, with respect to the right to obtain a patent and
utility model registration for the same invention and device which has been derived by
succession from the same person.
④ Succession to the right to obtain a patent after the filing of the patent application shall
not be effective unless a notice of change of applicant is filed, except in cases of inheritance
or other general succession.
⑤ Upon inheritance or other general succession with respect to the right to obtain a patent,
the successor in title shall notify the Commissioner of the Korean Intellectual Property Office
of such purport without delay.
⑥ Where two or more notifications of change of applicant are made on the same date, with
respect to the right to obtain a patent for the same invention that has been derived by
succession from the same person, a notification made by any person, other than the one
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agreed upon after consultations among all the persons who made notifications, shall not be
effective.
⑦ Article 36(6) shall apply mutatis mutandis to cases under paragraphs (2), (3) and (6).
Article 44 of the Patent Act (Joint Applications) Where the right to obtain a patent is
jointly owned under Article 33(2), all the owners shall apply for the patent application jointly.
2. Inventor
(1) An inventor shall be entitled to obtain a patent from the time when an invention is
completed to the time when the decision to reject a patent application has become final
and conclusive or when the patent right is registered. The right to obtain a patent shall
belong to an inventor upon creating an invention without taking any measures.
Article 33(1) of the Patent Act defines that anyone who makes a new invention or his/her
successor shall be entitled to obtain a patent. Paragraph (2) of the same article states that if
two or more persons jointly make an invention, the right to obtain a patent shall be jointly
owned.
Where the application is filed by a person who does not have the right to obtain a patent
for the application or where persons who jointly invented an invention fail to jointly file a
patent application for the invention, it shall constitute a ground for rejection and invalidation.
(2) An inventor refers to someone who creates technical ideas by using the law of nature.
Since invention is a factual act, anyone even without legal capacity, such as a minor, can
become an inventor and as long as they initiate a patent-related procedure through a legal
representative, they can obtain a patent.
(3) Where an invention is created by more than two persons, those who jointly made the
inventions are inventors. Therefore, the right to obtain a patent is jointly owned. In such a
case, a patent shall not be granted if some of the joint owners of the right to obtain a
patent file a patent application.
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To become joint owners of an invention, each of the inventors shall, even partly, make a
meaningful contribution to the completion of the concerned invention through mutual
complementation in the technical process of creating the invention. Technically, all the joint
owners shall be in mutual cooperation for the completion of an invention.
(4) Where an applicant unintentionally omitted or misspelled the names of some of the
inventors, if necessary, the applicant can add or correct the names of the inventors until an
examiner in charge determines the patentability of the claimed invention.
Once an examiner determines the patentability of the claimed invention, the addition of a
new inventor shall not be accepted, except for where the name of the inventor was written
incorrectly or where the name of an inventor that was stated in the application became
omitted in the course of the application procedure.
Where an amendment of changing the name of an inventor is submitted during examination,
it would suffice if an examiner determines whether the name of an inventor is omitted or
misspelled by mistake unless there are any special reasons. An examiner does not need to
ask for submission of evidential documents. In such a case, special reasons refer to where an
examiner doubts that the omission or misspelling of the name of an inventor was
unintentional because the examiner notified a ground for rejection under Article 29(3) of the
Patent Act, but the applicant tried to address the ground by submitting an amendment of
change of inventor.
(5) Where an examiner reasonably suspects that the person stated as the inventor is not the
genuine inventor, the examiner may order to amend the application. Cases where an
examiner reasonably suspects that the person stated as the inventor is not the genuine
inventor include where an inventor is not a natural person, where a minor deemed not to
have created the invention is stated as the inventor, etc.
3. Successor
The right to obtain a patent is a property right and may be transferred. Therefore, Article 37
of the Patent Act stipulates that the right to obtain a patent may be transferred.
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3.1 Procedure for Succession to Right to Obtain Patent
(1) Where the right to obtain a patent is transferred before filing a patent application,
initiating special procedures for succession of the right is not required. However, the
succession of the right to obtain a patent after filing an application shall be effective when a
notice of change of inventor is filed, except for general succession.
Meanwhile, where the right to obtain a patent is transferred to a successor before filing a
patent application and the successor intends to counter a third party, the successor shall file
a patent application first.
(2) Where the right to obtain a patent is transferred after filing a patent application, the
person who intends to file a notice of change of applicant shall submit to the Commissioner
of the Korean Intellectual Property Office each copy of the following documents before the
registration of the concerned application: the evidential document stating the grounds for
change of applicant in a report of change of right relations in Annexed Form 20 of the
Enforcement Rules of the Patent Act; the evidential document of
permission/approval/agreement/consent from a third party, if necessary; or the evidential
document of the right of representation if a patent-related procedure is initiated by a legal
representative.
Where notices of change of applicant on more than two patent applications are to be filed,
just one report can be filed on the premise that the contents of other notices of change of
applicant are the same.
(3) Where more than two persons jointly file a patent application or a notice of change of
applicant, and intends to partition the patent-related rights for applicants or successors, or
where there exists a contract stating that the patent-related rights shall not be partitioned
for a period not exceeding five years under the proviso of Article 268(1) of the Civil Act, the
applicants shall state such intention in the written patent application or a report of change
of right relations and submit the evidential documents.
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(Note) Even when the share of patent-related rights owned by applicants is to be changed, a
copy of the evidential document of the ground for change of share or a copy of the
evidential document of the right of representation if a patent-related procedure is initiated
by a legal representative shall be attached to a report of change of right relations in
Annexed Form 20 of the Enforcement Rules of the Patent Act and be submitted to the
Commissioner of the Korean Intellectual Property Office.
(4) Where the person who initiated a patent-related procedure is deceased and the right to
obtain a patent has been transferred, the procedure is interrupted under Article 20(1) of the
Patent Act. Therefore, an inheritor shall resume the interrupted procedure by attaching ①
the evidential document of the death of the inheritee(a death certificate or a copy of the
legal predecessor's removal register from the census register/a family relation certificate), ②
the evidential document of inheritance(a family relation certificate of the inheritor, etc.).
Where two or more inheritors exist, the interrupted procedure can be resumed if the
evidential document of the representative of inheritors (a written consent of the inheritor,
etc.) is submitted. An inheritor, etc. of the right to obtain a patent is prescribed under the
provisions of Part 5. Inheritance of the Civil Act.
(5) Where the right to obtain a patent is transferred through bequest, a person with „all-
inclusive bequest‟ can resume the interrupted procedure by submitting ① the evidential
document of death of an inheritee (a death certificate or a copy of the legal predecessor's
removal register from the census register/a family relation certificate) or ② the evidential
document of general bequest (a will, etc.), as done by an inheritor. However, a person with
„specific bequest‟ shall take over the right to obtain a patent from the inheritor by
requesting him/her to perform the bequest of the right.
(Note) Bequest refers to an act that a testator leaves his/her personal property to another
person under the will after his/her death. After collectively considering the wording of the
will and the circumstances and according to the testator ‟s intension, bequests are divided
into all-inclusive bequests and specific bequests.
A person with an all-inclusive bequest has the same rights and duties as an inheritor under
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Article 1078 of the Korean Civil Act. Therefore, the person shall acquire the real rights as
prescribed in Article 187 of the Civil Act. However, a person with a specific bequest shall
only acquire a bond to request the person with the bequest liability to bequeath the
property he/she owned.
(6) The right to obtain a patent can be jointly owned in the form of partnership-ownership.
Therefore, in the cases of joint ownership of the right to obtain a patent, each joint owner
shall not assign his/her share without the consent of the other joint owners.
(Note) Co-ownership refers to the right of property shared by two or more owners. In
general, the co-owned property right can be used and profited according to the proportion
of the share and the share can be disposed of without the consent of the other joint owners.
In comparison, partnership-ownership of property refers to the property right owned by
several persons through partnership relationship. The person having partnership-ownership
cannot assign his/her share of property to another person without the consent of the other
persons in the partnership. In other words, co-ownership is a temporary joint ownership for
convenience, whereas partnership-ownership restricts individuals for the purpose of the
partnership.
3.2 Treatment of Special Succession
(1) Where two or more applications relating to the same invention are filed on different
dates with respect to the right to obtain a patent for the same invention derived by
succession from the same person, only the applicant of the application having the earlier
filing date may obtain a patent for the invention under Article 36(1) of the Patent Act.
(2) Where two or more applications for a patent are filed on the same date with respect to
the right to obtain a patent for the same invention derived by succession from the same
person, the succession to the right to obtain the patent by any person, other than the one
agreed upon by all the patent applications, shall not be effective.
In such a case, an examiner shall designate a period in the name of the Commissioner of
the Korean Intellectual Property Office under Article 36(6) of the Patent Act which Article
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38(7) of the same act applies mutatis mutandis and request the applicants to report on the
result of consultation within the designated period. Notwithstanding the request of
consultation, where the applicants fail to reach an agreement, the succession shall not be
effective. Therefore, since all the relevant applications are deemed to have been filed by
unentitled persons, the examiner shall notify the applicants of the ground for rejection citing
the violation of Article 33 of the Patent Act and reject the applications.
The result of consultations shall be submitted to the Commissioner of the Korean Intellectual
Property Office in the evidential document of the consultations attached to the report of
change of right relations in Annexed Form No. 20 of the Enforcement Rules of the Patent
Act, signed and sealed by all the conflicting parties. Where a patent-related procedure is
initiated by a legal representative, the result of consultations shall be submitted to the
Commissioner, attached with a copy of the evidential document of the legal representation.
Also, necessary measures might be taken based on the result of consultations, such as
withdrawal of some of conflicting patent applications.
(3) Where two or more notices of change of applicant are filed on the same date, with
respect to the right to obtain a patent for the same invention that has been derived by
succession from the same person, notices made by any person, other than the one agreed
upon after consultations among all the persons who made notices, shall not be effective.
In such a case, an examiner shall designate a period in the name of the Commissioner of
the Korean Intellectual Property Office as prescribed in Article 36(6) of the Patent Act which
Article 38(7) of the same act applies mutatis mutandis and request all the persons who
made notices to report on the result of consultations. Where no consultation is reached, the
examiner shall conduct the examination, considering that the report of change of applicant
has never been filed, rather than notifying the applicant of the ground for rejection.
The result of consultations shall be submitted to the Commissioner of the Korean Intellectual
Property Office in the evidential document of the consultations attached to the report of
change of right relations in Annexed Form No. 20 of the Enforcement Rules of the Patent
Act, signed by all the conflicting parties. Where a patent-related procedure is initiated by a
legal representative, the result of consultations shall be submitted to the Commissioner
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attached with a copy of the evidential document of the legal representation. Also, necessary
measures might be taken based on the result of consultations, such as withdrawal of some
of conflicting patent applications.
4. Protection of Lawful Holder of Right
The Korean Patent Act extends a greater protection to inventors, etc. with the provision for
protection of a lawful holder of the right, even when an unentitled person filed a patent
application before a lawful holder of the right filed an application for the same invention, if
certain requirements are met. Articles 34 and 35 of the Patent Act define the protection of
the lawful holder of the right indicating that where a patent cannot be granted or a patent
right has been invalidated due to the lack of entitlement, a subsequent application filed by
the lawful holder of the right shall not be rejected. In such a case, „an unentitled person‟
refers to a person who is not the inventor or the successor to the right to obtain a patent.
In other words, a person who failed to succeed the right to obtain a patent in a legitimate
manner, but acts as the lawful holder of the right (hereinafter referred to as „a person who
filed a misappropriated application‟) as well as a successor in good faith who succeeded the
right to obtain a patent from the person who filed a misappropriated application are
unentitled persons.
4.1 Measures for Protection of Lawful Holder of Right
In order for a lawful holder of the right to be protected after a patent application was filed
by an unentitled person, the lawful holder shall file an application for the same invention
under Article 34 or 35 of the Patent Act. The lawful holder of the right shall submit an
application in Annexed Form No. 14 of the Enforcement Rules of the Patent Act to the
Commissioner of the Korean intellectual Property Office, attached with a specification,
abstract or drawing(s), evidential document of the lawful holder of right as well as the
evidential document of legal representation (in case of the presence of a legal
representative).
4.2 Effect of Application filed by Lawful Holder of Right
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(1) An application filed by a lawful holder of the right shall be deemed to have been filed
on the date when the initial application was filed by the unentitled person in the following
conditions:
① Where the decision of rejecting a patent is made because the application was filed by an
unentitled person and a subsequent application was filed by a lawful holder of the right.
Provided, That this shall not apply where the subsequent application is filed more than 30
days after the decision of rejecting a patent becomes final and conclusive.
② Where a trial decision invalidating a patent has become final and conclusive due to the
lack of entitlement and a subsequent application was filed by a lawful holder of the right
after the initial application was filed by the unentitled person. Provided, That this shall not
apply where the subsequent application is filed more than two years after the publication
date of the first application or more than 30 days after the trial decision of invalidation
becomes final and conclusive.
The patentability, calculation of the paten term and application of relevant provisions for an
application filed by a lawful holder of the right shall be determined based on the date of
the filing of the initial application filed by an unentitled person.
For example, where an application was filed by a third party for the same invention between
the time when the initial application was filed by an unentitled person and the time of filing
the subsequent application by a lawful holder of the right, the application filed by the lawful
holder of the right shall not be rejected due to the application filed by the third party since
the filing date of the application filed by the lawful holder of the right has a retroactive
effect and precedes the filing date of the application filed by the third party. Rather, the
application filed by the third party shall be rejected because of the application filed by the
lawful holder of the right.
(Note) In order to protect a lawful holder of the right from the application filed by an
unentitled person, Article 36(5) of the Patent Act stipulates that a patent application or
utility model registration application filed by a person who is not the inventor, creator, or
successor in title to the right to obtain a patent or utility model registration shall, in
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applying paragraphs (1) through (3), be deemed never to have been filed.
(2) Even when the application was filed by a lawful holder of the right more than five years
after the date of filing the initial application by an unentitled person, a request for
examination can be made within thirty days from the date on which the lawful holder of the
right has filed the application. (Article 59(3) of the Patent Act)
where a request for examination on the application filed by the lawful holder of the right
was made at the same time (or on the same day) as the date of the application filing, the
request for examination shall be deemed effective.
(3) In order for the scope of invention of the application filed by a lawful holder of the right
to be deemed legitimate, the invention disclosed in the detailed description of the invention
and drawing(s) as well as the claimed invention shall be included in the scope of invention
of the application filed by an unentitled person.
Where the application filed by a lawful holder of the right is out of scope of the invention
(where multiple inventions are included in the application filed by a lawful holder of the
right but only parts of the inventions are disclosed in the application filed by an unentitled
person), the filing date of the application by the lawful holder of the right shall have no
retroactive effect.
(4) Where a patent is granted to a lawful holder of the right under Articles 34 and 35 of the
Patent Act, the term of a patent owned by the lawful holder of the right shall be 20 years,
calculated from the following day of the filing date of the application by an unentitled
person after the patent right of the lawful holder of the right is registered.
(5) As for an application filed by an unentitled person which has provided the reason for a
lawful holder of the right to file a subsequent application for the same invention, an
examiner shall notify a ground for rejection citing the violation of Article 33(1) of the Patent
Act and make a decision of rejection. Also, after the decision of rejection has become final
and conclusive, the examiner shall notify the lawful holder of the right of the decision in
writing according to Article 33 of the Enforcement Rules of the Patent Act.
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(Note) Where a patent is granted to an application filed by an unentitled person, the patent
can be invalidated through an invalidation trial.
5. Reference
(1) Article 33(1) of the Patent Act restricts the right to obtain a patent for employees of the
Korean Intellectual Property Office while in office since they are closely engaged in a patent-
related work. However, if employees of the Korean Intellectual Property Office create an
invention, they can transfer the right to obtain a patent for the invention to a third party
before filing an application or transfer the patent right to a third party after filing an
application for the invention.
(2) The right to obtain a patent shall not be the subject of a pledge. Therefore, where a
pledge is established upon the right to obtain a patent, the pledge shall not be effective.
(Note) Where a patent right or a utility model right is registered, a pledge can be
established upon the patent right or the utility model right.
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Chapter 2. Patent Application Documents
1. Relevant Provision
Article 42 of the Patent Act (Patent Application) ① Any person who intends to obtain a
patent shall file a patent application stating the following matters with the Commissioner of
the Korean Intellectual Property Office:
1. The name and domicile of an applicant (if a juristic person, its title and place of business);
2. The name and domicile, or place of business of a representative of the applicant, if any
(the title, place of business and the name of the designed patent attorney if the
representative is a patent corporation);
3. Deleted;
4. The title of the invention;
5. The name and the domicile of an inventor;
6. Deleted.
② A patent application under paragraph (1) shall be accompanied by a specification stating
the following matters, and necessary drawing(s) and abstract(s):
1. The title of an invention;
2. Brief description of the drawing(s)
3. Detailed description of the invention;
4. Claims
③~⑨ Omitted
Article 43 of the Patent Act (Abstract) An abstract under Article 42(2) shall not be
interpreted to define the scope of invention for which protection is sought, but rather shall
serve as a technical information document.
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2. Application
(1) In principle, a person who creates an invention is entitled to obtain a patent for the
invention. However, the act of creating an invention does not necessarily guarantee the
patent granting. Inventors, too, shall initiate subsequent procedures such as filing a patent
application and making a request for examination, etc. in order to obtain a patent.
Article 42 of the Patent Act defines documents necessary for filing a patent application
(application documents) which are a patent application, a specification, drawing(s) and
abstract and instructions on how to fill out such documents. The principle on submission of
application documents shall apply to initial applications as well as divisional or converted
applications.
(2) Application documents are the substance of filing a patent application; written
documents clarifying the subject of the application filing (a patent applicant) and the person
who initiates the patent-related procedure (a patent applicant or a legal representative) as
well as indicating the intention of obtaining a patent; and notices of other descriptions.
The descriptions in a patent application include ① the name and domicile of an applicant (if
a juristic person, its title and place of business); ② the name and domicile, or place of
business of a representative of the applicant, if any (the title, place of business and the
name of the designated patent attorney if the representative is a patent corporation); ③ the
title of the invention; ④ the name and the domicile of an inventor and so on. Also, the
applicant code, priority claim, grade period and request for examination shall be indicated in
a patent application.
(3) The title of the invention in a patent application shall be written briefly and concisely
according to the content of the invention relevant to the application. However, the title of
the invention in a patent application shall be identical with that of the invention in a
specification.
(4) An inventor who fills out a patent application refers to the actual inventor who has made
the invention related to the application and the person who holds the right as the inventor
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in a patent certificate. A juristic person shall not be recognized as an inventor.
3. Abstract
(1) Under Article 42(2)(ⅰ) of the Patent Act, a patent application shall be attached with an
abstract.
The system for attaching an abstract is designed to efficiently use patent information in
response to an ever-increasing number of applications filed and the sophistication of
technical matters. This system allows an applicant to disclose the abstract at the time of
filing the application so that any person who intends to utilize the information can easily
search the abstract.
(2) An abstract cannot be used to set the scope of the claimed invention for which
protection is sought. Under Article 97 of the Patent stipulates that the scope of protection
conferred by a patented invention shall be determined by the subject matters described in
the claims. Moreover, unlike a specification referred to when determining the scope of
protection of the invention, an abstract is submitted only as the technical information
indicating the overview of the invention.
Moreover, matters disclosed only in an abstract cannot hold the status of another patent
application under Article 29(3) of the Patent Act and adding such matters disclosed only in
an abstract to a specification through amendment shall not be allowed.
(3) Where an abstract is not attached to a patent application, the concerned application
procedure shall be subject to request for amendment. Even when an abstract is poorly
written without referring to the guideline for writing abstracts under Annexed Form No. 16
of the Enforcement Rules of the Patent Act, the abstract can be subject to request for
amendment under Article 46 of the Patent Act.
Where irregularities are not addressed despite a request for amendment, an examiner may
invalidate the concerned application procedure in accordance with Article 16 of the Patent
Act.
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(Note) It shall be noted that when an abstract is incorrectly stated, an examiner shall not
notify a ground for rejection citing that it has failed to meet the requirement under Article
42(3) or (4) of the Patent Act.
4. Specification
(1) The patent system is designed to promote the protection of an invention by granting the
person who has invented and disclosed the new technology after the examination procedure
and to contribute to industrial development by giving a third party the opportunity to utilize
the invention. Such protection and utilization of the invention is realized by the specification
serving not only as a title which specifies the scope of the invention of the invention, but as
a technical document that discloses the technical matter of the invention.
Article 42 of the Patent Act specifies the requirement of stating the detailed description of
an invention and the claims which compose a specification for the role of a specification as
a right document and a technical document. Guidelines on writing the detailed description
of an invention and the claims shall be referred to Chapters 3 and 4.
(2) A specification attached to a patent application at the time of filing shall state the title of
the invention, a brief description of the drawing(s), the detailed description of the invention
and claims according to Article 42(2) of the Patent Act. If necessary, the scope of patent
claims may not be disclosed at the time of filing an application. However, it shall be stated
through amendment within the period under the latter sentence of Article 42(5) of the
Patent Act.
(3) The title of the invention disclosed in a specification shall be stated briefly and concisely
based on the content of the invention as in the following:
① An ambiguous or wordy description of the invention shall be avoided and the name of
the invention shall be stated briefly and concisely based on the content of the invention.
(Example) It is supposed to be stated as „a device of preventing vibration in a dehydrating
barrel of a centrifugal dehydrator ‟, but instead written as „a centrifugal dehydrator ‟ or „a
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centrifugal dehydrator without the dehydrating barrel vibrating‟, which is inappropriate.
② The name of a person, trademark, nickname of a product, expression of abstract
functions or the word „patent‟ itself shall not be included in the title of the invention.
(Example) 00(Inc.), Upgraded, Improved, State-of-the-art, Modern, etc.
③ When disclosing claims of more than two categories(product, manufacturing process,
manufacturing device, usage, etc.) in the claims, the brief and concise title encompassing
such multiple categories shall be used.
(Example) „Paper, the manufacturing process and manufacturing device‟
④The title of an invention shall clearly indicate what the invention claims for.
(Example) Where an invention is widely applied to multiple industries as an automatic
control device, the title of the invention can be „the automatic control device‟. However,
when the invention is only used for temperature control, it would be more appropriate that
the title of the invention is stated as „the automatic temperature control device‟.
⑤ Where an invention disclosed in the claims is changed through amendments, the title of
the invention shall be amended accordingly.
Moreover, the title of the invention shall be stated identically as that of the invention
disclosed in the application.
Where the title of the invention disclosed in the specification is different from that of the
invention disclosed in the application or is inappropriate, if there exists a ground for
rejection, the examiner shall notify the applicant of the incorrect indication of the title of the
invention, along with the ground for rejection. In such a case, the examiner may suggest a
proper title of the invention to the applicant. Where the title of the invention is not
amended despite the above-mentioned notification or where a decision to grant a patent is
to be made since no other ground for rejection exists, the examiner shall amend the
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application by deciding the title of the invention deemed appropriate ex officio (use the ex
officio button on the examination page of PatentNet) as well as the title of the invention in
the specification accordingly. Where the decision to grant a patent cannot be made, the
examiner shall order amendment under Article 46 of the Patent Act and invalidate the
application procedure only if that the title of the invention is clearly inappropriate.
(Attention) It should be noted that the inappropriate title of the invention shall not
constitute a ground for the decision of rejection even after a notification of submission of
opinion has been delivered.
(Note) Where the English title of the invention disclosed in the application document or
specification which an examiner intends to grant a patent is inappropriate and the English
title is not consistent with that of the Korean title or is mistranslated, the examiner shall
amend the title of the invention in the application as well as in the specification accordingly
ex officio.
(4) In the box for the brief description of drawing(s), what each drawing indicates shall be
stated as in the followings.
(Example) 〔Brief description of drawing(s)〕
Drawing 1 is the ground view of the whole assembly of the invention.
Drawing 2 is the front view of one side of the invention.
Drawing 3 is the longitudinal section of one side of the invention.
Where a brief description of drawing(s) is inappropriate, it shall be handled as the case of
the inappropriate title of the invention in the above-mentioned (3).
5. Drawings
(1) When deemed necessary for explanation of the claimed invention, drawings may be
attached for a better understanding of the subject matter of the invention disclosed in a
specification.
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Drawings attached to a patent application shall be made under the guideline for drawings
of Annexed Form No. 17 of the Enforcement Rules of the Patent Act. Where drawings are
difficult to be made under Annexed Form No. 17 of the Enforcement Rules of the Patent Act
such as crystal structure, structure of metal, shapes of fibers, structure of particles, types of
organisms, results of oscilloscope; where it is inevitable in order to clearly indicate the
content of the invention; or where the embodiment of the invention is better described with
pictures, relevant pictures may replace drawings.
Where an applicant submits pictures instead of drawings, pictures clear enough to be laid
open in the official gazette shall be acknowledged and, if unavoidable, grayscale images and
color pictures may be accepted.
(2) A patent application may be attached with drawings when necessary. However, an
application of utility model registration must be attached with drawings.
(Note) Where application documents of the utility model registration application do not
include drawings, it shall be deemed an illegitimate application and be returned to the
applicant.
(3) Where drawings irrelevant to the claimed invention, such as drawings of another patent
application, are attached and where it constitutes the error in attachment of drawings,
leading to the ground for rejection under Article 42(3)(ⅰ) of the Patent Act, an examiner
shall indicate such intention and notify the concerned ground for rejection to the applicant.
Where the error in attachment of drawings does not affect the working of the invention
disclosed in the claims, it shall be indicated as the reference when notifying another ground
for rejection. However, the above-mentioned error in attachment of drawings shall not be
used as the ground for the decision of rejection.
(Attention) Where an amendment is made by submitting new drawings for the application
including incorrect drawings, it could be the amendment of addition of new matters.
Therefore, an examiner shall be cautious about examining the concerned application.
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Chapter 3. Detailed Description of Invention
1. Relevant Provision
Article 42 of the Patent Act (Patent Application) ①~② Omitted
③ Detailed descriptions of an invention under paragraph (2)3 shall satisfy the following
requirements:
1. Descriptions of an invention shall be provided in accordance with the methods prescribed
by Ordinance of the Ministry of Knowledge Economy in a clear and detailed manner to
ensure that any person with ordinary knowledge in the art to which the relevant invention
pertains can easily make the invention;
2. Background art shall be stated.
④~⑨ Omitted
Article 21 of the Enforcement Rules of the Patent Act (Patent Application, etc.) ①~②
Omitted
③ The detailed description of an invention under Article 42(3)(ⅰ) of the Patent Act shall
include the followings:
1. The technical field
2. The technical task to be solved
3. The solution means
4. Other necessary matters for a person with ordinary skill in the art to easily understand
the content of the invention
④ Where no matter falls under the above-mentioned ③, that item may be omitted.
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2. Enablement Requirement
The detailed description of an invention shall be written clearly and fully so that a person
with ordinary knowledge in the art to which the invention pertains easily understands the
concerned invention. This means that a clear and precise description of the invention should
lead a person skilled in the art to easily work the invention based on the technical
knowledge, specification and drawings at the time of filing the application.
2.1 Subject of Working the Invention
In determining whether the detailed description of an invention fulfills Article 42(3)(ⅰ) of
the Patent Act, „a person skilled in the art to which the invention pertains‟ shall be deemed
a technician with the average understanding in the technical field to which the application
belongs(hereinafter referred to as a person skilled in the art).
2.2 Definition of 「Easily Working the Invention」
(1) „Working the invention‟ in terms of a product invention refers to the act of producing as
well as using the product. As for a process invention, working means the act of using the
method. Also, when it comes to a manufacturing process invention, working the invention
shall refer to the manufacturing of the product by the concerned process.
(2) The invention subject to working shall be interpreted as the invention disclosed in claims.
Therefore, where an invention only disclosed in the detailed description of the invention, but
not in the claims, is not described well enough for the working, it does not violate Article
42(3)(ⅰ) of the Patent Act.
(3) „Easily working‟ refers to a person skilled in the art to which the invention pertains fully
understands the invention and reproduces it with the level of the technology at the time of
application filing by referring to the specification, without adding special knowledge and
excessive trial and error or repetitive experiments.
2.3 Examination Process
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2.3.1 Basic Consideration
(1) Product Invention
① Where a product invention is disclosed in claims, the detailed description of the invention
shall contain the clear and full explanation on items allowing a person skilled in the art to
produce the product. In general, to make manufacturing a product possible, the
manufacturing process needs to be fully specified(Except for the case where the product can
be manufactured based on the specification and drawings with the level of technology at
the time of application filing even in absence of the description of the manufacturing
process). Also, the concerned product needs to be fully grasped from the whole description
of the detailed description of the invention and the roles and functions of each special
technical feature that specifies the product shall be described together.
② A product invention shall be fully described so that a person skilled in the art can use the
product disclosed in the claims. In order for a product to be available for use, meaningful
and specific usage of the product needs to be described in a technical manner. However, it
shall be an exception where, even without the description of use of the product, the product
can be used based on the specification and drawings with the level of technology at the
time of application filing.
(2) Process Invention
Where a process invention is disclosed in claims, the detailed description of the invention
shall contain the clear and full explanation on items allowing a person skilled in the art to
use the process. In general, to make using a process possible, the process needs to be fully
grasped from the whole description of the detailed description of the invention and the
roles and sequences of each step that specifies the process shall be described together.
(3) Manufacturing Process Invention
Where a manufacturing process invention is disclosed in claims, the detailed description of
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the invention shall contain the clear and full explanation on item allowing a person skilled in
the art to produce a product with the manufacturing process. In general, to make
manufacturing a product based on its manufacturing process possible, the manufacturing
process itself needs to be fully grasped from the whole description of the detailed
description of the invention and the roles and sequences of each step that specifies the
manufacturing process shall be described together.
The manufacturing process of a product generally consists of a series of detailed steps
dealing with raw materials. Therefore, raw materials for manufacturing the product and a
series of the detailed steps shall be fully explained. Though not specifically described, the
product manufactured through the concerned process shall be clearly described, except for
the case where the product is easily understood based on the raw materials or detailed
manufacturing steps.
2.3.2 Special Cases
(1) Chemical Substance Invention
The detailed description of chemical substance invention shall not be enough only with the
name of the concerned chemical substance or the chemical formula. It is because chemical
reaction which is expected to draw the certain chemical substance, in reality, would never
happen because of unexpected causes and also the invention itself, as well as its possible
effect, cannot be grasped without direct experimentation, confirmation and analysis.
Therefore, as for chemical substance invention, the detailed manufacturing process of the
chemical substance, let alone the description of the chemical substance itself, shall be
described, except for the case where a person skilled in the art would easily understand the
chemical reaction disclosed in the specification based on the level of technology at the time
of the application filing.
As for chemical substance invention, its embodiment shall include the detailed response
conditions necessary for manufacturing the substance invention such as the starting material,
temperature, pressure, inflow and outflow and the result of the direct experiment under such
conditions.
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(2) Use (Medicine) Invention
Chemical inventions might vary based on the content of the concerned invention and the
level of technology, but unlike machinery device whose effect can be easily understood and
realized from the subject matter of the invention, a person skilled in the art would not easily
understand and realize the effect of the invention unless the experiment example suggesting
the experimental data is not stated due to low predictability or realizability.
Therefore, chemical substance use invention can be deemed to be realized when the effect
of the invention is described in the detailed description of the invention and at the same
time, the description requirement of specification shall be met. Especially, as for medicinal
use invention, description of medical data proving that the subject matter of the invention
contains the same medical effect or description detailed enough to replace such medical
data shall be disclosed unless particular conditions exist such as the certain mechanism
indicating the medical effects disclosed in the specification before the application filing is
disclosed.
(3) Parameter Invention
① A parameter invention refers to an invention serving as a part of the component of the
invention after an applicant arbitrarily creates a parameter for physical-chemical
characteristic values which is not the standard in the concerned technical field or an
unacceptable parameter or creates a parameter based on the arithmetic expression by using
the correlation between the multiple variables. In order for a parameter invention to be
easily worked, a person skilled in the art shall state the detailed technical content on the
parameter so that the detailed method of realizing the invention, the technical objective of
the invention as well as the technical solution are clearly grasped.
② The detailed technical content on the parameter to easily work the invention shall include
(ⅰ) the definition of the invention or the explanation of the technical meaning, (ⅱ) the
numerical scope and the reason of limiting the numerical scope when the numerical
limitation of the parameter is included, (ⅲ) the explanation on the method, condition and
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measuring device of measuring the parameter, (ⅳ) the explanation on the method of
manufacturing the product which meets the parameter, (ⅴ) the embodiment that fulfills the
parameter, (ⅵ) the comparative example that does not meet the parameter, and (ⅶ) the
explanation on relation between the parameter and effects.
③ Even when the detailed technical content on the parameter is not explicitly stated in the
detailed description of the invention or drawing(s), where the content can be clearly
understood considering the level of the technology at the time of application filing, an
examiner shall not decide that the invention cannot be easily worked based on the above-
mentioned ground.
2.4 Relation with Lack of Description on Claims
Since the enablement requirement and the requirement that the invention should be
supported with the detailed description of the invention are closely linked, relevant
provisions according to the below-mentioned criteria shall be applied in order to maintain
efficiency and consistency of examination.
Article 42(3)(ⅰ) of the Patent Act applies when a person with ordinary knowledge in the art
to which the invention pertains, that is, a person skilled in the art may not easily reproduce
the claimed invention based on the detailed description of the invention. Article 42(4)(1) of
the same act applies when the claimed invention is not disclosed in the detailed description
of the invention or is out of scope of the detailed description of the invention that a person
skilled in the art easily recognizes.
(Note) Whether the claims are supported with the detailed description of the invention shall
be determined by a person skilled in the art based on whether the subject matter
corresponding to the invention disclosed in the claims is disclosed in the detailed
description of the invention. Where the content disclosed in the detailed description of the
invention cannot be extended or generalized to the extent of the invention disclosed in the
claims even based on the level of the technology at the time of application filing, the claims
cannot be deemed to be supported with the detailed description of the invention.
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(1) Article 42(4)(ⅰ) shall apply where claims disclose the invention with the upper concept
and the detailed description of the invention does not describe the invention with the upper
concept but the invention with the lower concept, and the invention with the upper concept
cannot be clearly grasped from the invention with the lower concept disclosed in the
detailed description of the invention.
Article 42(3) of the Patent Act shall apply, too, where an embodiment of the invention with
the lower concept is partially disclosed in the detailed description of the invention and,
therefore, it can be clearly assumed that the invention with other lower concepts which
belong to the upper concept of the claims cannot be easily worked.
Meanwhile, Article 42(4)(ⅰ) of the Patent Act shall apply where the invention with the lower
concept disclosed in the claims is not clearly grasped from the detailed description of the
invention even when the claims disclose the invention with the lower concept and the
detailed description of the invention disclose the invention with the upper concept. Also,
where the invention with the lower concept disclosed in the claims cannot be easily worked
based on the detailed description of the invention, Article 42(3)(ⅰ) of the Patent Act shall
apply, too.
(Example 1) Where claims disclose the extrusion molding method of plastic materials, but
the detailed description of the invention briefly mentions the method of applying extrusion
of plastic materials but describes the manufacturing process of edible plastic of agro-
fisheries products whose main components are carbohydrate or protein in detail and,
therefore, the disclosed molding temperature or pressure, etc. cannot be applied to the
execution of the extrusion molding method of other plastic materials such as ceramics or
metals, an examiner shall notify a ground for rejection citing the violation of Article 42(3) of
the Patent Act. Also, where the detailed description of the invention does not disclose the
method of applying extrusion of other plastic materials such as ceramics or metals besides
the extrusion of agro-fisheries products, an examiner shall notify a ground for rejection
citing the violation of Article 42(4)(ⅰ) of the Patent Act.
(Example 2) Where the detailed description of the invention discloses “an invention related
to an oxygen absorbing composition and using particles of metal after annealing and
electroreduction which can absorb oxygen faster than ordinary metal after annealing and
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electroreduction”, but claims disclose “an oxygen absorbing composition including particles
of metal after annealing and electroreduction with up to 99.6% of weight, salt up to about
3.5% of weight joining with water for creating electrolyte and properties of OOOO‟, if the
patent claims are disclosed as the upper concept compared to the content in the detailed
description of the invention and such content of the claims are not disclosed in the detailed
description of the invention, an examiner shall notify the ground for rejection in violation of
Article 42(4)(ⅰ) of the Patent Act considering the claims are not supported with the detailed
description of the invention.
(2) Where claims use the Markush type and the detailed description of the invention
discloses only embodiments related to certain matter among all the subject matter disclosed
in the claims and the rest of the matter is only mentioned but their embodiments are not
disclosed so that a person skilled in the art cannot easily work the invention, an examiner
shall notify a ground for rejection citing the violation of Article 42(3) of the Patent Act.
(Example) Where claims disclose a method of producing para-nitro substituted benzene
through nitration of compounds of substituted benzene with CH3, OH, COOH alternatively
disclosed by substituent(X), but the detailed description of the invention only discloses the
embodiment when the compound is toluene (when X is CH3) and the method is deemed
inappropriate when compound is benzoic acid (when X is COOH) base on the opposite
orientation of CH3 and COOH, an examiner shall notify a ground for rejection citing the
violation of Article 42(3) of the Patent Act.
(3) Where the detailed description of the invention discloses a certain embodiment for
working the invention and the embodiment of the invention related to the claims is deemed
to be different from the embodiment disclosed in the detailed description of the invention,
an examiner shall notify a ground for rejection in violation of Article 42(3)(ⅰ) of the Patent
Act citing the reason that the invention related to the claims cannot be worked only with
the embodiments disclosed in the detailed description of the invention.
(4) Where the terms used in the detailed description of the invention and the claims do not
clearly match, an examiner shall notify a ground for rejection citing the violation of Article
42(4) (ⅰ) of the Patent Act since it is deemed that the invention disclosed in the claims is
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not supported with the detailed description of the invention.
3. Description Requirements
3.1 Purpose
(1) Since invention refers to the act of creating new technical ideas, it is important to
disclose the invention for a better understanding of what technical implication the
concerned invention has in consideration of the level of the technology at the time of filing
the application and what technical advance the concerned invention has brought. In order to
understand the content of the invention, the detailed description of the invention should
include what unresolved tasks are left in what technical field and how the tasks are solved
with which methods. This is the method of description generally adopted by many countries
around the world in terms of writing a specification.
The description requirement was drawn to clarify the technical matter and scope for which
the patent protection is sought by disclosing the content of the claimed invention so that a
third party can easily understand the invention only with the specification.
(2) Article 21 of the Enforcement Rules of the Patent Act suggests the description method
enabling examiners or third parties to easily understand what technical advances the
invention would bring, including the technical field, the technical objectives that the
invention intends to achieve, the means for solving technical problems and other necessary
items for a better understanding of the content of the invention by a person skilled in the
technical field to which the invention pertains.
However, the above-mentioned items do not need to be separately disclosed. Where such
items are understood from the overall content of the detailed description of the invention, it
shall be deemed sufficient.
(3) Where an invention for which patent protection is sought does not fall under any of the
items specified under the Enforcement Rules of the Patent Act, the concerned item may be
deleted.
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For example, where a method of composing a new matter is invented by chance, if the new
matter or the composing method can be well understood from the description without any
description on the technical objectives that the invention intends to achieve, it shall not be
deemed to be the violation of the description requirement of the detailed description of the
invention.
3.2 Detailed Method of Description
In principle, the detailed description of the invention shall contain the following boxes:
〔Technical Field〕, 〔Background Art〕, 〔Prior Art Literature〕, 〔Content of Invention〕,
〔Detailed Content for Working of Invention〕, 〔Industrial Applicability〕, 〔Consignment
Number〕 and 〔Sequence Listing Free Text〕. The content shall be clear and precise enough
for a person skilled in the art to easily understand the invention and reproduce it through
repetition.
In such a case, “the detailed description of the invention” refers to the rest of the
description beside the title of the invention, the brief explanation of drawings (if the
explanation of marks is disclosed, it shall be included) and the scope of patent claims,
among all the items disclosed in the specification submitted by an applicant attached to the
specification under Article 42(2) of the Patent Act.
3.2.1 Technical Field
The technical field of the invention for which patent protection is sought shall be stated
clearly and briefly. If possible, related technical fields shall be disclosed, too. At least one
technical field shall be indicated, but where a person skilled in the art can understand based
on the technical knowledge without explicit description, the technical field need not be
indicated.
Where an applicant knows the International Patent Code to which the invention belongs, the
applicant may refer to the IPC.
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3.2.2 Content of Invention
In principle, the content of the invention includes technical tasks to be solved, a means for
solving the technical issues and effects and shall be stated as in the following manner.
(1) In the box for technical tasks to be solved, the issue of prior art which is the technical
objective of the invention for which patent protection is sought shall be stated.
However, if a person skilled in the art can understand the technical tasks to be solved based
on other descriptions in a specification and the technical knowledge without any explicit
description, the content of the invention need not be disclosed. Also, when original technical
tasks to be solved are not raised in the first place, like an invention created based on an
idea totally different from prior art, the description of the technical issues is not necessary.
(2) In the box for a means for solving the technical issues, the type of the means used to
address the concerned technical shall be stated. In general, the invention for which patent
protection is sought itself can become the means for solving the technical issues. However,
where a person skilled in the art can sufficiently understand the process of solving the
technical issues based on other descriptions of the specification such as the technical tasks
to be solved and embodiment, etc., any means for solving the technical issues need not be
stated.
Where original technical tasks to be solved are not raised in the first place, like an invention
created based on an idea totally different from prior art, any means for solving the technical
issues need not be stated.
(3) In the box for effects, particular effects of the invention for patent protection is sought
recognized better compared to those of prior art shall be stated. Where superior effects of
the claimed invention are disclosed in a specification, an applicant shall state such effects as
far as the applicant knows since such effects can be recognized for confirmation of inventive
step of the invention.
3.2.3 Detailed Content for Working Invention
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(1) As for the detailed content for working the invention, at least one detailed content for
working the invention shall be stated, if possible, in various ways so that a person skilled in
the art can easily figure out how to work the invention.
In order to figure out how the invention is being worked, technical means for solving the
issues needs to be stated. Where multiple technical means exist, how these means are
connected to generate such superior effects shall be indicated. The detailed technical means
itself shall be stated, not the mere function or effect of the means.
(2) The detailed content for working the invention shall contain the composition of the
invention as well as its functions. In fact, stating the function based on the technical field
might be more appropriate than stating the composition of the invention in detail. For
example, in the case of the computer field, stating what functions each technical means
holds as well as how these means are connected to solve the technical tasks might be more
advantageous.
(3) If necessary, the box for embodiments can be created and embodiments of how the
invention can be actualized can be disclosed. As many embodiments as possible shall be
stated.
Description of embodiments can be made as in the following manner:
① When the claims are disclosed comprehensively, each representative embodiment
corresponding to the comprehensive description shall be stated, except for where a person
skilled in the art can figure out the detailed content of the invention based on the
description.
② Basic data, etc. shall be disclosed for embodiments and, if necessary, comparative
embodiments and applied embodiments and so forth may be stated, too. Comparative
embodiments shall be technically closest to the concerned invention and differences
between embodiments, comparative embodiments and applied embodiments shall be
specified.
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③ Where embodiments are described by using drawings, marks of the corresponding
section on the drawings shall be disclosed in brackets after the technical terms.
(4) As for numerical limitation for certain technical means, the ground for limitation shall be
disclosed.
Also, where the claimed invention is explained by using experiment data, test methods,
test/measurement tools and test conditions shall be disclosed in detail so that a person
skilled in the art can easily reproduce the experiment results.
Where materials or devices hard to secure are used to work the invention, the
manufacturing process or the source of securement shall be disclosed.
Standard terms or academic terms generally recognized in the technical field shall be used
for technical terms. Chemical symbols, mathematical symbols and molecular formulas widely
used in the technical field shall be pursued.
(5) In presence of drawings, description of the drawings shall be stated.
3.2.4 Industrial Applicability
Where it is hard to determine whether the claimed invention is industrially available, the
method of industrial applicability, manufacturing method or utilization method shall be
stated in the box for 〔Industrial Applicability〕. Since industrial applicability can be well
inferred from other descriptions of the specification, additional description on industrial
applicability may not be necessary.
4. Requirement of Description of Background Art
Form no. 15 (Specification) of the Enforcement Rules of the Patent Act stipulates that
applications filed before June 30, 2011 shall disclose the background technology and the
information on literature of background art, if possible. However, a ground for rejection is
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not filed even if the background art is not specified.
Article 42(3)(ⅱ) of the Patent Act newly established in accordance with the revision on May
24, 2011 (taken effect on July 1, 2011) states that the detailed description of the invention
shall disclose the background art of the invention. If an applicant fails to disclose the
background art in the detailed description of the invention, a ground for rejection is notified
according to the violation of Article 42(3)(ⅱ) of the Patent Act. The revised Patent Act and
its subordinate guidelines on background art shall be applied to application filed after July 1,
2011.
4.1 Meaning of Background Art
Background art of an invention refers to exiting technology deemed beneficial in
understanding technological implications of the invention and conducting prior art searches
and examination.
4.2 Description Requirement of Background Art
(1) Background art shall be related to an invention for which patent protection is sought.
An invention for which patent protection is sought means an invention specified by the
matters disclosed in the claims. Whether background art is related to an invention for which
patent protection is sought shall be determined considering the technical field to which the
concerned invention pertains, technical problem of the invention, solution to the technical
problem and the effect of the invention.
(2) An applicant shall disclose the detailed explanation on the background art in the box
〔Background Art〕 of the detailed description of the invention and the information on prior
art literature where such background art is disclosed, if possible. The information on prior
art literature shall contain the country of publication, the name of gazette, publication
number, publication date for patent literature and the name of author, title of publication
(title of thesis), publisher, date of publication, etc. for non-patent literature. Basically, the
same instructions on citation of prior art literature at a time of notification of ground for
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rejection can be followed (See Part 5, Chapter 3, 「Disclosure of Information on Prior Art
Documents」)
However, even if only the information on prior art literature is disclosed, not the detailed
explanation on the background art, where the prior art literature describes proper
background art of the invention, the background art of the invention shall be deemed to be
disclosed.
Where multiple prior art literatures exist, the literature(s) closest to the invention shall be
disclosed.
(3) Where the background art cannot be distinguished since the concerned invention is
developed based on novel ideas different from existing technology, the description of the
background art of the invention can be replaced with the disclosure of existing technology
of the closest technical field or the description of difficulty finding proper background art.
4.3 Illegitimate Types of Disclosure of Background
Cases where a ground for rejection is notified based on failure to meet the requirement
under Article 42(3)(ⅱ) of the Patent Act are as follows:
4.3.1 Where no background art is written
Where the box〔Background Art〕 and the entire content of the detailed description of the
invention only disclose the technical problem of the invention, solution to the technical
problem and the effect of the invention, not the background art
4.3.2 Where background art is not related to invention for which patent protection is
sought
Where the background art disclosed in the detailed description of the invention is not
related to the invention for which patent protection is sought and therefore Article 42(3)(ⅱ)
of the Patent Act is violated as in the following cases:
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① Where only background art not related to the invention for which patent protection is
sought is disclosed
(Example) Where it is deemed that the claimed invention and the background art are not
related considering the technical field to which the concerned invention pertains, technical
problem of the invention, solution to the technical problem and so on, like the case where
claims disclose “a vacuum cleaner equipped with wet mop”, but the box〔Background Art〕
only discloses background art related to a cleaner with detachable wet mop
② Where the background art of an invention only in the detailed description of the
invention, not the claims is disclosed
③ Where a divisional application is filed because of the violation of unity of invention and
the background art disclosed in the detailed description of the invention of the divisional
application is not related to the invention claimed in the claims of the divisional application
4.3.3 Where background art of the invention is not deemed to be disclosed because it
constitutes basic technology
Where existing technology such as the technical field of the invention for which patent
protection is sought is disclosed as background art, but it merely constitutes basic
technology and therefore, cannot be deemed as the background of the invention.
Whether the disclosure of such basic technology is recognized as the disclosure of
background art shall be determined based on whether the disclosed technology is beneficial
in understanding the invention for which patent protection is sought and conducting prior
art searches and examination considering the technical problem of the invention and the
technical solution disclosed in the specification
However, in such a case it shall be recognized that the content of the prior art or relevant
literature deemed appropriate as background art are well known in the concerned technical
field or easily secured to notify the ground for rejection citing the violation of Article
42(3)(ⅱ) of the invention. Where an examiner recognizes the prior art literature disclosing
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proper background art, the examiner may suggest such prior art literature at the time of
notification of the ground for rejection.
(Example 1) Where an applicant files an application of „a noise-reducing suction nozzle of
vacuum cleaner ‟ but only discloses the general technical knowledge of vacuum cleaners in
the Box〔Background Art〕, if multiple prior arts on „noise-reducing vacuum cleaner ‟ or „the
structure of suction nozzle of vacuum cleaner ‟ directly related to the technical problem or
the technical solution of the invention exist and can be easily searched through conventional
search systems, it shall not be deemed to be the disclosure of the invention and therefore,
the invention shall be subject to notification of the ground for rejection under Article
42(3)(ⅱ) of the Patent Act.
(Example 2) Where an applicant files an application of „high-precision hydraulic drilling
device‟, but discloses the general technology related to „electric motor drilling device‟, not
„hydraulic drilling device‟, if the prior art (or laid-open gazette on the application filed by the
applicant) on „hydraulic drilling device‟ beneficial in understanding the invention, conducting
prior art searches and examination can be easily searched through conventional search
systems, it shall not be deemed to be the disclosure of the invention and therefore, the
invention shall be subject to notification of the ground for rejection under Article 42(3)(ⅱ)
of the Patent Act.
(Example 3) Where an applicant files an application of „electrode grinder for welding
machine‟ and the Box〔Background Art〕 describes the phenomenon of the edge of the
electrode becoming rounded when using a common welder and the technical solution of
the invention specifies the electrode grinder for welding machine being provided to address
the above-mentioned phenomenon, if existing technology related to welder or grinder
related to the phenomenon of the edge of the electrode becoming rounded when welding
more beneficial in understanding the invention conducting prior art searches and
examination cannot be easily searched through conventional search systems, the concerned
invention shall not be subject to the notification of the ground for rejection under Article
42(3)(ⅱ) of the Patent Act, despite the fact that common technical knowledge is disclosed in
the box〔Background Art〕.
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4.4 Notification of Ground for Rejection in case of Illegitimate Description of
Background Art
Where it is deemed that the description of the background art is illegitimate, the examiner
shall notify a ground for rejection under Article 42(3)(ⅱ) of the Patent Act.
Whether the requirement of Article 42(3)(ⅱ) of the Patent Act is met shall not be
determined uniformly. Rather, the current status of the technical field to which the
concerned invention pertains (existence of pioneer invention, etc.), the level of accumulation
of existing technology, the level of R&D activities by applicant/inventor in the concerned
technical field shall be considered.
The requirement under Article 42(3)(ⅱ) of the Patent Act may constitute a ground for
rejection of Article 62 of the Patent Act, but shall not become a ground for furnishing of
information concerning Patent Applications (Article 63-2) or a ground for rejection (Article
133(1)).
4.5 Response taken by Applicant to Notification of Ground for Rejection in Violation of
Article 42(3)(ⅱ) of the Patent Act
Where a ground for rejection is notified citing the failure of description of background art of
the invention, an applicant shall respond to the notification by making an amendment of
addition of information on prior art literature disclosing proper background art in the box
〔Background Art〕 or the box〔Prior Art Literature〕. In such a case, it is deemed appropriate
to submit a written opinion indicating that the background art of the invention for which a
patent protection is sought is disclosed in the concerned prior art literature.
(Amendment Example 1) Addition of “No. 10-OOOO-OOOOOOO (2002.4.25) of Laid-Open
Patent Gazette of Republic of Korea” in Box〔Patent Literature〕in
〔Prior Art Literature〕 of 〔Background Art〕
(Amendment Example 2) Addition of “The prior art of the concerned invention is No.
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10-OOOO-OOOOOOO (2002.4.25) of Laid-Open Patent Gazette of
Republic of Korea” in Box 〔Background Art〕
Where an invention is developed based on novel ideas totally different from existing
technology and therefore, no proper background art is found, an applicant may respond to
the notification by explaining such intention in a written opinion to the notification of the
ground for rejection.
Meanwhile, where an applicant adds the explanation on background art in the detailed
description of the invention after receiving a notification of the ground for rejection or
makes an amendment of adding the explanation of the background art disclosed in the
prior art literature, along with the information on such literature, it shall be noted that such
explanation on the background art constitutes the addition of new matters, unless the
explanation can be obviously derived from the description from the initially-submitted
specification, etc.(See Detailed Determination Process of Prohibition of Addition of New
Matter in 1.2, Chapter 2, Part 4)
5. Other Instructions
(1) Where the terms disclosed in a specification are not written in Korean and the
description are unclear, an examiner shall give the applicant an opportunity to explain under
Article 11(1)(ⅳ) of the Enforcement Rules of the Patent Act and return the application.
However, where a part of the specification is written in a foreign language and the content
of the application can be well understood except the concerned part, an examiner shall not
return the application. Instead, the examiner shall order amendment citing the violation of
Article 46 of the Patent Act.
(2) Where an error in translation is found in an application claiming priority under the Treaty
filed based on a patent application in a foreign language, only when lack of description is
found after determination on lack of determination only with the specification of the
application claiming priority under the Treaty, an examiner shall notify a ground for rejection
under Article 42(3) or (4) of the Patent Act. Even when an error in translation changed the
content of the application filed in a first country or the content of the description in the
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specification is unclear, an examiner shall take note that a reason of rejection cannot be
notified on the ground of an error in translation.
In such a case, since the submission of amendments is highly likely to lead to that ① the
technical matter disclosed only in the specification of the application in a first country, but
not disclosed in the initial specification of the application claiming priority under the Treaty
is added, or ② the invention impossible to be worked only with the content of the
specification of the application claiming priority under the Treaty has become possible to be
worked. Since the addition of new matters is highly likely, an examiner shall examine the
application thoroughly.
(3) Where an invention cannot be easily worked since the technical terms used in the
detailed specification of the invention are not harmonized, an examiner shall notify a ground
for rejection citing the violation of Article 42(3) of the Patent Act. Where the technical terms
disclosed in the detailed description of the invention and claims are different, or the
technical terms written in the claims are ambiguous, an examiner shall notify a ground for
rejection citing the violation of Article 42(4) of the Patent Act.
(4) Where technical terms or academic terms not widely used are not defined in the detailed
description of the invention and their definitions are unclear or where the invention cannot
be clearly understood since the technical terms which are hard to be understood in Korean
are not accompanied with the corresponding Chinese characters or the original language in
brackets, an examiner shall notify a ground for rejection citing the violation of Article 42(3)
of the Patent Act.
(5) In principle, stating the trademark or name of a product is not allowed in a specification.
However, even though the trademark or name of a product is disclosed, where the
concerned product can be easily secured; the change in quality or composition of the
product with the trademark and name is less likely to change the content of the invention,
stating the trademark or name of the product shall be exceptionally allowed.
6. Notification Method of Rejection Ground
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(1) When an examiner intends to notify a ground for rejection citing the violation of the
enablement requirement and description requirement of this chapter, any violation of such
requirements shall be specified and notified. Especially, where a ground for rejection is to be
notified based on the violation of enablement, the corresponding claims shall be specified.
(2) Where the detailed description of the invention is made under Article 21(3) of the
Enforcement Rules of the Patent Act, but the description is not clear and detailed enough
for the invention disclosed in the claims to be easily worked, an examiner shall notify a
ground for rejection only based on Article 42(3) of the Patent Act.
(3) Where the detailed description of the invention does not satisfy both the enablement
requirement and the description requirement, an examiner shall notify a ground for rejection
based on Article 42(3) of the Patent Act and Article 21(3) of the Enforcement Rules of the
Patent Act.
Meanwhile, where the description requirement under Article 23(3) of the Enforcement Rules
of the Patent Act is violated, but all of the inventions disclosed in the claims can be easily
worked only with the detailed description of the invention, the description shall be deemed
to be legitimate.
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Chapter 4. Claims
1. Relevant Provisions
Article 42 of the Patent Act (Patent Application) ①~③ Omitted
④ The claims under paragraph(2)4 shall describe the matter for which protection is sought
in one or more claims (hereinafter referred to as “claims”) and the claims shall fall under any
of the following subparagraphs:
1. The claims shall be supported by detailed description of the invention;
2. The claims shall define the invention clearly and concisely;
3. Deleted.
⑤ When filing a patent application, any patent application may attach the specification not
stating the claims under paragraph (2)4 to the patent application, notwithstanding
paragraph (2). In such cases, the specification shall be amended so as to state the claims
within the period classified under the following subparagraphs:
1. Until one and half years since the day falling under any subparagraph of Article 64(1);
2. Until three months since the day of receiving the notification of the purport of a request
of examination of patent application under the provisions of Article 60(3) within the period
set forth in subparagraph 1 (until one and a half years since the day falling under any
subparagraph of Article 64(1), if such notification was received after one year and three
months from the day falling under any subparagraph of the same paragraph).
⑥ The claims under paragraph (2)4 shall state such matters regarded necessary to specify
an invention as structures, methods, functions and materials or combination thereof to
clarify what to be protected.
⑦ Where a patent applicant fails to amend the specification until the period set forth in
each subparagraph of paragraph (5) after filing an application, the application concerned
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shall be deemed withdrawn on the day after the period expires.
⑧ Details concerning how to enter the claims under paragraph (2)4 shall be prescribed by
Presidential Decree.
⑨ Omitted.
Article 5 of the Enforcement Decree of the Patent Act (Descriptive Method of Scope of
Patent Claim)
① When the claim (hereinafter referred to as “claim”) within the scope of the patent claim
provided for in Article 42(8) of the Act is to be entered, the independent claim (hereinafter
referred to as “independence”) shall be entered and the dependent claim (hereinafter
referred to as “dependence”) that substantiates the independence by limiting or adding to it
may be entered. In such cases, if it is deemed necessary, other dependence that shapes up
the dependence by limiting or adding to it may be entered.
② The claim shall be entered, one or more paragraphs from among independence or other
dependence shall be quoted and the number of paragraphs quoted shall be entered.
③ Deleted.
④ The number of a claim which depends upon another claim shall be entered.
⑤ The claim that quotes not less than two claims shall mention alternatively the numbers of
the quoted claims.
⑥ In the claim that quotes not less than two claims, the quoted claim shall be prohibited
from quoting two or more other claims again. The same shall apply to the formula by which
in the claim that quotes not less than two claims, the quoted claim quotes one claim that
results in quoting not less than two claims after quoting one claim again.
⑦ The claim that is quoted shall be entered ahead of the claim that quotes other claim.
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⑧ Each claim shall be entered after changing the line of each paragraph and the serial
number in the Arabic figure shall be given in the order of the entries.
2. Recognition of Invention
Description of claims holds significance in that the scope of protection of a patent right is
determined based on the description. Where claims does not meet the description
requirement, the right of a third party can be unfairly limited due to the patent right. A
patent holder, too, can face disadvantages such as invalidation of a patent right or
unnecessary limitation on the scope of protection of a patent right. Therefore, when
examining the description requirement of the claims, an examiner shall be mindful of the
description.
Items disclosed as claims are those that an applicant selects among the inventions disclosed
in the detailed description of the invention and discloses as items for which patent
protection is sought at his/her will according to the description method of the claims under
Article 42(4) and (8) of the Patent Act. Therefore, the recognition of the invention for which
patent protection is sought shall be made based on the description disclosed in each of the
claims in consideration of the content of the claims selected at the applicant‟s will. The
detailed description of the invention or description in drawings shall be referred to only
when the description of claims is unclear or the definition and content of the technical
terms are ambiguous. The invention disclosed in claims cannot be recognized based on the
content of the detailed description of the invention out of the description of the claims.
Also, since an abstract is used for technical information, it cannot be used to decide the
protection scope of the invention.
3. Claims Supported by Detailed Description of Invention
The detailed description of the invention serves as a written technical disclosure. When an
invention not disclosed in the detailed description of the invention is stated as claims and is
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granted a patent, it would lead to the invention not disclosed in the detailed description of
the invention being unfairly granted a patent right. To avoid it, Article 42(4)(ⅰ) of the Patent
Act specifies that the claims shall be supported by detailed description of the invention.
Under Article 42(2) of the Patent Act, the detailed description of the invention refers to the
rest of the descriptions other than the title of the invention, brief explanation of drawings (if
the explanation on marks is disclosed, it shall be included) as well as the claims among the
items disclosed in the specification attached to the patent application submitted by the
applicant.
(1) An examiner shall determine whether an invention disclosed in claims are supported by
the detailed description of the invention based on whether a person skilled in the technical
filed to which the invention pertains can figure out the matters corresponding to the
invention disclosed in the claims are written in the detailed description of the invention.
Whether the corresponding matters are disclosed in the detailed description of the invention
shall be determined by reviewing whether an invention out of the scope grasped by a
person skilled in the concerned technical field based on the detailed description of the
invention is claimed in claims, considering the purport of Article 42(4)(ⅰ) of the Patent Act
rather than literal identicalness between the claims and detailed description of the invention.
(2) Cases where an invention disclosed in claims is not supported by the detailed description
of the invention include the followings:
① Where the items corresponding to those in claims are neither disclosed nor implied in
the detailed description of the invention
(Example 1) Where specific numerical limitation is disclosed in claims, but such numbers are
not disclosed in the detailed description of the invention
(Example 2) Where claims only disclose an invention using an ultrasonic motor, but the
detailed description of the invention does not disclose the invention using the ultrasonic
motor, but only discloses an invention using a direct current motor
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However, where the detailed description of the invention discloses the direct current motor
as the embodiment, but there exists the description that other motors other than direct
current motors can be used and where working the invention using an ultrasonic motor is
possible based on the level of technology at the time of application filing, the claims shall
be deemed to be supported by the detailed description of the invention.
② Where the terms are not harmonized in the detailed description of the invention and the
invention disclosed in the claims so that the correspondence between the detailed
description of the invention and the claims is ambiguous
③ Where the items disclosed in claims are means or steps to perform particular functions,
but specific composition corresponding to such means or steps is not disclosed in the
detailed description of the invention
④ Where the content disclosed in the detailed description of the invention cannot be
extended or generalized to the scope of the claimed invention based on the level of
technology of the concerned technical field at the time of application filing
(Example 1) For example, where an invention is to be specified by the scope of energy
efficiency to be achieved, but the detailed description only discloses the embodiment by
specific means and it is deemed that the suggested embodiment cannot be extended or
generalized to the entire scope of energy efficiency of the claimed invention even with the
level of technology of the technical filed at the time of application filing.
(Example 2) Where claims disclose particular medicine with chemical compounds defined by
preferred quality as effective properties, but the detailed description of the invention
discloses that only part of the particular medicine included in the claims is confirmed to be
effective as the concerned medicine and the effectiveness of the chemical compounds
included in the claims cannot be recognized even based on the ordinary knowledge of the
technical field at the time of application filing
(Example 3) Claim 1 describes the composition as „selective inhibitor of collagenase-3‟ and
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based on definition of the term disclosed in the specification, the „selective inhibitor of
collagenase-3‟ refers to „a chemical having selectiveness on collagenase-3 enzyme activation
suppression more than 100 times than collagrnase-1 enzyme and having potency of less
than 100nM defined by the result of the IC50 according to the fluorescence analysis method
of MMP-13/MMP-1. The term is interpreted to refer to 16 compositions listed in the detailed
description of the invention as well as all the chemical materials meeting the above-
mentioned requirement. However, the detailed description of the invention only discloses
the content on effectiveness of two out of the 16 compositions in treatment and prevention
of ostarthritis and the experiment outcomes of their pharmacological effect since such
compositions have selective suppression activation on collagenase-3 and substantially
inhibits the activation of collagenase on joints. Also, there is no disclosure on the
pharmacological effect of the remaining 14 compositions or numerous chemical materials
whose chemical structure belonging to the above-defined „selective inhibitor of collagenase-
3‟ cannot be specified, as well as no available document of forecasting such chemical
materials to have identical clinical correlation with the two compositions based on the level
of technology as of filing. In such a case, claim 1 is not supported by the detailed
description of the invention. (Supreme Court Ruling. Case No. 2004 Hu 1120)
⑤ Where claims do not recite the features explained as indispensable features to solve the
technical problem in the detailed description of the invention and therefore, it is deemed
that the claims claim an invention which a person skilled in the art cannot recognize from
the detailed description of the invention
(Example) Where the detailed description of the invention describes the composition and
effect of rice cake by allowing only „cream which does not cause moisture transition from
rice cake (dough) due to its lower water content than that of rice cake (dough)‟ as the
stuffing, but claims state the stuffing as just „cream‟ which is deemed as fatty substance
separated from milk regardless of water content (Supreme Court Ruling. Case No. 2003 Hu
496)
(3) As for the relation between Article 42(4)(ⅰ) and Article 42(3)(ⅰ), Part 2 Chapter 3 「2.4
Relation with Lack of Description on Claims」 shall be referred to.
4. Clear and Concise Statement of Invention
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When a patent right is granted to an invention whose description in claims is unclear or
concise, a parent application cannot serve its role as the abstract of title which determines
the scope of protection of the claimed invention because of the unclear protection scope of
the invention. Also, the determination of patentability cannot be conducted. Therefore,
Article 42(4)(ⅱ) of the Patent Act can be deemed to be a provision to prevent such issues..
(1) In principle, whether the claimed invention is disclosed clearly and concisely shall be
determined by a person skilled in the technical field to which the invention pertains based
on the description of the claims with consideration of the detailed description of the
invention or the description of drawings as well as the level of technology at the time of
application filing. It cannot be determined except for the description of the claims.
(2) That an invention shall be concisely disclosed does not mean that the definition of the
invention shall be concise. It means that the description itself in the claims shall be concise.
(3) Cases where an invention is not disclosed clearly and concisely are as follows:
① Where the description of claims are unclear. However, where the unclear part is a mere
error in the description and the error does not lead a person skilled in the technical field to
which the invention pertains to decide that the invention is unclear or the invention can be
easily understood based on the detailed description of the invention, drawings or the level
of technology at the time of application filing, the invention shall not be deemed to be
unclear.
② Where each composition consisting of the invention is merely sequenced, but the
connection between the compositions is not disclosed and therefore, the invention is
unclear
③ Where the category to which the claimed invention belongs is unclear
④ Where the description of claims is too lengthy, such as the repetition of the same
description and so that the description to which patent protection is sought is not clear and
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concise
⑤ Where claims include the unclear expression about the composition of the invention.
However, even with the use of such unclear expression, where the meaning is clearly
supported by the detailed description of the invention and the invention is deemed to be
clearly specified, the invention shall not be deemed to be unclear.
(Example 1) Where arbitrary additional items or selective items are disclosed along with
expressions such as „at one‟s will‟, „if necessary‟, „in particular ‟, „for example‟, „and/or ‟
⇒ ‟Invention A and/or Invention B‟ refers to both „Invention A and Invention B‟ and
„Invention A or Invention B‟. Therefore, both cases shall be determined for the violation of
Article 42(4)(ⅰ)(ⅱ) of the Patent Act. In such a case, it shall be determined whether the
description of 「and/or」 may lead to multiple contrasting inventions are claimed in a single
claim(whether proper number of claims are disclosed according to the characteristics of the
invention).
(Example 2) Where unclear expressions of comparison or degree are used such as „mainly‟,
„as main process‟, „appropriate‟, „proper amount of‟, „many‟, „high‟, „ most of‟, „almost‟,
„approximately‟, „about‟
(Example 3) Where unclear expressions of negation are used such as „except for ‟, „other than‟
(Example 4) As for an invention defined by numerical limitation, where numerical limitation
without maximum or minimum description such as „more than‟, „less than‟, „0~10‟ or
numerical limitation including 0(excluded when the composition including 0 is an arbitrary
composition, not necessary composition) is disclosed. Or, where dual numerical limitations
are disclosed within a single claim such as „120-200℃ or more appropriately 150-180℃‟
⇒In this context, „arbitrary composition‟ refers to the one that is additionally added or is
deemed not to be added based on the applicant‟s need and the one whose intention is
clearly disclosed in a specification
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⑥ Where the subject of indication is unclear and thus the composition of the invention is
unclear
(Example) Where many different types of gears are disclosed in claims and, when specifying
particular gears among them, the subject as „said spur gear ‟, „electronic bevel gear ‟ is used
and instead, the subjects are unclearly specified such as „said gear ‟, „electronic gear ‟
⑦ Where the composition of the invention to which patent protection is sought is unclear
since multiple technical terms of the same expression serving different functions in claims
are disclosed by specifying different functions or the clear description of the marks used in
drawings is not disclosed
⑧ Where an invention is not clear and concise since items irrelevant of the technical
composition of the invention such as commercial benefits, regions of sale, places of sale, etc.
⑨ Where the detailed description of the invention or description of drawings is substituted
without disclosing the composition of the invention. However, where using the detailed
description of the invention or description of drawings is necessary, description by such
substitution shall be allowed.
(Example) As for an invention related to alloys, where the special relation between alloy
elements cannot be clearly described only with numerical figures or sentences, drawings can
be used for description, like “heat resisting alloy comprising Fe∙Cr∙Al within the scope
surrounding Dot A(…), Dot B(…), Dot C(…), Dot D(…) of the attached Drawing no.1”.
(4) As for Case ⑥ above, even though the subject is not literally identical, if it constitutes a
clerical error and a person skilled in the art can understand the composition of the invention
and reproduce the invention, it shall be deemed as legitimate description under Article
42(4)(ⅱ) of the Patent Act (2002 Huh 6251, 2011 Huh 7263)
The followings are cases of clerical errors and therefore, are not deemed to be in violation
of Article 42(4)(ⅱ) of the Patent Act:
ⅰ) Where claims disclose “above-mentioned OOO” and the first part of the concerned claim
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or cited claim does not disclose „OOO‟ at all, but the invention is clearly understood if
interpreted excluding “the above-mentioned” based on the detailed description of the
invention and drawing(s)
(Example 1) Where a claim states “consisting of the above-mentioned regulator(10) and the
above-mentioned added resistance(R6)(90) in series in order for reference voltage to
remain unchanged despite the voltage fluctuation of power supply energized through input
terminal of the above-mentioned regulator (10)” and the first part of the claim on “the
above-mentioned added resistance(R6)(90)” does not state “added resistance(R6)(90)” at all.
However, if the claimed invention is clearly understood when interpreted excluding “the
above-mentioned” based on the content of the detailed description of the invention of
“consisting of the above-mentioned regulator (10) and an added resistance (R6)(90) in series
in order for reference voltage to remain unchanged, “the above-mentioned” can be deemed
as clerical error and therefore, it does not constitute the violation of Article 42(4)(ⅱ) of the
Patent Act. (2010 Won 8839)
☞ However, where a claim discloses “the above-mentioned OOO”, but the first part of the
concerned claims or cited claim does not disclose “OOO” at all and it is uncertain whether
either “the above-mentioned” is incorrectly written or the number of the cited claim is
incorrectly entered, it shall not constitute the case above, but rather be deemed as an un
unclear statement in violation of Article 42(4)(ⅱ) of the Patent Act. For example, where claim
8 discloses “as in claim 1, … the above-mentioned subfield not doubled …”, but “subfield not
doubled” is not disclosed in the first part of claim 8 or claim 1, but is disclosed in claim 6
and it is not certain whether either the claim number (claim 1) dependent upon claim 8 is
incorrectly put or “the above-mentioned” from “the above-mentioned subfield not doubled”
is incorrectly entered, it shall constitute the ground for rejection, in violation of Article
42(4)(ⅱ) of the Patent Act.
ⅱ) Where the indicated phrase and the phrase are not exactly identical, but they are
deemed to correspond to each other based on the meanings
(Example) a claim states “between the two nodes in the telecommunication system, the
second node contains the step of providing the information related to traffic condition
containing cell-loading to the first node out of the above-mentioned two nodes,… the
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above-mentioned node value is based on the above-mentioned transmitted information and
the mapping information. When only the “information” out of “above-mentioned transmitted
information” is determined as “information related to traffic condition containing the cell-
loading” and the phrase “transmitted” is not disclosed in the first part of the claim, but it
can be certain that “the second node providing the information related to traffic condition
containing cell-loading to the first node” can be interpreted as transmitting the information
based on the detailed description of the invention. Therefore, “the above-mentioned
transmitted information” shall not be in violation of Article 42(4)(ⅱ) of the Patent Act. (2010
Won 9258)
ⅲ) Where some of the referred-to claims are deleted, but the claimed invention is clearly
understood when interpreted excluding the deleted claim(s).
(Example) Claim 10 discloses “as for one of claims 1 to 9, …”. Even if claim 3 is deleted, claim
10 can be interpreted to depend upon one of claim 1, claim 2, and claims 4 to 9 and
therefore the claimed invention is clearly understood. Therefore, claim 10 shall not be
deemed to be in violation of Article 42(4)(ⅱ) of the Patent Act. (2010 Won 4920)
☞ However, where all of the referred-to claims are deleted, it shall be deemed to be in
violation of Article 42(4)(ⅱ) of the Patent Act since which claim is referred to cannot be
known and the claimed invention cannot be clearly understood. For example, claim 3 states
“as for claim 1, …”. If claim 1 is deleted, claim 3 is in violation of Article 42(4)(ⅱ) of the
Patent Act. In another example, claim 5 states “as for one of claims 1 to 3, …”. If claims 1 to
3 are all deleted, claim 5 is in violation of Article 42(4)(ⅱ) of the Patent Act.
As shown above inⅰ),ⅱ), and ⅲ), such statements are deemed to be clerical errors and
therefore, the examiner shall not deliver the decision of rejection citing the violation of
Article 42(4)(ⅱ) of the Patent Act. Where such statement exists during the examination
phase, the examiner shall make a decision to grant a patent by making an ex officio
amendment if no other ground for rejection exists. (See Part 5, Chapter 5, 「3. Instructions of
Amendment Ex officio」. If any other ground for rejection exists, the examiner shall
recommend an amendment by indicating such ground as „Matters to be noted‟ at the time
of notifying the submission of opinion.
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However, where it is unclear that a claim falls under any of the above-mentioned three cases,
it would be desirable for the examiner to notify the applicant of such facts and deliver the
notification of the ground for rejection, rather than ex officio amendment or „Matters to be
noted‟, to give the applicant the opportunity to submit a written opinion or amendment.
However, where the concerned claim is deemed to fall under one of the above-mentioned
three cases after re-examining the application considering the submitted written opinion or
amendment in response to the ground for rejection, the examiner shall not deliver a
decision to reject the application and rather make an ex-officio amendment (if no other
ground for rejection exists.)
Also, as for determining on rejecting an amendment (whether a new ground for rejection is
created) under Article 51, even when matter constituting one of the three cases is newly
created because of the amendment, the examiner shall not reject the amendment since the
concerned matter is not deemed to be a new ground for rejection.
(5) Where more than two technical matters holding similar characteristics or functions, they
can be disclosed in a single claim such as a Markush type claim.
Where the description of Markush type claims is related to chemical substances, such
matters can be deemed to hold similar characteristics or functions if the following
requirements are all met:
① All the matters shall hold the common characteristics or vitality
② All the matters shall share the important chemical structure, or all the matters shall
belong to the group of chemical substances deemed as one group in the technical field to
which the invention pertains
In this context, “all the matters shall share the important chemical structure” refers to the
cases where multiple chemical substances feature the common chemical structure prominent
in the most of the chemical structure, or even multiple chemical substances share only a
small part of the chemical structure, where the shared chemical structure comprises a
significant part in terms of structure. Also, „the group of chemical substances deemed as one
group‟ means the group of the chemical substances expected based on the knowledge of
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the technical field that each of the group of chemical substances disclosed as the subject
matter is to be identically worked in the claimed invention. In order words, it refers to the
case where the same result is expected whichever is chosen among the chemical substances
among the group.
(5) Where claims include functional expressions describing the function or effect of an
invention, but if the composition of the invention is not deemed to be clear even with such
descriptions, the claims cannot be allowed(refer to Supreme Court Case No. 97 Hu 1344,
October 18, 1998). In this context, cases where the composition of the invention is deemed
to be clear even with functional expressions refers to ① where expressing claims functionally
is necessary since the technical idea of the invention cannot be clearly disclosed only with
the existing technical composition (There are cases where the claims cannot be expressed
only with the detailed description of the composition due to the characteristics of the
technical field to which the concerned invention pertains such as BM invention or computer-
related invention, etc.), ② where the meaning of the functional expressions are clearly
specified by the description of the detailed description of the invention and description in
drawings(refer to Patent Court Case No. 2005 Hu 7354).
Where claims include functional expressions, the examiner shall determine whether the
subject matter for which patent protection is sought is clearly understood from a
perspective of a person skilled in the technical field to which the invention pertains
considering the detailed description of the invention or the description in drawings and the
level of technology at the time of application filing. If deemed otherwise, the examiner shall
notify a ground for rejection citing the violation of Article 42(4)(ⅱ) of the Patent Act(refer to
Supreme Court Case No. 2005 Hu 1486, September 6, 2007).
(6) The method of writing claims related to a product in ways of “a product manufactured
by the method of”, “a product manufactured with the apparatus of” shall be exceptionally
recognized only when the composition of a product for which patent protection is sought
cannot be properly disclosed (new matters, ingredients, food, etc.). Such claims shall be
allowed to filed as one application of claims disclosing a method, apparatus and product
and a group of inventions.
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Although the composition of a product filed in the above-mentioned format, where the
invention is recognized to be unclear because of the failure in the composition of the
product, an examiner shall notify a ground for rejection citing the violation of Article
42(4)(ⅱ) of the Patent Act.
(7) A parameter invention refers to the one created with part of the composition of the
invention after an examiner arbitrarily creates a parameter on physical∙chemical figure which
is not the standard or prevalently used in the concerned technical field or creates a
parameter in operation expression by using the correlation among multiple variables. Since
the technical composition of a parameter invention having the figure that the parameter
represents cannot be clearly understood only with the description, the invention shall be
deemed not to be described clearly and concisely except for ① where the definition or
technical meaning of parameter is clearly understood, ② where a ground for failure in the
use of the concerned parameter is clearly shown, and ③ where the relation with the level of
technology at the time of application filing is understood, considering the detailed
description of the invention or drawing as well as the level of technology.
In order for the ground for failure in the use of the parameter to be clearly shown, the
cause and effect relationship between the parameter and effect as well as the relation
between the technical problem and the parameter as its solution shall be clearly understood
through comparative examples of the satisfactory cases as well as the unsatisfactory case of
the parameter. Also, for the relation between the parameter and the level of technology at
the time of application filing to be understood, the detailed description of the invention
shall include examples of comparative experiments of materials holding similar structure or
effect or logical explanation so that it shall be clearly understood that such materials are not
included to the claimed invention.
Although the technical meaning of the parameter, the reason why the concerned parameter
cannot be used and the relation with the level of technology at the time of application filing
are not explicitly disclosed in the detailed description of the invention or drawings, but if
they can be clearly understood with consideration of the level of technology at the time of
application filing, an examiner shall not consider the concerned invention as unclear only
based on such grounds.
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5. Description of matters deemed necessary for Specification of Invention
Article 42(6) of the Patent Act stipulates that the claims under paragraph (2)4 shall state
such matters regarded necessary to specify an invention as structures, methods, functions
and materials or combination thereof to clarify what to be protected. As technology
diversifies, describing the invention through the effect or operation method of an apparatus,
rather than its physical structure or detailed means of the product(device) invention, would
be desirable. Therefore, if an invention can be clearly specified, it shall be noted that the
invention can be freely disclosed at an applicant‟s choice.
(Note) The above-mentioned provision does not provide the ground for rejection or
invalidation of a patent right. Therefore, an examiner shall not notify a ground for rejection
or make a decision of rejection based on the provision.
6. Claim Drafting Requirements
The way of describing the claims disclosed in a specification is defined by the law to make
sure that it serves as an abstract of title which determines the claims of the claimed
invention. Especially, the Korean Patent Act adopts the system of multiple claims under
which one or more than two claims describing the matters for which patent protection is
sought can be described. Article 5 of the Enforcement Decree of the Patent Act clearly
prescribes the claim drafting requirements under the system of multiple claims.
6.1 Discrimination Criteria of Independent Claim and Dependent Claim
Claims disclosed in the claims (hereinafter referred to as “claims”) are divided into
independent patent claims(hereinafter referred to as “independent claims”) and dependent
patent claims(hereinafter referred to as “dependent claims”) limiting, adding to or specifying
independent claims.
In this context, „limiting, adding to or specifying independent claims‟ means to
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substantiating an invention by adding the technical matter or limiting the upper concept
with the lower concept. Dependent claims refer to those whose content of the invention is
dependent on other claims and when the content of other claims changes the content of
the concerned dependent claims changes accordingly.
In terms of the content of the invention, although a claim does not add to or limit an
independent claim, if the claim does not depend on the independent claim in formalities,
the claim cannot be considered as dependent claim. Even if a claim depends on an
independent claim in formalities, where the claim does not limit or add to the independent
claim (for example: in Claim O, a product with the composition of A substituted with B), the
claim cannot be considered as dependent claim.
(Note) Article 5(1) of the Enforcement Decree of the Patent Act states that the claim that
substantiates the independence by limiting or adding to it may be entered as the
dependence. However, it does not necessarily mean than that claims substantiated by way of
limiting or adding to independent claims shall be described in the form of dependence.
Therefore, claims substantiated by way of limiting or adding to independent claims, too, can
be described in the form of dependence.
6.2 Article 5(1) of the Enforcement Decree of the Patent Act
(1) Independent claims shall be entered without depending on other claims in the form of
independence. However, even independent claims can be entered without depending on
other claims within the scope in which the invention can be clearly understood to avoid the
redundant description of the same matter.
(Example 1) A product of … manufactured by the method of claim O
(Example 2) A method of … manufacturing a product of claim O by …
(Example 3) A method of … by using a product manufactured by the method of claim O
(Example 4) A product manufactured with the device of claim O
(2) Dependent claims shall be entered by referring to independent claims or other
dependent claims. Dependent claims shall all include the characteristics of the claims
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referred to.
(Example 1) A product of…, in terms of …in claim O
(Example 2) A method characterized with … in a method of … of claim O or claim O
Claims in the following cases shall be treated as independent claims, not dependent claims.
① Where claims are entered in the form of decreasing the subject matter of the claims
referred to
② Where the subject matter disclosed in the claims referred to is entered in the form of
substituted with other matter
(Example)
〔Claim 1〕 A power transfer unit with the structure of … equipped with a gear electric motor
〔Claim 2〕 A power transfer unit equipped with a belt conveyor, instead of a gear electric
motor, in claim 1
(3) Article 5(1) of the Enforcement Decree of the Patent Act stipulates that where the claim
within the scope of the patent claim provided for in Article 42(8) of the Act,….the dependent
claim … may be entered. Therefore, a ground for rejection shall not be notified based on
this provision.
6.3 Article 5(2) of the Enforcement Decree of the Patent Act
(1) The claim shall be entered in a proper number according to the nature of the invention.
This provision shall be separately treated from Scope of Patent Application of Article 45 of
the Patent Act.
Cases where the claims are not entered in a proper number include ① where more than two
inventions from different categories are disclosed in one claim, ② where the claimed matter
is more than two, ③ where the same claim is disclosed redundantly(referring to the case of
the identicalness of claims in terms of wording and different expressions with technically
identical meaning shall be exempt), ④ multiple claims care referred to many times within a
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single claim, etc.
(Example 1) Where more than two subject matter is disclosed in one claim: A high molecular
compound of … and a contact lens using the high molecular compound
(Example 2) Where more than two claims are referred to in a single claim and then multiple
claims are referred to within the claims that are already referred to: for example, it can be
「A product of claim O or claim O manufactured by the method of claim O or claim O」.
Such case shall be exempt because it could lead to confusion like the case where a
dependent claim referring to more than two claims is dependent upon another claim
referring to more than two claims.
6.4 Article 5(4) of the Enforcement Decree of the Patent Act
A claim dependent upon other claims shall contain the number of the claims cited and the
number of the claims quoted shall be entered in the following manner:
(Example 1) A method of … in claim O
(Example 2) A device of … in any from claim O to claim O
(Note) Article 5(4) of the revised Enforcement Decree of the Patent Act (Presidential Decree
No, 24645, promulgated on June 28, 2013), applicable to not only dependent claims but
also all claims citing other claims, shall be applied to all applications examined after July 1,
2013.
6.5 Article 5(5) of the Enforcement Decree of the Patent Act
As for a claim dependent upon more than two claims, the claims referred to shall be
numbered so that one claim can be chosen.
① Where the claims referred to are disclosed alternatively
(Example 1) A device of … in either claim 1 or claim 2
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(Example 2) A device of … in any from claims 1 to 3
(Example 3) A device of … in any from claim 1, claim 2 or claim 3
(Example 4) A device of … in claim 1, claim 2 or claim 3
(Example 5) A device of … in any of claims 1 to 7 and claims 9-11
(Example 6) A device of … in any of claim 1, claim 2 and claims 4 to 7
In the above-mentioned examples, the numeric number of the claims referred to shall be
deemed to be alternatively listed based on the fact that „in any of claim…‟ limits all of the
claims listed before and after the conjunction „and‟. Where claims are listed with the
conjunctive word „or ‟ instead of „and‟, the claims listed before and after „or ‟ are deemed to
be limited. Therefore, the numeric number of the claims referred to shall be recognized to
be disclosed alternatively.
② Where the claims referred to are not disclosed alternatively
(Example 1) A device of … in claim 1 or claim 2
(Example 2) A device of … in claim 1 and claim2 or claim 3
(Example 3) A device of … in any of claim 1 and claim 2 or claim 3
(Example 4) A device of … in claims 1, 2
6.6 Article 5(6) of the Enforcement Decree of the Patent Act
Claims dependent upon more than two claims cannot refer to other claims referring to more
than two claims. The intention of this provision is to prevent difficulties of having to refer to
other multiple claims in interpreting a single claim.
① Where a claim dependent upon more than two claims refers to another claim dependent
upon more than two claims
(Example) Claim 4 dependent upon more than two claims refers to another claim (Claim 3)
dependent upon more than two claims. Therefore, the claim violates the description method
of scope of claim.
〔Claim 1〕 A device of …
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〔Claim 2〕 A device of … in claim 1
〔Claim 3〕 A device of … in claim 1 or claim 2
〔Claim 4〕 A device of … in claim 2 or claim 3
② Where a claim referred to in the claim dependent upon more than two claims refers to
another claim and therefore, the claim turns out to be dependent upon more than two
claims
(Example) Claim 5 dependent upon more than two claims refers to claim 4 dependent upon
claim 3 referring to more than two claims. Therefore, the claim violates the description
method of scope of claim.
〔Claim 1〕 A device of …
〔Claim 2〕 A device of … in claim 1
〔Claim 3〕 A device of … in claim 1 or claim 2
〔Claim 4〕 A device of … in claim 3
〔Claim 5〕 A device of … in claim 2 or claim 4
〔Claim 6〕 A device of … in claim 5
In the above-mentioned case, even if claim 4 is dependent upon claim 3, since claim 3
depends upon more than two claims, technically it is the same case with referring to more
than two claims. Therefore, an examiner shall notify a ground for rejection on claim 5 citing
the violation of Article 42(8) of the Patent Act.
Meanwhile, Article 5(6) of the Enforcement Decree of the Patent Act defines „claims
dependent upon more than two claims‟ and it shall be noted that this provision cannot be
applied to claims dependent upon only one claim. As in the example above, claim 6 is
dependent upon claim 5 which is the violation of Article 5(6) of the Enforcement Decree of
the Patent Act and therefore, technically it leads to difficulties in interpretation of claims
since other multiple claims shall be referred to. However, since claim 6 is not dependent
upon more than two claims, it shall not constitute the violation of Article 5(6) of the
Enforcement Decree of the Patent Act.
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6.7 Article 5(7) of the Enforcement Decree of the Patent Act
Where claims disclosed in the claims refer to the claim with the same numeric number as
the claim itself, an examiner shall notify a ground for rejection citing that the failure of
disclosing the claim referred to first violates Article 42(8) of the Patent Act and Article 5(7)
of the Enforcement Decree of the Patent Act or a ground for rejection citing the unclear
description of claims under Article 42(4)(ⅱ) of the Patent Act.
Even when claims disclosed in the claims are dependent upon the claim with the same
numeric number as the claim itself, the claims referred to shall not be stated first.
6.8 Article 5(8) of the Enforcement Decree of the Patent Act
Each claim shall be stated in a new line and the claims shall be numbered in sequence.
Where stating claims in number sequences is beneficial in understanding the invention,
claims can be stated in the following example.
(Example) 〔Claim 1〕 A method of processing metallic materials conducted in the following
procedures
(A) The first procedure of heating metallic materials at 800-850℃
(B) The second procedure of forging the heated metallic materials
(C) The third procedure of re-heating the forged materials at 600℃
(D) The fourth procedure of quenching the re-heated materials
7. System for Grace Period of Submission of Claims
(1) An applicant may attach a specification which did not disclose the claims at the time of
application filing to a patent application. This system is designed to promote the protection
of rights of a patent applicant by enabling the speedy application filing without drawing up
the claims and providing enough time to effectively state the claims after thorough reviews
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of patent utilization strategies. However, the claims shall be disclosed for the convenience of
examination and technology utilization by a third party. Therefore, it is stated that the claims
shall be disclosed through amendments by a certain point of time (until three months have
elapsed from the date of notification of intention of a request for examination or until 18
months have elapsed from the date of priority claim, etc.).
(2) Where an applicant who has attached a specification which did not disclose the claims at
the time of application filing to a patent application fails to make amendments of stating
the claims within the following limited periods, the concerned patent application shall be
deemed to be withdrawn on the following day of the date of expiration of the periods.
① Until one year and six months have elapsed from the filing date (the earliest filing date in
case of priority claim)
② Until 3 months have elapsed from the date of notification of the intention of a request
for examination by a third party within the period mentioned in ① above (when the
notification is made after one year and three months have elapsed from the filing date(the
earliest filing date in case of priority claim), until one year and six months have elapsed from
the filing date(the earliest filing date in case of priority claim))
(3) An applicant can make a request for examination as long as a specification disclosing the
claims is submitted. Where an application makes a request for examination on the
application attached with the specification which does not disclose the claims, an examiner
shall give an opportunity of explanation on the written request and return it to the applicant.
(4) An application attached with a specification which does not disclose the claims shall be
exempt from the subject of disclosure since it shall be deemed to be withdrawn on the
following day of the date when one year and six months have elapsed from the filing
date(the earliest filing date in case of priority claim).
Meanwhile, where a written request for early disclosure is submitted before an application
attached with a specification which does not disclose the claims is deemed to be withdrawn,
an examiner shall give an opportunity of explanation and return it to the applicant.
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(5) In principle, a specification which does not disclose the claims can be attached to a
divisional application, converted application or an application filed by the lawful holder of a
right. However, where an amendment of disclosing the claims is not made until one year
and six months have elapsed from the original filing date(the earliest filing date in case of
priority claim), it shall be noted that the concerned application is deemed to be withdrawn
on the following date of the expiration of the period.
Meanwhile, where one year and six months have already elapsed from the original filing
date(the earliest filing date in case of priority claim) when a divisional application, converted
application or an application filed by the lawful holder of a right is filed, an examiner shall
give an opportunity of explanation on the application and return it to the applicant.
(6) Whether the claims is disclosed under the system for grace period of submission of
claims shall be determined based on whether the item of „Patent Claims‟ in the specification
under the Annexed Form no. 15 of the Enforcement Rules of the Patent Act is deleted or not.
In other words, where the item of „Patent Claims‟ is disclosed, even if any disclosure(for
example, blanks, dots, commas, etc.) is included, the claims is not deemed to be in use of
the system for grace period of submission of claims.
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Chapter 5. Unity of Invention
1. Relevant Provisions
Article 45 of the Patent Act (Scope of One Patent Application) ① A patent application
shall related to one invention only: Provided, That a group of inventions so linked as to form
a single general inventive concept may be the subject of one patent application.
② The requirements for one patent application under paragraph (1) shall be prescribed by
Presidential Decree
Article 6 of the Enforcement Decree of the Patent Act (Requirements for Single Patent
Application for Group of Inventions) A single patent application for a group of inventions
as prescribed in the provision to Article 45(1) of the Act shall meet the following
requirements:
1. The inventions described in the application shall have mutual relationship in adopted
technology; and
2. The inventions described in the application shall have the same or corresponding
technological features. In such cases, the technological features shall be improved in respect
of the inventions at large when compared with prior arts.
2. Purpose of System
The provision of Article 45 of the Patent Act on scope of one patent application intends to
promote the convenience for applicants, third parties and the Korean Intellectual Property
Office by allowing applicants to file a single application on inventions closely related in
terms of technology.
For applicants, it would be beneficial in terms of lower patent fees and patent right
management if as many inventions as possible can be filed in one patent application.
However, filing one invention in one application would be more convenient for third parties
considering the fairness of application procedures, observation on patent rights and use of
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applications as prior art. Meanwhile, the Korean Intellectual Property Office would prefer the
narrower scope of one patent application in examination practices such as classification and
prior art search. Therefore, this provision can be considered to have been introduced to
make a balance on the interests of applicants who prefer including multiple inventions in
one application as well as third parties and the Korean Intellectual Property Office who
would get disadvantaged if filing multiple inventions in one application is allowed.
3. General Consideration
(1) Whether inventions fall to 「a group of inventions so linked as to form a single general
inventive concept(hereinafter referred to as „unity of invention‟)」 under Article 45(1) of the
Patent Act shall be determined based on technical correlation of the inventions disclosed in
each claim since Article 6 of the Enforcement Decree of the same act stipulates that the
inventions described in the application shall have the same or corresponding technological
features. 「The special technical features」 refer to the improved features in respect of the
inventions at large when compared with prior arts.
In this context, special technical features of the inventions do not need exactly the same. For
example, if the special technical feature of elasticity in one claim is a spring, the special
technical features of elasticity in another claim can be a rubber block.
(2) 「The special technical features」 are the concept specially suggested to determine the
unity of inventions and shall involve novelty and inventive step compared to prior arts
disclosed before the concerned patent application is filed. The unity of invention shall be
determined after considering all the inventions at large.
「The special technical features」 refer to the improved features in respect of the inventions
at large when compared with prior arts. Therefore, whether the unity of inventions is
satisfied or not can be determined before searching prior arts in some cases, but in general,
shall be determined after considering prior arts.
For example, in claims disclosing inventions A+X and A+Y, since all the claims have the
invention A in common, it could be determined a priori before searching the prior arts that
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the claims involve the unity of inventions. However, where prior arts related to A has been
searched, each claim does not have the same or corresponding special technical features
distinctive from the prior arts. Therefore, the claims shall be deemed to lack the unity of
invention a posteriori.
(3) A group of inventions may include multiple independent claims from the same category
within one application or may include multiple independent claims from different categories
within one application.
Also, even one claim may include inventions out of the scope of one group of inventions,
failing to meet the unity of inventions.
(4) Whether one group of inventions forms a single general inventive concept is not related
to whether one group of inventions is claimed in separate claims or alternatively claimed in
one claim.
(Note) Originally, the Patent Act stipulates that a patent application shall relate to one
invention only. However, Article 45 of the Patent Act intends to promote the convenience of
applicants, third parties, and the Korean Intellectual Property Office since it could be
appropriate to allow applicants to file an application on technically linked invention in
independent claims. Therefore, in interpreting the provision, it is important to strike a
balance on the interests of applicants who prefers filing irrelevant inventions in a single
application because of lower patent fees or easier patent management as well as third
parties and the Korean Intellectual Property Office who would, in turn, get disadvantaged
due to observation on other patent holders‟ rights, use the application as prior arts or more
burden on patent examination respectively.
In this perspective, whether inventions constitute ”a group of inventions so linked as to form
a single general inventive concept” depends on whether the inventions described in each
claim of the application have the same or corresponding technological features(in other
words, whether the inventions are technically closely linked) and the technological features
shall refer to the improved features in respect of the inventions at large when compared
with prior arts(refer to Patent Court Case No. 98 Hu 5145, January 14, 1999).
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4. Determination on Unity of Invention
Basically, unity of inventions shall be determined in the following order.
(1) A first invention shall be chosen and the special technical features of the first invention
which serves as improvement over prior arts shall be specified by comparison with the prior
arts related to the invention. It shall be noted that even a single invention may include
multiple special technical features depending on the technical content of the invention.
In this context, the first invention refers to the main invention and has nothing to do with
the order of claims.
(2) A second invention shall be chosen and the special technical features of the first
invention which serves as improvement over prior arts shall be specified by comparison with
the prior arts related to the invention. It shall be noted that even a single invention may
include multiple special technical features depending on the technical content of the
invention.
(3) The technical correlation between the first invention and the second invention shall be
checked by determining whether the special technical features of the first invention and the
special technical features of the second invention are the same or corresponding. If there
exist the special technical features which are the same or corresponding between the two
inventions, it can be concluded that the inventions belong to the single general inventive
concept.
(4) Through the steps of (2) and (3) above, whether a single general inventive concept is
formed shall be determined based on the technical correlation under Article 6 of the
Enforcement Decree of the Patent Act.
(5) The invention subject to examination shall be designated based on the first invention. In
principle, the first invention as well as an invention belonging to the technical group(the first
technical group) which forms a single general inventive concept with the first invention shall
be prioritized for the invention subject to examination. However, an invention which is not
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included in any technical group because of lack of improvement over prior arts, but whose
examination is terminated in the procedure of determination on unity of inventions shall be
included.
Moreover, an invention which can be examined without additional efforts because of mere
differences in expressions such as different categories from the inventions belonging to the
first technical group can be included to the invention subject to examination.
(6) Examination on patentability except for unity of inventions shall be conducted for the
invention subject to examination.
When notifying a ground for rejection citing the violation of the requirement of unity of
inventions, an examiner shall notify the ground of rejection citing the violation of the
requirement of unity of inventions on all the claims. When notifying a ground for rejection
citing the violation on unity of inventions, an examiner shall notify the ground for rejection
by specifying that the concerned invention does not share the same or corresponding
special technical features as those that characterize the first technical group.
However, unity of invention can be determined based on whether the second invention
includes the same or corresponding special technical features as the first invention after
specifying the special technical features of the first invention in the above-mentioned step (1)
and the second invention without conducting any additional prior art search in the steps (2)
and (3). Also, where, after finding the common special technical features of each invention
for convenience of examination practices first and determining whether such features are
improvements over prior arts, the common features are not considered to be improvement
compared to prior arts, unity of inventions shall be deemed lacking.
Meanwhile, it shall be noted that lack of unity of inventions just constitutes a ground for
rejection, not the actual ground for invalidation. In other words, where lack of unity of
invention is deemed obvious, an examiner shall notify a ground for rejection so that an
application can make amendments. However, an examiner does not need to force an
applicant to make amendments or file a divisional application by notifying a ground for
rejection citing the violation of unity of inventions based on the literal approach. Especially,
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even if unity of invention is lacking, where examination can be terminated without any
additional examination efforts since no more prior art search is needed(for example: where
novelty and an inventive step of the entire claims can be denied based on the searched
prior art), an examiner may not notify a ground for rejection citing the violation of unity of
inventions.
5. Case of Determination on Unity of Invention
(1) Where an independent claim has special technical features a dependent claim which
refers to the independent claim includes all the special technical features. Therefore, unity of
invention can be met among the claims with the common special technical features. In the
below-mentioned case, if A+B is the special technical features, it means that all the claims
hold the common special technical features of A+B. Therefore, unity of inventions on claim 1
and its dependent claims 2 and 3 is met.
(Example)
〔Claim 1〕: A display device comprising the special technical features of A+B
〔Claim 2〕: A display device adding the special technical features of C, in claim 1
〔Claim 3〕: A display device adding the special technical features of D, in claim 1
This shall apply to dependent claims of an invention with the lower concept which refers to
the claims disclosed in an invention with the upper concept. In the example below, claim 1
and claims 2 and 3 are in the upper-and-lower inventive concept. Considering that the
common special technical features of claims 1, 2 and 3 is the technology of processing the
surface of polyethylene resin with acid, unity of inventions is met among claims 1, 2 and 3.
(Example)
〔Claim 1〕: A method of processing the surface of polyethylene resin with acid
〔Claim 2〕: A method of processing the surface of polyethylene resin with sulfuric acid in
claim 1
〔Claim 3〕: A method of processing the surface of polyethylene resin with nitric acid
in claim 1
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(2) The following examples shall be referred to regarding other cases of determination on
unity of inventions.
<Where claims include the special technical features of other claims>
〔Claim 1〕 Lamp filament A
〔Claim 2〕 Lamp B comprising Lamp filament A
〔Claim 3〕 Searchlight comprising Lamp B comprising Lamp filament A and Spinning rim
C
If Filament A in claim 1 is the special technical features, it is the common special
technical features among all the claims, Therefore, unity of inventions is met among
claims 1, 2 and 3.
<Where claims disclose contrasting special technical features>
〔Claim 1〕 A transmitter comprising a timebase expander of video signals
〔Claim 2〕 A receiver comprising a timebase compressor of the received video signals
〔Claim 3〕 A transmitting apparatus of video signals, comprising the transmitter
comprising a timebase expander of video signals and the receiver comprising
a timebase compressor of the received video signals
If the timebase expander of video signals of claim 1 is the special technical features and
the timebase compressor in claim 2 is the special technical features and they are
contrasting special technical features(sub-combination and sub-combination), unity of
inventions is met among claims 1 and 2. Since claim 3 includes all the special technical
features of claims 1 and 2, unity of inventions is met between claim 1 and claim 3 as well
as claim 2 and claim 3(combination and sub-combination).
<Where claims disclose special technical features that are not the same or
corresponding>
〔Claim 1〕 Direct current motor control circuit A
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〔Claim 2〕 Direct current motor control circuit B
〔Claim 3〕 An apparatus using a direct current motor comprising control circuit A
〔Claim 4〕 An apparatus using a direct current motor comprising control circuit B
Where the special technical features is not the fact of being used in a direct current
motor and where „control circuit A‟ is one special technical features and „control circuit B‟
is another special technical features even though they are not relevant, unity of
inventions is met between claim 1 and claim 3 or claim 2 and claim 4. However, unity of
inventions is not met between claim 1 and claim 2 or claim 3 and claim 4.
<Where claims disclose special technical features whose claims do not meet unity of
inventions>
〔Claim 1〕 A conveyor belt comprising Feature A
〔Claim 2〕 A conveyor belt comprising Feature B
〔Claim 3〕 A conveyor belt comprising Features A and B
Where „Feature A‟ is one special technical features and „Feature B‟ is another special
technical features, unity of inventions is met between claim 1 and claim 3 or claim 2 and
claim 3. However, unity of inventions is not met between claim 1 and claim 2.
6. Determination on Unity of Invention in special cases
6.1 Product and Manufacturing Process of the Product
(1) Unity of inventions on a product invention disclosed in claims and the manufacturing
process of the concerned product shall be determined based on whether the manufacturing
process is „suitable‟ for the manufacture of the concerned product.
In this context, „suitable‟ indicates that when the manufacturing process is worked, the
product is manufactured. However, „suitable‟ does not necessarily mean that the product
cannot be manufactured in other processes or the manufacturing process cannot be used to
manufacture other products.
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(Example 1)
〔Claim 1〕 Chemical material X
〔Claim 2〕 Manufacturing process of Chemical material X
The manufacturing process in claim 2 is suitable for manufacturing Chemical material X in
claim 1. The common special technical feature of claims 1 and 2 is Chemical material X.
(Example 2)
〔Claim 1〕 A corrugated cardboard comprising a cavity in porous synthetic resins
〔Claim 2〕 A method of manufacturing a corrugated cardboard produced in the process of
charging intumescent synthetic resins into a cavity of the corrugated cardboard
and in the process of heating the lamination layer.
A product created by the manufacturing process in claim 2 is a corrugated cardboard in
claim 1. Therefore, since the manufacturing process of claim 2 is suitable for manufacturing
a corrugated cardboard in claim 1, claims 1 and 2 meet the unity of inventions.
(Example 3)
〔Claim 1〕 A golf ball comprising a core of a particular structure
〔Claim 2〕 A method of manufacturing a golf ball in claim 1, created in the special process
Since a product created by the manufacturing process of claim 2 is stated as „a golf ball in
claim 1‟, the manufacturing method of claim 2 is suitable for manufacturing a golf ball in
claim 1.
(2) A manufacturing method shall be a method of manufacturing the concerned product in
itself. Therefore, a method that is used indirectly or secondarily for the manufacturing of the
product(for example, a method of analysis, etc.) shall not be deemed as one application
unless special conditions exist.
6.2 Product and Method of using the Product
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An invention of the method of using a product refers to an invention of the method of
using the quality, functions of the concerned product. A product invention shall include
machinery, device, apparatus, compartment, circuit, etc., let alone chemical materials or
compositions. For example, an invention of a device can lead to an invention of the method
of operating the device or an invention of using the device.
(Example 1)
〔Claim 1〕 Material A
〔Claim 2〕 A method of deinsectization with Material A
„A method of deinsectization‟ in claim 2 corresponds to a method of using the
quality(insecticidal property) of Material A in claim 1.
(Example 2)
〔Claim 1〕 Material A
〔Claim 2〕 A method of manufacturing soy sauce in which the creation of a fungus is
suppressed by mixing Material A into soy sauce
Claim 2 discloses „a method of manufacturing …‟, but it is substantially the same with „a
method of suppressing the creation of fungus in soy sauce by mixing Material A into soy
sauce‟. Therefore, claim 2 shall correspond to a method of using special qualities of Material
A in claim 1.
6.3 Product and Method of treating the Product
„Treating the product‟ means forcing the product to maintain or exert its functions by
applying the external effect on the product, not changing the nature of the product. For
example, transfer or storage of a product shall correspond to a method of treating the
product.
(Example 1)
〔Claim 1〕 A prefabricated home with a special structure (an easily-stored or -transferred
prefabricated home)
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〔Claim 2〕 A method of storing a prefabricated home with a special structure
„A method of storing …‟ intends to maintain or exert „the function of an easily-stored or –
transferred prefabricated home‟ in claim 1. Therefore, it shall correspond to an invention of
treating of the subject matter in claim 1.
(Example 2)
〔Claim 1〕 Material A
〔Claim 2〕 A method of storing Material A by covering light at the temperature of X℃ or
below and the atmospheric pressure of Y atm and adding Material B in the
presence of rare gases (neon, argon)
Claim 2 discloses a method of storing Material A with unstable qualities and therefore, it
shall correspond to an invention of treating the subject matter in claim 1.
6.4 Product and Machinery, Device, Apparatus or Other Product of manufacturing the
Product
(1) Whether machinery, device, apparatus or other products(hereinafter referred to as
equipment) used for manufacturing a product is suitable for manufacturing the product shall
be crucial. 「Suitable」 refers to that when the invention of the equipment for manufacturing
the product is worked, the product is actually manufactured. However, 「suitable」 does not
necessarily mean that the product cannot be manufacture by other equipment or that the
equipment used for manufacturing the product cannot be used for manufacturing other
products.
(Example)
〔Claim 1〕 Bolt A with a special structure
〔Claim 2〕 Equipment B used for manufacturing Bolt A with a special structure
Regardless of whether Equipment B in claim 2 can be used for manufacturing other
products, besides manufacturing Bolt A in claim 1, Equipment B is suitable for
manufacturing Bolt A. Therefore, unity of inventions is met.
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(2) Equipment refers to a device that can be used for manufacturing the product in itself.
Therefore, devices that can be indirectly or secondarily used for manufacturing the
product(for example, a measuring device or analytical device, etc. that can be used for
manufacturing the product) cannot be filed as one application.
(3) 「Other products」 shall include chemical materials or microorganism besides equipment.
(Example)
〔Claim 1〕 Antibiotic A
〔Claim 2〕 New culture B manufacturing Antibiotic A
New culture B corresponds to „other products‟ manufacturing antibiotics and therefore, unity
of inventions is met.
6.5 Product and another Product using only the special nature of the Product
An invention of a product using only the special nature of the product refers to the
invention whose purpose can be achieved only by using the special nature of the product
and moreover, using the special nature of the product is explicitly described in the subject
matter of the invention. Therefore, an invention of such products can be generally limited to
chemical materials.
(Example)
〔Claim 1〕 Material A
〔Claim 2〕 Herbicide made from Material A
A herbicide in claim 2 shall correspond to a product using the weed-killing capacity of
Material A in claim 1.
6.6 Product and another Product treating the Product
An invention of a product treating the other product refers to the invention of the product
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whose functions are maintained or exerted by applying the external effect on the product
and the product itself is not changed.
(Example)
〔Claim 1〕 Unstable chemical material A
〔Claim 2〕 Storage device of chemical material A
A storage device in claim 2 intends to ensure Chemical material A in claim 1 maintains its
function and it shall correspond to another product treating Chemical material A.
6.7 Method and Machinery, Equipment and Other Products directly used for working
the Method
Where 「machinery, equipment, other products directly used for working the method」 is
suitable for being directly used for the working of the special method, unity of inventions is
met. In this context, 「suitable」 shall be determined based on whether the special technical
features of the 「machinery, equipment, other products directly used for working the
method」 are directly used for manifestation of the special technical features of the
「method」.
(Example 1)
〔Claim 1〕 A manufacturing method of Antibiotic A created by the culture of Microorganism
X
〔Claim 2〕 Microorganism X
Microorganism X in claim 2 does not correspond to „machinery, equipment, etc.‟ directly
used for manufacturing Antibiotic A, but the role of Microorganism X when manufacturing
Antibiotic A can be deemed as a manufacturing device. Therefore, it shall constitute „other
products‟.
(Example 2)
〔Claim 1〕 A painting method with a paint comprising rust resistant material X
through the special placement of electrodes and constant current load
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〔Claim 2〕 A paint comprising rust resistant material X
„A paint comprising rust resistant material X‟ shall correspond to a product directly used for
working the method of claim 1.
7. Special Cases
7.1 Markush-type Claim
(1) Where alternative elements are disclosed in the Markush style in a single claim, if the
alternative elements have corresponding qualities or functions, unity of inventions is met.
Where the Markush group includes alternative elements of components and such elements
meet the requirement under Chapter 4 4.(4), the Markush group shall be considered to have
corresponding qualities or functions.
(2) Regardless of either more than two alternative elements are disclosed in multiple
independent claims or they are disclosed only in a single claim as in the Markush type,
criteria of determination on unity of inventions shall be the same.
(3) Once at least one alternative element among the alternatives in the Markush group is
determined to lack novelty over prior arts, an examiner shall review unity of inventions.
(Example 1)
〔Claim 1〕 Compounds in the below-mentioned formula
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In this formula, R1 is selected among the group comprising phenyl, pyridyl, tiazolyl, triazinyl,
alkylthio, alkoxy and methyl and R2-R4 are methyl, benzyl or phenyl. These compounds are
effective as drugs for increasing the capacity of absorbing oxygen in blood.
[Explanation] In this case, the indole is 「the crucial structural element」 which is common
among all the substituents. Since all the claimed compounds are deemed to have the same
use, unity of inventions is met.
(Example 2)
〔Claim 1〕 A catalyst used for oxidizing hydrocarbon comprising (X) or (X+a) in steam
[Explanation] In this example, (X) oxidizes RCH3 with RCH2OH, and (X+a) further oxidizes
RCH32 with RCOOH. These two catalysts have the common element and activation as the
oxidation catalyst to RCH3. If (X+a) is used, oxidation will be more complete and continue
until carboxylic acid is formed, but activation shall be the same as when (X) is used.
Therefore, unity of inventions is met.
7.2 Intermediate and End Product
(1) The term 「intermediate」 refers to an intermediate material or a starting material. Such
intermediate materials or starting materials have the capacity of losing their own
characteristics according to physical or chemical changes and being used to produce end
products.
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Where the below-mentioned ① and ② are satisfied, unity of inventions between
intermediate materials and end products is deemed to be met.
① Major structural elements between intermediate materials and end products shall be
identical. In other words,
(ⅰ) the basic chemical structure between intermediate materials and end products is the
same, or
(ⅱ) the basic chemical structure between intermediate materials and end products is
technically closely related and intermediate materials provide major structural element to
end products.
② Intermediate materials and end products shall be technically closely related. In other
words, end products are directly produced from intermediate materials, or the major
structural elements are manufactured via a few identical intermediate materials.
(2) Where major structural elements of intermediate materials are identical, one application
can be filed on more than one different intermediate material used in different processes in
order to produce a single end material. However, more than two different intermediate
materials used in other structures of end products cannot be filed as one patent application.
(3) In the process of producing end products from intermediate materials, if intermediate
materials and end products are separated by an intermediate material which is not novel,
such materials cannot be filed as one patent application.
(4) Where intermediate materials and end products are compounds, each intermediate
compound shall correspond to one compound claimed in the group of end product
compounds. However, since parts of end materials may not have corresponding compounds
in intermediate compound group, two groups of compounds do not necessarily correspond
to each other, respectively.
(Example 1)
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〔Claim 1〕 Amorphous polymer A (Intermediate Material)
〔Claim 2〕 Crystalline polymer A (End Product)
Crystalline polymer A is produced by orientating the film of polymer A. Unity of inventions
is met since amorphous polymer A is used as a starting material to produce crystalline
polymer A and therefore, the intermediate material and end product is related.
(Example 2)
〔Claim 1〕 High molecular compounds useful as textile materials defined in the below
-mentioned formula (Repeating Unit X)
〔Claim 2〕 Compounds defined in the below-mentioned formula (Useful as a starting
material to produce the above-mentioned high molecular compounds)
The compounds of both claim 1 and claim 2 share 「major structural elements(repeating unit
X)」 and they are technically closely related. Therefore, unity of inventions is met since the
invention disclosed in claim 1 and claim 2 holds the relation of intermediate materials and
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end products.
8. Instructions on Examination of Unity of Invention
(1) Unity of invention shall be first determined on independent claims. Where independent
claims are deemed to meet the requirement of unity of inventions, dependent claims which
refer to such independent claims shall be deemed to satisfy the requirement of unity of
inventions.
(2) The requirement of unity of inventions under Article 45 of the Patent Act may constitute
a ground for rejection under Article 62 of the Patent Act, but shall not serve as a ground for
provision of information or invalidation(Article 133① of the Patent Act).
(3) Where a ground for rejection is to be notified under Article 45 of the Patent Act, an
examiner may suggest the division of an application if it is deemed that an applicant can
better respond to the ground for rejection and such response can be beneficial for the
speedy and accurate examination.
(4) It shall be noted that even if the requirement of unity of inventions is met based the
result of determination on unity of inventions in one particular independent claim, the
concerned independent claim may be deleted or the content of the invention may change
through amendments so that the requirement of unity of inventions is no longer satisfied.
(5) Unless special cases exist such as inventions out of the scope of a group of inventions
are disclosed within one claim, unity of inventions shall be deemed to be met between a
claim and another claim dependent upon the before-mentioned claim. Therefore, in
principle, unity of inventions does not need to be determined between an independent
claim and a dependent claim which depends upon the independent claim. The same also
applies to where two claims are in effect in the citation relations since a claim contains all of
the matters disclosed in another claim.
However, where a cited claim lacks novelty or inventive step due to the prior art and
therefore, does not hold 「special technical features」, unity of inventions cannot be met
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among the claims citing the concerned claim. Therefore, whether identical or corresponding
「special technical features」 different from the prior art exist among the claims citing the
concerned claim shall be additionally reviewed.
(Example) Where claim 1 is an independent claim and claims 2 to 5 are dependent upon
claim 1 and the claims are compared with the prior art search result by an examiner and as
in the following
〔Claim 1〕 A (A disclosed in the prior art);
〔Claim 2〕 A+B (A+B disclosed in the prior art);
〔Claim 3〕 A+C (C not disclosed in the prior art);
〔Claim 4〕 A+C+D; and
〔Claim 5〕 A+F (F not disclosed in the prior art),
since claim 1, independent claim, does not hold any improvement compared to the prior art,
whether unity of inventions is met shall be determined among claims 2 to 5 dependent
upon claim 1. Claim 2 does not contain 「special technical features」 and C is the 「special
technical feature」 of claims 3-4 and F is the 「special technical feature」 of claim 5. In such a
case, if C and F are not identical or corresponding 「special technical features」, the
dependent claims are deemed to be divided into <claim 2>, <claims 3-4> and <claim 5>. If
claim 1 is viewed to belong to the same invention group as claim 2 (possible to include
claim 1 into all the three invention groups individually), the examiner may notify a ground
for rejection citing that the three invention groups exist as shown in the followings. Also, the
examiner shall deliver the outcome of the substantive examination on the Group 1(ground
for rejection based on lack of novelty, inventive step, etc.) together.
Group 1: Claims 1 and 2
Group 2: Claims 3 and 4
Group 3: Claim 5
As explained in the last paragraph of (6) of 「4. Determination on Unity of Invention」, even if
unity of inventions is lacking, where the above-mentioned claims 3, 4 and 5 do not need to
be searched and examination can be terminated without additional efforts, the examiner
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may directly notify the ground for rejection on claims 1 to 5 based on lack of novelty,
inventive step, without notifying the ground for rejection on the lack of unity of inventions.
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Chapter 6. Application related to Microorganisms
1. Relevant Provisions
Article 2 of the Enforcement Decree of the Patent Act (Deposit of Microorganisms) ①
Any person who desires to make a patent application for an invention related to a micro-
organism, shall deposit such micro-organism with a depository determined by the
Commissioner of the Korean Intellectual Property Office or an organization which has
acquired a status as an international depository under Article 7 of the Budapest Treaty on
the International Recognition of the Deposit of Micro-Organisms for the Purpose of Patent
Procedure (hereinafter referred to as “international depository”) and append documents
certifying the fact (in cases of deposit with the international depository, a copy of the latest
deposit certificate of those issued under Article 7 of the Budapest Treaty on the
International Recognition of the Deposit of Micro-Organisms for the Purposes of Patent
Procedure) to the patent application: provided, That if a person who has ordinary knowledge
in the field of technology to which the invention belongs, can easily obtain such micro-
organism, it need not to be required to deposit such micro-organism.
② If a new deposit number is issued to the micro-organism deposited under paragraph (1)
after a patent application is filed, a patent application or a patentee shall report it, without
delay, to the Commissioner of the Korean Intellectual Property Office.
Article 3 of the Patent Act(Matters to be Entered in Patent Specifications of Invention
related to Micro-Organism) Any person who intends to file a patent application for an
invention related to a micro-organism shall enter in the specifications prescribed in Article (2)
of the Act, the deposit number issued by the depository or the international depository
when he/she has deposited the microorganism pursuant to the main sentence of Article 2(1),
and the method of acquisition of the micro-organism when he/she did not deposit it
pursuant to the proviso to Article 2(1).
2. Deposit System
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2.1 Purpose
An applicant shall describe the claimed invention in the detailed description of an invention
in a manner that a person with ordinary knowledge in the technology to which the
invention pertains may easily work the invention. When a starting material or end product
includes biological materials such as micro-organisms, there are many cases where an
invention cannot be easily worked only based on the content of the specification. In such
cases, in order for a person with ordinary knowledge in the technology to which the
invention pertains to easily work the invention based on the content of the specification, a
means of securing the starting material and a manufacturing process of the end product
shall be disclosed in detail in the specification. In other words, the workability of the
invention can be supported by depositing micro-organisms which are starting materials or
end products.
2.2 Subject of Deposit
(1) Micro-organisms subject to deposit refer to all the biological materials such as genes,
vectors, germs, mold, animal cells, fertilized eggs, seeds, etc. and the type of micro-
organisms eligible for deposit differs according to each depository.
(2) Even for plant-related inventions, if necessary, parent plants or seed or cells that can
produce the concerned plants can be deposited so that a person with ordinary knowledge
in the technology to which the invention pertains can easily work the invention.
2.3 Depository of Micro-organisms
(1) Depositories of micro-organisms refer to depositories designated by the Commissioner of
the Korean Intellectual Property Office or those institutions which have acquired a status as
international depository institutions (hereinafter referred to as international depository)
under Article 7 of the Budapest Treaty on the International Recognition of the Deposit of
Micro-Organisms for the Purpose of Patent Procedure.
(2) Depositories designated by the Commissioner of the Korean Intellectual Property
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Office include KCTC(Korean Collection for Type Cultures), KCCM(Korean Culture Center of
Microorganisms), KACC(Korean Agricultural Culture Collection) according to the Directive on
the Designation of Depository of Micro-Organisms(No. 2009-19 of Directive of Korean
Intellectual Property Office).
(3) International depositories in Korea include KCTC (Korean Collection for Type Cultures),
KCCM(Korean Culture Center of Microorganisms) and KCLRF(Korean Cell Line Research
Foundation).
(4) Depositories where seeds can be deposited are KCTC(Korean Collection for Type Cultures)
and KACC(Korean Agricultural Culture Collection). Depositories for deposit of plant cells
include KCTC(Korean Collection for Type Cultures) and KCLRF(Korean Cell Line Research
Foundation).
2.4 Micro-organisms that can be easily secured
Micro-organisms that can be easily secured under Article 2 of the Enforcement Decree of
the Patent Act shall include the followings:
① Micro-organisms that are currently in sale in the market.
② Micro-organisms that are deposited at credible depositories before application filing and
are confirmed to be eligible for distribution in the form of catalogs, etc. issued by a
depository. In such cases, the depository of the concerned micro-organisms and the deposit
number shall be disclosed in the initial specification at the time of application filing.
③ Micro-organisms that can be easily produced by a person with ordinary knowledge in the
technology to which the invention pertains based on the specification.
3. Application Procedure
(1) A person who intends to file a patent application on an invention related to a micro-
organism shall deposit the micro-organism to a depository and attach the evidential
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document on the deposit to the patent application. However, where a person with ordinary
knowledge in the technology to which the invention pertains can easily secure the micro-
organism, the concerned micro-organism may not be deposited.
(2) A person who intends to file an application on the invention related to an invention
related to a micro-organism shall state the deposit number of the micro-organism in the
specification. When the micro-organism is not deposited, the person shall state how to
secure the micro-organism.
Where the micro-organism is deposited, the name of the depository, the date of deposit
shall be additionally disclosed in the specification.
(3) When the new deposit number is granted on the deposited micro-organism after the
time of application filing, the applicant shall report it to the Commissioner of the Korean
Intellectual Property Office without delay. A person who intends to report a change of
deposit number of the micro-organisms shall attach the following documents to a written
report on change of deposit number of micro-organisms in the Annexed form No. 18 of the
Enforcement Rule of the Patent Act and submit them to the Commissioner of the Korean
Intellectual Property Office.
① A copy of the evidential document of new deposit number
② Where the procedure is undertaken by a legal representative, a copy of the evidential
document of the legal representation
4. Instructions on Examination
(1) Where an application where a micro-organism is to be deposited includes the fact of
deposit and the deposit number, but not a copy of the deposit certificate, an examiner shall
consider that the micro-organism is not deposited and conduct examination on the
application.
(Note) Where an applicant failed to attach a copy of the deposit certificate and then attach
the copy of the deposit certificate after being notified of a ground for rejection from an
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examiner, the examiner shall accept the copy and conduct examination on the application.
(2) Where the initial specification of an application where a micro-organism is to be
deposited did not state the deposit number and then the number is disclosed through
amendment, it shall be deemed to be the addition of new matter.
(3) Where a micro-organism is deposited and the deposit certificate is attached before filing
the application and relevant facts such as deposit numbers in the specification, but the
patent classification of the deposited micro-organism is adjusted and then its name is
changed, if a copy of the evidential document issued by a depository institution is
submitted, it shall not be deemed to be the addition of new matter even though an
amendment of changing the name of the concerned micro-organisms is made. However,
where the scientific characteristic of the concerned micro-organism of the newly-adjusted
patent classification which is not disclosed in the originally attached specification is stated, it
shall be deemed to be the addition of new matter.
(4) Since the deposit of micro-organisms is meant to supplement the detailed description of
the invention so that a person with ordinary knowledge in the technology to which the
invention pertains can easily work the invention related to the micro-organisms, the deposit
of the concerned micro-organisms shall be completed by the time of filing the application.
The time of the deposit of micro-organisms shall be deemed to be the date when the
applicant deposits the concerned micro-organisms to a depository institution and then the
depository institution receives the micro-organisms. However, where the applicant filed an
application by only disclosing the deposit number on the specification and failed to submit
the deposit certificate through amendment even after filing the application, it shall be
deemed that the deposit has never been made on the date of deposit.
(5) Where a micro-organism needs to be deposited for an application with domestic priority
claim, if the micro-organism was deposited to international or domestic depository before
the date of filing the initial application and the deposit number is disclosed in the
specification of the initial application, the invention related to the micro-organism can
benefit from the effect of priority claim when a procedure related to the deposit of micro-
organisms is undertaken for an application with domestic priority claim.
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Meanwhile, where an international patent application serves as the basis of priority claim,
the application can benefit from the effect of priority claim when the micro-organism is
deposited to an international depository before the date of filing the international
application and its deposit number is stated in the specification of the international patent
application.
5. Patent Application including Nucleic Acid Sequence or Amino Acid
Sequence
(1) A person who intends to file a patent application including nucleic acid sequence or
amino acid sequence(hereinafter referred to as „sequence‟) shall include the sequence list
written according to the method decided by the Commissioner of the Korean Intellectual
Property Office(hereinafter referred to as „sequence list‟) in the specification and attach the
electronic file containing the sequence list (hereinafter referred to as „electronic file of
sequence list‟) drawn in the method set by the Commissioner of the Korean Intellectual
Property Office to the patent application. However, where the sequence list drawn according
to the method set by the Commissioner of the Korean Intellectual Property Office is
disclosed in the specification in the electronic form, the electronic file of sequence list does
not need to be attached.
(2) Details regarding the method of writing sequence list and electronic file of sequence list
shall be based the guideline for writing nucleic acid sequence or amino acid sequence (KIPO
Directive No. 2013-1).
(3) Where the sequence list disclosed in the specification and the sequence list contained in
the electronic file are different, the examiner shall examine the application based on the
sequence list disclosed in the specification.
(4) The above-mentioned examination guideline in the paragraphs (1) to (3) shall apply
mutatis mutandis to amendments to the sequence list.
(5) Applications in which the sequence list is not disclosed in the specification or the
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electronic file of the sequence list is not attached shall be treated in the following manner:
① Where the sequence list is not disclosed in the specification
Where an invention disclosed in claims cannot be easily worked because the sequence list is
not disclosed in the specification, an examiner shall notify a ground for rejection under
Article 42(3)(ⅰ) of the Patent Act. Where the sequence list is attached to the specification
based on the ground for rejection, it shall be determined based on the provision of
prohibition of addition of new matter.
② Where the electronic file of the sequence list is not attached
Where the electronic file of the sequence list is not attached in the application (except for
the case where the sequence list is disclosed in the specification in the electronic form), this
shall be subject to amendment because of the violation of the method set by orders under
the Patent Act.
Therefore, as for applications without electronic files of the sequence list, the examiner shall
request an amendment under Article 46 of the Patent Act and if irregularities are not
addressed, invalidate the application procedure.
The image-scanned sequence list is not the electronic file of sequence list drawn by the
method set by the Commissioner of the Korean Intellectual Property Office. Therefore, where
the image-scanned sequence list is attached, the examiner shall treat it as if the electronic
file of sequence list is not attached.
(Note) The applicant may voluntarily amend formality irregularities of the above-mentioned
application when the application procedure is still pending, even though a request for
amendment has not been made.
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PART III. Requirements for Patentability
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Chapter 1. Industrial Applicability
1. Relevant Provisions
Article 29(1) of the Patent Act (Requirements for Patent Registration) Inventions that
have industrial applicability are patentable unless they fall under either of the following sub-
paragraphs:
(1) inventions publicly known or worked within or outside of the Republic of Korea before
the filing of the patent application; or
(2) inventions described in a publication distributed in the Republic of Korea or in a foreign
country before the filing of the patent application or inventions published through
telecommunication lines as prescribed by Presidential Decree.
2. Purport
It is no doubt that all inventions should be industrially applicable since the purpose of the
Patent Act is to contribute to the development of industry (Patent Act Article 1). In this
regard, the Patent Act Article 29 paragraph (1) stipulates that an invention is patentable only
if the invention is considered to industrially applicable. The term of "industry", the Patent
Act Article 29 paragraph (1), shall be interpreted in a broad sense. In other words, the term
industry is interpreted to cover all useful activities and practical technologies.
(Reference) Paris Convention Article 1(3)
Industrial property shall be understood in the broadest sense and shall apply not only to
industry and commerce property, but likewise to agricultural and extractive industries and to
all manufactured or natural products, for example, wines, grain, tobacco leaf, fruit, cattle,
minerals, mineral waters, beer, flowers, and flour.
3. Relevant Provisions
Under Patent Act Article 29 paragraph (1), 「Invention which is industrially applicable」 is
generally divided by the requirements of 「Invention」 and the requirement of the invention
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「that are industrially applicable (industrial applicability)」. Therefore, under the examination
guidelines, the requirements of Patent Act Article 29 paragraph (1) is defined by the
requirement of 「Invention」 and of 「subjects that involve industrial applicability」.
4. Statutory Inventions
Under the Patent Act Article 2 subparagraph (1),「Invention means the highly advanced
creation of a technical idea using the rules of nature」, the invention shall satisfy the relevant
provisions in order for a filed patent application to be statutory under the Patent Act.
However,「a highly advanced creation」is a relative concept to differentiate 「design device」
under the Utility Model Act from 「Invention」under the Patent Act, and in practice, 「the
highly advanced creation」shall not be considered in the case of determining requirements
of 「Invention」.
4.1 List of Non-statutory Inventions
The decision of whether an invention falls under the Patent Act 2 subparagraph (1) is not
without challenge, and the guidelines hereby exemplifies the types of non-statuary
inventions in order to help determine whether the invention is patentable.
4.1.1 A law of nature as such
An invention is defined as a highly advanced creation of a technical idea using the rules of
nature. So, a law of nature such as the second law of thermodynamics or the law of
conservation of energy is not considered as a statutory invention.
4.1.2 Mere discoveries and not creations
A mere discovery is not deemed to be a creation because a discovery means to find out
laws which already previously existed in nature. One of the requirements for a statutory
invention is to be a creation, and thus, mere discoveries, such as discoveries of natural
things such as an ore or natural phenomena are not considered to be a statutory invention.
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However, if things in nature, not mere discoveries, are isolated artificially from their
surroundings, the methods, the isolated chemical substances or microorganisms are
considered to be a statutory invention.
A use invention, which claims a new use of a known material in accordance with its inherent
but newly found property, shall be dealt with distinctively from a "mere discovery of
unknown property of a known material" in the Patent Act. That is to say, though a new use
of a known material is non-statutory, if the new use are closely related, with non-obvious
inventive activities, to the newly found property, the use invention may be patentable.
4.1.3 Those contrary to a law of nature
Those contrary to a law of nature (e.g.: perpetual motion) are not considered as a statutory
invention because an invention must utilize a law of nature. If a matter necessary to define a
claimed invention involves any means contrary to a law of nature, the claimed invention is
not considered to be a statutory invention (Relevant court decision: Supreme court decision
1998.9.4 98 Hu 74 sentence).
4.1.4 Those in which a law of nature is not utilized
If a claimed invention uses any laws other than a law of nature (e.g. economic laws,
mathematical methods, logics, cartography etc), arbitrary arrangements (e.g. a rule for
playing a game as such) or mental activities (e.g. method for doing business as such,
teaching skills as such, financial insurance scheme as such, tax code as such, etc.), the
claimed invention is not considered to be statutory.
Where a claimed invention does not involve logics, mathematical principle as such or
method directly using them but involves technical devices or a method which gives useful,
concrete and tangible result by increasing or controlling the performance of a certain
technical tools with the data, if the technical devices or technical methods are considered as
universal, repetitive and objective, they are deemed as a statutory invention which uses
technical idea utilizing a law of nature.
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As stated above, the characteristics of the technology is to be taken into account as a whole
in judging whether a claimed invention utilizes a law of nature. Therefore, even if a part of
matters defining an invention stated in a claim utilizes a law of nature, when it is judged
that the claimed invention considered as a whole does not utilize a law of nature, the
claimed invention is deemed as not utilizing a law of nature. On the contrary, even if a part
of matters defining an invention stated in a claim does not utilize a law of nature, when it is
judged that the claimed invention as a whole is considered as utilizing a law of nature, the
claimed invention is deemed as utilizing a law of nature.
(Example 1)
A method for designing cryptographs through the combination of Alphabets, numbers and
signs.
(Example 2)
A method for creating a phonetic transcription of foreign languages comprising the step of:
using the phenomena in which there is change in pronunciation formed by a set of vocal
organs including the shape of throat and sound of tongue formed at pronouncing a certain
word to indicate different pronunciation or characteristics of forming a phonetic
transcription as the shape of lips changes.
(Example 3)
A method for comprehensive management for recycling garbage or waste comprising the
steps of: distributing special bags bar-code stickers attached with personal information of a
person who disposes garbage or waste to citizens; inviting the citizens to separate general
waste and place garbage in special disposal bag with the bar-code stickers attached;
collecting the disposal bags on a daily basis and discharging them at a waste disposal site;
and sorting waste or garbage at the waste disposal site, wherein in the case of wrongly
sorted garbage, the citizen who disposed garbage in a wrong disposal bag are detected by
the bar-code and warned not to do it again.
4.1.5 Skill
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A personal skill which is acquired by personal practice cannot be shared with third parties as
knowledge due to lack of objectivity, so it is not considered to be a statutory invention.
(Example 1)
A method of performing musical instruments, a method of throwing a spilt-fingered fast ball
characterized in the way of holding the ball in fingers and throwing the same.
4.1.6 Mere presentation of information
A mere presentation of information where the technical feature resides solely in the content
of the information and its main objective is to present the information is not considered as
a statutory invention.
(Example 1)
An audio compact disc where the feature resides solely in the music recorded thereon,
computer program listings, and image data taken with a digital camera, etc.
However, if the technical feature resides in the presentation of information, the presenting
per se, the means for presentation and the method for presentation, might be considered as
a statutory invention.
(Example 2)
A plastic card on which information is recorded with letters, numbers and signs embossed
on it (a technical feature residing in the means for presentation)
4.1.7 Aesthetic creations
An aesthetic creation may contain a visionary feature as well as a technical feature.
Therefore, its evaluation is subjectively made. An aesthetic creation itself (e.g. paintings and
carvings as such) is not considered as a statutory invention. However, if the aesthetic
creation is achieved by technical composition or other technical means, they are viewed as a
statutory invention.
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4.1.8 Computer programming language or computer program
A computer program is a mere list of orders to have a computer operated. Therefore, a
computer program is not considered as a statutory invention. However, in the case of an
invention where data processing with a computer program is specifically executed using a
hardware, a data processing unit (machine) operating in association with the computer
program, its operating method, and a computer readable medium carrying the computer
program, the invention is viewed as a statutory invention.
4.1.9 Those whose outcome of the claimed subject matter is not achievable
An invention whose outcome of the claimed subject matter is not achievable and
reproducible is not considered as statutory, even if the means to achieve the goal of the
invention is sufficiently described. It does not mean that the possibility of reproduction of a
filed invention should account for 100%. Even with less than 100% possibility, it is construed
that the invention can be reproduced if it is certain that the outcome is achievable.
4.1.10 Incomplete Invention
A statutory invention shall be complete and a complete invention is defined as an invention
in which the subject matters shall be specified clearly and thoroughly objectively so that a
person with ordinary skill in the art to which the invention pertains may easily replicate the
invention to achieve the intended technical effect. The decision on whether an invention is
complete shall be made by considering the invention as a whole such as its purpose, subject
matters and operational effects of the invention indicated in the specification of patent
application in accordance with the state of the art at the time of filing.
If a subject matter lacks concrete means to solve the problem to be solved or if it is clearly
impossible for the subject matter to solve the problem to be solved by any means
presented in a claim, the claimed invention is not considered as statutory. However, in this
case, the inventor can verify that the claimed invention solves the problem to be solved by
means presented in a claim with appropriate and concrete evidence such as reliable
experimental data of third parties.
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As one of the requirements to gain a patent right, an examiner should distinguish between
the requirement of completing an invention and that of satisfying the description
requirement. An incomplete invention or an invention yet to be completed at the time of
filing cannot be amended later to correct the defect after the application is filed. However,
in the case of deficiency in the description, it is possible to correct the defect through the
amendment because deficiency in the description applies to an invention which has
improper description but is considered complete at the filing. Therefore, if it is unclear
under which case the invention falls, it is desirable to preferentially notify the reason for
refusal under Article 42(3)(ⅰ) of the Patent Act.
4.2 Notification of reason for refusal in the case of non-statutory invention
If an application falls under the scope of the non-statutory invention such as a law of nature,
discovery, subject matters against the law of nature, subject matters not using the law of
nature, mere presentation of information, aesthetic creations or incomplete invention, the
reason for refusal shall be notified with the reason that the invention does not involve
"inventions that have industrial applicability", citing the main paragraph of Article 29
paragraph (1).
4.3 Difference between statutory invention under Patent Act and device under Utility
Model
Under the Patent Act Article 29 paragraph (1), the device (including a composite) and
method can be a patentable subject matter. However, under the Utility Model Act Article 4
paragraph (1), a utility model may be granted only for devices that relate to the shape or
construction of article or a combination of articles.
4.3.1 Article under the Utility Model Act
There is no definition prescribed about an article or articles described in Utility Model Act
Article 4 paragraph (1). However, it is construed that a subject matter is generally
considered as articles under Utility Model Act on condition that it is the object for trade
having the shape in the space and the purpose of its use is clear.
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The simple explanation about the shape or construction of an article or a combination of
articles are as follows:
(1) Shape
"Shape" is external figuration expressed in the line, the surface, and so on. For example, the
shape of the cam or the tooth shape of the gear etc.
(2) Construction
"Construction" is a construction constructed spatially and 3-dimensionally. It is expressed in
the contour of articles. It is also shown in a ground plan and an elevation view, and in some
cases a lateral view or a cross section diagram. A circuit of electronic products may be
deemed to be an article under Utility Model Act.
(3) Combination
Two or more articles are spatially separated respectively which is not related whether being
used or not, have independently fixed construction or shape, and moreover, show the use
value for relating to each other functionally by using those, that is called "combination." For
example, the fastening tools which consist of a bolt and a nut are a kind of combination.
4.3.2 Devices not relating to the shape or construction of an article or a combination of
articles
A device of which the category is a process, a device of a composition, a device of chemical
material, a thing which is not fixed in a certain shape, animal variety, plant variety do not fall
under the scope of a statutory device under Utility Model Act.
(Reference)
If an independent claim is a device regarding the shape or construction of an article or a
combination of articles and dependent claims define a material of the subject matter of the
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independent claim, We consider the dependent claim as the device relating to the shape or
construction of an article or a combination of articles.
5. Industrially inapplicable invention
The following is a list of 「industrially inapplicable inventions」. However, upon noticing that
a claimed invention does not meet the requirements for industrial applicability, the ground
should be indicated as specifically as possible in the notification of reasons for refusal.
5.1 Medical practice
(1) List of industrially inapplicable inventions
① A method for treatment of the human body by surgery or therapy and a diagnostic
method practiced on the human body are considered to be industrially inapplicable
inventions. A surgical method on the human body by means of such a surgical device (e.g.
scalpel) or a method for treatment of the human body with a medicinal substance, other
than medical activities by medical doctors (including oriental doctors) or someone directed
by medical doctors, is considered as medical activities.
② A method including medical activities even in one as the part of the whole step or as
indispensible parts in claims is not considered as industrially applicable.
③ A method having surgical operations whose purpose is both therapeutic and non-
therapeutic (e.g. cosmetic effects) or a method having surgical operations in which it is
difficult to separate the therapeutic effect from non-therapeutic effect is considered as a
method for treatment of the human body by surgery practiced on the human body.
Therefore, such method is not considered as industrially applicable.
(2) List of Industrially Applicable Inventions
① A medical device to be used in the operation practiced on the human body or to be
used in medical cure and diagnosis, and medical products as such are considered to be
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classified as industrially applicable.
② A method for operating a medical device or a measurement method with the medical
device, when the medical device is newly invented, is considered as industrially applicable
except when the method includes mutual reactions between a human body and a medical
device and practically medical activities.
③ A method for treating samples that have been extracted from a human body (e.g., blood,
urine, skin, hair, cells or tissue) or discharged from a human body (such as urine, excrement,
placenta, hair and nail) and a method for gathering data by analyzing such samples are
considered to be industrially applicable on the assumption that they are composed of
separate steps separable from medical practices.
(3) Matters to be attended to in examining inventions including medical practices
Even if it is possible for a method of treatment to be used for treatment, surgery or therapy
on the human body, the method is considered to be industrially applicable if the method is
limited to be practiced on the animal body excluded from being practiced on a human body.
5.2 Inventions that cannot be commercialized
An invention only for personal use, academic or experimental purposes is regarded as
industrially inapplicable. On the other hand, despite inventions indicated above, an invention
concerning marketable or tradable subject matter is considered industrially applicable.
5.3 Inventions that cannot be implemented
An invention which cannot be implemented or practiced is not considered as an industrially
applicable invention even if it works in theory.
(Example 1)
A method for preventing an increase in ultraviolet rays associated with the destruction of
the ozone layer by covering the whole earth's surface with an ultraviolet ray-absorbing
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plastic film.
Even when an invention has not been used at the time of the filing, the invention is
considered as industrially applicable if it is possible to be used in the industry in the future.
Under the principle of law that the invention should be industrially applicable, it is sufficient
that the invention be industrially applicable in the future. The principle of law here does not
mean that the invention would be deemed to be industrially applicable if it is possible to be
used in the industry only because the relevant technology is gradually advanced.
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Chapter 2. Novelty
1. Relevant Provisions
Article 29(1) of the Patent Act (Requirements for Patent Registration) Inventions that
have industrial applicability are patentable unless they fall under either of the following sub-
paragraphs:
(1) inventions publicly known or worked within or outside of the Republic of Korea before
the filing of the patent application; or
(2) inventions described in a publication distributed in the Republic of Korea or in a foreign
country before the filing of the patent application or inventions published through
telecommunication lines as prescribed by Presidential Decree.
(Reference)
"inventions publicly known or worked in the republic of Korea" is revised into "inventions
publicly known or worked within or outside of the Republic of Korea". The revision shows
that the terms of being publicly known or worked is expanded to meet the global standard.
The revised term is applied to applications filed on or after 2006.10.1.
2. Purport
The purport of the Patent System is to grant an exclusive right that is a reward for the
disclosure of an invention. So, an invention already disclosed to the public shall not be
given exclusive rights. Under the Patent Act Article 29 paragraph (1), prior to the filing of
the patent application, (i) inventions publicly known, (ii) inventions worked (iii) inventions
described in a publication, (iv) inventions published through telecommunication line as
prescribed by President Decree do not involve novelty, and consequently they are not
patentable.
3. Relevant Provisions
3.1 Publicly Known Invention
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「A publicly known invention」means an invention the contents of which have been known to
an unspecified person without obligation of secrecy in the Republic of Korea or a foreign
country prior to the filing of the application. The time of filing in the「prior to the filing of
the application」 refers to the exact point of time of filing, even to the hour and minute of
the filing(if the invention is publicly known, the time is converted into Korean time). It does
not mean the concept of the date of filling. 「unspecified persons」 refers to the general
public who does not need to abide by secret observance duty.
(Example 1)
If an application is not laid open and is not published after registration, the invention of
said application shall not be used as prior art under Article 29 paragraph (1) subparagraph
(2) as the application is not a publication distributed in the Republic of Korea or a foreign
country before the filing of the patent application. However, even if there is no publication
of registration, the application shall be used as prior art under Article 20 paragraph (1)
subparagraph (1) after decision of registration, if the application is made available for public
inspection.
3.2 Publicly worked invention
「A publicly worked invention」 means an invention which has been worked under the
conditions where the contents of the invention are to be publicly known or can potentially
be publicly known in the Republic of Korea or a foreign country (Definition of "working"
refers to the Patent Act Article 2). Also, 「being public」 means a situation where it is no
longer kept in secret. So, even when a small fraction of inner part of an invention is kept in
secret with regard to working of the invention, it shall not be considered as a publicly
worked invention.
(Example 1)
Conditions where the contents of the invention are considered to be publicly worked
include, for example, a situation where a person skilled in the art may easily understand the
contents of the invention by observing the manufacturing process associated with the
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invention at a plant that is exposed to an unspecified person. Conditions where the contents
of the invention can potentially be considered to have been publicly worked include, for
example, a situation where, although inner parts of the manufacturing facility cannot be
known to an unspecified person (a visiting inspector) by merely observing its exterior view
and the person cannot know the invention as a whole without knowing that inner parts, the
person is allowed to observe the inner parts or can have the inner parts be explained to the
person. (i.e. the request for observation or explanation is not to be refused by the plant.)
3.3 Invention Described in a Distributed Publication
3.3.1 Distributed publication
A publication is "a document, a drawing or other similar medium for the communication of
information, duplicated by printing, mechanical or chemical methods, etc. for the purpose of
disclosing the contents to the public through distribution". A "Distribution" in the context of
the wording "disclosing the contents to the public through distribution" means placing a
publication as defined above in the condition where unspecified persons can read or see it.
It does not necessitate the fact of a certain person's actual access to such a publication.
Patent gazettes such as microfilm or CD-ROM should be considered as a distributed
publication, since the public could refer to the contents of the film by using a display screen
and obtain a copy of it.
Meanwhile, non patent documents which are stored in floppy discs, slides or presentations
as well as microfilm or CD-ROM should be regarded as distributed publication, as far as
they are produced to make available to the public.
3.3.2 Distribution
「A distribution」in the context of the wording "inventions described in a distributed
publication" means placing a publication as defined above in the condition where
unspecified persons can read or see it. It does not necessitate the fact of a certain person's
actual access to such a publication.
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3.3.3 Time of distribution
When the time of publication is indicated in a publication, it is presumed as follows:
① In the case the time of publication is indicated in a publication
(a) Where only the year of publication is indicated, the last day of that year;
(b) Where the month and year of publication is indicated, the last day of the month of the
year; and
(c) Where the day, month and year of publication is indicated, that date.
② Where the date of publication is not indicated in a publication
(a) The distribution date of a foreign publication is presumed in light of the period normally
required to reach Korea from the country of the publication, as far as the date of its receipt
in Korea is clear.
(b) Where there is a derivative publication such as a book review, an extraction or a catalog,
the date of distribution of the publication in question is presumed based on the publication
date of the derivative publication.
(c) Where there is a second edition or a second print of the publication, the date of
distribution is presumed to be the publication date of the first edition indicated therein,
provided that the contents of the second edition accords with those of the publication.
(d) Where other appropriate information is available, the date of distribution is presumed or
estimated there from.
(Example 1)
We already know that companies quickly access catalogues published by rival companies in
order to acquire technical information of new products home and abroad, thanks to the
advancement in transportation and thriving trade among countries. It is socially accepted
idea that catalogues are distributed as soon as they are published. Therefore, the claim that
the published catalogues have not been distributed but kept in storage is not acceptable
from our experience. In this regard, we make a decision that catalogues are distributed prior
to the filing of the application as long as the evidence of bringing the cited reference into
the country before the filing of the application is concrete (Supreme court decision 1992. 2.
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14 1991 Hu 1410 sentence).
3.3.4 Invention described in a publication
「An invention described in a publication」 means an invention identified by the matters
described or essentially described, though not literally, in a publication.
"Matters essentially described, though not literally, in a publication" means those directly
derivable from the matters described, taking into consideration the common general
knowledge.
(Example 1)
In order for a device to be described in a distributed publication, at least the structure of
the device should be described. Therefore, if a device whose technical feature lies inside is
merely exhibited in the form of photograph, it is not considered as a device described in a
publication(Patent court 1992. 2. 14 1998 Heo 3767 sentence).
3.4 Inventions distributed to the public through telecommunication line
3.4.1 Purport
With the advancement of communication technologies such as the Internet, the number of
technologies published over the internet has been dramatically increasing. It is suggested
that we need to reflect the technological change on the patent system since technologies
published on the internet can be considered as prior art in comparison with those released
by the existing printed publication, with regard to public availability, propagation speed and
the level of technology except for the possibilities that due to characteristics of internet, the
date and the contents of the publication may be altered after publishing.
Considering that 「Printed Publication」under Article 29 paragraph (1) subparagraph (2)
defined "copied documents, drawings and photographs which aims to be published through
printing or the mechanical and chemical method" (Supreme court 1992.10.27 1998 Hu 3767
sentence), technologies published over the Internet has been considered as known
technology defined in the Act Article 29 paragraph (1) subparagraph (1) not as the prior art
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stated in the printed publication defined in the Act Article paragraph (1) subparagraph (2).
Under Article 29(1)(ⅱ) of the previous Patent Act (Act No. 6411, promulgated on February 3.
2001, taken effect on July 1, 2011), inventions available to the public over
telecommunication lines designated by Presidential Decree can hold the same status as
disclosed invention through publications.
Moreover, the recently-revised Patent Act (Act No. 11654, promulgated on March 22, taken
effect on July 1, 2013) has deleted the phrase “designated by Presidential Decree” in Article
29(1)(ⅱ) and inventions available to the public over all telecommunication lines are applied
with Article 29(1)(ⅱ) of the Patent Act.
3.4.2 General Principles of Citation of Invention available to the Public through
Telecommunication line
The revised Patent Act (Act No. 11654, promulgated on March 22, taken effect on July 1,
2013) is only applied to patent application filed after July 1, 2013 and the previous Patent
Act is applied to application filed before the date (Act No. 6411, promulgated on February 3.
2001, taken effect on July 1, 2011). Therefore, the provisions applied when citing the
inventions disclosed over telecommunication lines as prior art are as follows by application
date.
① Patent Application filed before June 30, 2013
Among the Government, local governments, the governments or local governments of
foreign countries or international organizations under Article 1-2 of the Enforcement Decree
of the Patent Act before the revision (the act before the revision by Presidential Decree No.
24645, June 27, 2013), national, public schools or national, public universities in foreign
countries, national, public research institutes in the Republic of Korea or foreign countries,
other corporations established to serve the purpose of performing patent-information
related work, if inventions become available to the public through telecommunication lines
operated by one of the corporations designated and announced by the Commissioner of
the Korean Intellectual Property Office shall be cited as prior art under Article 29(1)(ⅱ) of
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the Patent Act before the revision. However, inventions available to the public over
telecommunication lines other than telecommunication lines designated under Article 1-2 of
the Enforcement Decree of the Patent Act constitute inventions in the state possibly known
to unspecified people in the Republic of Korea or foreign countries under Article 29(1)(ⅰ) of
the Patent Act before the revision and therefore, they shall be cited as prior art under Article
29(1)(ⅰ) of the Patent Act before the revision. As for disclosures through telecommunication
lines designated under Article 1-2 of the Enforcement Decree of the Patent Act before the
revision and disclosures through other telecommunication lines, the content of disclosures,
the possibility of recognition on the time of disclosure and recognition criteria are explained
in 3.4.3 below.
② Patent Application filed after July 1, 2013
Where inventions are recognized to be available to the public through telecommunication
lines, they shall be all cited as prior art under Article 29(1)(ⅱ) of the Patent Act. The content
of disclosures through telecommunication lines, the possibility of recognition on the time of
disclosure and recognition criteria are explained in 3.4.3 below.
3.4.3 Requirement for Information available to the public through telecommunication
lines under Article 29 paragraph (1) subparagraph (2) to be cited as prior art
(1) Inventions publically known to the public through Telecommunication lines
A telecommunication line includes public bulletin board, e-mail group using a
telecommunication line as well as internet. Moreover, a new electric or telecommunication
method which would appear in the future as the technology advances, shall also be
included.
Telecommunication lines do not always need to be physical lines. The term
telecommunication means transmission or reception of code, words, sound or image
through wired, wireless, optic, or other electro-magnetic processes.
Information made available to the Public through a CD-ROM or a Diskette shall not be
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considered publication of technology through telecommunication lines but considered
publication of technology through distributed publication.
(2) Invention Made Available to the Public
In order to cite an invention publically known to the public through telecommunication lines
as prior art as in the case of the printed publications, the invention shall be "the one
available to the public".
The "public" means an unspecified person who does not have to keep an invention secret
and "available to the public" means the state in which the invention can be seen by an
unspecified person, and "available to the public" does not require actual access of the
invention.
Even if an invention is published through telecommunication lines in a case where the
invention is only accessible by a specific person and the invention is restricted to the public,
the invention is not considered as being available to the public.
To determine whether information is an invention made available to the public, one needs
to decide whether the information is made available on a Web site with a general search
engine or whether the Web Site is encoded in such a way that it cannot generally be read.
Only where information is considered as being available to the public, it can be cited as a
prior art.
(3) Telecommunication lines designated under Article 1-2 of the Enforcement Decree of the
Patent Act before the revision (the act before the revision by Presidential Decree No. 24645,
June 27, 2013)
As for patent application filed before June 30, 2013, only inventions disclosed through
telecommunication lines designated by Presidential Decree shall hold the status of prior art
identical with inventions disclosed in publications. Telecommunication lines designated
under Article 1-2 of the Enforcement Decree of the Patent Act before the revision mean
telecommunication lines operated by a person who falls under any of the following cases.
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(Even for patent applications filed after July 1, 2013, an invention disclosed over
telecommunication lines operated by a person who falls under any of the followings shall
hold the status of the prior art identical with the invention disclosed in publications.)
① Governments, local governments, foreign government, foreign local governments or
international organizations.
Whether a certain entity falls under government or local government under enforcement
decree of the patent act, relies on national government organization act or local
government law.
Whether a certain entity falls under foreign government or foreign local government relies
on its related Act and subordinate statute of each foreign country. For example, the
telecommunication lines owned by the Korean Intellectual Property Office (hereinafter refers
to KIPO) especially, cyber bulletin is a typical electric communication line under Article 29
paragraph (1) subparagraph (2).
KIPO has granted the same status on inventions disclosed on Website owned by KIPO as
the inventions opened in the publication to be cited as prior art, thus publishing inventions
on the Internet as well as in a CD-ROM or written form in a faster and more economical
way becomes possible. Under the former Patent Act, KIPO is required to publish all
inventions only in a CD-ROM or written form to include those among prior arts. Under the
current Patent Act, KIPO grants the same status of prior art on the inventions disclosed on
the Internet as prior art in publications.
Also the term "International organization" is defined to include intergovernmental
organizations but does not include nongovernmental organizations such as Asian Patent
Attorneys Association. Intergovernmental Organization includes the United Nations, World
Intellectual Property Organization(WIPO), World Trade Organization (WTO) and the
European Union as well as regional patent offices such as European Patent Office, African
Intellectual Property Organization, OAPI and African Regional Industrial Property
Organization, ARIPO.
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② National/Public schools under the Higher Education Act or foreign National/Public
universities
National/public schools under Higher Education Act Article 3 refer to national schools
established and run by government or public schools established and run by local self-
governing groups among schools for providing higher education under Higher Education
Act Article 2 (universities and colleges such as industrial college, education college,
specialized college, communication college, technological college and others)
Whether a certain college falls under "foreign national/public university" relies on its related
Act and subordinate statute of each foreign country.
③ National/public research institutes in our country or foreign country
National/public research institutes in our country include research institutes including the
inspection center and laboratory run by local self-governing group or government-
sponsored research institutes.
Whether a certain institute falls under foreign national/public research institutes, relies on its
related Act and subordinate statute of each foreign country.
④ Corporation designated and publically notified by the Commissioner of Korean
Intellectual Property Office
Korea Invention Promotion Association(KIPA) and Organization for Data Management Center
(Korea Institute of Patent Information) are designated as "Corporations established to
conduct patent information and related works" of Enforcement Decree of the Patent Act
Article 1bis subparagraph (4) under public notification about managing the
telecommunication line corporations regarding patent information (KIPO Directive No. 2011-
21). Korea Invention Promotion Association(KIPA) and Korea Institute of Patent Information
conduct delegated affairs offered by Korean Intellectual Property Office and both of the
corporations are managed and governed by Korean Intellectual Property Office. Thus, the
information from telecommunication line used in those corporations is reliable.
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(4) Recognition of Disclosure Content and Disclosure Time
Since data disclosed on websites can be easily updated and, in principle, its content and
date can be changed later, whether the examiner can recognize that the content disclosed
in searches over websites, etc. has been laid open on the indicated disclosure date is in
question.
To cite prior art to notify a ground for rejection based on lack of novelty and inventive step,
in principle, the examiner shall present evidence of the fact that the concerned prior art has
been published. This shall apply to the case for prior art laid open through
telecommunication lines. In order to recognize that the content disclosed over
telecommunication lines has been laid open at the indicated disclosure time, the matter to
be reviewed by the examiner varies based on the type of telecommunication lines on which
the concerned information is laid open as in the following cases:
ⅰ) Since a telecommunication line defined under Article 1-2 of the Enforcement Decree of
the Patent Act before the revision may be deemed to hold credibility to a certain level, if
the disclosure content and time of an invention can be found on websites, etc. over the
telecommunication line, the examiner can use the invention as prior art without additional
confirmation procedure.
ⅱ) Even though a telecommunication line does not constitute any of the telecommunication
lines defined under Article 1-2 of the Enforcement Decree of the Patent Act before the
revision, but it is operated by Korean or foreign academic institutions, international non-
governmental organizations, public institutions, private universities, publishers of periodicals
such as newspapers or magazines or TV or radio broadcasting stations for the purpose of
their own work so that no question is raised as to the disclosure content and time based on
the awareness of the general public and the operation period, the examiner may accept the
disclosure content and time of the invention on the website of the telecommunication line
without additional confirmation procedure.
ⅲ) In the case of disclosure through a telecommunication line except for the lines
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mentioned above ⅰ) and ⅱ), the examiner shall first the credibility of the disclosure content
and time of the invention considering the awareness on the telecommunication line among
the general public, use frequency by the general public, credibility of operator, operation
period, etc. If the disclosure of an invention is deemed to be credible based on the review,
the invention can be cited as prior art. In such a case, the examiner shall indicate the logical
ground for credibility of the concerned disclosure in a written notification of submission of
opinion. However, where the credibility of the disclosure of the invention is in doubt, the
invention can be cited as prior art only when any doubts as to the disclosure content and
time are addressed through confirmation of the actual date of disclosure of the invention on
the website. To check the actual disclosure date, the examiner may ask a person in charge
of information disclosure on the concerned telecommunication line to confirm the disclosure,
or use the data on the content and disclosure on the website run by the U.S. non-profit
organization Internet Archive, www.archive.org.
The disclosure time on the telecommunication line is the point of time when the concerned
invention is disclosed on the telecommunication line. Therefore, even when the already-
distributed publication is disclosed through the telecommunication line, if the invention
disclosed on the telecommunication line is cited, the disclosure date of the invention shall
be the point of time when the invention is disclosed on the telecommunication line.
3.4.4 Method of Citation
In the case of citing electronic technical information retrieved from the telecommunication
lines, the bibliographical items such as author, title, name of publication and pages (or
drawings and graph) about the electronic technical information, as far as they have been
known, shall be listed in the following order in compliance with WIPO Standards ST.14.
But, if a cited documentation is patented and the patented documentation is published
through the Internet, an examiner is allowed to describe the cited documentation in the
same way as patent official gazettes in the form of CD-ROM without having to describe the
date of searching and website address.
3.4.5 Matters requiring attention in applying guidelines
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(1) Treatment of other websites hyper-linked from websites
The telecommunication lines under Article 1-2 of the Enforcement Decree of the Patent Act
or well-known and long-operated telecommunication lines run by academic institutions,
public institutions, publisher of periodicals, etc. are deemed reliable. However, other
websites hyper-linked through the telecommunication lines shall not be considered to be
the telecommunications defined under Article 1-2 of the Enforcement Decree of the Patent
Act. It is because its credibility regarding the time of disclosure cannot be guaranteed since
the website is run by other entities.
(2) Instruction on Examination of Applications filed before June 30, 2013 and after July 1,
2013
As explained earlier in 3.4.1, where the disclosure through telecommunication lines is used
as prior art, applications filed before June 30, 2013 shall be applied with Article 29(1)(ⅱ) or
(ⅰ) of the Patent Act before the revision, whereas applications filed after July 1, 2013 shall
be applied with Article 29(1)(ⅱ) of the Patent Act.
To be specific, in the case of disclosures through telecommunication lines defined under
Article 1-2 of the Enforcement Decree of the Patent Act before the revision, applications
filed before June 30, 2013 are cited as prior art under Article 29(1)(ⅱ) of the Patent Act
before the revision. Also, applications filed after July 1, 2013 shall be cited as prior art.
Where disclosures are made through well-known and long-operated telecommunication
lines run by academic institutions, public institutions, publisher of periodicals, etc. or other
telecommunication lines(only reliable lines or lines where the actual disclosure dates are
confirmed), applications filed before June 30, 2013 shall be cited as prior art under Article
29(1)(ⅰ) of the Patent Act before the revision and applications filed after July 1, 2013 shall
be quoted as prior art under Article 29(1)(ⅱ) of the Patent Act.
Therefore, which article of the Patent Act is applied to notify a ground for rejection to
disclosures of telecommunications depends on the application date because of the revision
of the Patent Act. However, the criteria of determining which telecommunication line can be
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used to confirm disclosure content and time so that the disclosed invention can be used as
prior art are technically the same regardless of application dates.
This can be summarized in the following table.
Disclosure through
telecommunication
line under Article 1-
2 of the
Enforcement Decree
of the Patent Act
before the revision
Disclosure through
telecommunication
lines run by
academic
institutions, public
institutions,
publisher of
periodicals, etc.
(where no question
is raised considering
awareness among
the general public
and operation
period
Disclosure through other
telecommunication lines
Where
credibility is
recognized or
actual
disclosure
date is
confirmed
Where
credibility is in
doubt
Application
filed before
June 30,
2013
(applied with
the Patent
Act before
the revision)
Cited as prior art
under Article
29(1)(ⅱ) of the
Patent Act before
revision
Cited as prior art under Article
29(1)(ⅰ) of the Patent Act before
revision
Not cited as
prior art
Application
filed after
July 1, 2013
(applied with
the revised
Patent Act)
Cited as prior art under Article 29(1)(ⅱ) of the Patent Act
before revision
Not cited as
prior art
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(3) Examination where opposition regarding disclosure through telecommunication lines is
raised by applicant
As for citing the invention disclosed through telecommunication lines as prior art, the
examiner shall consider any ground or evidence which raises questions on accessibility by
the general public, disclosure content, disclosure time, etc. presented by the applicant.
Where credibility of the concerned telecommunication line or the recognition of the actual
disclosure date on the telecommunication line has become doubtful because of evidence,
etc. on the disclosure content and disclosure time presented by the applicant, the examiner
shall search additional evidence to confirm the disclosure. If the examiner cannot find such
additional evidence, the invention disclosed on the telecommunication line cannot be cited
as prior art. However, if the applicant fails to present specific evidence and just argues that
the telecommunication line is not reliable, the examiner does not need to consider it.
4. Determination of Novelty
(1) The examiner shall determine whether or not a claimed invention is novel by judging
whether the claimed invention falls under the inventions categorized in the provision of
Article 29 paragraph (1) subparagraph (1) to (2). If a claimed invention falls under the
inventions categorized in the provision of Article 29 paragraph (1) subparagraph (1) to (2),
the invention is not novel. If a claimed invention does not fall under the inventions
categorized in the provision of Article 29 paragraph (1) subparagraph (1) to (2), the
invention is novel.
(2) The claims must describe the subject matter for which protection is sought. (Article 42
paragraph (4)) So, the decision over the identicalness of invention is determined by the
identicalness of the matters described in the claims
(3) When there are two or more claims in an application, the determination over novelty
should be made by each claim.
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4.1 Defining invention disclosed in claims
4.1.1 General principle of defining inventions
(1) When the claim statements are clear, defining the claimed invention should be made as
stated in the claim. The terminology described in the claims are interpreted as having a
general meaning and scope generally accepted in the technical field with the exception of
the case wherein the terminology has a specific meaning which is explicitly defined in the
description. The terminology should be interpreted in an objective and reasonable way by
taking into consideration of its technical meaning, taken together with the common general
knowledge at the time of filing, based on the general meaning of the terminology.
(2) Where the description of claims is clearly understood, an examiner should avoid limited
interpretation just by referencing the detailed description of the invention or drawings in
finding technical features of invention.
Where the subject matters are not described in the claims but in the detailed description of
invention or drawings, an examiner should interpret the invention as not being described in
the claims. On the contrary, where the subject matters are described in the claims, an
examiner should consider the subject matters in claims when interpreting an invention.
It is possible to consider the detailed description of invention or drawings in understanding
the subject matters disclosed in the claims but it is noted that an examiner should not
examine the claims by applying subject matters not described in the claims. For example,
where the subject matters described in the claims are more comprehensive than
embodiments in the detailed description, novelty and inventive step should not be
determined by interpreting the specific embodiments described in the detailed description
as the claimed invention.
(Example 1)
In a case where 'cream' is described in the claims and 'the highly preserved cream which
contains less moisture than bean-paste' is disclosed in the detailed description as an
embodiment, as the term 'cream' generally refers to fat taken from milk, regardless of
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content of moisture, the claimed invention should not be interpreted to be limited to the
embodiment of the detailed description since a person skilled in the art can clearly
understand the term.
(Example 2)
In a case where 'thin film type probe' is described in the claims and 'a certain pattern is
formed on the tip of the probe in the longitudinal direction' is disclosed in the detailed
description, the claimed invention should not be interpreted to be limited to the certain
pattern formed in the tip of the probe in the detailed description since the claimed
invention is clearly defined as 'thin film type probe'.
(Example 3)
In a case where the rotation direction of brush roller is not disclosed in the claims but the
subject matters of brush roller which rotates around a body of rotation is found in the
drawings, the claimed invention should not be interpreted to be limited to the rotation
direction of brush roller just by referring to the rotation direction described in the drawings.
(3) In a case where an applicant specifically defines a term in the detailed description to the
extent that it is clearly understood that the term is different from any general meaning, in
order to specify the term as a specific meaning not as general meaning in the technical field
to which an invention pertains, the term is interpreted as a term with the specific meaning.
However, only the description of the specific concept of the term in the claims in the
detailed description and drawings, does not fall under the specific definition aforementioned.
(Note)
A term in a patent specification is interpreted with the general meaning in the technical field
and should be unified over the whole specification. However, if an applicant intends to use a
certain term to have a specific meaning, an applicant is allowed to define the meaning of
the term. So, the term can be simply interpreted according to the specific definition when
the meaning of term is defined in the description(Supreme court 1998.12.22 97 Hu 990
Sentence).
(4) In a case where a term disclosed in the claims is obscure and unclear, an examiner
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should examine whether the claimed invention can be grasped in view of the detailed
description, drawings and common general knowledge as of the time of filing. If the
invention can be grasped, the examiner can notify the applicant reasons of refusal on
deficiency in describing specification and novelty collectively.
(5) If a claimed invention is not clear, even in view of the detailed description in the
specification, the drawings and the common general knowledge as of the time of filing,
examination of novelty is not conducted and the reason for refusal due to the deficiency of
the detailed description is notified.
4.1.2 Principle of defining invention which includes special expression
(1) A product specified by its work, function, property, or characteristic (hereinafter referred
to as the function, characteristic, etc.)
When describing claims, it is possible to state the structure, method, functions, materials or
a combination of these factors for the purpose of clarifying which matters are subject to
protection. When function, characteristic, etc. are disclosed in the claims to limit the subject
matters of the claimed invention, an examiner should not exclude the function, characteristic,
etc. from the features of the invention when interpreting the claims. When a claim includes
an expression specifying a product by its function, characteristic, etc. such an expression
should, in principle, be construed as every product that has such function, characteristic, etc.,
except when it should be construed otherwise because the expression is specifically defined
in the detailed description. However, it is noted that there are also cases where a product
described by its function, characteristic, etc. should not be construed as a specific product
among all products that have such function, characteristic etc. by taking into account the
common general technical knowledge at the time of the filing.
(Example 1)
In a case where 「means to selectively join plastic materials」is disclosed, it is appropriate
that 「the means to selectively join」 mentioned here should not apply to materials such as
magnetics which is difficult to join with plastic material.
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(2) The claim which includes an expression specifying a product by its use (limitation of use)
Where a claim includes an expression specifying a product by its use (i.e limitation of use),
the examiner should interpret the claimed invention only as a product specially suitable for
the use disclosed in the claim, by taking into account the detailed descriptions in the
specification and drawings and the common general technical knowledge at the time of the
filing. Even if a product includes all technical characteristics described in the claims, an
examiner should not regard the product as the product described in the claim when the
product is not appropriate for the relevant use or when the product needs conversion to be
used. For example, 「crane hook with a shape of ~」merely indicates hook includes technical
features with size and strength suitable for crane. So it is appropriate that the crane hook
should be construed as a different product from 「fishing hooks」with regard to the structure.
If a product with a limitation of use is not suitable for such use by taking into account the
specification, drawings and the common general technical knowledge at the time of the
filing, it is construed that a limitation of use has no impact in specifying an invention,
thereby the limitation of use does not have influence in the determination of novelty.
(Example 1)
Where an embossing non woven fabric used in agriculture with limitations of weight and
thickness is described in the claim and an embossing non woven fabric with the same
numerical limitations is disclosed in a catalogue published prior to the time of filing, if it is
considered that the claimed invention is not particularly suited to be used in agriculture, a
limitation of use does not have influence in defining the claimed invention thus negating
novelty based on the cited inventions in the catalogue.
(3) A product defined by its manufacturing process (product-by-process claim)
A product invention should be described in such a way that the technical constitutions are
directly stated in the claim, even if the manufacturing process of the product is disclosed in
the product claim. Thus, an examiner should compare the claimed product itself defined by
the description of the claim with a prior art published prior to the time of filing when
determining novelty and inventive step, unless there is a special reason in the description of
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the claim. The special reason aforementioned should only be accepted by the Examiner in
extremely exceptional cases such as when it is greatly difficult to define the product in the
ordinary way in the relevant technical field.
Where a claim includes a statement defining a product by its manufacturing process, such a
statement is construed as meaning a product per se unless it should be construed as
different meaning according to the definition in the detailed description. If an identical
product can be obtained by a different process from the one stated in the claim, the
claimed invention is not novel where the product is publicly known prior to the time of
filing. Thus, even if applicant's intention is to limit the claimed invention to only the product
which is obtained by the particular process, such as a claim reading as "Z which is obtained
solely by process A," the claimed invention should be treated in the same way
aforementioned.
(Example 1)
In a case where 'panel formed by cutting process using a wave shaped blade of a knife' is
described in the claims and the panel is the subject matter subject to protection, it is
construed that there is no difficulty in directly specifying the structure of the panel in the
technical field. It is appropriate to make a distinction between the panel defined by its
manufacturing process and the claimed invention without taking into account of the
manufacturing process. When comparing the claimed invention and the cited invention,
both inventions show the same wave or cloud shape on the striped surface in the natural
form. Therefore, the claimed invention is regarded as the same invention with the cited
invention.
(4) Claims divided by the preamble and the body (Jepson type claim)
Even in the case of Jepson type claim which divides claims by the preamble and the body,
an invention should be specified as a whole including the preamble because the type of
claims does not change the technical scope.
However, the subject matters described in the preamble are not considered to be publicly
known just because of the fact that the subject matters are described in the preamble. The
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reason is that whether the subject matters in claims are publically known before the time of
filing is a matter of facts and the claim type does not show that the matter of facts has
occurred. Even if all subject matters described in the preamble are publically known, it is not
appropriate to compare only the subject matters of the rest of the body with a prior art
because the technical idea of the whole invention including the publically known subject
matters of the preamble is the subject matter in determining patentability.
(Example 1)
Where the subject matters described in the body of the Jepson type claimed invention are
anticipated in the cited invention but the subject matters of the preamble such as spark
plug, ventilator are not described in the cited invention, it is not appropriate that said spark
plug and ventilator are treated as publically known just because those are shown in the
preamble. Moreover, an object of determining the patentability is the technical idea of the
claimed invention as a whole body which includes the preamble. So, an examiner should not
negate novelty based on the cited invention which does not include the technical features
of the preamble.
(Note)
In the case of the description type which divides claims by the preamble and the body (the
type called Jepson type claim), the preamble can be construed as various meanings such as
① limiting the technical field of inventions ② limiting the product applied by the
technology of invention ③ excluding the scope of the right protected given that the
invention is publically known. The body which is combined with the preamble is the
technical characteristics of the claimed invention subject to protection.
4.2. Finding of a cited invention
Finding an invention cited in determining novelty (hereinafter referred to as "cited invention")
under the Patent Act Article 29 paragraph (1) subparagraph (1), (2) are as follow.
4.2.1 Publically Known Invention
A "publicly known invention" means an invention the contents of which have been known to
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an unspecified person without obligation of secrecy in the Republic of Korea and a foreign
country before the filing of an application. Finding a cited invention is basically carried out
based on the matters publically known. Taking into consideration the common general
knowledge as of the filing, if a person skilled in the art can easily arrive at the matters
described in the invention, the matters are considered as being publically known.
(Reference)
The common general knowledge means technologies generally known to a person skilled in
the art (ex, well known art or commonly used art). "Well-known art" means technologies
generally known in the relevant technical field, e.g., those appeared in many prior art
documents, those widely known throughout the industry, or those well-known to the extent
needless to present examples. "Commonly used art" means well-known art which is used
widely.
4.2.2 Publicly Worked Invention
A "publicly worked invention" means an invention which has been worked under the
conditions where the contents of the invention are to be publicly known. Therefore, it is
enough to decide whether the invention is publically worked without determining whether
the invention is publically known.
"A publicly worked invention" means an invention which has been worked under the
conditions where the invention is or can potentially be publicly known to an unspecified
person through the medium of machinery or systems, etc. Therefore, the finding an
invention can be carried out on the basis of the subject matters embodied in machinery or
systems, etc. The matters directly derivable from the facts in view of the common general
knowledge as of the working can also be a basis for the finding of a publicly worked
invention.
4.2.3 Invention Described in a Distributed Publication
"An invention described in a distributed publication" means an invention which is or
potentially be described in a publication. Being potentially described in a publication means
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that a person skilled in the art can easily recognize the invention. Such an invention can be
considered as an invention described in a distributed publication.
4.2.4 General considerations in finding cited inventions
A manuscript for a journal of an academic society, in general, is usually kept secret against a
third party, even after the receipt of the manuscript by the academic society. Therefore, the
invention described in that manuscript is not considered a publicly known invention until its
contents are released.
A company produces a catalogue to promote the company or to introduce and promote its
products. Therefore, if the catalogue is produced, the catalogue is considered as a
publication except when the catalogue is not published due to special circumstances.
Where the filing date of a patent application is the same as the date of the publication, the
claimed invention does not lose novelty under Article 29 paragraph (1) subparagraph (2) of
the Patent Act, except when the filing time of application is clearly after the time of
publication.
The time of publication of a thesis is the time when the thesis is distributed to an
unspecified person in public or university libraries after the final thesis examination, except
when the contents of the thesis are announced in an open space before the final thesis
examination.
4.3 Method of Determining whether a Claimed Invention is Novel
The determination of novelty of a claimed invention is conducted by comparing the matters
defining the claimed invention and the matters disclosed in the cited invention and
extracting the difference between them. Where there is no difference between the matters
defining a claimed invention and the matters disclosed in the cited invention, the claimed
invention is not novel. Where there is a difference, the claimed invention is novel. The
claimed invention is not novel when it is substantially or exactly identical to the cited
invention.
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「The substantially identical invention compared with prior arts」 means that there is no
newly produced effect because the difference in the concrete means for solving problems is
caused by mere addition, conversion or deletion of well-known or commonly used art and
the difference between the claimed invention and the cited invention does not practically
affect the technical idea of the claimed invention.
4.3.1 Determining Novelty on Invention with Numerical Limitation
An invention with a numerical limitation means that some part of the subject matters of an
invention described in the claims is defined by specific numerical values. Where an invention
in the claims includes a numerical limitation, a claimed invention is regarded as being novel
when the claimed invention is not identical to the cited invention even when the numerical
limitation is not considered.
When a claimed invention is identical to the cited invention except for numerical limitation,
the determination of novelty comes under the following criteria.
(1) In a case where no numerical limitation is found in the cited invention while new
numerical limitation is included in the invention described in the claims, the invention is
regarded as novel. However, if the numerical limitation can be chosen by a person skilled in
the art or it can be hinted in a cited invention in view of the common technical knowledge,
novelty of the invention is denied in general.
(2) In a case where the numerical range of the invention described in the claims is included
in the numerical range disclosed in a cited invention, it does not negate novelty and the
invention can be regarded novel by the criticality of the range of the numerical limitation.
For the criticality of the range of the numerical limitation to be acknowledged, a remarkable
change in the effect of the invention is required across the boundary of the numerical
limitation and the following condition should be satisfied: 1) The technical meaning of the
numerical limitation should be described in detail, 2) the embodiments in the detailed
description or supplemental materials should prove that the range of the numerical
limitation is critical. Generally, it should be objectively confirmed that the range is critical
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with experimental results which cover all range of the numerical limitation.
(3) In a case where the numerical range of invention described in the claims includes the
numerical range of the cited inventions, novelty can be denied at once.
(4) In a case where the numerical range of the claimed invention is different from that of
cited invention, novelty is regarded novel in general.
4.3.2 Determining Novelty in Parameter Invention
(1) A parameter invention is an invention in which an applicant arbitrarily creates a certain
parameter which is not the standard or commonly used for a physical-chemical
characteristic value, parameterizes it arithmetically by using the correlation between the
plural parameters, and employs it as a part of essential element of the invention. Since a
parameter invention may not precisely define the subject matter with the description of the
claim itself, determination of the inventive step of the parameter invention should be
performed only after figuring out the subject matter based on the detailed description,
drawings and common knowledge.
(2) Novelty regarding a parameter invention is determined by interpreting the parameter
itself as part of the claims, but it is important that novelty cannot be confirmed just because
the parameter described in the claims is regarded as being novel. Novelty regarding an
invention described in the claims is denied in general if limiting the invention with the
parameter just experimentally identifies nature or characteristics of a publically known
product or there is a change just in expression by using parameter.
(3) In a parameter invention, if there is a 'reasonable doubt' that the claimed invention and
the cited invention are identical, an examiner can wait written arguments or a certificate of
experimental results after notifying the reason for refusal on novelty without comparing
strictly the claimed invention with cited references because generally it is hard to compare
the claimed invention with cited invention regarding determining novelty on parameter
invention. If the reason for refusal is no longer kept by the applicant's arguments the reason
for refusal is dissolved. But if the reasonable doubt is not dissolved, an examiner should
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decide the refusal of patent with regard to novelty.
(4) An examiner might have aforementioned reasonable doubt in the following cases: ① In a
case when the parameter described in claims is converted with different definition and
measurement method, and then the claimed invention is found to be identical with the cited
invention. ② In a case when an examiner evaluates the parameter of a cited invention
according to the measurement method in the description and obtains the same subject
matter as that of claimed invention. ③ In a case when an embodiment in the detailed
description of the claimed invention is identical to that of the cited invention.
(5) In a case when an examiner notifies the reason for refusal of a parameter invention, the
examiner has to concretely describe the ground of reasonable doubt, and if necessary, the
examiner can propose a way to overcome the grounds of rejection.
(6) The examination criteria described in (1)-(5) are not applied to a claimed invention when
the parameter of the claimed invention is standard, commonly used or proved to be easily
understandable by a person skilled in the art.
4.4 General considerations in determining novelty
(1) If an invention described in the claims and the cited invention are expressed in a generic
concept or a specific concept, the following items should be considered in determining
novelty:
① If an invention described in the claims is expressed in a generic concept and a cited
invention is expressed in a specific concept, the invention in the claims is not novel. "Generic
concepts" is defined as concepts integrating matters in the same family or the same genus,
or a concept integrating a plurality of matters with the common characteristic.
(Example 1)
If a claimed invention is described as metal and a cited invention is described as Cu, the
claimed invention is not novel.
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② If a claimed invention is expressed in a specific concept and a cited invention is
expressed in generic concept, the claimed invention has novelty. However, when an
invention expressed in a specific manner can be directly derived from such a generic
invention in consideration of the common general knowledge, the claimed invention's
novelty is denied by defining an invention expressed in specific concept as a cited invention.
An invention expressed in a specific concept cannot be derived from the inventions
expressed in a generic concept, even if the invention expressed in a specific concept simply
belongs to a generic concept or the elements of the specific concept can be presumable in
the terms in generic concept.
(Example 1)
Silver is described in the claim as a superconducting cable material for electric power
transmission and a cited documentation discloses a superconducting metal cable. If using
silver as a cable material to activate super conductivity in the field of electric power
transmission belongs to commonly known art, novelty of the claimed invention can be
negated, as a person skilled in the art can conceive superconducting silver cable without
undue difficulty.
(2) In determining novelty, the comparison shall not be conducted between a claimed
invention and a combination of two or more cited inventions. Determining patentability by a
combination of two or more cited inventions is not related to novelty, but to inventive step.
Except when a cited invention cites a distinct publication (ex: publication which provides
detailed information of a technical feature, the distinct publication is regarded as a cited
invention and able to be cited as determining novelty. When a dictionary and a reference
are needed to interpret a term described in the cited reference, the dictionary and the
reference are regarded as a cited reference and can be cited.
(3) If one or more inventions are described in a claim such as in a Markush type claim
(multiple claims or features selectively cited or described, etc.), the reason of refusal can be
notified on the ground that the invention does not involve novelty and an inventive step on
each invention with one single prior art.
(4) In a case where there are more than two embodiments in a cited documentation, an
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examiner should not determine novelty by combining the two embodiments. Determining
patentability through combination of cited embodiments is not a matter of novelty but
inventive step. However, it is exceptional when one cited invention is obviously drawn from
more than two embodiments in considering common general knowledge.
(5) Where the applicant admits the background technology to be publically known in a
specification or written opinion, an examiner can determine novelty concerning a claimed
invention by citing the background technology.
5. Inventions not considered to be publicly known
5.1 Relevant Provision
Article 30 of the Patent Act (Inventions not Deemed to be Publicly Known, etc.) (1)
Where a person who has a right to obtain a patent files a patent application for an
invention within twelve months (six months in case of filing date being earlier than March
15, 2012) of date on which the invention falls under any of the following sub-paragraphs,
the invention is considered not to fall under any of the sub-paragraphs of Article 29
paragraph (1) when Article 29 paragraph (1) or (2) applies to the invention.
1. Where a person with the right to obtain a patent causes the invention to fall under either
sub-paragraph of Article 29 paragraph (1); however, this provision does not apply where a
patent application is laid open or a patent registration is published in the Republic of Korea
or a foreign country under a treaty or law.
2. Where, against the intention of a person with the right to obtain a patent, the invention
falls under either subparagraph of Article 29 paragraph (1).
3. Deleted.
(2) A person who intends to take advantage of paragraph (1) subparagraph (1) shall submit
a written statement of that intention to the Commissioner of the Korean Intellectual
Property Office when filing a patent application; the person shall also submit a document
proving the relevant facts to the Commissioner of the Korean Intellectual Property Office,
within thirty days of the filing date of the patent application.
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5.2 Purport of the system
Under Article 29 paragraph (1), a publically known invention before the filing of the
application is not novel. However, under Article 30, even if an invention is published before
the invention is filed to obtain a patent, where the necessary conditions is fulfilled, if the
invention is not considered to be publically known, the invention cannot be cited as a prior
art in determining novelty and inventive step under Article 29 paragraph (1), (2). Under the
regulation, the date of filing is not applied retroactively.
The purpose of regulation is to encourage an applicant to obtain a patent even after he or
she publishes his or her own invention and to encourage early publication of an invention
to help development of the national industry.
The regulation was amended on 3 March 2006. The amendment benefits an applicant when
he or she publishes an invention both in the Republic of Korea or a foreign country, except
for the cases such as laying-open of application and publication of registration. The reason
is that with the introduction of internationalism regarding publically known or used
inventions, it is necessary to allow publically known or used inventions abroad to give
benefits from the exceptional cases and that applicants tend to publish their thesis on the
Internet not in the existing scientific journals.
Under the Patent Act revised on December 2, 2011 reflecting the Free Trade Agreement
between the Republic of Korea and the United States of America (also known as KORUS
FTA), the grace period for a public disclosure has been extended from 6 months from the
date of public disclosure to 12 months. The grace period of 12 months shall apply to a
patent application filed after March 15, 2012.
5.3 Requirements for inventions which are not considered to be publicly known
5.3.1 Where an invention is laid open by a person with the right to obtain a patent
before the filing of the patent application
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(1) Although an invention is laid open by a person with the right to obtain a patent before
the filing of the patent application, the invention is not considered to be publicly known if
the invention falls under either subparagraph of Article 29 paragraph (1) as prescribed in
Article 30 paragraph (1) subparagraph (1) and meets the following requirements:
(a) the invention is publicly known by a person with the right to obtain a patent
(b) the invention is filed by a person with the right to obtain a patent within twelve months
(six months in case of filing date being earlier than March 14, 2012) of the date on which
the invention is publicly known (if the date on which the invention is publicly known is
unspecified, the first day of the month and year of a disclosure may be applied.);
(c) the purpose of being applied by the provision of Article 30 must be stated in the
application; and
(d) documents proving the relevant facts must be submitted within thirty days of the filing
date of the application.
(2) To be considered as inventions which are not considered to be publicly known before
the filing of the patent application, the inventions must meet either of the subparagraphs of
Article 29 paragraph (1) along with above mentioned requirements (a) to (d).
5.3.2 When an invention is publicly known, against the intention of a person with the
right to obtain a patent
When an invention is publicly known against the intention of a person with the right to
obtain a patent, it doesn't matter how the invention is publicly known. However, the person
with the right to obtain a patent shall also file a patent application within twelve months (six
months in case of filing date being earlier than March 15, 2012) of the date on which the
invention is publicly known, without the need to state the purport of invention to take
advantage of Article 30 in the application.
5.3.3 Distinction between the cases when an invention is publicly known by a person
with the right to obtain a patent, and when the invention is publicly known against the
intention of the person
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(1) In filing a patent application claiming the exception of the claimed invention being
considered to be publicly known, there may be two cases. The first case is when a person
with the right to file for a patent causes the invention to be publicly known, and the second
case is when the invention is publicly known against the intention of the person. Both cases
have requirements in common that (i) the patent application be filed within twelve months
(six months in case of filing date being earlier than March 15, 2012) of the date on which
the invention is publicly known, and (ii) invention considered to be publicly known be
examined on a claim by claim basis. However, there are differences in the person who
publicly displayed the invention, the medium used for being publicly known and required
documents proving the relevant facts.
(2) An invention being publicly known by a person with the right to file for a patent means
an invention has been laid open by an inventor or the person's entitled successor.
Notwithstanding the consent of the person with the right to obtain a patent, if the invention
is laid open by a person who is not a successor to the right, the provision of Article 30 may
not apply to the invention. Meanwhile, the case of an invention being publicly known
against the intention of a person with the right to obtain a patent is considered as being
publicly known against the intention of an inventor or the person's entitled successor.
Whether an invention is publicly known against the intention of a person with the right is
determined in consideration of the right holder's clear intention to lay open the invention at
the time when the invention is publicly known.
(3) Whether an invention is publicly known by a person with the right to obtain a patent or
by a person against the intention of a person with the right to obtain a patent, the type of
disclosure is not restricted. In the case of disclosure by a person with the right to obtain a
patent, when the application has been laid open or registered in the Republic of Korea or in
a foreign country according to the treaties and laws, the provision of Article 30 cannot be
applied.
(4) A person intending to take advantage of the provision of Article 30 for the reason that
the invention is publicly known by the person with the right to obtain a patent shall state
the intention in the application. If not, the person is not allowed to amend the application
later to put the intention. Meanwhile, a person intending to take advantage of the provision
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of Article 30 for the reason that the invention is publicly known against his or her intention
does not need to state the purport in the application.
5.4 The procedure to take advantage of the provision of Article 30
5.4.1 Where a person with the right to obtain a patent has laid open the invention
before the filing of a patent application
(1) The patent application should be filed within twelve months (six months in case of filing
date being earlier than March 15, 2012) of the date on which the provision of Article 30
paragraph (1) subparagraph (1) applies to the invention. In other words, the applicant shall
state, when filing the application, that the person intends to take advantage from the
provision of Article 30 paragraph (1) subparagraph (1).
(2) The applicant shall submit documents proving the fact that the provision of Article 30
applies to the invention, within thirty days of the date of filing.
(3) For an international patent application, notwithstanding Article 30 paragraph (2), a
person intending to take advantage of Article 30 shall state their intention in the application
and submit the documents proving the intention within thirty days after the critical date (the
date for submitting domestic documents) as prescribed in Article 201 paragraph (4) (Refer
to Article 200 of the Patent Act and Article 111 of Special provision).
(4) It shall be proved that a person who disclosed an invention is the person who has the
right to obtain a patent. Where the person who disclosed the invention is not the inventor
or applicant, the applicant shall submit documents proving that, when displaying the
invention, he or she is a successor to the person with the right to obtain a patent.
5.4.2 In the case that the invention is publicly known against the intention of a person
with the right to obtain a patent
A person intending to take advantage of Article 30 shall prove that the invention is
disclosed or used, against the intention of the person. A claim of the fact that the invention
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is publicly known and the requirements of proving the fact are individually judged on a case
by case basis. Where an invention is publicly known against the intention of a person with
the right to obtain a patent under Article 30paragraph (1) subparagraph (2), it is not the
case that the right holder voluntarily discloses the invention. So, there would be many cases
that are difficult to prove how the invention was publicly known, as in the case of Article 30
paragraph (1) subparagraph (1). Therefore, the fact that the invention is publicly known
against the intention of a person with the right to obtain a patent may be proved in various
ways.
5.5 Examination to decide whether Article 30 applies to an invention
5.5.1 Formality examination
Once a patent application indicating the purport of claiming non-prejudicial disclosure is
submitted, the examiner shall conduct formalities examination on whether the application is
submitted within 12 months from the disclosure date (6 months for application whose filing
date is before March 14, 2012) or the disclosure is made by a person with the right to
obtain a patent right.
Even if a person submits a document proving that an invention is displayed at an exhibition,
if it is difficult to identify the invention displayed at the mentioned exhibition, the Korean
Intellectual Property Office may invite the applicant to submit a complementary document
to identify the fact. However, if the organizer of the exhibition, title, date, and venue of the
exhibition are in doubt, the Office may ask the applicant to add documents to prove the
fact.
Notwithstanding the submission of the written intention to take advantage from the
provision of Article 30, if the claim falls under any of the following subparagraphs, the office
gives the applicant a notice to correct defects.
① when a person who disclosed an invention is different from the person who filed or
invented the invention;
② when the patent application is filed more than twelve months (six months in case of filing
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date being earlier than March 14, 2012) after the disclosure date of laying open the
invention;
③ when an applicant puts the wrong disclosure date and type of the disclosure on the
application and puts incorrect information on the documents proving that the invention is
not considered to be publicly known; or
④ when the submitted documents are not enough to prove the relevant fact
Notwithstanding the notification, when the applicant does not make an amendment within a
designated period, the office invalidates the claiming procedure under Article 30(in this case,
the filing procedure is effective).
In other words, where the presenter and the applicant (inventor) are not the same and
therefore, whether the right to obtain a patent is transferred legitimately cannot be
confirmed; where the application is incorrectly described or the disclosure date is incorrectly
indicated due to miswriting or omission; where only documents are attached without
creating the box 〔Intention of Application of Article 30〕 in the application; or where the
requirement of Article 30 of the Patent Act cannot be met because of omission of part of
evidential documents, the examiner shall order amendment under Article 46 of the Patent
Act. Where irregularities are not addressed within the designated period despite the
amendment order, the examiner shall invalidate the procedure.
As shown in ④, whether the evidential documents are sufficiently submitted shall be
determined based on whether the matters required for examination on the requirement of
non-prejudicial disclosure can be confirmed in the evidential document. Matters required for
examination on the requirement non-prejudicial disclosure contain ⅰ) disclosure date, ⅱ)
discloser, ⅲ) disclosure type, and ⅳ) content of the disclosed invention.
In the case of disclosure of the invention at an exhibition, where the evidential document of
disclosure cannot specify the disclosed invention, supplementary documents which can
specify the invention (such as copies of exhibition program, copies of exhibit catalog or
pamphlet, photos of exhibits in display at the show booth, etc.) and explanations can be
requested. Where a question is raised on the fact relation of the submitted document
specifying the exhibition name, hosting party, exhibition date, exhibition venue, and
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exhibitor, supplementary document required for proving the fact relation can be requested.
5.5.2 Substantive examination
An examiner reviews all of the submitted documents and examines the invention if defects
are not found in the application. The disclosures that fall under any of the provisions of
Article 30 are recognized as non-prior art in the examination, where Article 29 paragraph (1)
or (2) applies to the invention claimed in the patent application. However, when the
procedure of claiming an invention to be not to be considered to be publicly known fails
because defects are found in the application and documents, the submitted documents may
be used as prior art.
5.5.3 Matters to be attended to apply Article 30 to the invention
(1) When a person with the right to obtain a patent discloses an invention several times
before the filing of a patent application, in principle, the procedure to apply Article 30 of
the Patent Act to the invention shall be taken for each disclosures to be applied with non-
prejudicial disclosure.
However, the „indication of intention‟ specified in Article 30(2) of the Patent Act does not
necessarily need the concerned disclosure to be specified in the application but is enough if
the intention that it shall be applied with non-prejudicial disclosure is recognized. Therefore,
where the intention of claiming non-prejudicial disclosure is indicated in the application (by
checking the box for non-prejudicial disclosure in the application form) at the time of filing,
even though the disclosure is not specified in the application, the non-prejudicial disclosure
can be applied to the disclosure if the evidential document of the disclosure is submitted
within 30 days from the filing date.
If an acting of disclosure is inseparably related to one or more disclosures, the applicant
may be exempted from the submission of a document proving the relevant facts, in the
second disclosure and after the second disclosure. In this case, the period of twelve months
(six months in case of filing date being earlier than March 14, 2012) prescribed in Article 30
will be calculated from the earliest date of publication. The disclosure which is inseparably
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related to one more disclosures is prescribed in Article 30 paragraph (1) subparagraph (1)
and the applicable cases are as follows:
(a) an examination which takes two or more days; (b) examination and explanation
distributed on the date of examination; (c) the first edition and second edition of a
publication; (d) the collections and oral presentation of the collections in a society; (e) oral
presentation and a lecture booklet; (f) a lecture tour; and (g) display in an exhibition and
catalog of the displayed product.
Also, where one academic disclosing activity (such as publication of academic journal,
presentation at academic institutions, disclosure of research report, publication of academic
thesis, etc.) has been conducted on an invention created based on research result, such
disclosures are not limited to the single academic presentation activity, but subsequent
disclosures on the same invention are expected to follow. Therefore, the relation is regarded
as inseparable with other types of academic disclosing activities of the identical invention,
and thus, if a legitimate procedure for non-prejudicial disclosure has been undertaken for
the initial academic disclosing activity, subsequent academic disclosing activities shall be
deemed to enjoy non-prejudicial disclosure. (2011 Won 6757, 2010 Won 4635)
(2) When there are an invention (A) which is filed for claiming that it is not considered to be
publicly known and another invention (B) which is the same as invention but laid open by a
third person between the date of disclosing the invention (A) under Article 30 paragraph (1)
subparagraph (1) and the filing date of the invention (A), an examiner shall refuse the
application of invention (A) for the reason of lacking novelty, except the obvious fact: the
laying open of the invention (B) was made by learning from the disclosure (A).
The laying open of invention which was made by a third person after learning from a
disclosure, which is not considered to be publicly known, covers the case when a third
person reproduces the invention which was publicly known by a person with the right to
obtain a patent at an examination, publication, announcement in an academy, and display in
an exhibition. After sending an applicant a notice of reasons for refusal for the above reason,
the examiner shall decide to refuse an invention if the applicant can't establish the fact that
the a third person laid open the invention after learning from a disclosure which is not
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considered to be publicly known, or that the invention is filed against the intention of the
applicant.
(3) When a person filed a patent application A within twelve months (six months in case of
filing date being earlier than March 15, 2012) of the date on which the invention is publicly
known and took advantage from the provision of Article 30, and on the same filing date, a
third person filed a patent application B with the same invention as A, Article 36 paragraph
(2) applies to applications A and B. It means that A and B are related to the same invention
which are filed on the same date, and the applicants of A and B should reach an agreement
on who will obtain a patent for the invention. Moreover, in consideration that B is filed after
the invention is publically known, B is deemed to lack novelty and therefore the applicant
who filed B may not obtain a patent, without applying the provision of Article 36. In this
case, the examiner shall instruct both applicants to report on the results of the consultation
under Article 36 paragraph (6), not to give a notice of refusal and decide the refusal
because B lacks novelty. According to the provision of Article 36, the examiner shall let both
applicants know that only the person agreed upon by all the applicants after consultation
may obtain a patent for the invention. Upon the examiner's instruction for consultation,
where the applicant who filed the application B withdraws the filing, the applicant who filed
the application A may obtain a patent.
(4) When a patent application is filed by a person with the right to obtain a patent and the
application is published in the patent gazette, Article 30 of the Patent Act does not apply to
the invention.
Under the normal procedure of filing a patent, the Commissioner of the Korean Intellectual
Property Office shall lay open a patent application in the patent gazette after the prescribed
date of filing under Article 64 paragraph (1). Where an application is laid open according to
the procedure of filing, the laying open is not the voluntary intention of the applicant. In
this case, therefore, the provision of Article 30 is not applied. However, before an invention
is laid open, the invention may be withdrawn or revoked or finally rejected. After the
procedure of filing has been completed, if the Office mistakenly lays open an invention, the
disclosure of the invention is regarded as the one against the intention of the applicant. In
this case, the applicant may take advantage from the provision of Article 30.
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(5) When an applicant files a patent application claiming priority under the relevant treaty,
to take advantage of the provision of Article 30, the applicant shall file the patent
application in the Republic of Korea, within twelve months (six months in case of filing date
being earlier than March 15, 2012) of the date of acting to which Article 30 apply. However,
with regard to a patent application which contains a priority claim based on a patent
application filed in the Korean Intellectual Property Office, the applicant may take advantage
of the provision of Article 30 if the earlier application is filed within twelve months (six
months in case of filing date being earlier than March 15, 2012) of the date of publication,
even though the subsequent application is not filed within the twelve months (six months in
case of filing date being earlier than March 15, 2012).
(6) The provision of Article 30 paragraph (1) subparagraph (1) is also applied to the
following laying-open actions: (a) when a person with the right to obtain a patent asks to
disclose an invention to a third person and the invention is disclosed by the third person;
and (b) when the third person discloses an invention by referring after obtaining permission
from a person with the right to obtain a patent (implied consent is also approved).
Above mentioned case (a) covers the following cases: (i) when a person with the right to
obtain a patent commits the disclosure of an invention to a third person, including the case
when the name of inventor or the right holder is stated, and (ii) when a person with the
right to obtain a patent sends the press release or script of an invention to a newspaper
and the invention is laid open; in this case, although the name of inventor or the right
holder is not stated, the fact that the person who wrote to the newspaper is the right holder
should be proved.
Moreover, a disclosure when a person refers to an invention of a person with the right to
obtain a patent covers the following cases: (i) when a person, who has not the right to
obtain a patent, clarifies the inventor or company for which the inventor works in paper or
article and refers to the invention, and (ii) when a company for which the inventor works
discloses the invention in printed manner such as catalog.
Meanwhile, when two or more persons jointly make an invention or file an application,
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among presenters who disclosed the invention, at least one person is the same with the
inventor or applicant, the provision of Article 30 may apply to the invention without any
need to prove that the inventor or applicant is the person who disclosed the invention.
However, if there is no relation between the inventor or applicant and the person who
disclosed the invention, the applicant is required to submit the following documents: (i) a
document proving the fact that a person who presents an invention is the person with the
right to obtain a patent (ii) a document proving that an invention is disclosed by a request
from the person with the right to obtain a patent and (iii) a document proving that a person
who presents an invention got permission for referring to the invention from the person
with the right to obtain a patent.
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Chapter 3. Inventive Step
1. Relevant Provisions
Article 29(2) of the Patent Act (Requirements for Patent Registration) Notwithstanding
paragraph (1), if an invention could have been easily made, before the filing of a patent
application, by a person skilled in the art to which the invention pertains based on an
invention or inventions referred to in each subparagraph of paragraph (1), a patent for such
an invention may not be granted.
2. Purport
The purport of Article 29, paragraph (2) of the Patent Act is not to grant a patent to
inventions that could have been easily made by a person skilled in the art, since granting a
patent to such inventions does not contribute to and even hamper the technological
progress. In other words, granting a patent to slightly advanced arts leads to literally giving
exclusive rights to the same prior arts. This runs counter to the purport of the Patent Act,
which gives an inventor exclusive rights in exchange for the publication of a new technology,
and by doing so limits the possibilities of a third party of accessing the technology.
(Reference)
The term "inventive step" is not defined in the Patent Act. However, if an invention could
have been easily made, the invention does not have an inventive step. Otherwise, the
invention has an inventive step under Article 29, paragraph (2) of the Patent Act.
3. Relevant Provisions
3.1 Prior to filing of a patent application
「Prior to filing of a patent application」does not refer to the simple concept of the filing
date, but means the definite time, in hours and minutes at the time of filing. For instance, if
an invention is publically known outside Korea and the point of time when the invention has
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become publically known precedes the filing time of a patent application in Korean local
time, then, this invention is considered as a cited invention under Article 29, paragraph (1)
of the Patent Act.
3.2 A person skilled in the art
"A person skilled in the art to which the invention pertains" (referred to as "a person skilled
in the art" hereinafter) refers to a hypothetical person who has common general knowledge
in the art to which the claimed invention pertains and the ability to use ordinary technical
means for research and development (including experiment, analysis, and manufacture); who
has the ability to exercise ordinary creativity in selecting materials and changing designs;
and who is able to comprehend based on his/her own knowledge all technical matters
regarding the state of the art in the field to which a claimed invention pertains at the time
of filing a patent application. In addition, an expert in the technical field is one able to
comprehend based on his/her own knowledge all technical matters in the technological field
relevant to a problem to be solved by the claimed invention.
"The state of the art" at the time of filing of a patent application includes "an invention(s)
referred to in any of the subparagraphs of Paragraph (1)," the common general knowledge,
and other publicly known technical matters. It also relates to all types of information
relevant to the technical field of the invention described in the claims, including ordinary
methods to conduct daily works and experiments.
3.3 Invention that could have been easily made
「Where an invention could have been easily made by a person skilled in the art based on
an invention(s) referred to in each subparagraph of paragraph (1)」refers to whether a
person skilled in the art could have easily conceived the invention described in the claims by
exercising ordinary creativity or based on motivation induced from the invention(s) that
is(are) publically known prior to the filing of the patent application.
4. General principles of determining the inventive step
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(1) When determining the inventive step, it is decided whether 「an invention described in
the claims」 as filed could have been easily made by a person skilled in the art based on an
invention(s) defined in Article 29 paragraph (1) of the Patent Act (hereinafter refer to as the
「cited invention(s)」), prior to the filing of the patent application. If 「the invention in the
claims」 could have been easily made by a person skilled in the art, alone or by combining
the cited inventions, the invention in the claims is not considered to has an inventive step.
(2) When there are two or more claims in an application, the determination should be made
for each claim.
(3) Notifying applicants of the reasons for refusal regarding novelty is different from
notifying applicants of the reasons for refusal regarding the inventive step. However, when it
is determined that an invention is not novel, it is allowed to notify applicants of the reason
for refusal along with the reasons for refusal regarding the inventive step.
(Reference)
The inventive step of the patent application is based on whether the claimed invention is
novel. Therefore, determination whether the claimed invention is novel compared to
published inventions should be distinct from determination whether the claimed invention
could have been easily made by a person skilled in the art. Therefore, in order to determine
the inventive step of the claimed invention, determination of novelty should come first
(Supreme Court's decision 1992. 6. 2. 91Ma540).
(4) Regarding a claim which contains more than two inventions including a Markush group
type (including the case when multiple claims or elements are selectively recited), if the
examiner notifies the applicant of the reasons for refusal with regard to a certain invention,
the examiner needs to precisely point out the invention along with the reasons for refusal
with regard to novelty and the inventive step.
5. Method of determining the inventive step
The examiner shall make efforts to consider the overall state of the art that a person skilled
in the art would consider at the time of filing an application and, at the same time, shall
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thoroughly consider the purpose, technical structure, and advantageous effects of the
invention while paying attention to the opinion of the applicant, comprehensively
determining whether the claimed invention has an inventive step in consideration of its
specific purpose and effectiveness, and focusing on the difficulty of the technical structure
of the claimed invention.
Determination of the inventive step shall be done in consideration of ③ whether, from the
point of view of one or ordinary skill the art, the claimed invention has any advantageous
effects over a cited prior art while mainly focusing on ① whether the cited prior art provide
any motivation to a person skilled in the art to arrive at the subject matter of the claimed
invention or ② whether the difference between the subject matter of the prior art and that
of the claimed invention can be considered as a mere exercise of ordinary creativity.
5.1 Procedure of determining the inventive step
The procedure of determining the inventive step is as follows.
(1) The examiner specifies an invention for which an applicant requests grant of a patent.
The method of specifying the claimed invention is the same with that of 「determining
novelty」 in Chapter 2.
(2) The examiner specifies cited inventions. The method of specifying the cited inventions is
the same with that of 「determining novelty」in Chapter 2. The examiner shall specify the
cited inventions from the point of view of a person skilled in the art, on the assumption of
the common technical field and technical problems of the claimed invention.
(3) The examiner chooses a cited invention which is the closest to the claimed invention and
makes a clear difference by comparing the cited invention with the claimed invention. In
doing so, the examiner shall take into consideration the structural combination of the
elements of an invention. More specifically, structurally combined elements of an invention
shall be compared as one integrated unit (without being separated) with their
corresponding elements in the cited invention.
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(4) The examiner determines whether an invention described in the claims could have
been easily made by a person skilled in the art, in view of cited inventions or the
common general knowledge before the filing, even though there is a difference
between the claimed invention and the cited inventions
5.2. Selection of the cited invention
(1) A cited invention, which is the object of comparison with a claimed invention in the
determining the inventive step, shall be, in principle, selected from the same technical field
as or from a reasonably relevant technical field to the problem, effect, and use of the
claimed invention. The same technical field shall refer to, in principle, the industrial field
where the invention is applied, but shall also refer to the technical field that can be inferred
from the effects or functions of some (or all) comprising elements of the invention. Even if
the prior art is in a different technical field from the invention described in the claims, the
prior art can be recognized as a cited invention if the prior art might be applied to other
technical fields or used by the applicant in the process of solving a specific technical
problem.
When a claimed invention is compared to the prior art in a different technical field, the
examiner should take into account when citing documents the relevance of two technical
fields, the close similarity of a problem to be solved, and the close similarity of a function,
work or operation.
(Example 1)
The claimed invention relates to a container cap, which can seal or unseal a container for
plant nutrition easily and completely. The cited invention discloses an eruption closure
assembly to be used for liquids of different viscosities. The technical field of the claimed
invention is similar to that of the cited invention since both inventions relates to an
apparatus for sealing or unsealing a liquid container. Hence, the eruption closure assembly
is properly chosen as a cited invention.
(Example 2)
The technical fields of an umbrella and a parasol are not exactly the same, but are
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considered to be proximate to each other since the upper cover can be unfolded with the
supporting pole at its center. Hence, the inventive step of the umbrella can be denied by
citing the parasol as a prior art.
(Example 3)
The claimed invention relates to a method of preventing damages due to harmful insects by
trunk injection, which is a method of injecting medication into a tree and filling a bore after
the injection. Cited invention 1 relates to a method of disposing of a bore in a tree after
trunk injection. Cited invention 2 relates to a method of injecting antibiotic into trees to
eradicate insects through trunk injection. As there are enough grounds to consider that
cited inventions 1 and 2 and the claimed invention are in the same technical field, the
inventive step of claimed invention can be denied due to cited inventions 1 and 2.
(2)「The closest cited invention」means the most relevant cited invention in relation to a
claimed invention among several selected cited inventions that a person skilled in the art
would choose and which discloses most of the technical features of a claimed invention.
Hence, it is desirable to choose the closest cited invention from among inventions that are
in proximate technical field or have the same effect, use, or relate to a technical problem to
be solved that is identical or similar to that of the claimed invention.
(Example 1)
An umbrella can be the closest cited invention in denying the inventive step of a parasol
because improving the portability of a foldable object by making its size smaller when
folded is a common technical problem to be solved in the relevant technical field.
(3) When there is a description in a cited reference whereby the technical idea of the
claimed invention cannot be easily conceived, the cited reference is not eligible as a cited
invention. However, regardless of the description in the cited reference, which is a prima
facie case to determine that the technical idea of the claimed invention cannot be easily
conceived, the eligibility of a cited invention shall be maintained if it is possible to arrive at
the technical idea of the claimed invention from other aspects such as a close relation
between technical fields, a close similarity of a function, work, or operation, etc.
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(Example 1)
The claimed invention relates to a probe card and is in the same technical field with cited
invention 1 which comprises all technical features of the claimed invention except that the
cited invention does not disclose a means to control the overall flatness. However, there is
no description in the cited invention 1 to preclude the adoption of such a means to control
the overall flatness, nor it is technically difficult to introduce such a means considering its
technical structure. Hence, the inventive step of the claimed invention can be denied by
combining the technical features of cited invention 1 and a means of controlling the
orientation of a substrate disclosed in cited invention 2 (which is in the same technical field
as the claimed invention).
(4) If the applicant admits in the specification that a technology presented as prior art is
publicly known prior to the filing of the application, the technology may be properly
selected as a cited invention at the time of filing, in determining the inventive step of a
claimed invention.
(5) Even though the prior art constitutes an incomplete invention, it can be cited in
determining the inventive step
(Example 1)
The claimed invention relates to a pharmaceutical compound to treat neuro-degenerative
disorders by using an estrogen compound alone. A person skilled in the art can easily
recognize from the cited invention that sexual hormones such as estrogen are effective for
curing neuro-derogative disorders. And if this fact is not contrary to the technical common
sense at the time of filing the application, the cited invention can be used as a prior art to
determine the inventive step even if some defects exist in the description of the cited
invention due to insufficiently disclosed pharmaceutical effects and real experiments.
6. Concrete method of determining Inventive step
6.1 Probable cause or motivation
The following cases can be strong grounds for determining that a person skilled in the art
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would have been led to the claimed invention based on the cited invention; suggestions
shown in the disclosures of the cited inventions, close similarity of a problem to be solved,
close similarity of a function, work, or operation, close relevance of technical fields.
6.1.1 Suggestions shown in the disclosures of the cited inventions
Suggestions shown in the disclosures of the cited inventions relevant to a claimed invention
can be strong grounds for determining that a person skilled in the art would have been led
to the claimed invention.
(Example 1)
The claimed invention discloses a technical method of establishing a condenser, a motor,
and a compressor in an airtight cooling apparatus. The cited invention discloses a method
of setting up the relevant structure of a cooling compressor in an airtight cooling apparatus.
The cited invention differs from the claimed invention only in that the cited invention does
not specifically mention a heat exchanger built in the airtight cooling apparatus of the
claimed invention. If the cited invention implicitly suggests the heat exchanger built in the
airtight cooling apparatus, which is a relevant component of the cooling apparatus, the
technical feature of claimed invention is merely a matter of design option when the general
technical knowledge in the relevant field of the art is applied.
6.1.2 Close similarity of a problem to be solved
(1) A close similarity of a problem to be solved can be a strong ground for determining that
a person skilled in the art would have been led to the claimed invention by applying or
combining cited inventions.
If the technical problems to be solved described in the claimed invention and cited
invention are not in the same technical field, the examiner decides whether the technical
problem of the claimed invention is obvious in the relevant field of the art or easily
deducible in light of technical common sense and whether that reasoning can be used as a
ground for denying the inventive step by scrutinizing the technical problem.
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(Example 1)
The claimed invention discloses an animal-shaped winter cap which creates a unique fashion
style and offers protection against cold by covering not only one's head and ears but also
the areas around the neck, cheeks, and lips. Cited invention 1 relates to an animal-shaped
winter cap, and cited invention 2 is directed to a mask hood to protect one's face by
covering all parts of 'the face except for the eyes in the event of extremely cold weather. In
this case, the technical fields of the cited inventions are identical or proximate to that of the
claimed invention. Moreover, problems to be solved by the claimed invention and its
solutions seem to be suggested in each of the cited inventions. Hence, there seem to be no
difficulty in combining the cited inventions, and therefore the claimed invention would have
been readily derived from the cited inventions by a person skilled in the art.
(Example 2)
The claimed invention is directed to a snap action diaphragm to adjust snap-action of a
diaphragm by controlling the degree of a slope of an outer circumference of the diaphragm
by applying power on it. The cited invention relates to a thermo-start which is activated in
accordance with a temperature change. The technical problems of both claimed and cited
inventions correspond to each other in that both inventions disclose a method to control
the snap-action of a diaphragm. However, the two inventions differ from each other in that
the diaphragm of the claimed invention is activated according to pressure changes, while
that of the cited invention is set in motion in accordance with temperature changes.
Nonetheless, the inventive step of the claimed invention would be denied if the difference
does not have any significant influence over the gist of claimed invention and a person
skilled in the art can easily apply a thermally actuated method to the pressure actuated
diaphragm without exercising any creative thinking.
(2) Even in the case of a cited invention with a different problem compared to a claimed
invention, if it is obvious that a person skilled in the art can easily arrive at a the claimed
invention through a mere exercise of ordinary creativity, the inventive step of the claimed
invention can be denied.
(Example 1)
The claimed invention relates to a carbon disc brake with grooves designed to prevent the
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attachment of water drops on its surface. Cited invention 1 discloses a carbon disc brake,
and cited invention 2 shows a metal disk brake with grooves designed to remove dusts
from its surface. These technical problems are not exactly the same, but a person skilled in
the art would readily arrive at the carbon disk brake with grooves by simply combining the
technical feature of cited invention 2 with the carbon disk brake of cited invention 1 without
exercising any creative thinking, thereby the inventive step of the claimed invention can be
denied.
6.1.3 Close similarity of a function, work, or operation
If a close similarity in a function, work, or operation exists between a claimed invention and
a cited invention or between cited inventions, there can be a well-founded ground that a
person skilled in the art would have arrived at the claimed invention.
(Example 1)
The claimed invention discloses a filtering apparatus for home use, with a specially
structured filtering part. The cited invention relates to a home filtering apparatus, which is
exactly the same as in the disclosure of the claimed invention except for the structure of the
filtering part. Cited invention 2 is directed to a filtering apparatus for an automobile, with
the same structured filtering part as that of the claimed invention. The filtering apparatuses
described in cited inventions 1 and 2 are identical to that of the claimed invention with
respect to their functions and operations. Considering that the claimed invention is not in a
different technical field from the cited inventions in terms of the generally required technical
problems, applying the filtering part described in cited invention 2 to the filtering apparatus
in cited invention 1 is deemed to be obvious to a person skilled in the art.
6.1.4 Close relation of technical fields
A publically known technical means for solving the technical problem of the claimed
invention in a related technical field can be a strong ground for considering that a person
skilled in the art could have achieved the claimed invention.
(Example 1)
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If a cited invention discloses gloves with a similar structure to claimed socks, as gloves and
socks belong to similar technical fields and they are related to each other, a person skilled
in the art could easily apply the composition of socks to gloves.
6.2 Mere exercise of ordinary creativity of a person skilled in the art
A common improvement based on general applications of a known art, reasoning based on
known physical properties, or referring to other technical filed to solve a known problem fall
into the category of ordinary creativity of a person skilled in the art. Among exercises of
ordinary creativity of a person skilled in the art are selecting an optimal material from
publicly known materials in order to achieve a specific object, optimizing a numerical value
range, replacing with equivalents, a workshop modification of a design in applying a specific
technology, partially removing technical features and simply changing the use. When the
differences between the claimed invention and the cited invention under comparison falls
only under these categories, it is usually considered that a person skilled in the art could
easily arrived at the claimed invention, unless there is another ground for assessing the
inventive step.
6.2.1 Replacement with Equivalents
An invention consisting of a substitution in a known device of a feature with a known
feature which has the same function as the substituted feature and is an equivalent thereof
is not considered as having an inventive step if it fails to exhibit an unexpected advantage.
In order to acknowledge the replacement with equivalents as a mere exercise of ordinary
creativity of a person skilled in the art, it should be justified that the replacement is obvious
to a person skilled in the art at the filing of the application in addition to the fact that the
substituted known feature functions as an equivalent. The examiner is allowed to submit
evidence that the substituted feature had been known as an equivalent before the filing
date of the concerned application in the same technical field.
(Example 1)
In comparison with the prior art, an invention claiming a heat exchanger is characterized by
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substitution of Sic with Aluminum which has an equivalent property. In this case, the
inventive step of the invention is negated if it had been known before the time of filing the
application that Sic and Aluminum are equivalents in providing a light and anti-corrodible
heat exchanger.
(Example 2)
An invention discloses use of magnesium carbonate to promote crystal formation by
quickening a reaction, instead of use of magnesium oxide as in the prior art. However, if it
had been known that magnesium carbonate changes into magnesium oxide when the
reaction temperature rises over 1,300°C, the substitution of magnesium carbonate for
magnesium oxide is only considered as a replacement with equivalents, thereby nullifying
the inventive step of the invention.
(Example 3)
An invention relates to a drill comprising a hydraulic motor, and the prior art relates to a
drill comprising an electric motor. At the time of filing the application, the exchangeable use
of a hydraulic motor and an electric motor had been very well-known so that a person
skilled in the art can hardly expect an unforeseen advantage. In this case, the inventive step
of the invention can be negated.
6.2.2 Workshop modification of a design in applying a specific technology
When an invention can be merely arrived at by applying normal design procedures without
affecting the technical concept of the prior art, and is neither described as having nor
shown to lead to any advantageous effects, the inventive step of the invention cannot be
acknowledged.
For example, if the difference between the claimed invention and the cited prior art is only
caused by the application of particular parameters such as size, proportion, relative
dimensions, and amount from a limited range of possibilities, the inventive step cannot be
acknowledged. But if the difference can lead to any particular change in any functions or
reactions with an unexpected advantage, the invention can be determined as having an
inventive step.
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(Example 1)
The claimed invention is provided to prevent the movement of a door of a microwave when
a user tries to open or close the door, by installing movement prevention protrusions on the
upper and lower sides of the door to engage with insertion grooves, which is different from
the prior art in the physical structure, size, numbers, and positions of the protrusions and
insertion grooves. The difference in the configuration can be obtained by a normal design
procedure to adopt insertion members and engagement members. Hence, the inventive
step can be negated.
(Example 2)
Compared with a microcomputer for a Kimchi refrigerator of the prior art, a control circuit
for an electric massager of a claimed invention is only different in the resistance information
and operation type of an electric motor which are adjusted for the electric massager. In
terms of the design technology of the microcomputer at the filing time of the application,
such a difference could be arrived at applying a normal design procedure. Hence, the
inventive step is negated.
(Example 3)
The claimed invention is related to a level gage cover for a water tank wrapped by heat
insulation. The prior art relates to a door with a sealing material on its inner surface. At the
first sight, the claimed invention is likely to be arrived at by simply replacing the sealing
material of the prior art with heat insulation. But adoption of heat insulation for a level gage
would prevent the gage cover from freezing and cracking in case of a sudden temperature
drop. In this case, the examiner has to carefully consider the effects following the design
procedure in assessing the inventive step.
6.2.3 Partial removal of technical features
The claimed invention is not considered as having an inventive step, if, with regard to the
state of the art, the omission of some technical features readily mentioned in the prior art
causes removal of the related function and effect, and is obvious to a person skilled in the
art. But regarding the common knowledge at the time of filing, the inventive step can be
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acknowledged when the omission of some features does not affect the function of the
invention or rather enhances the function.
(Example 1)
The prior art is a toothpaste containing water-soluble silicate, wherein the silicate forms a
teeth surface membrane having the effect of protecting sensitive teeth from a stimulus,
whereas the claimed invention does not contain said water-soluble silicate to lower the
manufacturing costs. At this time, the effect of silicate for coating the surface of teeth and
preventing them from stimulus is also removed. For this matter, the claimed invention is not
considered to be inventive.
6.2.4 Simple change and limitation of use of the invention
A claimed invention consisting merely of use of a known invention or in a further simple
restriction of such use is not considered inventive. In other words, the claimed invention
which is distinguished from the prior art only in a modification of its use or further
extension of its use without exhibiting any advantage is not considered inventive.
(Example 1)
A synthetic oil which delays the change of lubricating properties is disclosed in the prior art,
whereas the claimed invention discloses reuse of synthetic oil as cutting oil during a cutting
process. In this case, if recycling of the synthetic oil as cutting oil is naturally expected from
a delayed change of the lubricating properties, the inventive step is negated.
6.2.5 General application of known art
The claimed invention consists merely of use of a known technique in a closely analogous
situation in order to solve a problem posed by the prior art with readily anticipated effect,
which is not inventive. On the other hand, the claimed invention may be considered
inventive when the application of the known technique leads to unexpected beneficial
effects in combination with other components in comparison with the prior art.
(Example 1)
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The claimed invention is characterized in transforming conventional
Woowhangchungshimwon into liquid type for administration. The inventive step can be
negated if such a transformation in the administration type from a solid pill type to a liquid
form for oriental medications is within common practice.
(Example 2)
The claimed invention relates to formation of a leak detecting hole in a pipe connecting
joint, which is considered not inventive since the technical feature of making a penetrating
hole in the outer surface to observe the inner space of an article is commonly practiced
without exercising any ingenuity.
(Example 3)
The claimed invention relates to a tray for storing components of a ball grid array
integrated circuit, which is not considered inventive if the pin type component for integrated
circuit has already begun to be replaced with a ball grid type component at the filing time
of the application, since a person skilled in the art would adopt without any special difficulty
the ball grid type tray which is prevalent at the filing time of the invention.
6.3 Advantageous effects to be considered
(1) If an effect derived from matters defining a claimed invention is advantageous in
comparison with an effect of a cited invention, it is taken into consideration as a fact to
affirmatively support its inventive step.
(Reference 1)
Under Article 29, paragraph (2) of the Patent Act, if a claimed invention could have been
easily made from the prior art before the filing of a patent application by a person skilled in
the art, a patent for such an invention may not be granted. However, when an
advantageous effect compared to the cited invention is so remarkable that it could not have
been foreseen by a person skilled in the art from the state of the art, there may be cases
where the inventive step is not denied (Supreme Court's Decision, 1997. 9. 26. 96 Hu 825).
(Reference 2)
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If a claimed invention is made by collecting and improving commonly known and commonly
used arts, the claimed invention is not considered to be inventive except the case where it is
difficult to colligate the arts and achieve a new advantageous effect more than that
expected from the prior arts, thereby the cited invention could not have been easily made
by a person skilled from the prior art, and the case where a new technical method is added
to the claimed invention (Supreme Court's Decision 1997. 5. 30. 96 Hu 221 sentence).
(2) Even if the claimed invention is considered to be easily made by combining cited
inventions at the first glance, if the claimed invention has an advantageous effect,
qualitatively different or qualitatively the same but quantitatively prominent in comparison
with those of the cited inventions, and if the advantageous effect could not have been
foreseen by a person skilled in the art from the state of the art, the inventive step can be
acknowledged.
Particularly, in the case of an invention in a technical field in which an effect of a product is
difficult to predict from its structure like a selection invention and chemical inventions, the
advantageous effect compared to the cited invention is an important factor to positively
infer the inventive step.
(Reference)
The inventive step of a composition of dyes comprising more than two chemical
compounds mixed in a certain ratio should be determined over the case when each of the
chemical compounds solves the problem. Even though individual elements of the chemical
compounds belong to different categories, the claimed invention has an inventive step if
mixing the chemical compounds in a certain ratio leads to unexpected results (Supreme
Court's Decision 1994. 4. 15. 90 Hu 1567).
(3) Though the advantageous effect of the claimed invention is superior to that of the prior
art and is not explicitly disclosed in the detailed description, the examiner can assess the
inventive step from the inventor's assertion and evidence like experiment results, if the effect
is easily recognized by a person skilled in the art from the detailed description and the
structure of the invention shown in the drawings. But if such an assertion is not supported
by the detailed description and is not inferred from the description or drawings, the effect
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from the assertion should not be considered in assessing the inventive step.
(Example 1)
The claimed invention relates to a blood-cupping device characterized by a half-open barrel
extendably installed on the lower part of an operation stick, which is aimed at easily
checking the movable rubber plate inserted in the barrel and facilitating the airflow through
the half-open barrel while removing of the main cup body. In this case, if the effects of the
half-open barrel are remarkably ensured from the description and common knowledge by a
person skilled in the art, the claimed invention can be considered inventive.
6.4 Determining the Inventive Step According to the Invention Type
6.4.1 Determining the Inventive Step of a Selection Invention
A selection invention is an invention with a more specific concept selected from a generic
concept disclose in a cited invention, which includes a composition which is not directly
disclosed in the cited invention as an indispensible part.
If in a claimed invention, an optimized concept is experimentally selected from publicly
known technology, the inventive step of the claimed invention cannot be acknowledged
because selecting the best or suitable concept from publicly known technology comes
within the scope of an exercise of ordinary creativity of a person skilled in the art. However,
if a selection invention generates advantageous effect in comparison with a cited invention,
the inventive step of the selection invention can be acknowledged. In this case, all specific
concepts included in the selection invention should have advantageous effects qualitatively
different or qualitatively the same but quantitatively prominent. The detail description of the
selection invention should precisely explain that the invention generates an advantageous
effect in comparison with the cited invention, and needs not provide experimental materials
to confirm the prominence of the effect. If the invention is rejected because of the effect is
doubted, the applicant can assert the effect concretely by submitting materials relating to
experimental comparisons.
(Example 1)
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Both a claimed invention and a cited invention relate to a chemical compound for
protecting a nerve, which is used for curing a regressive disease of the central nervous
system. If a chemical compound is selected in the claimed invention selects with a more
specific concept which is not directly disclosed in the cited invention, and the oral activity of
the claimed invention generates ten times more advantageous effects than the cited
invention, the inventive step of the claimed invention can be acknowledged.
6.4.2 Determining the Inventive Step of an Invention including Numerical Limitations
An invention with numerical limitation defines that some parts of indispensible elements of
the invention described in the claims are expressed by specific numerical values.
Experimentally selecting an optimal numerical range from the publicly known art is normally
considered as an exercise of ordinary creativity of a person skilled in the art, and hence the
inventive step is generally denied. However, a claimed invention has an inventive step if
within a limited numerical range has more advantageous effect than the effect of the cited
invention. This advantageous effect should be a remarkably improved effect regarding the
overall scope of the numerical limitation. Also, determining the significance of the critical
range of the numerical limitation comes under the following criteria.
(1) The significance of the critical range of a numerical limitation is required with regard to
any part of the numerical range if a claimed invention is a continuation of the cited
invention.
(2) If the two inventions each have different problems to be solved and qualitatively
different effects, the significance of the critical range of the numerical limitation is not
required even though the two inventions have the same matters defining the inventions
except for the numerical limitation.
For the significance of the critical range of the numerical limitation to be acknowledged, a
remarkable change in an invention effect is required across the boundary of the numerical
limitation and also the following conditions should be satisfied: 1) the technical meaning of
the numerical limitation should be described in detail, and 2) embodiments in the detail
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description or supplemental materials should prove that the range of the numerical
limitation is critical. Generally, it should be objectively confirmed that the range is critical
with experimental results which cover all range of the numerical limitation.
(Example 1)
The claimed invention discloses a numerical limitation in that the spiral, comprising that one
rotation of a screw limits to the tube length which is 12 times longer than the inner
diameter. However, since there is no technical explanation of limiting 12 times longer than
the inner diameter in the description, it only means that the spiral of a screw is merely not
too much gentle and there are no special effects. Therefore, the numerical limitation of the
claimed invention is considered to be technically meaningless.
(Example 2)
The claimed invention relates to a ceramic backside material for arc welding to make back
bead shape better. The technical difference of the claimed invention is a backside material
comprising 0.01 - 0.7% iron-oxide. If this numerical value is merely a numerical limitation
that a person skilled in the art can reach by an exercise of ordinary creativity and there is no
heterogeneous remarkable effect within the range of this numerical limitation, the claimed
invention is not considered to have an inventive step.
(Example 3)
Even though the manufacturing ingredients or process of the claimed invention is similar in
some part or identical to those of the cited inventions, if the claimed invention is different
from the cited inventions in view of its characteristics such as additives in processing or a
ratio of manufacturing ingredients and thus the quality and economic efficiency of the
complete goods are greatly improved, the claimed invention is considered to have an
inventive step (Supreme Court's Decision, 1992. 5. 12. 91 Hu 1298).
(Reference)
If a claimed invention defines the range of technical elements of a known cited invention
with numerical values, no other technical elements to prove an inventive step are added,
and the numerical limitation is merely a supplemental material, and if there is no remarkable
effect within the range of the numerical limitation, the claimed invention is merely a
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numerical limitation within the scope of the common practice of a person skilled in the art.
In other words, if the claimed invention and the cited invention have the same problems to
be solved and are different only in the limited numerical values, and if there is no mention
in the description about remarkable effects in employing the limited numerical values, it is
difficult to admit there is a remarkable effect within the range of the limited numerical
values.
6.4.3 Determining the Inventive Step of a Parameter Invention
(1) A parameter invention is an invention in which an applicant creates a certain parameter
which is not standard nor commonly used for a characteristic value in physics or chemistry,
parameterizes it mathematically by using a correlation between a plurality of parameters,
and employs it as a part of essential elements of the invention. Since the parameter
invention may not precisely define the subject matter via the claim description, determining
the inventive step of the parameter invention should be performed only after figuring out
the subject matter based on the detailed description, drawings, and common knowledge.
(2) As the functions and characteristics described in the claim define the subject matter of
an invention, the examiner should not compare the claimed invention with the cited
invention without considering the functions and characteristics. In case of a parameter
invention, the inventive step should be determined by taking into account the functions or
characteristics caused by a parameter. For determining the inventive step of a parameter
invention, it should be firstly considered whether a technical meaning exists in introducing a
parameter. If the parameter described in claims is merely a matter of expression form
different from a publicly known invention or a matter of confirming the intrinsic features of
a publicly known invention, and if the cause and effect relationship between the parameter
and the advantageous effect is weak, the inventive step of the parameter invention is denied.
However, if the parameter invention is a type of an invention with a numerical limitation, the
determination criteria of the inventive step of a numerical limitation invention can be
applied. In this case, even without the technical meaning of the parameter, as long as an
effect of the claimed invention caused by the numerical limitation is considered remarkable,
the inventive step of the parameter can be acknowledged.
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(3) Although it is difficult to figure out or convert a certain parameter in a claim, and
therefore, it is hard to compare the claimed invention with the cited invention, if there is a
reasonable doubt that the parameter invention can be easily derived from the cited
invention, the examiner can notify the applicant of the reasons for refusal due to the
inventive step without having to strictly compare the claimed invention with the cited
invention and wait for the applicant's proof statement. If the examiner has difficulty in
maintaining the reasons for refusal due to the applicant's refutation, the reasons for refusal
are cancelled. If the reasons for refusal are not overcome by the applicant's argument, the
examiner may make a decision of refusal under Article 29, paragraph (2).
(4) The examiner might have reasonable doubt in the following cases: ① the parameter
described in the claims is obtained from a different definition and measurement method,
and then the claimed invention is found to be easily derived from the cited invention. ② the
examiner evaluates the parameter of the cited invention according to the measurement
method in the description, and then the claimed invention is proved to be similar to the
cited invention. ③ an embodiment in the description of the claimed invention is similar or
identical to that of the cited invention.
(5) It the examiner notifies the applicant of the reasons for refusal with regard to a
parameter invention, the examiner has to concretely describe the grounds of reasonable
doubt, and if necessary, the examiner can propose a solution to overcome the refusal
grounds.
(6) If the parameter of the claimed invention is standard, commonly used or proved to be
easily understandable by a person skilled in the art, the examination criteria described in (1)-
(5) are not applied.
(Reference)
In comparing the claimed invention having certain properties or characteristics with the
cited invention having different properties or characteristics, if the claimed invention
becomes similar or identical to the cited invention as a result of converting the properties or
characteristics of the claimed invention with different definitions and measurement methods,
or if an embodiment of the claimed invention in the description is similar or identical to one
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of the cited invention, the claimed invention is not considered to be novel and have an
inventive step because the two inventions should be considered to be similar or identical to
each other (Supreme Court's Decision 2002. 6.28 2001 Hu 2658)
6.4.4 Determining the Inventive Step of a Product Invention described by its
manufacturing process
As an applicant should specifically describe the article composition of the invention when
defining a product invention, even though a manufacturing method is described in the
claims of the product invention, without any exception, the examiner can determine the
inventive step of the product invention by comparing the product itself defined by the
description with a publicly known invention without considering the manufacturing method.
In determining the novelty and inventive step, since the object to be protected is not the
manufacturing method but the product itself in the product invention described by its
manufacturing method, the examiner shall compare the composition of the product itself
with the composition of the publicly known product. The examiner does not have to take
into account the manufacturing method or manufacturing apparatus for the product. In this
case, the object of determination is a product characterized by certain properties, features,
and composition based on the method description.
(Example 1)
The claimed invention is about a belt coupling apparatus for a seat belt and is described in
the claims with a manufacturing method, comprising the steps of: bending a part of a plate
from one lateral side to other lateral side and concurrently putting the bent part back to the
first lateral side. In this case, as there is no difficulty in characterizing the seat belt via its
composition, the examiner can determine the inventive step by comparing the seat belt
defined by the manufacturing method with the cited invention, without considering the
manufacturing method.
(Example 2)
The claimed invention relates to a method of producing cannaf tea, and it is described in
the claims that the available components are the cannaf leaves whose inorganic content is
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increased by heating (60 C, 45min.) and infrared radiation (1.6 kw, 30-45 min.). In this case, if
it is proved, based on the description of the specification, that the inorganic content of the
cannaf leaves produced by the described method is remarkably increased, the inventive step
of the cannaf tea produced by the described method is acknowledged because of the
change of the tea properties.
7. Determination of the inventive step of a combination invention
(1) A combination invention is an invention comprising novel solutions by gathering
technical features disclosed in the prior art as a whole in order to solve a technical problem.
The invention described in a claim is to be considered as a whole. Accordingly, the inventive
step of the combination invention shall not be negated merely because each element
described in a claim is deemed to be known from or obvious over the cited inventions.
That is, in the case of a claim disclosing a plurality of elements, determining the inventive
step relies not upon each independent element, but upon the technical idea of the claimed
invention, the respective elements of which are structurally combined as a whole. Therefore,
when determining the inventive step is, the examiner shall consider the difficulty in forming
structurally combined elements as a whole based on the principle of a problem solution,
rather than consider whether individually dissected elements in the claim are publicly known.
In addition, the examiner shall consider the unique effect that the invention has as a whole.
(2) Determining the inventive step of the combination invention can be made by combining
more than two disclosures (well-known or commonly used art) but the combination of the
disclosures is limited to the condition where a person skilled in the art can easily combine
the disclosures at the time of filing. In this case, there is no special limit on the number of
prior art disclosures to be combined. When the examiner determines the inventive step by
combining various prior arts, the examiner mainly considers whether the cited inventions
contain a motivation or hint leading to the claimed invention by combining or assembling
the prior art disclosures. Nevertheless, taken into account the state of the art, the common
general knowledge at the time of filing, the general technical problems of the technical field,
the technical trend and demands in the industry, if the combination of prior art disclosure is
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deemed to be easily made by a person skilled in the art, the examiner can deny the
inventive step of the claimed invention (Supreme Court's Decision 2007. 9. 6. 2005 Hu 3284).
(Reference)
Well-known art means technologies generally known in the relevant technical field like
technologies widely known throughout the industry, technologies that appeared in many
prior art disclosures, or technologies well known to the extent to present examples.
Commonly-used art means well-known art which is used widely.
(Example 1)
The claimed invention relates to a web game server enabling users to download a game via
the Web. The technical feature of the claimed invention differs from that of the cited
invention only in that a game program and game data are separately downloaded in the
claimed invention. In this case, if the technical difference in the game program and game
data separately downloaded is deemed to have been merely a well-known art in view of the
state of the art at the time of filing, the inventive step of the claimed invention is not
acknowledged, as a person skilled in the art could have simply combined it with the cited
invention without any difficulty.
(Example 2)
The claimed invention relates to a method of counting securities by extracting serial
numbers via an image sensor. Compared to the cited inventions, the claimed invention
differs from cited invention 1 only in that the cited invention 1 recognizes security
denominations via an optical sensor, and cited invention 2 comprises the step of sorting
currency notes via an image sensor. Considering the state of the art at the time of filing and
the fact that the prior art disclosures fall under the same technical field, the difference
between the invention sought to be patented and the prior art would have been obtained
by substituting the image sensor of the cited invention 2 for the optical sensor of the cited
invention 1 without difficulty. Therefore, it would have been obvious to a person skilled in
the art to combine the cited inventions 1 and 2, thereby arriving at the claimed invention.
(3) The determination whether a prior art disclosure contains a motivation, hint, or the like
for a combination shall be made by synthetically assessing the following: whether the
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motivation, hint, or the like is explicitly taught in the prior art; whether the motivation, hint,
or the like is inherent from the technical problem to be solved by the invention; or whether
the motivation, hint, or the like is part of the common general knowledge or empirical rules
of a person skilled in the art.
(Example 1)
Cited invention 1 discloses a protective cover of a baby carriage comprising a transparent
window made of a flexible plastic material, while the claimed invention describes a
protective cover with a transparent window whose material is changed to a rigid plastic
material disclosed in cited invention 2 in order to protect the eyesight of an infant. In this
case, if a public TV program reported that a flexible plastic material used for the transparent
window of a baby carriage damaged the eyesight of an infant prior to the priority date and
if the fact that a rigid plastic material did not result in such a problem fell under the
common general knowledge of the art to which the invention pertains, a person skilled in
the art could have changed the material of the transparent window disclosed in the cited
invention 1 to the rigid plastic material of the cited invention 2 without any difficulty.
Therefore, the claimed invention would have been obvious to a person skilled in the art.
(4) In general, as a prior art disclosure referring to another disclosure can be considered to
explicitly suggest a hint or motivation of a combination in the prior art disclosure, it is
regarded as obvious to combine the two disclosures and the inventive step is therefore
negated. Also, combining a plurality of technical features in the same disclosure is
considered obvious, for a person skilled in the art would have combined the technical
features without difficulty.
It is normally considered to be obvious to combine a well-known technology with another
prior art disclosure. However, if a technical feature to be combined is a well-known
technology in the art, but a combination with another technical feature results in an
advantageous effect, the combination is not regarded as obvious.
(Example 1)
If cited invention 1 discloses all elements except for a leading portion of the claimed
invention, and the leading portion of the claimed invention is substantially the same as the
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guide member of cited invention 2 referred to in cited invention 1, it would have been
obvious to combine the cited invention 2 with the cited invention 1, thereby arriving at the
claimed invention because the combination of the cited inventions 1 and 2 can be
considered as being already implied.
(5) In general, if a combination invention achieves an effect by functional interaction
between technical features, which is different from or greater than the sum of the effects of
the individual technical features, e.g., a combined synergistic effect, the inventive step may
be acknowledged since a set of technical features is considered to be a technically
meaningful combination. If a combination invention described in a claim is regarded not as
a meaningful combination, but merely as a juxtaposition (array) or aggregation (simple
collection) of features, the inventive step of the combination invention may be denied by
proving that the individual features are obvious insofar as there are no other grounds
supporting the inventive step.
(Example 1)
The claimed invention is similar to the cited invention 1 except for a servo motor modified
from a hydraulic actuator of cited invention 1 and a bending means described in cited
invention 2 and substituted for the spindle of cited invention 1. In this case, if the
modification or substitution of the elements does not lead to structural difficulties and the
functional effect of new elements is not regarded as greater than the summed effects of the
cited invention 1 and the cited invention 2, the claimed invention falls within an aggregation,
and is therefore denied inventive step.
(Example 2)
The claimed invention corresponds to an aggregation of an ordinary injection molding
machine disclosed in cited invention 1, a vacuum chamber disclosed in cited invention 2,
and a mold fastening system disclosed in cited invention 3, wherein the vacuum chamber
enables injection molding to be performed in vacuum and the mold fastening system
facilitates work convenience. In this case, if the combination of the elements does not lead
to particular difficulties, nor does the functional effect result in any remarkable difference,
the aggregation is considered to be obvious to a person skilled in the art, thereby arriving
at the claimed invention.
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(6) In determining the inventive step of a combination invention, care must be taken as the
fact that one or more cited inventions must be combined with the closest cited invention in
order to arrive at the claimed invention may indicate the presence of an inventive step. Also,
it should be noted that the higher number of combined cited inventions, the more likely is
that the claimed invention results from an ex post facto view or lacks a valid reason for
rejection. When determining whether it would have been obvious to combine two or more
other prior arts, the examiner should take into consideration of the followings: ① whether
there is good possibility to combine them, ② whether the prior arts come from similar or
neighboring technical fields, and ③ whether there is a reasonable basis to associate each
other for the combination.
8. Other factors to be taken into account in determining obviousness
In principle, the determination of the inventive step is to consider synthetically the objective,
technical constitution, and functional effect of an invention described in a claim, i.e., to
determine the uniqueness of the objective and the remarkableness of the effect as a whole,
mainly based on the difficulty of technical structure. However, there might be other factors
in determining the inventive step. Thus, the examiner should not readily reach the
conclusion that the claimed invention lacks an inventive step if a written opinion submitted
by an applicant claims that the claimed invention is not obvious for the following reasons:
(1) If a prior art document teaches not referring to the prior art thereof, i.e., if there is a
description in the prior art document that precludes the reasoning that a person skilled in
the art would easily arrive at the claimed invention, the inventive step is not denied by the
prior art despite the similarity between the prior art and the claimed invention. In addition,
the fact that the prior art in a prior art document is described as inferior cannot be
necessarily considered as a factor that precludes the inventive step.
(2) Commercial success or favorable comments from the industry or the fact that the
claimed invention had not been implemented by anybody for a long time before the
claimed invention was filed may be regarded as indicative of the inventive step as secondary
evidence. However, those facts alone are not to be regarded as indicative of the inventive
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step. First of all, as the inventive step should be determined based on the contents
disclosed in the specification (i.e., the objective, structure, and effect of the invention),
commercial success is not to be regarded as a reference for the determination of the
inventive step, provided that such success does not derive from the technical features of the
invention but from other factors (e.g., improvement in sales techniques or advertising).
(Example 1)
Although a mobile video pop song accompaniment of the claimed invention made a hit in
Japan with a signed two-year export contract worth $84,000,000, this cannot prove that the
success is based only on the superiority of a technical structure of the claimed invention. In
addition, if the success is determined as deriving from the sales techniques of a salesperson,
evidence of the commercial success alone is not to be regarded as a factor in guaranteeing
the inventive step.
(Example 2)
The claimed invention is related to a method of fixing metal accessories on a handrail,
wherein a welding hole and a curved surface each have a size appropriate for welding so
that internal welding can be performed. If the claimed invention had a better functional
effect than a connection apparatus of a handrail pillar of prior external welding but the
claimed invention had not been implemented before filing, then it would be regarded as
non-obvious for a person skilled in the art to arrive at the claimed invention.
(Reference)
Given that the claimed device has a distinguished functional effect but has not been
implemented before filing, it is deemed to be highly non-obvious to a person skilled in the
art to devise the claimed device of this case (Precedent Case 99 Hu 1140).
(3) The fact that a claimed invention solves a technical problem that a person skilled in the
art has attempted to solve for a long time or fulfills a long-felt need may regarded as an
indication of the inventive step. In addition, such a solution of a technical problem or a
need should be fulfilled by the claimed invention for the first time as a matter that has been
recognized by a person skilled in the art for a long time. To accept this as an indication of
inventive step, objective evidence is required.
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(4) If an invention is made by employing technical means which a person skilled in the art
has abandoned due to technical prejudice interfering with the research and development of
a technical problem in the relevant field of the art, thereby solving the technical problem,
this is regarded as an indicators of the inventive step.
(5) If a claimed invention proposes means for overcoming technical difficulties not
resolvable by other means or for solving a technical problem, this is regarded as
advantageous evidence for an inventive step.
(6) If a claimed invention falls within the area of a brand-new technology and has no prior
art relevant to the invention, or if the closest prior art to the invention is far away from the
invention, the inventive step is likely to be acknowledged.
9. Notes on determination as to whether the claimed invention has an
inventive step
(1) When determining the inventive step in the light of knowledge obtained from the
matters disclosed in the specification of a patent application, which are the subject of
examination, it should be noted that the examiner can rapidly conclude that it would have
been obvious for a person skilled in the art to arrive at the invention described in the claims
without difficulty.
(Example 1)
If the claimed invention is related to a terminal for use in an emergency situation,
comprising a tapping mode blocking a voice signal reception of a receiving unit and only
allowing a voice emission of a transmitting unit and if the cited invention merely discloses
'preventing others from noticing a voice reception from a terminal', the specific technical
structure of the claimed invention is not obvious to a person skilled in the art. Therefore,
the assessment that the claimed invention would have been obviously derivable from the
description of the cited invention above results from an ex post facto analysis on the basis
that the examiner knows the contents disclosed in the specification.
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(2) If an independent claim has an inventive step, a claim dependent on the independent
claim is deemed to have an inventive step too. However, if an independent claim does not
have an inventive step, the determination should be made for each claim dependent on the
independent claim.
(3) If a product invention explicitly has an inventive step, a process invention for making the
product or a use invention for using the product has also an inventive step in principle.
(4) For a claim described in a Markush form or comprising multiple selective technical
features, if at least one invention of the Markush alternatives is proved not to have an
inventive step based on the prior art, the applicant can be notified of the reason for refusal
for the claim. In this case, the applicant can overcome the reasons for refusal by deleting
the Markush alternatives which do not have an inventive step. On the other hand, in
determining the inventive step of a claim described in a Markush form or comprising
multiple selective technical features, care must be taken not to expand the effect of one of
the selective elements to the whole effect of the claimed invention.
(Example 1)
If the claimed invention relates to neuroprotective chromanol compounds including various
chemical compounds as selective elements, all of the chemical compounds must have a
remarkable effect over one or more cited inventions in order for the claimed invention to be
granted. Thus, it is not correct for an examiner to grant a patent based only on comparison
test data concerning an alternative (formula (III) compound) described in the specification as
being significantly effective.
(5) A degenerate invention does not involve an inventive step. Granting a patent to a
degenerate invention runs against the purpose of the Patent Act. Moreover, a degenerate
invention is barely conducted and it would rather have a negative effect on those who use it,
even if the degenerate invention is given exclusive rights by granting a patent.
(6) If the cited invention is regarded as a well-known technology, then the examiner may
notify the applicant of the reasons for refusal without any evidential material attached.
However, it is not appropriate to regard a well-known technology as being the closest cited
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invention without any evidential material.
In response to the reasons for refusal on the basis of a well-known technology without any
evidential material attached, if an applicant claims that the invention is not a well-known
technology in a written opinion, the examiner should in principle provide an evidential
material with regard to the reasons for refusal. If the examiner has difficulties in providing
an evidential material, the examiner may deny the inventive step by fully explaining why the
invention falls under a well-known technology or pointing out why the applicant's argument
is not proper.
Materials disclosing well-known technology include widely-used textbooks, introductory
books, technical standards dictionaries, national standards (KS) in the field of the art to
which the matter pertains, and so forth. However, it shall be noted that in the technical field
with robust technical development such as information and communication technology, the
content disclosed in the technical standards dictionaries or national standards (KS) cannot
be perceived as well-known technology in some cases.
(7) As the inventive step of an invention is individually determined, not based on
examination of precedents of other inventions, in the case of a patent application for a
specific invention, examination precedents in foreign countries that differ in terms of the
legal systems and customs are not taken into consideration.
(8) Although the implementation of a technical content of the claimed invention is
prohibited due to the law restriction in Korea and abroad, such a restriction is not taken into
consideration in determining the inventive step.
(Example 1)
If the claimed invention and the cited invention differ only in a method of lottery drawing
and the method is strictly prohibited by law and cannot be readily modified by the lottery's
designer, the claimed invention is obvious to a person skilled in view of its technical
difficulty only and is considered to have no inventive step, for the law restriction is not
taken into consideration.
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Chapter 4. Enlarged Concept of Novelty
1. Relevant Provisions
Article 29 (3), (4) of the Patent Act (Requirements for Patent Registration) (3)
Notwithstanding Patent Act 29 paragraph (1), where an invention claimed in a patent
application is identical with an invention or device described in the specification or
drawing(s) originally attached to another application for a patent or for a registration of a
utility model, which was filed prior to the date of filing of said patent application and has
already been laid open or published after the filing of said patent application, the patent
may not be granted for such an invention. However, this may not apply, where the inventor
of the concerned patent application and the inventor of the another application for a patent
or for a registration of a utility model are the same person, or where the applicant of the
concerned patent application and the applicant of the another application for a patent or
for a registration of a utility model are the same person at the time of the filing of the
concerned patent application.
(4) In applying paragraph (3), where another patent application or a utility model
registration application falls under any of the following subparagraphs, “laid open” in
paragraph (3) shall be construed as “laid open for public inspection or internationally
published pursuant to Article 21 of the Patent Cooperation Treaty”, and “invention or device
described in the specification or drawings initially attached to another patent application or
a utility model registration application” shall be construed as “invention or device described
in the specification, claims or drawings submitted on the international filing date” if it is
applied for in the Korean language, and shall be construed as applied for in a foreign
language:
1. Where another patent application is an international application which is deemed a
patent application pursuant to Article 199(1) (including an international application which
becomes a patent application pursuant to Article 214(4));
2. Where a utility model registration application is an international application which is
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deemed a utility model registration application pursuant to Article 34(1) of the Utility Model
Act (including an international application which becomes a utility model registration
application pursuant to Article 40(4) of the same act).
2. Purport of Article 29(3)
For an applicant, an invention described in a specification or drawings, if not in claims,
which is usually opened to the public by the laying-open of the application or publication of
registration, shall be deemed to be contributed to the society without reward.
Therefore, Article 29(3) and (4) of the Patent Act indicates that a patent shall not be granted
to an invention laid open to the public since giving an exclusive right to another applicant
who filed a subsequent application on the invention laid open to the public would be
unreasonable and it would be inconsistent with the purpose of the Patent Act under which
an exclusive right is granted to a new invention within a designated period as a reward for
the disclosure.
Moreover, Article 29(3) and (4) of the Patent Act aims to prevent cases where an invention
disclosed in a specification or drawings is described in the claims through amendments, the
application may serve as a prior application under Article 36 of the Patent Act, leading to
possible delays of examination of a subsequent application until the examination of the
prior application is completed.
3. Conditions to meet the requirement of Article 29 (3) and (4)
In order to satisfy the requirements of Article 29 (3) and (4) of the Patent Act, the following
conditions shall be met.
(1) Another application for a patent or for a registration of a utility (referred to as "another
application" hereinafter) shall have been filed before the filing date (the filing date of the
first filing country in case of the application with priority claim under the Paris Convention
or the filing date of prior application in case of the application with domestic priority claim)
of the concerned patent application (referred to as "concerned application" hereinafter).
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① Where another application is a divisional application or a converted application (a double
application in case of the application filed prior to October 1 2006) under Article 29 (3) and
(4), the critical filing date shall be the actual filing date of a divisional application or a
converted application.
(Example 1)
Since the divisional application or the converted application shall not have the retroactive
filing date in applying Article 29 (3), the divisional application or a converted application
cannot be cited as a prior art because the filing date of such application is after the filing
date of the concerned patent application. However, the original application of such
application can be another application and be cited as prior art if the filing date of the
original application is prior to that of the concerned patent application.
② Where another application is one with a priority claim under the Paris Convention, the
filing date in the country of origin is deemed as the filing date of another application, for an
invention commonly disclosed in the specification or drawings(referred to as an
"specification, etc." hereinafter) attached to the application in the country of origin and in
the specification or drawings originally attached to the application with the priority claim.
(Example 1)
Invention A of another application can be cited as a prior art of the concerned patent
application, if the filing date of Invention A disclosed in the application filed in the country
of origin as a reference is deemed to the date of filing in the country of origin when
applying Article 29 (3) of the Patent Act. Invention B cannot be cited as a prior art if
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Invention B was not disclosed in the application filed in the country of first filing. Meanwhile,
Invention C, which is described in the application filed in the country of first filing but is not
included in the concerned application with priority claim, was not disclosed in the
application filed in Republic of Korea cannot be cited as a prior art of the concerned patent
application.
③ Where an examiner cites an invention initially disclosed in a specification of a prior
application which was a basis for a domestic priority claim or an application with a domestic
priority claim thereof (referred to as a "subsequent application" hereinafter) as an invention
of another application under Article 29 paragraph (3) and (4), it is treated as follows:
(a) The invention commonly disclosed in the initial specification of both prior and
subsequent applications, is deemed as another application filed on the filing date of prior
application and should be applied in the provision of Patent Act Article 29 paragraph (3)
and (4) (Patent Act Article 55 paragraph (3) and (4)). The invention solely disclosed in the
initial specification, etc. of a subsequent application but not in that of prior application, is
deemed as another application filed on the filing date of subsequent application and should
be applied in the provision of Patent Act Article 29 paragraph (3) and (4) (Patent Act Article
55 paragraph (4)). The invention solely disclosed in an initial specification, etc. of prior
application but not in that of subsequent application should not be applied in the provision
of Patent Act Article 29 paragraph (3) and (4) (Patent Act Article 55 paragraph (4)).
An prior application is deemed to have been withdrawn when more than one year and three
months(in the case of the application for a registration of a utility model filed after 2001. 7.
1, immediately applied) has elapsed after the filing date of the prior application(Patent Act
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Article 56 paragraph (1)) and is not laid open. Therefore, where a subsequent application is
laid open or published, the invention commonly disclosed in the initial specification of both
prior and subsequent applications is deemed as laying-open at the time for lay-open or
publication of subsequent application. In addition, where an invention was not disclosed in
the initial specification of the prior or subsequent applications but newly described through
the amendment, the treatment above does not apply. Where an invention was not
described in the initial specification of subsequent application but described in the initial
specification of prior application, the invention is not deemed to be laid open to the public.
Therefore, Article 29 paragraph (3) and (4) are not applied to such an invention.
(b) In the case of (a), where a prior application is an application with a domestic priority
claim (including a priority claim under the Paris Convention), the invention commonly
disclosed in the specification of both prior and subsequent applications is deemed as
another application filed on the filing date of subsequent application and should be applied
in the provision of Patent Act Article 29 paragraph (3) and (4) (Patent Act Article 55
paragraph (5)).
(Example 1)
As example ① shows below, where a subsequent application is filed with a priority claim
based only on a prior application, among the inventions A and C described in the prior
application, the invention A disclosed in the original application filed at the country of origin,
which is a basis of the priority claim of the prior application under the Paris Convention, is
considered to be filed at the filing date of subsequent application under Article 29
paragraph (3). Therefore, invention A of the subsequent application cannot be cited as a
reference under Article 29 paragraph (3) even though the invention A is described in the
prior application. The invention C of the prior application can only be cited as a reference.
(Example 2)
Meanwhile, as example ② shows below, where a subsequent application was filed with
priority claims based on the application filed at the country of origin as well as a prior
application, the invention A of the prior application can be cited as a reference under Article
29 paragraph (3).
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(Footnote)
Case ① : where a subsequent application is filed with a priority claim based only on a prior
application
Case ② : where a subsequent application is filed with priority claims based on the
application filed at the country of origin as well as a prior application
(2) Another application should be laid open or published for registration after the concerned
application was filed.
Once an application is laid open or published for registration, the status of the application
as another application still remains effective despite refusal or grant of a patent, invalidation,
withdrawal or abandonment of the application. However, where an application is laid open
to the public, after the decision of refusal, invalidation, withdrawal and abandonment of the
application, the application cannot be cited as a reference under Article 29 paragraph (3).
(3) An invention described in the claims of the concerned application should be identical to
an invention or device described in the initial specification of another application
The invention described in the claims of the concerned application should be completely or
substantially identical to an invention or device described in the initial specification of
another application. In addition, even if the matters which have been described in the initial
specification of another application are omitted by the amendment after the filing, Article 29
paragraph (3) is implemented.
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4. Guidelines applying the proviso of Article 29 paragraph (3)
An application falling within the following conditions are not considered as another
application under Article 29 paragraph (3) and (4).
(1) In a case where an inventor of the concerned application is the same as the inventor of
another application
「The inventor」 of the concerned application and another application means the inventor
described in the application document. In case of joint inventions, all inventors of concerned
application must be completely identical with those of another application. However, even if
all inventors do not completely correspond, if the applicant proves the fact that all inventors
are practically the same, examiner can admit the applicant's argument. In a case where an
applicant adds or amends an inventor of an application after an examiner notifies the
applicant of the reasons for refusal, in which another application is cited as a reference due
to the difference of the inventor, he or she has a right to request documents to testify that
the inventors added or amended are true inventors.
(2) Where the applicant of the concerned application at the time of filing is the same as the
applicant of another application
The applicants of the concerned application and another application should be identified
and compared at the time of filing the concerned application to determine whether the
applicants are the same. In the case of plural applicants, all of the applicants indicated in the
two applications must be the same. Even in the case of the subsequent discrepancy of
applicants caused by the change of name, inheritance or a merger of applicants of the
present and another applications between the filing date of the concerned application and
that of another application, the sameness of applicants remains effective only if the
applicants of the present and another applications are substantially same.
5. International application under Article 29 paragraph (4)
Where another application is an international application or international application
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considered to be patent application by decision, the following points are different when
applying Article 29 paragraph (3), compared to another application which is not an
international application.
In a case where another applicant is an international application, in Article 29 paragraph (3),
"laid open" refers to "laid open or international publication under PCT Article 21" and "an
invention or device described in specification or drawings initially attached to the application
on the filing date" means "an invention or device commonly described in a specification,
claims and drawings submitted at the date of filing of the international application and its
translation".
Under Article 29 paragraph (3) and (4) in the international application with the domestic
priority claim, it is considered that the invention described in the specification or drawings
of prior application being the basis of the domestic priority claim among inventions
commonly described in a specification, claims and drawings submitted at the date of filing
of the international application and its translation, is considered to be laid open to the
public at the time of international publication under PCT Article 21 or publication of
registration(Article 202 paragraph (2)).
Under Article 29 paragraph (4), where another application is an international application, the
scope of applying enlarged concept of novelty of the international application includes the
invention commonly described in a specification, claims and drawings submitted at the date
of filing of the international application and its translation. However, the concerned
application shall be refused by an invention described in the international application
(Article 55 paragraph (4)) where the international patent application is a prior application
and is the basis of domestic priority claim for another application, if the subject matter of
the concerned application is the same as the invention described in the a specification,
claims and drawings submitted at the date of filing of the international application,.
6. Method of Determination of Identicalness
Determining of applying Article 29 paragraph (3) and (4) refers to whether an invention
described in the claimed invention is identical to the invention or device specified in the
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description or drawings in another application at its filing (hereinafter referred to as "cited
invention").
6.1 Procedure of Determination of Identicalness
(1) Find an invention of the concerned application described in the claims. The method of
finding invention is identical to that of determining novelty in chapter 2.
(2) The subject matters described in description of another application should be reviewed.
The subject matters which can be obtained by the common general knowledge might be
the basis of a cited invention under Article 29 paragraph (3) and (4).
(3) Identicalness and difference by comparing the claimed invention with the cited invention
shall be found. In this case, the claimed invention should not be compared with the
invention by combining more than two cited inventions.
(4) Where there is found no difference between the subject matters defining the claimed
invention and the subject matters defining the cited inventions, the claimed and cited
inventions are identical. In this case, the identicalness of the inventions includes the
substantial identicalness.
6.2 Substantial Method of Determination of Identicalness
Novelty is determined by comparing whether the claimed invention and the cited invention
are identical. The identicalness of invention is related with determining novelty as well as
inventive step (Article 29 paragraph (2)), invention not considered to be publically known
(Article 30), enlarged concept of novelty (Article 29 paragraph (3), (4)), protection of lawful
holder of a right (Article 33, 34), prior application (Article 36), succession to the right to
obtain a patent (Article 38 paragraph (2), (3), (4)), divisional application (Article 52),
converted application (Article 53) and application with the priority claim (Article 54, 55).
Therefore, the criteria of determining the identicalness of invention shall apply in the cases
mentioned above.
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(1) Determining the identicalness of the inventions relies on identicalness and differences
between the subject matter defining the claimed invention and the subject matter defining
the cited inventions by comparison.
(2) In a case where there is a difference between the subject matters of the claimed
invention and the subject matters of the cited inventions, two inventions are not identical.
Meanwhile, if there is no difference between them, the invention in the claims is identical to
a cited invention.
(3) Where the claimed invention is completely or substantially identical to a cited invention,
the claimed invention is identical to a cited invention.
6.3 Where Inventions are substantially identical
Where inventions are substantially identical refers to the case where simply non-substantial
matters (secondary matters), not the technical ideas of the inventions, are different in the
subject matter of the claimed invention and the subject matter of the cited invention, such
as differences in expression, recognition of effects, purposes or use as well as change in
constitution or existence of use limitation and so on.
(Example) Determination on identicalness of the inventions regarding the enlarged concept
of novelty under Article 29(3) of the Patent Act shall be made based on the
identicalness of the technical constitution of both inventions as well as the effects
of the inventions. Even if the technical constitutions of both inventions are
different, but such differences exist in the detailed means for solving the technical
issues, such as the mere addition, deletion or change of prior arts, not leading to
the creation of new effects, the two inventions shall be deemed to be
substantially identical (Case No. 2006 Hu 1452(Supreme Court, March 13, 2008)).
6.3.1 Difference in Expression
Differences in expression refer to expressions used in patent claims are different, but the
contents are substantially the same and difference in categories shall be treated as
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difference in expressions.
(Example) 「The method of desalination of sea water」 and 「the method of concentration of
sea water」 by separating water from sea water through the insertion of a
refrigerant undissolved in sea water
6.3.2 Difference in Recognition of Effects
Differences in recognition of effects refer to recognition of effects of the inventions is
different even though the effects of the inventions are identical because of the identicalness
of the constitutions of both inventions.
(Example) As for an invention disclosing a conductor covered with polyethylene, where
differences in recognition of the effects of the invention exist since a prior
application discloses that the invention has greater electric insulation, whereas a
subsequent application discloses that the invention exhibits better high frequency
properties.
6.3.3. Difference in Purposes
Differences in purposes refer to subjective purposes of the inventions are different even
though the constitutions of the inventions are the same.
6.3.4 Change in Constitutions
Changes in the constitutions of the inventions refer to the case where the constitution of
the invention is changed and the constitution becomes another invention and such changes
constitute mere substitution, addition or deletion of the technical means which could be
easily made by a person skilled in the art as the detailed means to achieve the purpose of
the invention and the changes do not lead to significant changes in the purposes and
effects of the inventions. Such changes in constitution of the invention include 「mere
change of means」, 「mere addition or deletion of means」, 「mere change of material or
mere substitution of equivalents」, 「mere change of equal means」, 「mere limitation or
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change of figures, numbers or sequence」 and 「mere limitation or change of figures」.
(1) Mere Change of Means
Mere change of means refers to the case where the constitution of an invention is changed
and therefore, it has become another invention. Where such changes do not lead to
significant differences in the purposes and effects of the invention, the concerned change of
constitution of the invention is a mere change of means.
(Example) 「A manufacturing process of clarifying pure fruit juice by using bentonite and
then vacuum freeze drying the juice into powdered fruit juice」 and 「a
manufacturing process of clarifying pure fruit juice by using diatomite then
vacuum freeze drying the juice into powdered fruit juice」
(2) Mere Addition or Deletion of Means
Mere addition or deletion of means refers to the case where the constitution of an invention
is changed and therefore, it has become another invention. Where such changes do not lead
to significant differences in the purposes and effects of the invention, the concerned
changed of the constitution of the invention is a mere change of addition or deletion of
means.
(Example) 「A manufacturing process of P-nitrotoluidine by nitrifying toluene」 and 「A
manufacturing process of P-nitrotoluene by nitrifying toluene and then returning
it back to P-toluene」(however, 「a manufacturing process of P-toluidine by
returning P-nitrotoluene back」 shall be a means).
(3) Mere Change of Material or Mere Substitution of Equivalent
Mere change of materials or mere substitution of equivalents refers to the case where the
constitution of an invention is changed and therefore, it has become another invention and
then such changes constitute substitution of materials or article having comparability or the
same function and such changes do not lead to significant differences in the purposes and
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effects of the invention.
(Example) 「A foundation pile with blades attached on the concrete shack」 and 「a
foundation pile with blades on the shack pile」
(4) Mere Change of Equal Means
Mere change of equal means refers to the case where the constitution of an invention is
changed and therefore, it has become another invention and then such changes constitute
changes of means having comparability or the same function and such changes do not lead
to significant differences in the purposes and effects of the invention.
(5) Mere Limitation or Change of Figures, Numbers or Sequences
Mere limitation or change of figures, numbers or sequences refers to the case where the
constitution of an invention is changed and therefore, it has become another invention and
then such changes constitute mere limitation or change of figure, numbers or sequences
that a person skilled in the art would commonly apply to based on the purpose and other
constitutions and such changes do not lead to significant differences in the purposes and
effects of the invention.
(6) Mere Limitation or Change of Figures
Mere limitation or change of figures refers to the case where the constitution of an
invention is changed and therefore, it has become another invention and then such changes
constitute mere limitation or change of figures that a person skilled in the art would
commonly apply to based on the purpose and effects and such changes do not lead to
significant differences in the purposes and effects of the invention.
6.3.5 Differences in Mere Use
Differences in mere uses of the invention refer to the case where the differences in two
inventions having different constitutions are marked as the differences in uses and the
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differences in uses can be derived from the differences in the uses of other constitutions.
(Example) 「A plasticizer of polyvinyl chloride comprising compound B」 and 「A ultraviolet
light absorber of polyvinyl chloride comprising compound B」
(Example) 「A method of spraying chemical A on the fields to repel hares (Hare Repellent A)」
and 「A method of spraying chemical A on the fields to repel deer(Deer Repellent
A)」
6.3.6 Existence of Use Limitation
Existence of mere limitation of uses refers to the case where differences in two inventions
are marked as whether their uses are limited or not and such uses are mere use limitation
clearly derived from other constitutions of the invention.
(Example) 「A net comprising threads with flat cross sections」 and 「A fish net comprising
threads with flat cross sections」
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Chapter 5. First-To-File Rule
1. Relevant Provisions
Article 36 of the Patent Act (First-to-File Rule) ① Where two or more applications relating to
the same invention are filed on different dates, only the applicant of the application having
the earlier filing date may obtain a patent for the invention.
② Where two or more applications relating to the same invention are filed on the same
date, only the person agreed upon by all the applicants after consultation may obtain a
patent for the invention. If no agreement is reached or no consultation is possible, none of
the applicants shall obtain a patent for the invention.
③ Where a patent application has the same subject matter as a utility model registration
and the applications are filed on different dates, paragraph (1) shall apply mutatis mutandis;
whereas if they are filed on the same date, paragraph (2) shall apply mutatis mutandis.
④ Where a patent application or utility model registration application is invalidated,
withdrawn or abandoned, or a decision or trial decision to reject the application becomes
final and conclusive, such application shall, in applying paragraphs (1) through (3), be
deemed never to have been filed: Provided, That this shall not apply where a decision or
trial decision to reject to the patent application or utility model registration application
becomes final and conclusive pursuant to the latter sentence of paragraph (2) (including
cases where it applies mutatis mutandis under paragraph (3)).
⑤ A patent application or utility model registration application filed by a person who is not
the inventor, creator, or successor in title to the right to obtain a patent or utility model
registration shall, in applying paragraphs (1) through (3), be deemed never to have been
filed.
⑥ In cases of paragraph (2), the Commissioner of the Korean Intellectual Property Office
shall order the applicants to report the results of the consultation within a designated
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period. If such report is not submitted within the designated period, the applicants shall be
deemed not to have reached agreement under paragraph (2).
2. Purport of Patent Act Article 36
Article 36 of the Patent Act stipulates the first-to-file system under which two or more
applications relating to the same invention are filed and the person who files the earliest
patent application is granted a patent right. Under the patent system, an exclusive patent
right is granted to a patent applicant for a certain period of time in reward for the
publication of the invention. The patent system has been introduced to realize the principle
of prohibition of double patenting since granting multiple exclusivities to a single technical
idea is against the nature of the patent system.
3. Application Requirement
3.1 Identical Invention
(1) The first-to-file system shall apply to the same invention disclosed in different
applications. The identicalness of the invention shall be determined based on whether the
claimed inventions in the applications have the same technical ideas (including the
determination on identicalness of the invention and utility model, hereinafter the same).
(2) Where more than two claims exist, whether the invention in each claim is identical shall
be determined.
(3) Article 36 of the Patent Act shall apply regardless of the identicalness of inventors or
applicants.
(4) The identicalness of the technical ideas of the claimed inventions shall be determined by
comparison of the subject matter of the inventions in the following process:
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① The inventions disclosed in claims shall be specified. The process of specifying the
inventions disclosed in claims is the same as that in 「Chapter 2. Novelty」.
② Identicalness and differences on the inventions disclosed in the claims shall be identified
by comparison.
③ When no difference in the compositions of the claimed inventions is found, they shall be
deemed identical. Even when differences in the compositions exist, but the claimed
inventions fall under 「paragraph 6 of Chapter 4. Enlarged Concept of Novelty」, the
inventions shall be deemed to be the same (including substantial identicalness).
3.2 Applications without Status of Prior Application
(1) Where a patent application or an application of utility model registration is invalidated,
withdrawn or abandoned or a decision or trial decision to reject an application has become
final and conclusive, the patent application or the application of utility model registration
shall no hold the status of prior application.
However, even for an application on which a decision or trial decision of rejection has
become final and conclusive, where the application falls under the latter sentence of Article
36(2) of the Patent Act (including where the proviso of paragraph (3) applies mutatis
mutandis) and the decision or trial decision to reject the application has become final and
conclusive, the application shall hold the status of prior application (It shall apply to
applications filed after March 3, 2006).
(Note) The above-mentioned provision intends to prevent the applicants from being granted
a patent right by filing the application again after the ground for decision of rejection is
made due to the failure of consultation among the applicants, by not granting the status of
prior application when the ground for decision violates the first-to-file system.
(2) A patent application or an application of utility model registration filed by a person who
is neither an inventor nor a devisor and is not a successor in title to the right to obtain a
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patent or a utility model registration, too, shall not hold the status of prior application under
Article 36 of the Patent Act.
4. Examination Method
4.1 Acknowledgement of Critical Date
(1) The critical date used to determine whether the filing dates of the concerned
applications are the same or which is the earliest-filed application shall be recognized in the
following manner:
① The critical date of an application without priority claim shall be the actual filing date.
② The critical date of an application with priority claim under the treaty on an invention
disclosed in the specification or drawings of the application serving as the basis of the
priority claim shall be the filing date of the application which is the basis of the priority
claim. As for an application with multiple priority claims, the critical date shall be the earliest
filing date among the filing dates of each invention.
③ The critical date of an application with domestic priority on an invention disclosed in the
specification or drawings of the application serving as the basis of the prior application
serving as the basis of the priority claim shall be the filing date of the application which is
the basis of the priority claim. As for an application with multiple priority claims, the critical
date shall be the earliest filing date among the filing dates of each invention. It shall be
noted that Markush type claims, etc. shall have different critical dates even in the same
claims.
④ The critical date of a divisional application and converted application shall be the filing
date of the original application.
⑤ The critical date of an application filed by a lawful holder of a right shall be the filing
date of a misappropriated application and the misappropriated application shall be deemed
to have never been filed and its critical date shall not be acknowledged.
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(2) For the determination of the earliest-filed application, the critical date of an international
patent application shall be acknowledged in the following manner:
① The critical date of an international patent application in which the Republic of Korea is a
designated state shall be the filing date of the international patent application on an
invention disclosed in the translation of the specification, claims or drawings of the
international patent application.
② As for an international application considered to be a patent application or an application
of utility model registration by decision, the critical date shall be the filing date of the
invention disclosed in the translation of the specification, claims or drawings of the
international patent application under Article 214(4) of the Patent Act or Article 40(4) of the
Utility Model Act.
4.2 Where more than two applications on the same invention are filed on different
dates
(1) Where more than two patent applications relating to the same invention are filed on the
same date, only the applicant of the application having the earlier filing date may obtain a
patent for the invention. Even when the invention in a patent application and the utility
model in an application of utility model registration are the same, only the person of the
application having the earlier filing date may obtain a patent or a utility model registration
for the invention.
(2) Even when more than two applications relating to the same invention are filed on
different dates, an examiner shall examine the applications in the following manner:
① Where an applicant and an inventor are not the same person and the earlier application
is laid open or registered, the provisos of Article 29(3) and (4) of the Patent Act shall
primarily apply to any subsequent application. The proviso on the extended first-to-file
system can be flexibly applied within the specification or drawings of another application if
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the application is already laid open even before the claims of the prior application are
confirmed.
If a prior application is not laid open, the examination on a subsequent application shall be
postponed until the prior application is laid open or registered.
② Where the applicant of a subsequent application is the same as the applicant of the prior
application, or the inventors of the inventions disclosed in the prior application and the
subsequent application are the same, the proviso of Article 36 of the Patent Act shall be
applied since Article 29(3) or (4) of the Patent Act cannot be applied. In such a case, where
an examiner intends to make a decision to reject a subsequent application relating to the
same invention, the examiner shall make the decision after the scope of the claims in the
prior application is confirmed.
Applicants of
Prior/Subsequent
Applications
Prior
Application Start of Examination of Subsequent Application
Identical
Published
Examination started, Rejection Ground
under Article 36(1) notified
(Decision to grant patent after claims
in prior application is confirmed)
Not
Published
Examination started, Rejection Ground
under Article 36(1) notified
(Only application number and claimed invention in prior
application specified, decision to grant patent
after claims in prior application is confirmed)
Different
Published
Examination started, Rejection Ground
under Article 29(3) and (4) notified
(But, Article 36(1) applied
in case of identicalness of inventors)
Not
Published
Examination postponed until publication of prior application
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4.3 Where more than two applications relating to the same invention are filed on the
same date
(1) Where more than two patent applications relating to the same invention are filed on the
same date, only the person agreed upon by all the applicants after consultation may obtain
a patent for the invention. If no agreement is reached or no consultation is possible, none of
the applicants shall obtain a patent for the invention.
(2) Where no consultation is possible means ① where no agreement can be reached since
the counterpart refuses to consult and ② where one of more than two applications filed on
the same invention is granted a patent (utility model registration) or where a decision or a
trial decision to reject a patent or utility model registration has become final and conclusive
under the latter sentence of Article 36(2) of the Patent Act (including the case where the
proviso of paragraph (3) applies mutatis mutandis).
(3) When an agreement is reached, a report on change of right relation in Annexed Form
No. 20 of the Enforcement Rules of the Patent Act shall be submitted. Also, relevant
procedures such as withdrawal of contrasting applications based on the result of
consultation shall be conducted at the same time. Where only a report on change of right
relation is submitted but subsequent procedures based on the result of consultation are not
carried out, it shall be deemed that no consultation is reached.
(Note) An applicant who received a request for consultation can address a ground for
rejection on the contrasting applications by changing or deleting the contrasting invention
through the submission of amendment without consultation of the concerned parties.
(4) Even when an invention in a patent application and a utility model in an application of
utility model registration are filed on the same date relating to the same claims, they shall
be treated as in the above-mentioned (1)~(3).
4.4 Detailed Content of Examination of Contrasting Applications
(1) Confirmation on Contrasting Applications
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Where contrasting applications are found after searching whether more than two
applications relating to the same invention are filed on the same date, any possibility on
consultation between the concerned application and the contrasting application shall be
checked.
Where the contrasting application is invalidated, withdrawn or abandoned, where a decision
to reject based on any ground for rejection other than grounds under Article 36(2) or (3) of
the Patent Act or where the application constitutes an application filed by an unentitled
person, the concerned contrasting application cannot hold the status of prior application.
Therefore, an examiner shall conduct examination considering that the contrasting
application has never been filed.
(Note) In examination practices, contrasting applications can be found mostly when an
applicant incorrectly amended the claims of the original application when filing a divisional
application, not when an applicant and an inventor are different.
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(2) Confirmation on Possibility of Consultation
Where no agreement can be reached because a contrasting application is granted a patent,
an examiner shall conduct examination on the concerned application. Where a contrasting
application is granted a patent and the applicant of the concerned application and the
applicant of the contrasting application are not the same, an examiner shall notify the
applicant of the contrasting application of such fact through the On-nara System (referring
to „Government Electronic Document Management System). When notifying a ground for
rejection to the applicant of the concerned application, an applicant shall indicate the fact of
contrasting relation in the ground for rejection.
When consultation on contrasting applications is possible, an examiner shall check whether
a request for examination on the contrasting applications is made.
(3) Where a contrasting application is laid open and requested for examination
Where a contrasting application is requested for examination, an examiner shall make a
request for consultation under the name of the Commissioner of the Korean Intellectual
Property Office within a designated period. In such a case, the examiner shall notify an
applicant of a ground for rejection under Article 36(2) or (3) of the Patent Act(where other
grounds for rejection exist, such grounds may be included), along with the request for
consultation to the concerned application and the contrasting application. In principle, a
request for consultation and a ground for rejection shall be notified in separate notices.
However, only a request for consultation can be made considering examination efficiency
(where the contrasting relation can be easily addressed upon a request for consultation).
After receiving a request for consultation, if an applicant addressed a ground for rejection
under Article 36(2) or (3) of the Patent Act by reporting on the result of consultation and
taking measures on the result of consultation within a designated period, an examiner shall
make a decision to grant a patent. Where a ground for rejection exists and the ground for
rejection has been already notified, an examiner shall make a decision of rejection.
(4) Where a contrasting application is yet to be laid open or requested for examination
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① Where an applicant of the contrasting application and an applicant of the concerned
application are not the same, an examiner shall notify the applicant of the concerned
application of the intention that examination is postponed until the contrasting application
is requested for examination or withdrawn or abandoned.
② Where an applicant of the contrasting application and an applicant of the concerned
application are the same, an examiner shall notify a ground for rejection under Article 36(2)
or (3) of the Patent Act along with the request for consultation on the concerned application
and the contrasting application (where other grounds for rejection exist, such grounds may
be included). In principle, a request for consultation and a ground for rejection shall be
notified in separate notices. However, only a request for consultation can be made
considering examination efficiency (where the contrasting relation can be easily addressed
upon a request for consultation).
An examiner shall make a decision to grant a patent when an applicant addressed a ground
for rejection under Article 36 (2) or (3) of the Patent Act by reporting on the result of
consultation and taking measures on the result of consultation within a designated period
and no other grounds for rejection exist. Where a ground for rejection exists and the ground
has been already notified and it does not constitute a ground for rejection under Article
36(2) or (3) of the Patent Act, an examiner shall make a decision of rejection.
Where any measure relating to the result of consultation has not been taken within a
designated period after a request for consultation, an examiner shall notify the applicant of
the concerned application of the intention that examination is postponed until the
contrasting application is requested for examination or withdrawn or abandoned.
Applicant of
Contrasting
Application
Disclosure of
Contrasting
Application
Request for Examination
on Contrasting Application
Examination on Contrasting
Application
Identical
Published Requested Request for Consultation+
Article 36 (2), (3)
or Request for Consultation
Not Requested
Not Requested
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Published Not Requested
Different
Published Requested Request for Consultation
Not Requested Notice on Postponement of
ExaminationNot
Published
Requested
Not Requested
(5) Extension of Designated Period after Request for Consultation
Where a request for consultation and a ground for rejection are notified at the same time,
an applicant intending to extend the designated period may make a request for extension of
the designated period relating to the submission of a written opinion as well as a
designated period upon a request for consultation.
5. Instruction on Examination
(1) Where a contrasting application is registered and therefore, no consultation can be made,
giving up the patent or the utility model registration would not mean that consultation is
possible or the contrasting relation is resolved. It is because that there are no such
provisions to recognize the above-mentioned condition and unlike giving up an application,
giving up a patent or a utility model registration does not mean that a contrasting
application is deemed to have never been filed since it cannot enjoy retroactive effect.
(Note 1) In applying Article 36(3) of the Patent Act before the revision (the act before the
revision made on February 3, 2001 Act No. 6411), the argument that giving up a patent or a
utility model registration can address irregularities relating to a contrasting application so
that a third party can claim the effect of a patent right is groundless. Also, it can undermine
the legal security since a right holder can arbitrarily select the subject and time of
abandonment, leading to the right relation in an unstable condition. Eventually, giving up a
patent right or a utility model registration would unfairly guarantee the retroactive effect
unlike abandoning an application and moreover, abandoning a patent right is carried out
just through registration, which is not the proper way of public announcement. All things
considered, even though either a registered patent right or a utility model registration was
abandoned by a right holder in the application is in the contrasting relation, it cannot be
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deemed that irregularities of a contrasting application are addressed (Supreme Court's
decision 2007. 1. 12. 2005Hu3017).
(Note 2) Where the same person filed contrasting applications on the same utility model on
the same date and all the applications are registered, even if one of the applications is
invalidated, the registration of the other applications shall be maintained. The fact that these
applications were initially contrasting applications does not necessarily mean that the
registration of other contrasting applications should be deemed to be invalidated (Supreme
Court's decision 1990. 8. 14. 89Hu31103).
(2) Even though there exists a contrasting application, an examiner may make a decision of
rejection based on other grounds for rejection instead of referring to the contrasting
application or notifying a ground for rejection based on the contrasting application. Under
the Korean Patent Act, when there exists a ground for rejection, an examiner may make a
decision of rejection after giving an applicant an opportunity to submit a written opinion.
However, the act does not stipulate that an examiner shall make a decision of rejection
citing every possible ground for rejection.
(Note) Where more than two applications of utility model registration on the same utility
model are filed on the same date, but the utility model lacks novelty or inventive step,
making the ruling of refusal without conducting „consultation procedures, etc. among
applicants‟ under Article 7(2) and (6) of the Utility Model Act before the revision shall be
deemed legitimate (Supreme Court's decision 2000. 1. 21. 97Hu32576).
(3) Where an invention with the lower concept in a prior application is described as an
invention with the upper concept in a subsequent application, the two inventions shall be
deemed to be identical.
(4) Where the filing dates of Invention A and Invention B are the same, even though, on the
assumption that Invention A is in a prior application and Invention B is in a subsequent
application, Invention B and Invention A are deemed to be substantially the same based on
the result of comparison, when both inventions are compared again considering that
Invention A is in a subsequent application and Invention B is in a prior application, but they
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are not substantially the same, the two inventions shall not be deemed to be identical.
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Chapter 6. Unpatentable Invention
1. Relevant Provision
Article 32 of the Patent Act(Unpatentable Inventions) Inventions that have risks to
contravene public order or morality or to injure public health shall not be patentable,
notwithstanding Article 29 (1) to (2).
2. Purport of Patent Act Article 32
For reasons of public interest, Article 32 of the Patent Act stipulates that a patent would not
be granted for 「inventions that have risks to contravene public order or morality or to
injure public health」 even if the invention falls within the patentable subject matter of
Article 29 (1) to (2). As a result, a patent cannot be granted for an invention which falls
under Article 32 without having to consider patentability requirements under Article 29 of
the Patent Act.
3. Unpatentable invention
3.1 Invention likely to contravene public order or morality
An invention likely to contravene public order or morality is considered as unpatentable. In
general, the two words are not separately used but more specifically, public order refers to
the general interest of society or country and morality means moral sense generally
accepted by society or by a particular group of people.
Therefore, it shall be noted that a patent cannot be granted for an invention likely to
contravene public order or morality without having to consider the objective of the Patent
Act.
An invention which falls within the subject matters under Article 32 of the Patent Act is an
invention with the aim to contravene public order or morality as well as the disclosure or its
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use is against public order or morality.
However, it does not extend the case where an invention is likely to go against public order
or morality as a result of improper use of the invention against its original purpose. For
example, where an apparatus (Bingo) of the claimed invention is aimed at entertaining, not
gambling or other gambling behavior, clearly disclosed in the specification and furthermore,
it is considered that the apparatus is likely to be devised for entertainment use, not for
wrongdoing, the apparatus would not contravene public order or morality just because the
apparatus could be improperly used in wrongdoing.
3.2 Invention likely to injure public health
An invention likely to injure public health is equally treated as an invention to contravene
public order or morality aforementioned. The determination of whether an invention harms
the public health should be made in the same way that whether the invention contravenes
public order and morality is determined.
Where the claimed invention is a manufacturing process invention, an examiner should
consider whether the manufacturing process itself and the product made by the
manufacturing process would injure public health. Even when research results in academic
journals show that a product made by a manufacturing process of the claimed invention
would injure public health, if the Ministry of Health and Welfare approves the manufacture
of medicines under the Pharmaceutical Affairs Act, it does not necessarily mean that the
invention can injure public health based on the research results of the academic journals.
Furthermore, where an invention achieves the original useful purpose but the result of the
achievement would injure public health, an examiner shall consider whether a method to
eliminate the harmful effect of the claimed invention exists or whether the effect of the
invention is advantageous or not.
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Part IV - Amendment of Specification, Claims or
Drawing(s)
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Chapter 1. Overview of Amendment
1. Article 47 of the Patent Act
Article 47 of the Patent Act (Amendment of Patent Application) ① An applicant may
amend the specification or drawing(s) attached to a written patent application within the
period designated in any of the subparagraphs of Article 42(5) or before the examiner issues a
certified copy of a decision to grant a patent under Article 66. However, after an applicant
received a notification of the grounds for rejection under Article 63(1) (hereinafter “a notice of
the grounds for rejection”), the applicant may only amend the specification or drawing(s)
within the periods (in the case of subparagraph (iii), at the time of a request for reexamination)
designated in the following subparagraphs:
(i) where the applicant initially receives the notice of the grounds for rejection (except notices
of the grounds for rejection occurring from an amendment according to a notice of the
grounds for rejection) or receives a notice of grounds for rejection other than that of
paragraph (ii), the period designated for submitting arguments in response to the notice of
the grounds for rejection;
(ii) where the applicant receives a notice of the grounds for rejection occurring from an
amendment according to a notice of the grounds for rejection, the period designated for
submitting arguments in response to the notice of the grounds for rejection; or
(iii) when the applicant requests a reexamination under Article 67bis.
② An amendment to the specification or drawing(s) under paragraph (1) shall be made within
the scope of the matters disclosed in the specification or drawing(s) originally attached to the
written patent application.
③ An amendment to the claims under paragraphs (1)(ii) and (iii) can only be made in cases
falling under one of the following subparagraphs:
(i) where the scope of claims is narrowed by specifying or deleting the claim, or adding an
element to the claim;
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(ii) where a clerical error is corrected; or
(iii) where an ambiguous description is clarified.
(iv) where the amendment is beyond the scope of paragraph (2), to amend the claims so as to
revert to the claims before the amendment or to amend the claims in accordance with
subparagraphs (i) through (iii) while reverting to the claims before the amendment.
④ Where amendments are made within the period under Article paragraphs (1)(ⅰ) or
(ⅱ), all amendments before the final amendment in each amendment procedure shall be
deemed to have been withdrawn. (Act No.11654, Revised on March 22, 2013).
2. Purport of Amendment
The amendment system of the specification or drawing(s) is designed to address
incompleteness of a specification generated while a patent application is hurriedly filed under
the first-to-file rule where the first person to file a patent application for the same invention is
granted the patent right for the invention, and to draw measures to protect the rights of the
applicant.
Where a description is amended during the designated period or under the specified
conditions after filing the application, the amendment shall take effect retroactively to the
original filing date.
Amendments shall be freely carried out before the start of the examination for the smooth
progress of the examination. In the meantime, if an amendment was made after the start of
an examination, invalidation of examination results and examination delay would be possible.
Therefore, after an official notice of grounds for rejection, the amendment period is strictly
limited to prevent a delay in the examination process. Moreover, if an invention not set forth
in the original specification or drawing(s) was added through the amendment, the newly-
added content would unfairly take effect retroactively to the original filing date. This is against
the first-to-file rule and is likely to do an unexpected damage to a third party, and therefore,
the scope of amendment is strictly limited.
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3. Amendment Requirements
3.1 Procedural Requirements for Amendment
(1) A person who can amend the specification or drawing(s) shall be the applicant of the
patent application at the time of the amendment. Where two or more applicants for the same
application are present, not all the applicants need to undertake the amendment proceedings
but each applicant may amend the description individually.
(2) For the amendment of a specification claims or drawing(s), the patent application, which is
the subject of the amendment, shall be pending before KIPO. Therefore, if the application has
been invalidated, withdrawn, abandoned, or a decision to reject the application has become
final and binding, the amendment shall not be made.
(Note) The case where the application is pending before KIPO refers to the conditions in which
KIPO can take necessary administrative actions to grant a patent to the application
(which means the registration of establishment of a patent right in accordance with
Article 87(2) of the Patent Act). Therefore, if the application has been invalidated,
withdrawn, abandoned, registered for establishment of right, or a decision to reject the
patent application has become final and binding, the application shall not be deemed
to be pending.
3.2 Substantive Requirements of Amendment
(1) The scope of an amendment to the specification or drawing(s) differs depending on the
amendment periods. The addition of new matter shall be prohibited when an amendment is
carried out within the self-amendment period before the start of an examination or within the
period designated for submitting arguments on a non-final notice of grounds for rejection
(according to 47①(i) of the Patent Act). However, where an amendment is made within the
period designated for submitting arguments on a final notice of grounds for rejection
(according to 47①(ii) of the Patent Act) and where an amendment is made upon a request for
reexamination, the scope of the amendment shall be further restricted by only allowing the
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reduction of scope of claims, etc. as well as the prohibition of the addition of new matter to
the application.
(2) The method to handle an amendment which does not fulfill substantive requirements, too,
differs based on the amendment periods. Details are stated in the following table.
Amendment Period
Scope of Amendment
Handling of Illegitimate
Amendment
Detailed
Description
of Invention
∙ Drawing
Scope of
Patent Claim
① Before Delivery of
Certified Copy of
Decision to Grant
Patent
② Within Period for
Argument Submission
in reply to Non-Final
Notice of Rejection
Ground
Prohibition of Addition
of New Matter
During Examination:
Rejection Ground
After Registration:
Invalidation Ground
① Within Period for
Argument Submission
according to Final
Notice of Rejection
Grounds
② On Request for
Reexamination
Prohibition of
Addition of
New Matter
Prohibition of
Addition of
New Matter
+
Addition of
Requirement
for Reduction
of Claim, etc.
During Examination:
Decision to
Decline Amendment
After Registration:
Invalidation ground
(Except Requirement in
Article 47(3))
4. Amendment Period
4.1 Self-Amendment Period
The self-amendment period refers to the time period before the commissioner of the
Korean Intellectual Property Office delivers a certified copy of a decision to grant a patent
during the amendment period designated under Article 47(1) of the Patent Act, except for
the period under the subparagraphs of Article 47(1) of the Patent Act. In such a case, the
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time at which the commissioner of KIPO delivers a certified copy of a decision to grant a
patent is when an examiner sends a certified copy of a decision of patent. Therefore, if an
applicant submits an amendment before receiving a copy of a decision of patent which the
examiner has sent out, the amendment shall not be recognized.
If the time period designated in a request for consultation or a (preliminary) notice for
inadmissible division according to Articles 36 and 38 of the Patent Act is before a certified
copy of the decision to grant a patent is transmitted and before a ground for rejection is
notified, an applicant shall address grounds for rejection or grounds for inadmissible division
under Article 36 of the Patent Act through self-amendment of the specification claims or
drawing(s).
(Note) The self-amendment period refers to the time period before an applicant receives a
certified copy of a non-final notice of grounds for rejection which an examiner has
delivered.
4.2 Period for Argument Submission in reply to Notice of Rejection Grounds
(1) If an applicant receives a non-final notice of grounds for rejection under Article 63 of the
Patent Act or a notice of grounds for rejection other than rejection grounds (a final notice of
grounds for rejection) under Article 47(1)(ⅱ), the applicant may submit a written
amendment to the specification, claims or drawing(s) only within the period designated for
the submission of arguments in response to the notification of grounds for rejection
concerned.
The period designated for the submission of arguments shall be commonly two months.
However, the period shall be extended on a request for the extension of the designated
period by the applicant according to Article 15(2) of the Patent Act. Where the period
designated for submitting a written argument exceeds four months, the period may or may
not be extended based on whether an examiner permits the period extension or not.
The period designated for the submission of arguments under Article 47(1)(ⅰ) is confined
to the period defined under Article 63 of the Patent Act. Therefore, the period for a request
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for consultation in Article 36(6) of the Patent Act or the period for a procedural amendment
in Article 46 of the Patent Act shall not correspond to the period designated for the
submission of arguments.
(2) Even where a notice of grounds for rejection (the final notice of grounds for rejection)
under Article 47(1)(ⅱ) of the Patent Act is present, an applicant may amend the specification,
claims or drawing(s) only within the period designated for the submission of arguments.
However, the scope of the amendment in this period shall be further limited.
4.3 Request for Reexamination
An applicant shall request a reexamination within 30 days from the receipt of a certified
copy of a decision of rejection and amend the specification, claims or drawing(s) attached to
the application upon a request for reexamination.
The period designated for an appeal against a decision of rejection can be extended if the
requirements specified under Article 15(1) of the Patent Act are fulfilled. Therefore, an
applicant shall amend the description, upon a request for reexamination, within the
extended period for an appeal against a decision of rejection.
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Chapter 2. Scope of Amendment
1. Amendment in reply to Self-amendment and Non-final Notice of
Rejection Ground
Article 47(2) of the Patent Act dictates that an amendment to the specification, claims or
drawing(s) “shall be made within the scope of matters written in the specification or
drawing(s) attached to the patent application.” Therefore, the addition of new matter even in
the amendment under the main sentence of Article 47(1) and Article 47(1)(ⅰ) shall be
prohibited. An amendment to the specification, claims or drawing(s) within the designated
period has no limit to the scope of an amendment except for the prohibition of the addition
of new matter.
1.1 Prohibition of Addition of New Matter
(1) „New matter‟ refers to an element which is out of the scope of the specification or
drawing(s) attached to the patent application. In this context, matters in the specification or
drawing(s) attached to the application (hereinafter referred to as „the original specification‟)
mean the elements which are explicitly described in the specification or drawing(s), or which
without any explicit description, a person skilled in the art would understand that are the
same as the matters described in the specification or drawing(s) based on technical
information at the time of filing the application.
In other words, even if elements described in the specification or drawing(s) are not
expressly described, but if a person skilled in the art clearly understands through his/her
assessment on the elements in the original application, claims or drawing(s) that the matters
are written, such elements shall not be new matter.
(Note) The previously-used term „change of subject matter ‟ has been deleted and an
amendment to the detailed description of the invention, or drawing(s) as well as the
scope of an amendment have become restricted due to the revision of the Patent
Act (carried out on July 1, 2001). Therefore, the introduction of a new concept, which
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is different from that of change of subject matter, has become necessary. To this end,
a term „new matter ‟ has been adopted to clarify the meaning of new natter, other
than the matter「within the scope」.
(2) The subject of assessment in addition of new matter shall be the amended specification,
claims or drawing(s). The addition of new matter to any of the specification, claims or
drawing(s) shall not be accepted.
(3) The specification, claims or drawing(s) originally attached to the patent application shall
be the subject of comparison of whether new matter is added to the amended specification,
claims or drawing(s). In this context, the phrase „originally attached to the patent application‟
refers to the submission of the specification, claims or drawing(s) along with the patent
application by the filing date of the application. The matter added to the specification,
claims or drawing(s) through an amendment after the filing date of the application shall not
be the elements described in the specification, claims or drawing(s) originally attached to
the application.
Meanwhile, in the case of international patent applications, „matters described in the
specification, claims or drawing(s) originally attached to the application‟ shall be „matters
described in the description of the international patent application submitted on the
international filing date, the translated version of claims or drawing(s) (only referring to the
description in the drawing(s)), or the drawing(s) of the international patent application
submitted on the international filing date (excluding the description in the drawing(s)).
(Note) In the case of international patent applications, a substantive examination shall be
carried out based on the translated version of the application in accordance with the
purport of Article 201(4), (6) of the Patent Act. Therefore, an examiner shall assess
whether or not new matter is added, based on matters described in the translation
(including drawing(s) of the international application).
In the case of divisional/converted applications, „matter described in the specification,
claims or drawing(s) originally attached to the patent application‟ refers to the element
described in the specification, claims or drawing(s) attached to the divisional/converted
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applications on the filing date of the divisional/converted applications. It does not refer to
matter described in the specification, claims or drawing(s) in the original application which
form the basis of divisional/converted applications.
(4) Whether new matter is added to the amended specification, claims or drawing(s) shall be
determined by whether elements described in the amended specification, claims or
drawing(s) (the subject of assessment) are in the scope of the elements described in the
specification or drawing(s) (the subject of comparison).
In this context, the phrase of being in the scope of the elements described in the
specification or drawing(s) does not mean being completely and externally the same within
the scope of matters described in the specification, claims or drawing(s) originally attached
to the patent application. Also, matters that a person skilled in the art clearly understands
based on matters described in the specification, claims or drawing(s) originally attached to
the patent application shall be deemed as being in the scope of matters described in the
specification or drawing(s) .
1.2 Detailed Assessment Method of Prohibition of Addition of New Matter
(1) Since an application in the country where the application was initially filed, which forms
the basis of the priority claim, or a prior application shall not correspond to the specification,
claims or drawing(s) originally attached to the patent application, such applications shall not
be used as the basis of assessment in addition of new matter.
(2) Since an abstract shall not correspond to a specification or drawing(s), an abstract shall
not be included in the specification or drawing(s) which forms the basis of assessment in
addition of new matter.
(3) In the case of completing an incomplete invention, the amendment shall be deemed to
contain new matter.
(4) In the case of correcting a clerical error or clarifying an ambiguous description, the
amendment acknowledged being within the scope of matters described in the specification
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or drawing(s) shall not be deemed as addition of new matter.
(5) Where a person skilled in the art clearly understands which of more than two contrasting
elements is right based on matters described in the specification or drawing(s), the
amendment of writing the correct matters shall not be deemed as addition of new matter.
(6) Where a person skilled in the art clearly understands that the detailed description of the
invention has been amended based on matters described in the drawing(s) or the claims,
the amendment shall not be deemed as addition of new matter.
(7) An amendment to a so-called „disclaimer claim‟ is not mostly deemed as addition of new
matter. For example, where it is not specified whether the claimed invention regarding
medical methods for humans or for animals, if the invention is obviously not limited only for
particular animals, the amendment of deleting the parts related to humans shall not be
deemed as addition of new matter.
(Example) Where „treatment methods for mammals‟ are amended into „treatment methods
for mammals except for humans‟ or „treatment methods for livestock‟
(8) If amended matters are not clearly understood based on the matters described in the
specification or drawing(s), the amendment shall be deemed as addition of new matter. Such
amendments are as follows: amendment of changing the scope of numerical limitation,
amendment of changing features of an invention into a generic concept or subordinate
concept, amendment of changing drawing(s), amendment of adding embodiments, or
amendment of adding or changing purposes or effects of an invention.
(9) Just adding the titles of prior art documents to a description shall not be deemed as
addition of new matter.
However, an amendment based on the matters described in the prior art documents, or an
amendment of adding matters which were originally referred to, but were only described in
the prior art documents other than the original specification shall be deemed as addition of
new matter when such added matters cannot be clearly understood to a person skilled in
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the art based on the specification, claims or drawing(s) originally attached to the patent
application.
(10) Though the added matters through amendment are well-known prior arts, if a person
skilled in the art does not clearly understand that the added matters are the same as the
matters described in the specification or drawing(s) , the amendment of adding such well-
known prior arts shall be deemed as addition of new matter out of the scope of the matters
described in the specification or drawing(s) .
2. Amendment in reply to Final Notice of Rejection Ground or on
Reexamination Request
An amendment in reply to the final notice of grounds for rejection or carried out upon a
request for reexamination shall additionally satisfy Article 47(3), along with Article 47(2) of
the Patent Act.
The previous section shall be referred to concerning the prohibition of addition of new
matter under Article 47(2) of the Patent Act.
2.1 Restriction of Amending Scope of Claim
An amendment to claims among the amendments in response to the final notice of
grounds for rejection or upon a request for reexamination in accordance with Article 47(3)
of the Patent Act shall be one of the followings: reduction of scope of claims by limiting
claims, correction of clerical errors, clarification of ambiguous descriptions, or deletion of
new matter.
Amendment requirements under Article 47(3) of the Patent Act shall be applied only to the
amended claims. In this case, if an independent clause is amended, the dependent clause
which refers to the independent clause shall be deemed to be amended.
Moreover, to which of the abovementioned cases an amendment of amending claims
corresponds shall be determined by comparing the claim which is the subject of an
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examination upon the final notice of grounds for rejection with the claim with the same
number. However, if a claim after an amendment is clearly understood to be the same as the
amended claim with the different number, the validity of the amendment shall be assessed
through comparison with the claim of the different number.
Regardless of whether an applicant amends one word or the whole claim, if an amendment
of the claim falls under any of the subparagraphs of Article 47(3), the amendment shall be
deemed as an amendment under Article 47(3) of the Patent Act. However, even in the
aforementioned case, if one claim contains more than two inventions (a Markush-type claim
or a claim citing multiple claims), such inventions shall be assessed individually.
(Note) Such processes exist because of ① the possibility of violation in fairness between an
amendment of the overall claims (where the inventions described in the claims are
re-described) and an amendment of the claims on a section-by-section basis, if
matters described in one claim are assessed by words before and after an
amendment or on a section-by-section1 basis. Also, ② Article 47(3) of the Patent
Act is not intended to substantially restrict the contents of an amendment, but to
prevent difficulties of an examination caused by excessive amendments.
2.2 Restriction of Claims by Limiting or Deleting Claims or Adding Element to Claims
Cases of restriction of claims under Article 47(3) of the Patent Act shall be limited to
restriction of claims, deletion of claims and addition of technical information to claims. Such
cases are as follows.
(1) Restriction of claims is to limit the scope of the inventions described in the claims and
such a case includes reduction of numerical scope, change from generic concepts to
subordinate concepts and so on.
① Reduction of Numerical Scope
It refers to the case where the scope of numerical limitation is reduced within the scope
initially described in a claim. However, if reduction of the numerical scope and extension of
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one end of the scope are conducted simultaneously, for example, the initially-mentioned
numerical scope of temperatures of 10~20°C is changed into 15~30°C, it shall not be
deemed as reduction of numerical scope.
② Change From Generic Concept To Subordinate Concept
It refers to the case where the generic concept covering matters of the same class or type is
changed into one of the subordinate concepts of the generic concept, such as amending
writing instruments to fountain pens.
③ Deletion of Features Selectively Stated
Where multiple features are selectively described, an amendment of deleting parts of the
features constitutes the restriction of claims, recognized as a legitimate amendment.
Examples of the case include deleting A or B from the features of selective description「A or
B」.
④ Reduction of Cited Claim from Claims which refers to Multiple Claims
Deletion of parts of the cited claims from claims which refers to other multiple claims shall
be deemed as an amendment of limiting and restricting claims, just like the deletion of
selective features.
(2) Deletion of a claim shall be recognized as a legitimate amendment since it constitutes
restriction of claims
In the meantime, an amendment of changing the citation number of other claims which
refer to the deleted claim or an amendment of adding the cited contents shall be deemed
as an amendment of correcting an incorrect description.
(3) It refers to the case where the scope of an invention is reduced by adding new technical
features described in the detailed description or claims side-by-side. Examples of the case
include changing the description of „a bottle opener with B attached to A‟ to „a bottle
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opener with B attached to A and then C attached to B‟.
(4) The following cases shall be deemed as amendments not falling under Article 47(3)(ⅰ) of
the Patent Act.
① Where a claim is newly-established or an invention is added to claims by adding
selectively-described features or adding a cited claim
However, even in the case of the new establishment of a claim, if addition of a described
feature or a cited claim that happens while organizing claims is inevitable and such a case is
clearly expressed in a written statement of arguments, it shall be exempted.
(e.g.) [Before Amendment]
Claim 1: The apparatus comprising Feature A and B
Claim 2: The apparatus with Feature C attached, as claimed in Claim 1
Claim 3: The apparatus with Feature D and E attached, as claimed in Claim 1 or 2
[After Amendment]
Claim 1: Deleted
Claim 2 (Amended): The apparatus comprising Feature A, B and C
Claim 3 (Amended): The apparatus comprising Feature A, B, D and E
Claim 4 (Newly-added): The apparatus comprising Feature A, B, C, D and E
※Whether unity in each claim in the abovementioned example is maintained is out of the
discussion.
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② Where a claim is out of the original scope due to the following amendments
- Change of description from subordinate concept to generic concept
e.g.) initially: …supported by a spring…→ …supported by an elastic body…
-Deletion of features from a set of features
e.g.) initially: A car comprising A, B, C and D→A car comprising A, B and C
-Adjustment of features in a set of features
e.g.) initially: The apparatus comprising A, B and C
→ The apparatus comprising B, C, D and E
-Extension of numerical scope
e.g.) initially: at temperatures of 10~50°C→ at temperatures of 10~70°C
-Replacement of feature
e.g.) initially: joined with a bolt..→ joined with a rivet..
-Change of numerical scope
e.g.) initially: at temperatures of10~20°C→ at temperatures of 30~50°C
2.3 Correction of Incorrect Description
Correcting an incorrect description refers to the case where a description before an
amendment and a description after an amendment are objectively deemed to be the same.
Examples of such case include that incorrect description of claims is explicitly recognized
based on matters in the description or that an incorrect description is correctly amended if
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the incorrectness is explicit based on the abovementioned features or empirical rules.
2.4 Clarification of Ambiguous Description
An ambiguous description refers to the description whose meaning in the context is not
clear. Examples of such cases include where a description of a claim itself has an unclear
literal meaning, where the described contents of a claim itself is unfair in relationship with
other descriptions, or where an invention described in a claim is not technically specified
and ambiguous even though a description of a claim itself is clear.
An amendment of re-describing the overall claim without any substantial changes shall be
deemed as an amendment falling under Article 47(3)(ⅲ) of the Patent Act since it is
considered to clarify an ambiguous description, unless any other specific conditions are
present.
2.5 Amendment of Deleting New Matter
Where matters are newly-added on a particular stage of an amendment, an amendment
of reverting to the contents of the claim before addition of new matter shall be accepted.
If such cases were not accepted, an amendment of deleting new matter in order to
address grounds for rejection would be declined since it is a violation of Article 47(3) of
the Patent Law. Then, it would lead to the grant of a decision of rejection, which is too
harsh for an applicant.
An amendment of reverting to the content of a claim before addition of new matter as
well as an amendment of amending claims according to Article 47(3)(ⅰ) to (ⅲ) while
reverting to the content of a claim before addition of new matter shall be accepted. An
examiner shall assess the legitimacy of an amendment by comparing claims before
addition of new matter with amended claims.
Examples of detailed examination methods are as follows.
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Type Amendment Content/ Examination Direction
Example
[Before Examination]
Claim 1 : The apparatus comprising A+B
Claim 2 : The apparatus comprising A+B+C
[Non-Final Notification of Grounds for Rejection] Claim 1 has
no inventive step due to the cited invention.
[Description after Final Amendment]
Claim 1 : The apparatus comprising A+B+D
(D is new matter. It has an inventive step.)
Claim 2 : The apparatus comprising A+B+C
[Final Notification of the Grounds for Rejection] D in Claim 1 is
new matter.
Example1 Amendment [Description after Final Amendment]
Claim 1 : The apparatus comprising A+B
Claim 2 : The apparatus comprising A+B+C
Assessment [Admission of Amendment]Amendment is accepted since it
has been reverted to the claims just before new matter is
added.
[Decision of Rejection] A decision of rejection is granted since
Claim 1 has no inventive step.
Example2 Amendment [Description after Final Amendment]
Claim 1 : The apparatus comprising A+b
(b is the subordinate concept of B. It has an
inventive step.)
Claim 2 : The apparatus comprising A+B+C
Assessment [Admission of Amendment] Amendment is accepted since
Claim 1 falls under the case where the claim is deleted while
reverting to the claims just before new matter is added.
[Decision of Patent] A decision of patent is granted since no
grounds for rejection are found in Claim 1 and 2.
Example3 Amendment [Description after Final Amendment]
Claim 1 : Deleted
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Claim 2 : The apparatus comprising A+B+C
Assessment [Admission of Amendment]Amendment is accepted since
Claim 1 falls under the case where the claim is deleted while
reverting to the claims just before new matter is added.
[Decision of Patent]A decision of rejection is granted since no
grounds for rejection are found in Claim 2.
Example4 Amendment [Description after Final Amendment]
Claim 1 : The apparatus comprising A+B+E
(A+B+E is the invention within the scope of the
original specification. It has an inventive step.)
Claim 2 : The apparatus comprising A+B+C
Assessment [Admission of Amendment]Amendment is accepted since
Claim 1 falls under the case where the claims are reduced by
adding E to the claims while reverting to the claims just before
new matter is added.
[Decision of Patent]A decision of patent is granted since no
grounds for rejection are found in Claim 1 and 2.
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Chapter 3. Rejection of Amendment
1. Articles 51 and 63 of the Patent Act
Article 51 of the Patent Act (Rejection of an Amendment) ① Where an amendment
under Article 47(1)(ii) or (iii) violates paragraphs (2) or (3) of Article 47 or an examiner
considers that the amendment has caused a new ground for rejection (except an
amendment to delete a claim among amendments under 47(3)(i) or (iv)), the examiner must
reject the amendment by decision. However, where there is a request for reexamination
under Article 67bis, this paragraph does not apply when the amendment is made before the
request.
② A decision to reject an amendment under paragraph (1) must be in writing and must
state the reasons for the decision.
③ An appeal may not be made against a decision to reject under paragraph (1), except, in
an appeal against a final rejection of patent under Article 132ter, when the final rejection is
the issue of the appeal (except, when a request for reexamination under Article 67bis is
made, a final rejection made before the request).
Article 63 of the Patent Act (Notification of Reasons for Refusal) ① An examiner who
refuses a patent application under Article 62 shall notify the applicant of the reasons and
give the applicant an opportunity to submit a written statement of arguments within a
designated period. However, this provision does not apply if the examiner intends to make a
decision of rejection under Article 51(1).
② (Omitted)
2. Requirements of Amendment Rejection
(1) If an amendment in the period for submitting a written statement of arguments in reply
to the final notice of grounds for rejection or an amendment upon a request for
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reexamination is in violation of Article 47(2) and (3) of the Patent Act or if it is recognized
that a new rejection ground is raised due to the amendment, the amendment shall be
rejected in accordance with Article 51(1).
In this context, “the case where a new ground for rejection is raised due to the amendment”
means where a ground for rejection which did not exist before is newly-created due to the
submission of the amendment (where deficiencies in description are raised due to the
amendment or where rejection grounds of novelty and inventive step are newly found and
so on). Rejection grounds that were in the description before the amendment but were not
notified as well as grounds for rejection which were notified before the concerned
amendment shall not be deemed as new grounds for rejection.
Examples in Part V Chapter 3 「11.2 Examination of Amendment」 shall be referred to
regarding assessment when a new ground for rejection is raised due to the amendment.
(2) In the case of an amendment carried out upon a request for reexamination, if the
amendment before the request is overlooked in an examination proceedings in spite of
being the subject of the dismissal, the concerned amendment shall be exempt from the
assessment of whether the amendment due to the reexamination request is rejected or not.
(3) In assessing whether a new ground of rejection is raised due to amendment or not, the
case where a new ground of rejection is raised due to deletion of a claim according to
Article 47 (3)(ⅰ) or (ⅳ) shall be exempt.
In this context, “where a new ground of rejection is raised due to deletion of a claim” only
refers to where deficiencies in a description are created by deleting a claim, but not
amending the subordinate claim that refers to the claim. Exemptions of such cases include
where the deleted claim is still referred to even after an amendment of the subordinate
claim, where a new ground for rejection is raised, regardless of the direct relevance with the
deletion of a claim, while organizing the claims after the deletion of a claim and so on.
3. Examination Method of Requirements of Amendment Dismissal
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(1) Whether an amendment carried out after the final notice of grounds for rejection or an
amendment upon a reexamination request meets the requirements shall be assessed
regardless of an order of amendment requirements. If multiple requirements are not satisfied,
an examiner shall point out as many unsatisfied requirements as possible and reject the
concerned amendment.
(2) Whether an amendment fulfills substantive requirements shall be assessed according to
the following proceedings.
Amendment
Submission
Amendment Rejection
Reexamination with Post-
Amendment Description
Reexamination with Pre-
Amendment Description
Amendment of description is
within scope of original
specification
Amendment of claims
falls under one of the
following requirements
Amendment (except deletion
of claim) raises new rejection
ground
Yes
Yes
No
• 1. Restriction or deletion of claim • or reduction of claims by adding matter • 2. Correction of clerical error • 3. Clarification of ambiguous description • 4. reverting to claims before amendment or
amending according to subparagraph (1) to (3)
while reverting to claims before amendment
when the 47(2) is not met
No
No
Yes
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(3) Since methods of an appeal regarding a decision to decline an amendment are not
readily arranged, a decision to grant or reject a patent or a notice of rejection grounds shall
be made after re-examining the description before the amendment, along with dismissal of
an amendment.
4. Cautions for Making a Decision of Amendment Rejection
(1) Where a written amendment containing multiple amended features is submitted, the
overall amended features shall be assessed with a single, inseparable amendment to
determine whether the concerned amendment is recognized or not. Therefore, if any of the
amended features is in violation of Article 47(2) and (3) of the Patent Act or the amendment
(except an amendment of deleting claims) raises a new ground for rejection, the overall
amendments in the written amendment shall be rejected.
In this context, the written amendment which serves as the subject of rejection refers to
the statement classified by the submission of Form(ⅸ) in the Enforcement Rules of the
Patent Act.
(2) Where multiple amendment documents are submitted in the designated period for
submission of written arguments prescribed in the final notice of grounds for rejection,
Refusal of amendments shall be determined based on the overall amendments of each
written amendment irrespective of whether the statements are submitted on the same date.
Normally, a form in which amended features are written by „Identification subject matter ‟ or
„Identification number ‟ (matters to be amended) is attached to each written amendment.
Therefore, matters to be amended in the concerned written amendments shall be
determined by combining the written amendment submitted before with the final
amendments by matters to be amended. Detailed methods of determining matters to be
amended by each written amendment shall be referred to「Part V, Chapter 3. Section 6.3
Treatment of Amendments」.
(3) Where a decision of rejection has been revoked according to Article 176(1) and (2) and
the application has been returned to an examination bureau, the examiner shall accept the
reason which forms the basis of revocation of a ruling based on Paragraph (3) of the same
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article(the requirements which form the premise of the decision, along with the formal
adjudication of the ruling shall be recognized and assessed) in the examination of the
returned patent application.
Only a decision to reject a patent or a decision to decline an amendment is revoked in the
application which has been revoked and returned to the examiner. The examination
proceedings undertaken before the revocation decision and the proceedings that the
examiner has taken shall be all effective. Therefore, the application revoked and returned to
the examiner shall be examined as normally as any other applications in ordinary
examination proceedings.
(4) Where an amendment submitted in reply to the final notice of grounds for rejection is
declined, but then the decision to decline an amendment is revoked in a ruling, or where, as
grounds for rejection which have not been mentioned in the decision to decline an
amendment, an examiner finds reasons not examined or assessed in the proceedings of an
appeal against a decision of rejection, the examiner is meant to decline the amendment by
citing the aforementioned grounds. However, regarding the illegitimate amendment carried
out before a request for an appeal against a decision of rejection under Article 170 of the
Patent Act, the examiner shall not decline the amendment, but examine the amendment
considering the purpose of prohibiting a decision to decline an amendment in the
examination proceedings and the possibilities of giving an unexpected damage to an
applicant if an examiner declined the amendment by citing the grounds overlooked before.
In the meantime, where the patent application filed before June 30, 2009 and undergone
the proceedings for reconsideration by an examiner before a trial is revoked and returned,
an amendment made thirty days before the filing date of an appeal against a decision of
rejection shall not be declined on the examination stage since Article 51 of the Patent Act
only applies an amendment under Article 47(1)(ⅱ). Therefore, even where a new ground to
decline an amendment is found, an examiner shall not decline an amendment again.
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Part V. Examination Procedure
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Chapter 1. General Examination Procedure
1. Overview
1.1 Flow Chart
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1.2 Examination Procedure in General
This part briefly sets out the general procedure for examination as referred to the
aforementioned flow chart 1.1. Detailed explanation on each stage will be dealt with in the
following Part 2~ Part 6.
(1) Examination of Formal Requirements
The examination of formal requirements is a process to check as to whether an
application meets the formal requirements. The followings relates to the requirements:
capacity, representation, physical requirements of the application, filing and fees, matters
according to each subparagraph of Article 11 (1) of the Enforcement Rules of the Patent Act.
A preliminary check is in principle carried out in the name of the Commissioner of KIPO
by the receiving office where application documents are initially filed. When the receiving
office fails to conduct the examination of formal requirements, an examiner can carry out
further checks in the name of the Commissioner of KIPO.
(2) Assignment of International Patent Classification (IPC)
The classification of a patent application is performed with taking into consideration the
invention as claimed. It is necessary as an effective search tool for the retrieval of patent
documents by intellectual property offices and other users. Currently, KIPO adopts the IPC, a
hierarchical patent classification under the control of the World Intellectual Property
Organization (WIPO) as its classification.
(3) Laying-open of Application
The application shall be laid open in the Patent Gazette as soon as after the expiry of a
period of eighteen months from the date of filing, where priority if claimed, from the earliest
priority date. The application may, however, be published before the date if requested by the
applicant. Some applications treated “confidential” may be excluded from publication.
(4) Request for Examination
An application is examined only when a request for examination is filed. Any person can
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request for examination within 5 years for a patent application (or 3 years for a registered
utility model application filed after 10.01, 2006) from the filing date.
(5) Start of Examination
The examination is to be carried out by an order of request for examination. The purpose
of examination is to ensure that the application and the invention to which it relates meet
the requirements set out in the relevant Articles of the Patent Act (Article 46 or 62). The
prime task of the examiner is to deal with the substantive requirement, and if he believes
formalities are in correct or incomplete, he may invite an applicant to correct such formal
deficiencies.
(6) Notice of Grounds for Rejection
The examiner shall write to the applicant giving reasons for any objections he raises under
any subparagraphs of Article 62, and invite the applicant within a specified period to submit
arguments before final decision to reject.
(7) Amendments/Arguments
An applicant may submit arguments in response to an examiner's notice of grounds for a
rejection and may file amendments to the specification (including detailed description and
claims) or drawing(s) within the period designated in Article 47.
(8) Examination
Taking account of any amendments proposed, or arguments made, by the applicant in
reply to the notice of grounds for rejection, the examiner should examine the application
again.
(9) Grant of a Patent
Where an examiner finds no grounds to reject a patent application, he decides that a
Korean patent be granted.
(10) Amendment Ex Officio
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When making a decision to grant a patent, an examiner may amend ex officio the matters
in the specification, drawing(s), or abstract attached to a patent application notice that is
clearly erroneous. The examiner shall notify the applicant of the matters to be amended ex
officio along with the delivery of a certified copy of the decision to grant a patent. The
applicant can decide whether they accept the amendment ex officio by the time for paying
patent fees.
(11) Decision to Refusal
When an examiner examines the application again with taking account of any
amendments or arguments in reply to the notice of grounds for rejection and considers that
the applicant has not overcome his objections, the examiner may decide to refuse the
application.
(12) Amendment/Request for Reexamination
An applicant may amend a specification or drawing(s) to request for reexamination within
30 days from the receipt of a certified copy of the decision to reject a patent (or the
extension period if the statutory period is extended). However, the reexamination request is
not allowed where there is a decision of rejection after reexamination or where there is a
request for a trial against the decision for rejection. Where there is a request for
reexamination, the decision to reject the patent application prior to the request is deemed
to have been cancelled.
(13) Reexamination
Where a request for reexamination is made, the decision to reject the patent application
prior to the request is deemed to have been cancelled. The examiner shall then take into
consideration any amendment provided by the applicant and re-examine the application
according to the general examination procedure.
(14) Decision to Refusal after Reexamination
Where an examiner considers the amendment made at the reexamination stage, and still
finds the stated grounds for rejection not overcome, the examiner shall decide to reject the
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patent application.
2. Designation of Examiner
The Commissioner of KIPO shall designate a qualified examiner to examine patent
applications.
2.1 Qualifications
A person eligible to become a patent examiner shall be the following public officials in
KIPO or its affiliated agencies who have completed the prescribed education and training
course for a trial examiner conducted by International Intellectual Property Training Institute
(IIPTI); A public official of Grade V or higher in general service, a public official in general
service who belongs to the Senior Civil Service, or a specialized contract-based public official.
2.2 Duties
(1) Under the direction and the supervision of a director general of a bureau, a head of a
division (or a team head), or a head of the examination unit, an examiner shall proceed the
examination with speed and accuracy in accordance with the Patent Act and its related
provisions. An examiner shall examine independently based on the legal and technical
knowledge, provided however that opinions of a director general of a bureau, a head of a
division (a team head), or a head of the examination unit be taken into consideration.
(2) For a proper examination, a newly appointed examiner, not more than 6 months in the
job from the date of appointment, shall participate in the examination as an assistant
examiner. After the assistant examiner period, the examiner shall service the examination
jointly with other experienced examiner for additional 6 months. The period for assistant or
joint examination can be shortened if certain requirements are satisfied.
(3) If an application for invention relates to convergence technologies mixed with several
different technical aspects involved, the examiner in charge, referred to as the “primary
examiner” may consult with other examiners in charge of relevant sub-technical classification.
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If the examiners intend to examine with consultation, the primary examiner shall notify the
applicant of this fact, together with names of the consulting examiners and reason why the
consultation is necessary. Documents related to the examination with consultation shall be
made under the joint name of the examiners concerned while the reporting shall be mainly
made by the primary examiner.
The examiner may also consult with other examiners who have an expertise of certain
foreign languages such as French, Chinese, Japanese, Spanish, etc. for better understanding
of prior art documents written in such languages.
(4) If a director general of a bureau acknowledges a need for consulting advice where the
application confronts with difficulties in a unified rule application and judgment in
examination, the director general may convene a joint conference consisted of more than 3
examiners for their opinions.
(5) According to a duty of confidentiality regarding the information acquired in his official
capacity (Article 60 of the State Public Officials Act), the examiner shall carry out their
examination duties (including interviews, teleconsulting, etc.) with caution. Also, the
documents related to a patent application and an examination shall not be carried out
except for the purpose of prior art searches, digitization, or on-line remote performance. A
response shall not be given to a request for an expert opinion, testimony or an inquiry on
the contents of a patent application, examination, trial, or retrial on pending, nor on the
contents of a decision of a patentability, trial decision or ruling.
2.3 Designation and Change of Examiner
(1) One or more examiner shall be designated for each IPC and be in charge of the
designated examination. One among which shall be designated as a primary examiner. The
Patent Examination Support Division has responsibility for appointing primary examiner for
each IPC at the request of the director general of the Examination Bureau.
(2) Where the examiner transfers to another division within the same or different
Examination Bureau after the issuance of the first notification regarding the application
examination, the examiner in charge shall continue the examination of the concerned
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application up to the point of his or her final decision.
(3) An application either requested for reexamination or returned to the examiner after the
revocation of an examiner ‟s original decision of refusal shall be examined by the very
examiner unless there is a justifiable reason for change of examiner in charge.
(4) Except as deemed necessary for the purpose of expertise and efficiency, an examiner
shall not be in charge of the same IPC for 5 consecutive years.
(5) An examiner who falls under the subparagraphs (i)-(v), or (vii) of Article 148 of the Patent
Act, or an examiner with less than 2 years‟ experience who is assigned for the application
from his/her former employment of the previous 3 year or more right before the
appointment as an examiner shall be excluded from the concerned examination. An
examiner who falls under the aforementioned reasons may avoid the relevant examination
with the permit from a director general of examination bureau.
(6) Notwithstanding the case where an examiner is assigned for a certain application, the
designation may change if there is a special reason. For example, in case of a double patent
application, the examiner of the original application can be designated as an examiner in
charge (Article 15 of Instruction).
2.4 Internal Reporting
(1) When an examiner issues a notification of the grounds for rejection or a decision to
grant a patent (registered utility model decision included) for the application returned to the
examiner after the revocation by trial against his/her original decision to reject, or if an
examiner revokes his/her earlier official actions, the examiner shall report to a general
director of an examination bureau following the head of the examination unit.
(2) An examiner shall report to a head of examination team or division following a head of
the examination unit for the followings; a decision to reject a patent (including a decision to
reject a registered utility model, but not including the case where the rejection is made due
to no submissions of argument/amendment), a ruling to dismiss an amendment, an
invalidation measure (excluding the case without submissions of amendment following
amendment order), a notice of the grounds for rejection or a decision to grant a patent for
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the application on reexamination request (including a decision for utility model registration),
a ruling of dismissal for accelerated examination request, a request for correction regarding
serious deficiencies, a request for amendment, a notice for rejection grounds, or a decision
to grant the registration of extension or to reject the extension registration regarding the
registration of extension of the term of a patent right.
(3) Where an examiner takes measures other than the aforementioned, an examiner shall
report to a head of the examination unit, provided however that depending on an examiner
grade (classified into examiner, junior examiner, senior examiner and chief examiner),
reporting to a head of the examination unit may be exempted under the following cases.
① Where a junior patent examiner calls for supplementation regarding the accelerated
examination request or notifies of the decision for the accelerated examination (only if a
requester of an accelerated examination is not an applicant)
② Where a senior patent examiner notifies of rejection grounds, calls for supplementation
regarding the accelerated examination request, notifies the decision for the accelerated
examination (only if a requester of an accelerated examination is not an applicant), or orders
the applicants to report on the results of the consultation where two or more applications
claiming identical inventions are filed on the same date.
③ Where a chief patent examiner reports to a head of the examination unit except for
the final decision to reject a patent application (including a utility model registration
rejection decision)(However, excluding the rejection due to no submission of argument or
amendment), a ruling to dismiss an amendment, an invalidation measure, or decision to
extend or reject an application to register an extension of the term of a patent right.
(Note) Grade of examiner is decided by the advancement deliberation committee at KIPO.
Experience in patent examination (more than 10 years of examination experience for chief
examiner, more than 7 years for senior examiner and more than 4 years for junior examiner)
and required training program for each level(more than 1 compulsory training, more than 1
selective training) shall be fulfilled.
2.5 Form and Name of Authority for Examination-related Documents
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(1) If KIPO determines a due form for a certain documents to be submitted, it is the
principle to use the due form. If there is no designation of a due form, a general document
form should be used in accordance with Instruction on Office Management.
(2) If there is a document attached, the attached documents shall be listed at the end of the
document body.
(3) Patent examination shall be conducted in the name of the examiner in charge except for
a request for an amendment pursuant to Article 46 of the Patent Act, invalidation measures
of Article 16, issues of returns in Article 11 of the Enforcement Rules of the Patent Act, and
matters concerning an accelerated examination. Joint examination or examination with
consultation shall be carried out under joint names of all examiners concerned.
3. IPC Assignment
The IPC assignment has to be made in an accurate manner based on the scope of the
invention of each application since it is necessary as an effective search tool for the retrieval
of patent documents by intellectual property offices and other users.
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3.1 Flowchart of the IPC Assignment
3.2 General Principles of the IPC Assignment
(1) The technical subject-matter stated in the claimed invention of an application (hereinafter
referred to as 'technical subject-matter') are classified into the IPC symbols comprised of
section, class, sub-class, main group and sub-group(not required if there is no pertinent
further classification criteria after main group). The classification shall be made on the basis
of the scope of the claimed invention. However, when the scope of the invention is not clear,
the classification has to be based on what is understood from the detailed description. In
addition, some technical subject-matter not in the claims but only included in the detailed
description can be an additional basis for the classification.
(2) Where multiple technical subject-matters are involved in application, core technical
subject-matter representing the claimed invention as a whole is categorized as 'main
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classification', while other remaining technical subject-matters are categorized as 'sub-
classification'. However, where there is difficulty in separating the core technical subject-
matter from the other multiple technical subject-matters, claim 1, the first claim can be
referred as a basis for classification.
(3) The classification shall be determined based on the essential contents of the claimed
invention as a whole without considering into consideration the category of invention.
(Ex1) In case of electronic radio circuit comprising a tuner, a demodulator, an amplifier, and
an output circuit, these four parts of the circuit are not individually classified. Rather, the
classification is determined based on the whole electronic radio circuit comprising the
abovementioned four parts. Yet, if the core technical subject-matter of the claimed invention
concerns one specific part of the circuit, such part can serves as a basis for the classification.
3.3 General Rule of the IPC Assignment
(1) The IPC has two kinds of classification places: “function-oriented” place and “application”
place. To classify the claimed invention pursuant to the IPC, the judgment shall be made first
for the classification places depending on the technical subject-matter of the claimed
invention.
① In case of Application Invention
If the claimed invention concerns single use and has an appropriate classification place
for the application in the IPC, such classification place becomes the classification basis. In
the meanwhile, where the IPC has no such relevant classification place for the application
(use), then the function-oriented classification place becomes a main classification for the
invention while the similar place for the pertinent application (use) becomes a sub-
classification.
If the claimed invention concerns multiple uses, it is the principle that the relevant
function becomes the classification place. However, if the multiple uses are mentioned only
for describing the extension of the main use, the classification place of the main use
becomes main classification in the IPC, while the other uses become sub-classification.
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② In case of Function-oriented Invention
Things "per se" characterized by their intrinsic nature or function independent of its
field of use are considered as pure function-oriented invention. The function-oriented
invention shall be classified based on the pertinent function place. However, if the IPC has
no pertinent place for the function, the main use prescribed in the description shall be a
classification place. In this case, it is advisable to state the place of main use as sub-
classification.
(Ex 1) Sub-class F16K is classified with its function only, which is independent of the valve's
specific filed of use. In the meanwhile, valves for pressure cooker, heart, and vehicle have
classification places in A47J, A61F, and B60, respectively, which is decided in accordance with
the use of valves.
(2) The IPC in patent documents has three different entries/schemes such as 'IPC
identification abbreviation' 'classification symbols describing invention information/additional
information or indexing code showing additional characteristics of the subject-matter to be
classified', and 'version directive'. The classification symbols and indexing code in patent
documents shall be stated in the order of 'classification symbols describing invention
information' → 'additional information (non-invention information)' → 'indexing code
(showing additional information only)'.
The invention information and additional information shall be expressed in boldface style
and regular style, respectively. Patent documents in countries with extension level shall be
expressed in italic type, while countries with basic level shall express in regular type.
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(Ex1) Countries with Extension Level (Korea)
Int. Cl.
C04B 32/00 (2006.04)
B28B 5/00 (2006.01)
B28B 1/29 (2007.04)
H05B 3/18 (2008.07)
C04B 111/10 (2006.10)
IPC Identification Abbreviation
Version Directive, write in square style for
month, year
Boldface style for invention information
Regular(non-bold) style for additional
information
Italic style for extension level
Indexing code used only for additional
information
3 extension level classification symbols describing invention
information:
C04B 32/00, B28B 5/00, B28B 1/29
1 extension level classification symbol describing additional
information: H05B 3/18
1 indexing code describing additional information: C04B 111/10
(3) It is discretionary to grant additional information for the already classified invention. The
additional information can be given by either indexing code or classification symbols.
With regard to classification confirmation, the classification symbol for invention
information and additional information can be I (first letter of Invention) and N (first letter of
Non-invention), respectively. Yet, the main classification shall always have attributes of
invention information while the indexing code has those of additional information.
For the purpose of treating the technical matter not in claims but included in detailed
description or drawing(s) as preferable research, the invention can be given a classification
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symbol for the additional information. The method of granting a classification symbol for
technical subject-matter applies mutatis mutandis.
(4) Where lack of unity of invention exists, the classification place stated in subject matter
stated in „claim 1‟ becomes the main classification while the place for other claims becomes
sub-classification.
(5) With regard to the claimed invention which requires confidentiality due to national
security, is liable to contravene public order or morality or to injure public health, or relates
to convergence technologies, etc., such requirement and concerns shall be stated too.
(6) With regard to divisional application, converted application, domestic priority claim, or
application of lawful holder of the right, the classification of an earlier application shall be
identified first. Except when the classifications given to an earlier application obviously fail to
correspond to the subsequent application, it is preferable to remain the same classification
of an earlier application as main classification of a subsequent application while designate
the newly granted classification as sub-classification.
3.4 IPC Assignment by Technical Subjects
(1) Apparatus or Method
In principle, the classification place for either an apparatus or a method shall be used if a
pertinent place for either of them exists. However, if the apparatus has no classification
place, then the method in the apparatus shall be used for a classification place. Where the
classification place for a method does not exist, the place for an apparatus which performs
the method shall be used. If neither an apparatus nor a method has a relevant classification
place, the place for the product which was manufactured with the apparatus or the method
shall be used.
(2) Products
The manufactured product shall be classified with the place pertinent to the product. If no
such place exists, an appropriate function-oriented place shall be used. And if there is no
appropriate function-oriented place, then the areas using this manufactured product shall be
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used for classification place.
(3) Multistage Process or Plant
A multistage process or a plant such as a process with plural stages or a composition with
plural apparatuses shall be classified with such of place pertinent to the composition (for
example, B09B). If there is no such classification place for the composition, the place for the
output produced from the composition shall be used. Where constituents of the
composition have individual characteristics, each constituent shall be classified, too. Provided
however that the composition has no intrinsic characteristics but its constituent has, the
composition shall not be classified.
(4) Specifics or Structural Parts
If structural or functional specifics or parts in the claimed invention are used only for a
certain apparatus, the claimed invention shall be classified into the place for the apparatus.
However, if such specifics or structural parts can be used for more than 2 apparatus, it is
advisable to classify in place for that specifics or parts. In the meanwhile where there is no
place for them, it shall be classified in place for the relevant apparatus.
(5) Single Technical Subject Matters Included in Multiple Groups
Where a single technical subject matter is related to more than 2 groups directly and
intrinsically, the technical subject matters relevant to multiple groups shall be classified in
the place for all the related groups. Also, if a single technical subject matters is included in
more than 2 groups of equal level under the same main group, the technical subject-matter
shall be classified in the place for a higher hierarchic group; provided however that the
inclusion into multiple groups is of little importance for search and the combination of
elements simply arrives to this single technical subject matters. Yet, where the technical
subject is related to several groups under different main groups, the subject-matter shall be
classified in place for each group.
(6) Compounds
The technical subject-matter of chemical compounds (organic, inorganic or polymer) shall
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be classified in the relevant place for Section C pursuant to its intrinsic characteristics of
compounds (i.e. chemical structure). If the compound is also related to the field of use and
the field of use is essential content of the technical subject-matter, the field of use shall be
classified in the place if a pertinent place exists. However, if the technical subject-matter of
the claimed invention is related to the use of the compound, only the field of use can be
classified in the place.
(7) Mixtures or Compositions
Where mixtures or compositions are technical subject-matters in the claimed invention, they
shall be classified in the relevant place pursuant to the intrinsic features of mixtures or
compositions (for example, C03C for glass composition, C04B for cement or ceramic
composition, C22C for alloy composition). If there is no relevant place, they shall be
classified pursuant to their use or application. And if there are essential characteristics in the
use or application, the mixtures/composition per se and their application or use shall be
classified into the place.
(8) Manufacture or Treatment of Compounds
When the technical subject-matter of the claimed invention is related to the manufacture
or treatment of compounds, the compounds per se shall be classified provided however that
the methods of manufacture or treatment shall be also classified if pertinent places exist. Yet,
the general method of manufacture or treatment of compounds shall be classified in the
place if the relevant place exists.
(9) Classification of Compounds in Markush Type
With regard to chemical compounds in Markush Type which is generally defined in a
chemical formula, the general chemical formula of the compound shall be classified in the
place individually if the formula has a few relevant places (for example, less than 5).
If specified compounds are things per se in the claimed invention (particularly
composition), output produced from the process of claims, or their derivatives, the
compounds shall be classified in each relevant place of the above mentioned. 'Specified' in
this text refers to ① 'designated' of the structure of compounds by title or formula or
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'inferred' from the manufacturing method of a specific reactant among selective reactants,
or ② 'identified' with physical properties (for example, melting point) in the description or
'described' as an implement example where the manufacturing method is depicted in detail.
They are classified as useful information for the purpose of other searches.
(10) Classification of Compounds in Combinatorial Libraries
With regard to combinatorial libraries where a large number of different compounds or
bioactive substances are involved, each individual compound shall be classified pursuant to
the same method as the classification of compound in Markush type. Provided however, the
characteristics of the entire library shall be classified into the combinatorial chemistry (C40B).
3.5 Confirmation of the IPC
(1) When the pre-classification is assigned by an outsourcing agency and transferred to the
examiner in charge, the examiner shall check as to the pre-classification has been
appropriately made based on the technical subject-matter of the claim with referring to the
detailed description and drawings (if necessary). If an application has been found to be
incorrectly pre-classified by the agency, the examiner may reclassify the classification with
appropriate classification places.
The IPC classification has a hierarchical structure consisting of IPC section → subsection
→ class → subclass → main group → subgroup. In consideration of the hierarchical
structure, the classification shall be determined following hierarchical path from high to low
level.
(2) After the pre-classification is verified or reclassified correctly, the pre-classification is
confirmed as „official classification‟ by the examiner in charge. If further classification is
required with consultation of other examiners in the same examination division, the
application is re-allocated to another examiner and reclassified by mutual agreements
between the examiners concerned. The examiner receiving the application shall „confirm‟ the
classification.
(3) Where different examination divisions are involved for classification modification, or even
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if it is done within the same division but fails to reach an agreement between examiners
concerned, the classification adjustment shall be requested by stating the reasons for
reclassification.
(4) In the case of second request (or first request for international application) for the
reclassification of the same patent application, officers in Examination Division who are
responsible for modifying the classification presumably pertaining to the application shall
modify the classification through mutual agreement. If the officers in charge of classification
modification in the Examination Division fail to reach a mutual agreement, the classification
shall be modified in the presence of a Bureau classification officer (in the case of different
examination bureaus involved, all Bureaus classification officers shall attend). When there still
remains disagreed, the classification modification officers in the Examination Bureau and
Division shall reach an agreement for classification under the initiative of the officer in
charge of pre-classification review in the Patent Examination Support Division.
(5) With regard to an application on the request for an accelerated examination and an
application which requires an international search pursuant to the Patent Cooperation Treaty,
the classification confirmation or reclassification request shall be made within 2 weeks from
the day of application transfer or receipt. This time limit shall be extended for 1 month for
applications other than the aforementioned.
4. Laying Open of Application
4.1 Purpose
The scheme for laying open of application was introduced along with the system for
examination request. The laying open of application, regardless of examination performance,
is designed to prevent overlaps in investment and research by publication of the application
after the prescribed period elapsed from the filing date.
In the past when the laying open of application was not introduced, the application was
not laid open until its registration. Therefore, if the examination on the application was
delayed, so did its publication. This results in not only devaluation of the invention as a
technical information but also failure to use the invention as common knowledge for social
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contribution in industrial development. In this regard, the examination on the application
and its publication are separated and the system for laying open is introduced after the
prescribed period elapsed from the filing date.
4.2 Date
(1) The time for laying open of application shall be more than one year and six months after
the application filing date. However, as for the applications on priority claim under the treaty
or on domestic priority claim, the publication time shall be reckoned from either the filing
date of application in the country where the initial application is filed or the filing date of
the earlier application (or the earliest filing date if the application involves more than 2
priority claims)
(2) Since divisional application or converted application is accorded the same filing date as
the parent application, the time for laying open is reckoned from the filing date of the
parent application. Therefore, if the divisional or converted application is filed before the
publication date of the parent application, the application shall be laid open later than one
year and six months from parent filing date. In the meanwhile, if they are filed after the
publication date of the parent application, the application shall be laid open without delay.
(3) If an applicant submits the early publication request form (Form (xxv) in the Enforcement
Rules of the Patent Act), the application can be laid open within one year and six months
from the filing date.
4.3 Content
(1) In principle, all patent applications shall be laid open after the expiry of the period of
one year and six months from the date falling under any subparagraphs in Article 64 (1) of
the Patent Act or before that date if requested by applicants. The matters to be laid open
are enumerated in Article 19 (3) of the Enforcement Decree of the Patent Act, provided
however that the following application, which is in general to be laid open, shall be
excluded; an application which omits the statement of claims as prescribed in Article 42 (5)
of the Patent Act, an application whose registration is published, or an application which is
invalidated, withdrawn, abandoned, or decided to reject.
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(Example) With regard to the original application as a basis of domestic priority claim, it
shall be laid open when an application requests its early publication before it is regarded to
be withdrawn (i.e., within one year and three months from the filing date of the original
application) or the due date for publication arrives (for example, the original application
where the priority under the treaty is claimed at the same time).
(2) The patent application shall not be disclosed in patent gazette if it contains matters
which require confidentiality due to national security, or is liable to contravene public order
or morality or to injure public health. (the Patent Act Article 64, the Enforcement Decree of
the Patent Act Article 19 (3))
4.4 Form of being Laid Open
The application is laid open in online patent gazette on KIPO website. The same
publication can be found in DVD-ROM and via KIPI website.
4.5 Effects
(1) After an application is laid open, the applicant may give a written warning that the
patent application for the invention has been filed. The applicant may demand a person
who has worked the field invention as a business, after the person being warned in writing
or knowing that the invention has been laid open, to pay compensation in an amount
equivalent to what the applicant would have normally received for working the invention
from the date of the warning or the date on which the person knew that the patent
application of the invention had been laid open to the date on which a registration of
establishment of the patent right was made. Provided however that the right to demand
compensation may not be exercised until the registration for establishment of the patent
right. Exercising the right for compensation does not preclude exercising the patent right
(Patent Act Article 65(1)-(4)).
(2) If the application is laid open, the claimed invention shall achieve a status as prior art
pursuant to subparagraphs (ⅰ) and (ⅱ) of Article 29 (1) and also can be used for another
application for a patent or utility model registration pursuant to Article 29 (3) of the Patent
Act.
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5. Request for Examination
5.1 General
(1) The request for examination shall be filed only for an application which is pending in
KIPO. Therefore, the examination request is not allowed if the application is invalidated,
withdrawn, or abandoned. The request shall be made only one time for one application.
Once the request is admitted, it cannot be withdrawn. Also, the valid request for
examination shall continue even in case of losses in legal capacity or competency due to
death of an applicant.
In the meanwhile, where examination request is filed by a patent applicant, the request is
allowed only when a description with the claims is attached to the written application,
according to Article 59(2).
(2) Any person may request an examination of the patent application even including the 3rd
parties without interests in the application, provided however that the incompetents
including minors shall appoint legal representatives for a request procedure.
An association or a foundation which is not a juridical person but for which a
representative or an administrator has been designated may file a request for an
examination of a patent application.
(3) A request for examination shall be filed within five years (3 years for an application of a
utility model registration) from the filing date of the application.
For a divisional application or a converted application, a person may request an
examination within thirty days from the filing date of the divisional application or the
converted application, even after the expiry of the aforementioned 5-year period.
(Note) The request for examination of an international patent application shall be made
within 5 years from the international filing date, not from the submission date of its
translation to Korea pursuant to Article 11 (3) of the PCT and Article 199 of the Patent Act
(Case No. 95 Nuh 3336 (Supreme Court, 16. June. 1998)).
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(4) Where a request for examination has not been made within the prescribed period, the
patent application concerned is deemed to have been withdrawn.
5.2 Procedure
(1) A person filing the request for examination shall submit a written request (Form (xxii) in
the Enforcement Rules of the Patent Act) to the Commissioner of KIPO and pay the
examination fee (the Patent Act Article 60 (1)).
(Note) Where the number of claims increases because of amendments to the specification
after the request for examination made by a person other than the applicant, the applicant
shall pay the fee for the request for examination corresponding to the increased number of
claims. Where the examination fees for the increased claims are not paid, the applicant is
asked for the amendment. If the applicant fails to make additional payment as requested,
the amendment procedure in the pertinent specification can be invalidated.
5.3 Effects
(1) The application whose examination is on the request shall be examined by an examiner.
The application can be terminated only by either patent registration or rejection unless it is
invalidated, withdrawn, or abandoned.
(2) When the request for examination is made before the laying open of the application, the
purpose of the request for examination shall be published in the patent gazette upon the
publication of an application (or immediately if the request for examination is made after
the laying open of application).
(3) For an application omitting the claims in the specification, an applicant shall amend the
specification to include the claims till the date prescribed in Article 42(5) subparagraph (ⅱ)
of the Patent Act, in response to the notification of the request for examination by the 3rd
party.
(4) Where the request for an examination has been filed by a person other than the
applicant, the Commissioner of KIPO shall notify the patent applicant accordingly (Patent Act
Article 60(3)). Where an examiner makes a final decision (withdrawal, abandonment included)
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regarding the application whose examination is requested by a person other than the
applicant, he/she shall notify the decision to the 3rd party accordingly. (Instruction Article 26
(4))
6. Start of Examination
6.1 Examination Order
An examiner shall verify whether the application received in order is appropriately
allocated to him/herself in terms of the IPC, the validity of his/her function in examination,
etc. To prevent an examination delay, the verification procedure shall be concluded as
quickly as possible.
(1) The examiner shall review whether the technical subject-matter of the claimed invention
is classified appropriately pursuant to the IPC and whether the application is within the
scope of his/her IPC scope in charge. If the examiner finds the classification inappropriate,
he/she shall determine the appropriate IPC pursuant to the Part V Chapter 1 Section 3 of
the Guidelines and allocate the application to an examiner in charge of the re-classification
after consultation.
(2) The examiner shall review whether he/she may fall under the exclusion reasons stated in
subparagraphs (i)-(v), or (vii) in Article 148 of the Patent Act, or whether he/she shall be
excluded from exercising his/her functions in examination because he/she with less than 2
year experience as an examiner had serviced at the organization filing application for the
last 3 years right before his/her appointment as an examiner. If an examiner has reasons to
be excluded, the application shall be transferred to another examiner who is in charge of the
most similar technical classification with the approval of director of the Examination Bureau.
(3) The examination starts in the order of the request for examination by the category of an
examiner or classification of technical subject-matter (subclass). The start of the examination
in this context refers to notice for the first time under the name of either himself/herself or
the Commissioner of KIPO during the examination such as notification of grounds for
rejection, amendment request, request for consultation, or delivery of a certified copy of
decision to grant a patent.
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(4) If the date of examination request is identical by the category of an examiner or
classification of technical subject-matter, an application for a patent shall have a priority to
an application for a utility model registration. If applications are in the same kind, the
application with earlier filing date has priority over later application in terms of examination.
(5) A divisional or a converted application shall be examined in the order of their
examination request. However, their examination starts to the order of the request for the
examination of their parent application when they file after the examination request of their
parent application.
In case when the parent application is divided or converted after the examination started,
the examination shall start before the later date of either 3 months from the examination
request for the divisional or converted application or 2 months from the receipt of
application documents. Yet, in the case of a parent application on request for an accelerated
examination, its divisional or converted application does not follow the aforementioned
order but the order of the parent application.
6.2 Examination to be deferred
(1) An examiner may defer the examination of applications under following cases;
① Where an earlier application or a competitive application (an application claiming
identical inventions filed on the same date) is not laid open or a competitive application is
not on the examination request.
② Where an earlier application on the domestic priority claim is prior to the withdrawal
period pursuant to Article 56.
③ Where a trial or a litigation related to the relevant application is still on pending.
④ Where a search is outsourced to a specialized organization, an advice of outside
specialists is requested or an examination with consultation is required.
⑤ Where the period for submitting evidential documents for priority claims under the
treaty does not elapse.
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⑥ Where there arises needs for an examination to be deferred
See Part 5 Chapter 3 「8. Examination to be deferred or Extension of Pendency Period」
for the detailed content regarding deferment of examination.
(2) When an examiner decides to defer the examination, he/she shall communicate it to the
head of the examination unit and the period of deferral is less than 2 months. When the
examiner considers the examination to be deferred again because the application whose
examination had been deferred does not overcome the previous deferral reason or new
deferral reasons occur, it shall be reported to the head of the examination division (team)
following a head of the examination unit. The aforementioned reasons of (1) ④, ⑥ apply
only when an examiner cannot take any responsibility for the deferral due to such reasons
(ex, delivery of delay of prior art search report). The examiner can defer the examination
again within 2 months.
(3) The examiner shall check whether the deferral reasons are overcome for the application
whose examination had been deferred more than once a month. When the deferral reason
is overcome, the examiner shall begin the examination until the deferral period is terminated.
(4) When there are two or more patent applications claiming an identical invention, the
examination for the later applications shall be deferred till the application with earlier filing
date, referred to as the earlier application is processed, laid open, or its publication of
registration of a patent is made in Patent Gazette. However, if the both applications can be
rejected by the same reason, the examination may begin without being deferred (Article 40
of the Enforcement Rules of the Patent Act).
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Applicant Earlier
Application Examination of Later Application
Identical
Laid off
Notify grounds for rejection pursuant to Article 36 (1) after
examination
(Decide grant or rejection of a patent after confirming the
scope of a claim of
the earlier application)
Not
Laid off
Notify grounds for rejection pursuant to Article 36 (1) after
examination
(Identify the application number of the earlier application and
the claimed
invention stated in the claims, and decide a grant or rejection of
a patent after confirming the scope of a claim of the earlier
application)
Different
Laid off
Notify grounds for rejection pursuant to Article 29 (3),(4) after
examination
(Apply Article 36 (1) for identical inventor)
Not
Laid off Defer examination till the earlier application is laid off
(5) Only if the earlier application is processed, laid open, registered in patent gazette after
the examination deferral of the later application, the later application is allowed to begin the
examination process. Notwithstanding the aforementioned, however, the final decision for
the later application shall be made after confirming the scope of a claim in the earlier
application pursuant to Article 36 (1) of the Patent Act.
7. Processing Deadline
(1) For the application on the request of reexamination after its rejection and the application
cancelled and returned from the appeal against the decision to reject, an examiner in charge
shall begin the reexamination within one month from the receipt of the application
documents. Yet, if the reexamination cannot start within the prescribed one month due to
unavoidable reasons, the reasons shall be reported to the head of examination bureau for
applications cancelled and returned, or the head of examination division/team for
applications either on request for reexamination or on reconsideration by examiner before
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trial.
(2) With respect to an application on request of the accelerated examination, the examiner
shall determine as to whether the application falls under the category of the accelerated
examination within 7 days from the receipt date of the request (Instruction Article 59). In the
meanwhile, the examination shall begin within 2 months from the delivery of the notice of
the aforementioned examiner ‟s decision. The interim documents shall be processed within 2
months from the later date than date of document submission or that of the receipt of the
relevant documents of the application. (However, within 4 months as for accelerated
examination under Article 4(3) or (4) of the Directive)
(3) Reference to other processing deadlines is as follows:
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(Abbreviation: Month/M, Week/W, Day/D)
Type Initial Date Time Reference Others
IPC Classification
Definitive Classification
Receipt Date of Application Preclassification
1 M Instruction
Article 10(2)(i) Regular
1 WK Instruction
Article 10(2)(ii) Priority
2 Ds Instruction
Article 10(2)(iii) High-Speed Application
Regular Examination
Examination Start Examination Request
Date Request Order
Enforcement Rule
Article 38 Instruction Article 20
Interim Documents
Expiration Date of Designated Period/
Receipt Date of Interim Documents
4 Ms None Late Expiration
Date
Accelerated Examination
Decision for Accelerated Application
Receipt Date of Notice of Accelerated Application Request
7 Ds Instruction Article 59(1)
Expiration Date of Amendment Period/
Receipt Date of Amendment Documents
7Ds Instruction Article 59(3)
Late Expiration Date
Prior Art Search Request
Delivery Date of Patent Decision Notice
15Ds Instruction Article 86(1)
Examination Start
Delivery Date of Patent Decision Notice
2Ms (Howe ver,
within 4
month s as for
accele rated exami nation under Article 4(3) or (4) of the
Directi ve)
Instruction Article 66(1) Late Expiration
Date
Receipt Date of Prior Art Search Outcome
1M
Receipt Date of Written Amendment
1M Instruction Article 66(2)
Interim Documents
Expiration Date of Designated Period/
Receipt Date of Interim Documents
2Ms Instruction Article 66(2)
Late Expiration Date
Super Accelerated Examination
Decision for High- speed
Examination
Receipt Date of Notice of Accelerated Request
2Ds Instruction Article 59(4)
Expiration Date of Amendment Period/ Receipt
Date of Amendment Documents
2Ds Instruction Article 59(4)
Late Expiration Date
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Examination Start Delivery Date of Notice of
Accelerated Examination Decision 14Ds
Instruction Article 66(5)
Interim Documents
Expiration Date of Amendment Period/
Receipt Date of Amendment Documents
1M Instruction Article 66(6)
Late Expiration Date
Examination Deferred
Examination Start Examination Deferral Date/ Application Receipt Date
3Ms Instruction
Article 21bis Late Expiration
Date Divisional/ Converted Application
Examination Start Examination Request Date 3Ms
Instruction Article 21(1)
Late Expiration DateDocuments Receipt Date 2Ms
Request for Reexamination after Cancellation
Examination Resume
Documents Receipt Date 1Ms Instruction Article 55(1)
Extended Designation
Period
Decision for Approval
Receipt Date of Term Extension Request after
Expiration 2Ws
Instruction Article 23bis
Approval of Automatic
Extension after Expiration
8. General Principles for Law Application
(1) Where the revision of the Patent Act is made while the application is pending,
transitional measures are introduced in order to prevent disadvantages. Therefore, the
provisions of the law shall be applied as of the filing date.
(2) Since the divisional or converted applications and the applications filed by lawful right
holders are accorded the same filing date as the parent (earlier) application, the provisions
of laws are applied as of the parent (or earlier) filing date.
For example, if the divisional application is filed on July 1, 2009 based on a patent
application having filed before June 30, 2009, the Patent Act before the revision on January
30, 2009 by Act No. 9381, which entered into force on July 1, 2009, shall be enforced to the
divisional application.
Meanwhile, the Patent Act shall apply to an international patent application based on the
date of filing the international patent application, not the date of submission of documents
under Article 203(1) of the Patent Act.
(3) For an application claiming the priority under Treaty or the domestic priority, and an
application claiming purport of not-prejudicial disclosures, the provisions of the law shall be
applied as of the application filing date of the original application.
For example, when an applicant filed an application, claiming a priority in Korea after
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October 1, 2006 on a basis of the original application filed in Japan before September 30,
2006, the internationalism, which inventions publicly known or worked can be used as prior
art (amended to be included in Article 29 (1) (i) of the Patent Act by Act No. 7871 on March
3, 2006), can be applied to this application. The examiner may notify the applicant by the
grounds that it is publicly worked in Japan before the filing date in Japan.
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Chapter 2. Search for Prior Art
1. Overview of Search for Prior Art
The search for prior art is performed during the examination stage with the objective of
discovering the relevant state of the art to assess the patentability of the invention such as
novelty and inventive step. The search for prior art includes the search for earlier
applications prescribed in Articles 36 and 29 (3) of the same Act.
If considered necessary for examination, an examiner may outsource the search for prior
art to the specialized organization pursuant to Article 58(1).
2. Procedure Prior To Search for Prior Art
(1) Before searching for prior art, an examiner shall analyze technical subject-matters of the
invention. The search for prior art should be made on the basis of the claimed invention,
but the examiner shall pay due regard to the detailed description/drawings if necessary.
(2) When the application cites documents in the description, the examiner shall analyze
documents to find out whether the documents provide the starting point of the claimed
invention, show the current status of the technology, explain other solutions for the tasks
intending to resolve in the claimed invention, or describe for better understanding of the
claimed invention. If considered necessary, the examiner shall refer the documents to take a
starting point for search.
If the cited documents are not directly related to the claimed invention and it becomes
obvious that they are just stated in the description, the examiner shall disregard those
documents. When the examiner finds it that the documents are necessary to assess the
patentability but are unable to acquire via a common method, he or she shall request the
submission of the documents from the applicant and defer the examination till the
submission.
(3) If foreign patent offices or search organizations already conducted search regarding the
application of the claimed invention, the examiner shall review the search outcome to
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determine as to whether they can be used as relevant prior art.
3. Search Procedure
3.1 Search Scope
(1) The search is carried out in collections of documents or database, the contents of which
are systematically accessible. There are primarily patent documents of various countries,
supplemented by other various kinds of publications such as technical journals, periodicals,
books, any written materials as well as microfiche, CD-ROM and DVD-ROM
(2) The search is carried out in collections of documents or database which many contain
materials in all those technical fields pertinent to the invention. The search strategy should
determine the sections of the documentation to be consulted covering all directly relevant
technical fields, and may then have to be extended to sections of the documentation
covering analogous fields, but the need for this must be judged by the examiner in each
individual case, taking into account the outcome of the search in the sections of the
documentation initially consulted.
3.2 Conditions under which Search is not Required or is Limited
No special search effort needs to be made for searching or search may be carried out
within the necessary scope if the claimed invention falls under any of the following cases.
The examiner shall notify the applicant of the fact that the application concerned does not
comply with the provision of Patent Act to such an extent that a meaningful search is
impossible for some or all of the claims.
① Where amendment made beyond the scope under the Patent Act Article 47
② Where the claimed invention is not patentable under Article 32
③ Where the claimed invention is incomplete or not industrially applicable under Article
29
④ Where the claims of the application do not relate to one invention only, nor to a group
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of inventions linked so as to form a single general inventive concept under Article 45
In such case, the examiner may first notify the grounds for rejection based on the lack
of unity of invention and wait for the applicant's response.
⑤ Where the examiner is unable to interpret the claims due their lack of clarity and
conciseness
However, if the examiner can understand the invention despite any deficiencies in the
statement, the examiner shall proceed with the search and assessment of patentability
within the scope of the defined invention.
3.3 Time Coverage of Search
(1) In conducting a search, the examiner should search documents published before the
filing date of the application (or, for an application with a priority claim, documents
published before the date of priority).
However, in exceptional cases the search can be extended to documents published after
the filing date. This exception applies if documents are searched and used for the purpose
of applying Article 29(3) and (4) or Article 36 of the Patent Act. In addition, where the
validity of a priority claim under treaty or a domestic priority claim cannot be verified in the
search stage, the basic reference date for the search is deemed to be the filing date of the
application.
(2) A search does not normally take into consideration documents published after the filing
date of the application. However some extension is necessary for specific purposes. For
example, a later document describes the underlying principle or theory of the invention,
which could give the examiner a better understanding of the invention, or a later document
may also confirm the incorrectness or incompleteness of the of the underlying rationale or
facts of the invention.
(3) For an application with a priority claim under treaty or a domestic priority, the basic
reference date for the search on each claim is the filing date of the application. However, if
there any documents published between the earliest prior date and the filing date of the
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application, the examiner should first identify the relevant date of each claim between the
prior date and the filing date and then decide which documents to cite.
However, when there is no trouble to decide the reference date in each claim, the
examiner may decide the priority date in each claim and then conduct the search for prior
art by each claim.
3.4 Suspension of Search
(1) The examiner may suspend the search when he/she discovers prior art clearly
demonstrating lack of novelty or inventive step in the entire subject matter of the claimed
invention.
(2) In case of a particular application, it can take a substantial amount of time and energy in
completing the search. Therefore, the examiner shall devise the most effective method to
conduct the most thorough search for prior art within available time and cost. In this case,
even if the examiner with the rational judgment fails to discover effective prior arts for
search, he/she may suspend the search.
3.5 General Principle of Search
(1) The search will take into consideration prior art incorporating technical features which
are equivalents to the technical features of the claimed invention, in light of the detailed
description of the invention. However, such equivalent elements are not considered only
limited to the scope of technical features explicitly described in the detailed description.
(Ex) The claimed invention relates to a device characterized by structure and function of
plural parts. Where claim describes the parts are put together by welding, it is interpreted to
include other types of combining elements such as gluing, riveting and etc. other than
welding unless it is clearly stated that the technical feature of the invention only has to do
with the means of welding.
(2) The search carried out in sections of the documentation to be consulted for the
independent claim(s) must include all dependent claims within the identical classification.
Dependent claims should be interpreted as being restricted by all features of the claim(s)
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upon which they depend. Therefore, when the patentability of the subject-matter of the
independent claim is not questioned as a result of the search, there is no need to make a
further search or cite documents in respect of the subject-matter of the dependent claims as
such.
(Ex) For an invention comprising pharmacological composition in curing for nail disease and
disorder, where prior art of independent claims describing combining method of main
components for the claimed invention does not exist, there is no need to make a further
search in respect of dependent claims using volatile organic solvent as a composition carrier.
(3) When the application contains claims of different categories, all these must be included
in the search. However, if a product claim clearly seems to be both new and non-obvious,
the examiner should make no special effort to search claims for a process which inevitably
results in the manufacture of that product or for use of the product.
When the application contains only claims of one category, it may be desirable to include
other categories in the search.
(Example 1) An examiner can assess novelty and inventive step with regard to final products
by carrying out the search, even though invention relates to a method of chemical process.
(Example 2) In case of the process invention for manufacturing article or in case of
determining whether the producing process can be easily solved after the prior art search is
conducted on the claimed invention.
(4) The search for prior art shall be made on a basis of the claimed invention. Nevertheless,
if no additional excessive efforts are required, the examiner may conduct the search for prior
art on the based on the invention stated in the description but not included in the scope of
the claim, with preparing for the amendment.
3.6 Citation of Prior Art Documents
(1) The prior art pointed as the grounds for rejection shall be cited only if there are no
doubts concerning the fact that it is publicly known or worked, or described in a publication.
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(2) A certain situation occurs in which other documents ensure the accuracy of the contents
underlying the prior art document.
(Example) One document of the patent family is published before the filing date of the
application, but is published in a non-Korean language, whereas a different member of the
same patent family is published in a Korean language but after the filing date of the
application. Such same patent family written in Korean can be cited as prior art. In this case,
the examiner may notify of the fact that the family document in foreign language had been
publicly known before the filing date and have such document attached to his notice for
rejection.
(3) The examiner can cite the abstract as prior art document for denying novelty and
inventive step of the claimed invention. However, it is noted that the examiner shall notify of
the grounds for rejection on basis of the contents disclosed in the abstract, but not on the
ground of the whole statement of the application other than the abstract, since the abstract
filed does not belong to the application.
(Note) In case of using the abstract as cited documents, an examiner needs to find out
matters on whether inventive step can be assessed just by citing the invention disclosed in
the full texts. As you can see previously, the main points between the abstract and the full
texts are different and there is no ground that the full texts and the abstract are identical
just because of the full text easily being obtained. When it comes to notifying the grounds
for rejection in the process of the examination and trial, an examiner is required to notify of
the reasons by specifically comparing the prior art based on the contents of documents with
the full texts where documents with the full texts can be obtained. As this case shows,
where an examiner failed to obtain the documents with the full text and had to use the
abstract for determining inventive step due to failing of obtaining documents with the full
text, the examiner should notify on the grounds of the contents disclosed in the abstract
(Patent court decision 2001. 7. 19. 2000 Heo 6288).
(4) The notice for rejection must be accompanied by copies of all documents cited, except
the documents which include bulky contents. In such case, the examiner can just copy the
pages directly related to the ground for rejection. However, in certain circumstances the
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applicant has easily access to the Internet, such as when the applicant has appointed an
agent to undertake a patent-related procedure before the office or when the applicant has
filed his application in the electronic form, the examiner may state the Internet address (URL)
where the applicant can find the cited documents and the publication number on the notice
for rejection instead of sending copies of the documents, particularly in citing the patent
documents.
Also, the examiner may just indicate the channel to find the cited document in certain
circumstances he finds it difficult to attach the copies of the documents, especially non-
patent literature to his notice for rejection due to paid access, prohibited copy, ban of
transfer of documents and etc.
(5) When the examiner discovers prior art which is not yet laid open but considered to be
used as a status of „another application‟ under Article 29 (3) of the Patent Act, he/she shall
defer the examination till the publication of such prior art. The examiner may cite the prior
art (another application) as grounds for rejection only after its publication.
3.6 Others
Reference can be made to search reports regarding international applications under PCT
or patent applications in European Patent System. The related prior art in search reports can
be classified as follows depending on its relevance.
① ｢X｣ : In case denying novelty and inventive step can be determined by reference to
just one relevant document
② ｢Y｣ : In case of denying inventive step when the present document is combined with
one or other documents
③ ｢A｣ : In case the document is related with the claimed invention despite failing to fall
upon ｢X｣ or ｢Y｣
④ ｢O｣ : documents mentioned about use, exhibition or oral disclosure
⑤ ｢P｣: Patent documents before the filing date of international application after the prior
date.
⑥ ｢E｣: Patent documents disclosed before the date of international application and
documents disclosed after the date of international application
⑦ ｢T｣ : Cited documents in order to understand principle and theory of invention or
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disclosed later than the prior date or the date of international application
⑧ ｢L｣ : Documents disclosed to negate the contents of claimed applications or raise the
questions of priority claims or to determine other contents
4. Measures after Searching
(1) The examiner completes an examination report(ER) right before making a final decision
to grant or reject a patent application. When identifying the documents cited in the ER, the
examiner should indicate the relevance of each document in the citation sheet with an X or
Y annotation.
(2) The「Examination Report」may contain keywords and search history used in search for
prior art. For the search history, the examiner may include title of search DB, search formula,
and number of matches.
(3) The examiner may add to the「Examination Report」the examination reference found in
search for prior art.
5. Search for Prior Art by Specialized Search Organization
KIPO may outsource some of its prior art searches under Article 581 of the Patent Act. It
is designed to mitigate the heavy burden of an examiner and to shorten the examination
processing period, which would eventually improve the examination quality and protect
applicants' interest.
5.1 Search Request
(1) According to the monthly schedule, the examiner selects the application for the service
by external organization. The head of the Examination Bureau confirms the selection made
by the examiner and requests the specialized search organization for search service.
(Note) A head of the Patent Examination Support Division plans and notify the annual
search request schedule for each Examination Bureau. A head of each Examination Bureau
1 Article 58: If considered necessary for examination of a patent application (including an international search or international
preliminary examination), the Commissioner of KIPO may designate a specialized organization and request it to search for prior
art, make an international patent classification, and conduct other tasks prescribed by Presidential Decree.
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then allocates the search request schedule in terms of monthly and an examination team.
(2) A head of the Information Management Division provides applications selected for
external search services to the specialized search organization.
5.2 Delivery and Review of Prior Art Search Outcome
(1) The examiner conducts preliminary review before substantive examination and
confirmation review after substantive examination.
The examiner review delivery method of search outcome, appropriateness of searched
documents, accuracy of the relevancy between searched documents and the claimed
invention, balanced composition among search documents, and other issues related to the
prior art search service.
(Note) The search outcome produced by the external organization shall be supplied with the
format designated by KIPO. 「Search Report on Prior Art」compares the technical subject-
matter of each claim with its cited documents and has the number of page and line of cited
documents additionally. Also, the cited documents attached to the「Search Report on Prior
Art」 shows the technical subject matter in pertinent method comparing with the technical
subject-matter of each claim of the application.
(2) As a part of preliminary review, the examiner reviews the whole contents of 「Search
Report on Prior Art」according to the list in 「Delivery Statement of Prior Art Search
Outcome 」and states the review outcomes in 「Review Statement of Prior Art Search
Outcome」. The examiner reports the review outcomes to a director of the relevant
Examination Bureau following a head of the Examination Division (Team).
The director of the Examination Bureau also reports the review outcomes to both the
General Services Division and the specialized search organization having conducted search
service with the attachment of the 「Review Statement of Prior Art Search Outcome」 and
notifies the current state of the reviews to the Patent Examination Support Division.
(3) As a part of confirmation review, the examiner, in the course of substantive examination,
prepares analysis report illustrating the utility of the search outcomes (produced from the
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external search service) in accordance with its practical use on the Patent Examination
Processing System.
(Note) The service contract for search for prior art contains the provision of reexamination
obliged to the service organization in the case when the examiner evaluates the outcomes
as unutilized.
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Chapter 3. Examination Process
1. Overview
When the application of a patent fails to satisfy the prescribed requirements in the Patent
Act, the examiner shall notify the grounds for rejection to the applicant and provide him/her
with an opportunity to submit a written statement of argument in response. When the
submitted written statement of argument or amendment thereafter still fails to resolve the
notified grounds for rejection, the examiner shall reject the patent application. The
examination proceeds as shown in the following flowchart.
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2. Understanding of Invention
(1) In the examination stage, the examiner shall clearly understand essential features of the
invention by focusing on the method of problem solving different from the background and
also considering the effects of the invention.
(2) The examination is directed to the invention as originally filed, but should take into
account any changes from amendments by the applicant prior to the notice of the rejection
grounds, if any.
Part V. 「6.3.1 Confirmation Method for Amended Specification」can be referred for the
method confirming the amended specification.
(3) The examiner should refer to the claimed invention in the manner stated in a claim. The
terms described in a claim should be interpreted within the general scope and meaning of
the technical field, unless they have a specific meaning that is explicitly defined in the
description.
3. Review of Prior Art Documents
The examiner shall determine as to whether the prior art retrieved can provide grounds
for rejection regarding novelty, inventive step, enlarged concept of novelty or earlier
application.
(1) Since the publication date of the prior art document is critical to access patentability
such as novelty or inventive step, the examiner shall review the bibliography to find out
whether the publication date precedes the filing date (or the priority date if the priority
claim is concerned).
With respect to the enlarged concept of novelty, the examiner shall check not only
applicants but also inventors of the application of patent (or utility model registration
application).
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"Novelty" in Chapter II of Part 2 includes the detailed information about the publication
date for prior art.
(2) The examiner shall have clear understanding about technical issues disclosed in the
relevant prior art documents. It is of worth to note that the examiner shall be careful not to
acknowledge matters, which are not disclosed in those documents with the knowledge
having acquired from the application of the claimed invention. Also, the examiner shall be
cautious not to presumably over-interpret claims without logical grounds.
4. Special Application
(1) In case of application with priority claim or case of a non-prejudicial disclosure, divisional
application or converted application, the examiner shall conduct the formalities examination
concerning validity of priority claims or procedures prior to substantive examination.
As for the examination of formalities and method regarding procedures of claims and
applications, Part IV Chapter OOO shall be referred.
(2) When the priority claim under Treaty, domestic priority claim, or claim for non-prejudicial
disclosure are found to be not complied with physical requirements, the examiner shall
request amendment to the applicant and may invalidate the procedure of the relevant claim
if deficiency is not amended. For the divisional or converted application which does not
meet requirement for applicants and period allowed for filing, the examiner shall provide the
applicant with an opportunity to explain, and return the application documents to the
applicant.
4.1 Priority Claim under Treaty
(1) A person who can claim the priority under the treaty is either an applicant having filed
the application in the State party to the Treaty or his/her legitimate successor. Where
applicants of between the original and the subsequent applications are not identical, the
examiner may, if considered necessary, request for the submission of evidential documents
proving his/her legitimacy as a successor.
As for the declaration by an illegitimate claimant of priority right, the examiner requests
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amendment to remedy the deficiency, and invalidates the relevant procedure later on if such
deficiency is not cured.
(2) The claim of priority under the treaty shall be declared within twelve months from the
first filing date of the first application on which the priority claim is based.
The declaration of the priority is made after expiration of the statutory period, the
examiner shall request amendment for the deficiency, and invalidate the relevant procedure
afterward if such deficiency is not cured. Since the procedural amendment in the priority
claim intends to limit self-evident errors only, the examiner shall state such purport to the
notice of the amendment request.
(3) If the application initially filed in the country, which forms a basis of the priority claim
(hereinafter 'original application') is regarded as the first regular application, the priority
right shall not be influenced by the status of the original application. Therefore, even
applications invalidated, withdrawn, abandoned or rejected after filing of the original
application can serve as a basis of claiming a right of priority.
The examiner shall not examine whether the original application in the country where the
application was initially filed is on the process or not in the country.
(4) If the claimed invention prescribed in the priority claim under the treaty is identical with
the invention in the original application in the country where the application is initially filed,
the claimed invention application shall be treated as if it has been filed on the date of filing
of the original application, in applying the provision prescribed in Article 29, 36 of the
Patent Act.
The effects of priority claim in setting the reference date for the application concerned
shall be determined on a claim-by-claim basis in principle and details are as follows.
① Where the invention of the original application in the country where the application is
initially filed is identical (de facto identical invention is included; hereinafter, the 'identical'
includes 'de facto identical' in this section) with the invention with the priority claim under
the treaty, the reference date shall be the filing date of the original application in the
country where the application is initially filed.
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As for the application involving 2 or more priority claims (complex priority right), when
the invention with the priority claim is stated in 2 or more original applications in the
country where the application is initially filed, the earliest filing date of the original
applications shall be the reference date.
② For the invention which is not filed in the country where initially filed, the filing date of
priority claim shall be the reference date.
For the priority claim based on the 2 or more original applications in the country
where the application is initially filed, when the invention of the priority claim is a
combination of technical subject-matters separately stated in 2 or more original applications
in the country where the application is initially filed, or when the invention of the priority
claim is a combination of new technical subject-matter and those separately stated in 2 or
more original applications in the country where the application is initially filed, the invention
of the priority claim shall be treated as an「invention which is not stated in the original
application in the country where the application is initially filed」.
③ When the original application in the country where the application is initially filed (the
application that forms a basis of the priority claim under the treaty) claims the priority right
based on another application having filed beforehand, the original application shall not be
regarded as the「earliest application」defined by Article 4 C (2) of the Paris Convention for
the Protection of Industrial Property, concerning the invention described in both the original
application and the another application. In this regard, the effect of the priority claim shall
not be recognized. Therefore, the examination in this case shall not be conducted
retroactively to the reference date and the examiner shall notify specific reason for non-
retroactive application.
When the examiner during the search for prior art discovers the prior art for the invention
that is not possible to apply the reference date in requirements for patent registration
retroactively to the period between the earliest date and the filing date of the priority claim,
the examiner shall specify the reason for non-retroactive application in the notice of
grounds for rejection.
(5) Evidential documents for the priority claim shall be submitted within one year and four
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months from the earliest filing date. Where the priority right claimant fails to submit the
evidential documents within the prescribed statutory period, the priority claim loses its effect.
Where the examiner during his/her review of examination records, discovers that
evidential documents for the priority are not submitted, he/she requests a procedural
amendment to the priority claim and invalidates the procedure afterward if the procedural
deficiency is not amended. It is worthy to note that the submission of the evidential
documents after the statutory period cannot cure the procedural deficiency.
In the meanwhile, officers in charge shall be aware that the submission of a copy of
description or drawing(s) of the invention in the original application can be exempt, if
application is filed in countries that are equipped with the on-line system for exchange of
evidential documents between administrative patent agencies and agree for on-line
delivery of those evidential documents through an electronic access system (Direct-attached
Storage, DAS) in Japan, European Patent Organization, US, and WIPO.
Also, officers in charge shall be aware that the application number in the priority claim
application may substitute for the submission of documents stating the application number
of the original application in the country where the application is initially filed in accordance
with Article 54 (4) (ii) of the Patent Act.
(6) If considered necessary, for example, there exists prior art during the period between the
earliest date and the filing date of the application with the priority claim under the treaty,
the examiner may set a time period and request the submission of translations of evidential
documents for priority claim. In the case when the claimant fails to submit the translations
in Korean within the prescribed period, the examiner may invalidate the priority claim
procedure.
4.2 Domestic Priority Claim
(1) A person eligible to apply for domestic priority claim is an applicant of the earlier
application. If the applicant of the earlier application and the applicant of the later
application are not same, the examiner shall request amendments and invalidate the
relevant priority claim procedure. The scope of amendment request is limited to correction
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of obvious errors.
Whether such determination on whether the both applicants of the earlier and the later
applications are same or not is made upon the time when the relevant domestic priority
claim has been filed. In other words, the decision is made upon when the applicant states
the contents of priority claim or when the applicant makes amendments after the filing date.
(2) The domestic priority claim shall be made within one year from the filing date of the
earlier application which forms a basis of the domestic priority claim.
Where the domestic priority claim is filed after the statutory period, the examiner requests
amendments and invalidates the priority claim procedure if the deficiency is not cured. Since
the scope of amendment request is limited to correction of obvious errors, the examiner
shall state such purport to the notice of the amendment request.
(3) Divisional or converted applications shall not serve as a basis of domestic priority claim.
Therefore, if the domestic priority claim is based on one of such applications, the examiner
requests amendments and invalidates the priority claim procedure if the deficiency is not
cured.
(4) Where the application has been invalidated, withdrawn, or abandoned or where the
decision to grant a patent or utility model registration has been confirmed, the application
hereof cannot serve as a basis of a claim of domestic priority.
If the earlier application falls under the aforementioned cases, the examiner requests
amendments and invalidates the priority claim procedure if the deficiency is not cured.
(5) Where inventions claimed in an application containing a domestic priority claim and
those stated in the specification or drawing(s) originally attached to an earlier application
(hereinafter 'first specification of the earlier application') are identical, the application
concerned shall be deemed to have been filed at the time when the earlier application was
filed, in applying the provisions prescribed in Articles 29, 36, etc. The effects of priority claim
in setting the reference date for the application concerned shall be determined on a claim-
by-claim basis in principle and details are as follows.
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① Where the invention in the first specification of the earlier application and the
invention in the domestic priority claim are same (de facto identical invention is included;
hereinafter 'identical' includes 'de facto identical'), the reference date shall be the filing date
of the earlier application which forms a basis of the relevant priority claim.
For the invention involving 2 or more domestic priority claims (complex priority right),
when the invention of the priority claim is stated in 2 or more first specification of earlier
applications, the reference date shall be the earliest filing date of the earlier application.
② Where the claimed invention is not stated in the first specification of the earlier
application, the filing date of the domestic priority claim shall be the reference date.
For the domestic priority claim based on 2 or more earlier applications, when the
invention of the priority claim is a combination of technical subject-matter separately stated
in 2 or more first specification of earlier applications, or when the invention of the priority
claim is a combination of new technical subject-matter and those separately stated in 2 or
more first specification of earlier applications, the invention of the priority claim shall be
treated as an 「invention which is not stated in the first specification of earlier application」.
③ When the earlier application which forms a basis of the domestic priority claim, claims
the priority right based on another application having filed beforehand, the effect of the
priority claim shall not be recognized for the invention which is stated in both the first
specification of the earlier application and another priority claim. Therefore, the examination
in this case shall not be conducted to the reference date when the application was filed.
When the examiner during the search for prior art discovers the prior art for the invention
that is not possible to apply the reference date for patent requirement to the period
between the filing date of the earlier application and that of the application with the priority
claim, the examiner shall specify the reason for non-retroactive application in the notice of
grounds for rejection.
(6) Where the inventions stated in the first specification or drawing(s) attached to the
application with domestic priority claim and those in the first specification of the earlier
application are identical, the earlier application, which shall be deemed to have been
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withdrawn when one year and three months has lapsed for the filing date, is regarded to be
laid open at the time when the application with the priority claim is laid open or published
in the patent gazette in applying the provision of Article 29 (3).
(7) The earlier application that served as a basis of the domestic priority claim shall be
regarded withdrawn when one year and three months has lapsed for the filing date.
When the examiner discovers that the application under his examination is based on the
domestic priority claim, he/she shall defer further examination.
In the meanwhile, where the domestic priority claim is invalidated due to deficiency in
formalities, the examiner shall resume his examination on the application suspended and
considered withdrawn. In this case, another application in Article 29 (3) of the Patent Act or
the earlier application in Article 36 may arise as problems between the earlier application
and the application with domestic priority claim.
(8) The decision to grant a patent on the domestic priority claim shall be deferred till the
earlier application is considered withdrawn. When the examiner carries out the preferential
examination on the application with the domestic priority claim, he/she shall notify the
applicant that the decision to grant a patent shall be deferred till the earlier application is
withdrawn.
4.3 Non-prejudicial Disclosures
(1) Where an application with the statement under the provision of Article 30(2) is filed, the
examiner shall examine whether the application is filed within twelve months (six months for
applications filed before March 14, 2012) from the prescribed publication date stated in the
application. If the application is filed after the due period, he/she requests amendments to
the applicant and invalidates the claim if the deficiency is not cured. The untimely claim for
non-prejudicial disclosure is considered not overcome.
(2) Where the non-prejudicial disclosure is claimed by the reason that the publication has
been made by a person with a right to obtain a patent, the examiner shall conduct
additional examinations regarding the followings; whether a person has a right to obtain a
patent upon the public disclosure, whether the purport is stated in the application, and
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whether the evidential document of the public disclosure is submitted within thirty days
from the filing date. If the examiner discovers deficiency, he requests amendments and
invalidates the claim if deficiency is not cured within the prescribed period.
In particular, the examiner shall pay special attention in following cases; where the person
who carries out the public disclosure and the applicant are not same, where the type and
the date of public disclosure are stated incorrectly, where the evidential documents
submitted are not sufficient to specify the invention in the public disclosure, or where the
evidential documents are submitted without stating the purport for the claim for the non-
prejudicial disclosure in the application (only when the evidential documents are submitted
on the filing date).
(3) For a multiple number of public disclosures, where the purport of non-prejudicial
disclosures(the box for non-prejudicial disclosure checked) is indicated in the application and
the evidential documents for each disclosure are all submitted, non-prejudicial disclosures
shall be applied to each disclosure. However, in the case of inseparable relation among the
disclosures, if the evidential documents for the initial disclosure are submitted, evidential
documents for subsequent disclosure do not need to be submitted.
For example, when the exhibition displays an invention and sells it to the market separately,
the exemption claim for public disclosure shall be made to both exhibition displays and
market sales with evidential documents respectively. However, if the market sales are
closely connected with the exhibition pursuant to the exhibition contract, the submission of
the documents for market sales in this case can be exempt.
(Note) Under the First-to-File rule, the public disclosure requirement is exceptionally exempt,
which is designed to protect a patent by recognizing novelty when a certain procedural
requirements are satisfied and to further promote industrial development. Also, this protects
the public confidence and guarantees the foreseeability.
(4) For a multiple number of claims for non-prejudicial disclosure, the legitimacy of the claim
shall be judged by each claim.
(5) Where the claim for non-prejudicial disclosure is recognized as legitimate, novelty and
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inventive step are judged as if the concerned invention having publicly known deems not to
be known publicly.
4.4 Divisional or Converted Application
(1) A person who can file a divisional or converted application is an applicant of its original
application. Where applicants are not identical (all applicants shall be same if involving
several applicants), an examiner shall provide an opportunity for petition and then return
the concerned application back to an applicant. The scope of amendments of correcting
applicants shall be limited to an obvious error.
The decision as to whether or not applicants of an original application and a divisional or
converted application are same shall be made as of the time when a divisional or converted
application is submitted. It is regarded as legitimate application where the name of an
applicant of original application changes on the filing date of divisional or converted
application.
(2) A divisional application shall be filed only during the period designated for the
amendment of specification or drawing(s) or during the period designated for an appeal
against the decision to reject a patent. Conversion of the application shall be made within
thirty days from the date that an applicant initially receives a certified copy of decision to
reject a patent (or an extended period, if an extension request has been approved).
Meanwhile, even if an appeal against the decision of rejection is requested, a divisional
application may be filed within thirty days from the date of transmittal of a certified copy of
the decision of rejection (where the period under Article 132(3) is extended, the extended
period).
Where a divisional or converted application is filed after the statutory period expiry, an
examiner shall provide an opportunity for petition to an applicant and then return the
application back to an applicant pursuant to Article 11 of the Enforcement Rules of the
Patent Act.
(3) Where an application has been invalidated, withdrawn, abandoned, or confirmed for
decision of rejection, division or conversion shall not be made based on the application.
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Also, a converted application cannot be filed after a registration of the establishment of the
patent right is made for the original application.
Where an original application falls under the abovementioned case, an examiner shall
provide an opportunity for petition and then return the application to an applicant.
Where an original application procedure closes after a divisional or converted application
has been filed legitimately, an examiner regards the application as valid and begins
examination.
(4) Matters described in the specification or drawings of the divisional applications shall be
within the scope of matters described in the specification or drawings of the original
applications as of the filing. Where division or conversion is made out of such scope, the
application is treated as follows depending on the filing date of an original application.
① Where an original application had been filed before September 30th, 2006, an
examiner shall deliver a warning notice for inadmissible division (conversion) to an applicant.
Where a written statement of argument submitted by an applicant still fails to cure this
scope violation, he/she shall deliver a notice for inadmissible division (conversion). After
delivering the notice for inadmissible division(conversion), an examiner conducts an
examination as of a filing date of divisional (converted) application, not retroactively.
Where an application contains both a reason for inadmissible division (conversion) and
a ground for rejection, an examiner shall in principle confirm the admissibility of conversion
(division) before notifying the ground for rejection. However, where the ground for rejection
is nothing to do with a retroactive filing date (admissibility of conversion or division), an
examiner may deliver a warning notice of inadmissible division (conversion) and a notice of
grounds for rejection simultaneously.
Where a notice of inadmissible division (conversion) is delivered, an examination shall
be conducted as of the filing date of divisional (converted) application. However, if a
violation of division (conversion) scope is legitimately cured during an examination stage, an
examination shall be conducted retroactively on an original filing date.
② Where an original application had been filed after October 1st, 2006, an examiner shall
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deliver a written notice of the ground for rejection by reason of scope(division or conversion)
violation. Where an argument statement or amendments fail to cure a scope violation, an
examiner shall make a decision to grant a patent.
Under this circumstance, where an application contains other rejection reasons along
with the scope violation, an examiner includes these grounds for rejection into the same
written notice of the ground for rejection aforementioned.
(5) Where a divisional application is made legally and a claimed invention of the divisional
application is identical to a claimed invention of the original application after the division,
the applications shall be subject to the provision of Article 36 (2). In such case, amendments
of the original application are required and it shall be made at the time of filing date of the
divisional application (the Enforcement Rules of the Patent Act Article 29 (3)).
(6) Where an original application (hereinafter referred to as “Application A”) is divided into a
divisional application (hereinafter referred to as “Application B”) and the Application B is
divided into another divisional application (hereinafter referred to as “Application C”), the
Application C is regarded legal and is deemed to have been filed at the time of filing of the
Application A, provided that the Application B meets all the requirements for division as to
the Application A, and that the Application C meets all the requirements for division as to
the Application B.
A converted application shall be treated in the aforementioned manner.
4.5 Application by a Person Entitled to the Grant of a Patent
(1) In order for an application to be recognized as an application by a person entitled to the
grant of Korean patent (hereafter referred to as “a lawful holder”), the following
requirements shall be met; ① an application by the unentitled person had been filed earlier
than by the lawful holder of a right, ② an application by the unentitled person is either
rejected for a patent grant or invalidated in a trial due to illegitimacy of an applicant (an
application is filed by the entitled person), ③ an application by the lawful holder is filed
within thirty days from the date of rejection or invalidation confirmation (invalidation
confirmation adds another requirement of 'within two years from the date for publication of
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registration' in the case of a patent application by the unentitled person), and ④ a scope of
a claimed invention in an application by the lawful holder of a right falls within the invention
scope in an application by the unentitled person.
Where an application by the lawful holder is filed with the Form (xiv) in the Enforcement
Rules of the Patent Act (including an application where an applicant argues his/her
legitimacy as the lawful holder in the written statement of argument during an examination
stage), an examiner shall study the legitimacy of an application before any other grounds for
rejection. If an examiner doubts an applicant's legitimacy regarding the abovementioned
requirements of ①, ③ and ④, he/she shall deliver a notice stating that a filing date shall
not be retroactive.
Where the requirement of ② aforementioned is not satisfied, except for special cases, an
examination shall be deferred. The examination shall be resumed promptly after a decision
to patentability or a invalidation trial is confirmed.
(2) Where an application is recognized as a legitimate application by the lawful holder of
right pursuant to Articles 34, 35 of the Patent Act, it is deemed to have been filed at the
date when an application by the unentitled person had filed. In other words, with regard to
an application by the lawful holder, judgment of patent requirements, period calculation, or
related provisions of the rules and regulations shall be determined as of the date that the
unentitled person files an application.
For example, where an application by a third person is filed during the period between
the filing date of an application by the unentitled person and the filing date of an
application by the lawful holder, an application by the lawful holder shall not be rejected
due to a third party's application. As aforementioned, the filing date of an application by the
lawful holder is retroactive to the filing date of an application by the unentitled person,
which comes earlier than the third party's application. In this case, therefore, an application
by the third party is rejected based on an application by the lawful holder.
(3) With regard to a request for examination for an application by the lawful holder after
five years from the filing date of an application by the unentitled person, it is deemed valid
as long as the application by the lawful holder and the request for an examination are filed
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simultaneously (or on the same date).
(4) The scope of invention in an application by the lawful holder of a right is limited to the
claimed inventions as well as those disclosed in the specification or drawings of the
application by the unentitled person.
Where an application by the lawful holder includes inventions, which fall beyond the
aforementioned scope (for example, an application by the lawful holder involves a multiple
number of inventions, among which only some inventions fall within the scope of inventions
in an application by the unentitled person), the filing date of an application by the lawful
holder shall not be retroactive in the examination.
4.6 International Patent Application
(1) 「International Patent Application」is an international application where the filing date is
established under the Patent Cooperation Treaty(PCT) and Korea is designated as a
designated State for obtaining a patent.
Except for some exceptional clauses of the Act including enlarged earlier application, an
international patent application is treated as an ordinary patent application filed on the
international filing date. In this regard, the international filing date becomes the patent filing
date, while the specification claims, and drawings having submitted at international
application are considered as legitimate description and drawings pursuant to Article 42 (2)
of the Patent Act.
An international application filed in foreign languages is deemed to have been withdrawn
if its Korean translation is not submitted according to Article 201 of the Patent Act.
An examiner who is in charge of an international application shall pay attention to the
following matters.
(2) Where an international application enters domestic stage with the Korean translation
submitted, claiming a priority under the Patent Cooperation Treaty, this priority claim is
treated as the priority claim under the Treaty. On the other hand, where an application
which serves as a basis of the priority claim is either an application filed in Korea or an
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international application where Korea is the only designated State for obtaining a patent, the
priority claim is considered as domestic priority claim, instead.
(3) Where an international application filed in foreign language becomes “another
application” referred to in Article 29 (3), the application is considered to be laid open at the
time of an international publication. However, the scope of inventions of another application
is limited to the inventions described in the specification, claims or drawings of both the
international application as of the international filing date and its translation.
(4) Where an international application serves as a basis of domestic priority claim and
therefore becomes “another application” referred to in Article 29 (3), the application is
considered to be laid open at the time of an international publication. However, the scope
of inventions of another application is limited to the inventions described in the specification,
claims or drawings of both the international application as of the international filing date
and the application with domestic priority claim.
(5) In case of an international application, a person intending to apply Article 30 (1) to the
invention claimed in an international application may submit a written statement stating the
purport of non-prejudicial disclosure of the invention and an evidential documents within 30
days from the reference date (the period designated for documents submission in Korea, or
the examination request date if such a request is filed within the designated period), even
though such purport has not been stated in a written international application.
(6) Where an international application with domestic priority claim is filed in a foreign
language, the scope of inventions of the earlier application, when it is laid open or
registered in patent gazette, is limited to the specification, claims, or drawings having been
submitted at the international filing date as well as the matters stated in both an
international application and its translation.
(7) Where an earlier application, which serves as domestic priority claim, is an international
application, inventions commonly stated in both an application with the domestic priority
claim and the earlier application (which is limited to the specification, claims, or drawings
having been submitted at the international filing date) are considered to have been filed at
the international filing date of the earlier application.
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(8) Where Korean translation of the written amendment regarding the description or claims
pursuant to Articles 19 and 34 of the Patent Cooperation Treaty is submitted within the
reference date, an examiner proceeds the examination procedure with considering an
international application to have been self-amended according to Article 47 of the Patent
Act.
(9) The scope of amendments to the specification of an international application filed in a
foreign language is limited to the specification, claims, or drawings (limited to explanatory
parts in drawings) of its translation, or drawings (except the explanatory parts in drawings)
of the international application as of the international filing.
(10) An examiner may request an applicant of an international application to submit copies
of documents cited in the International Search Report or International Preliminary
Examination Report. If considered necessary for an examination, an examiner under the
name of the Commissioner of KIPO may request the submission within the designated
period.
5. Notice of Grounds for Rejection
(1) The Patent Act (Article 62) stipulates that the examiner, before the decision to reject an
application, should notify an applicant of the grounds for rejection and give him/her an
opportunity to submit a written argument with specifying a designated period.
This provision is designed to prevent errors or mistakes by an examiner since he or she
shall not be always expected to have the advanced knowledge requisite to a judgment to
patentability in a claimed invention. And also it would be too harsh to reject a patent
outright without giving an error correction opportunity under the First-to-File rule.
The grounds for rejection are as follows.
① Where a claimed invention is not patentable pursuant to Article 25ㆍ29ㆍ32ㆍ36 (1), (3)
or 44
② Where no persons are entitled to obtain a patent according to Article 33 (1), or where
an a claimed invention is not patentable pursuant to the proviso of the same Article.
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③ Where it violates the clause(s) of the Treaty
④ Where requirements in Article 42 (3)(ⅰ), (4), (8) or Article 45 are not satisfied.
⑤ Where an amendment is out of the scope prescribed in Article 47(2)
⑥ Where a divisional application is filed out of the scope prescribed in Article 52 (1)
⑦ Where a converted application is filed out of the scope prescribed in Article 53 (1)
(2) The period designated for submission of the ground for rejection shall be within two
months regardless of whether an applicant is non-resident or not. However, the designated
period hereof may add an additional period required for tests or results evaluations, when a
written statement of argument requires tests and their evaluation and their time
consumption is acknowledged.
(Note) The period designated by the Commissioner of KIPO (for an amendment request in
accordance with Article 46 of the Patent Act) is within one month.
5.1 Instructions for Notice of Ground for Rejection
(1) Except for special cases, all the grounds for rejection having been discovered during an
examination stage shall be notified collectively. Also, in order to protect a procedural interest
of an applicant in his/her amendment and to expedite an examination process, an examiner
shall notify grounds of rejection altogether which might be conflicting.
However, the followings are an exception for collective notice.
① Where contents of a claimed invention cannot be comprehended due to lack of clarity
in the description, an examiner shall notify only the ground for rejection due to violations of
Article 42(3), (4) without conducting prior art search or accessing the patentability
requirements regarding Novelty and Inventive step etc..
However, where lack of clarity in description is insignificant so that understanding of a
claimed invention is possible, an examiner shall conduct prior art search and review
requirements within his/her comprehension of a claimed invention. Then, an examiner shall
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notify the grounds for rejection found in a prior art search and requirements review and
other rejection grounds in violation of Article 42(3), (4) altogether.
② Where it is certain that a claim has a newly added matter, or where it is not certain
whether there is a ground pursuant to Article 32 of the Patent Act (invention that is liable to
contravene public order, etc.), or where it is clear that a claim does not constitute an
invention and is not industrially applicable, an examiner shall notify the aforementioned
grounds for rejection without judgment on requirements for patentability such as novelty or
inventive step.
③ Where an application fails to satisfy the requirement for a single patent application
pursuant to Article 45 of the Patent Act, an examiner shall conduct an examination on
inventions which fall under the scope of a group and notify the grounds if discovered
through the examination, along with the rejection ground regarding lack of unity.
However, where considered efficient proceeding of an examination, an examiner may
notify the violation of Article 45 before judging other requirements for patentability.
(2) Where an examiner notifies the ground for rejection, he/she shall stipulate the relevant
provisions of the Act or laws. Also, for two or more claims included, the grounds for
rejections should be indicated on a claim by claim basis. Details shall be referred to「5.4
Examination Method by Each Claim」.
(3) The grounds for rejection shall be stated with definite, concise, normal sentences to help
an applicant's better understanding. Particularly, the followings are important.
① For a prior art that is related to a judgment of inventive step, an examiner shall cite
the minimum number of documents deemed necessary to build a rationale for rejection
grounds. An examiner shall stipulate the part of the cited documents that are used for a
basis of rejection.
② Where an examiner intends to deny novelty or inventive step by referring to the fact
that the claimed invention is publicly known or worked before the filing of the patent
application, he/she shall specifically state facts showing that it is publicly-known or worked.
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③ Where an examiner renders a notice of the grounds for rejection due to deficiency in
detailed description of a claimed invention, he/she shall specify the deficient parts and
stipulate the corresponding reasons.
(4) When notifying a ground for rejection of lack of inventive step, an examiner shall clearly
describe the difference between the invention disclosed in the claims and the closest cited
invention. (See Part 3, Chapter 3, 5.1 Inventive Step Assessment Procedure) However, the
examiner may not describe the difference between the invention disclosed in the claims and
the closest cited invention only where a ground for rejection of lack of novelty and a ground
for rejection of lack of inventive step are notified together. Where two grounds for rejection
are notified together, the examiner shall describe the ground for lack of novelty according to
novelty assessment method (See Part 3, Chapter 2, 4. Novelty Assessment). As for the
ground for lack of inventive step, the examiner may notify the ground for rejection based on
the logic that a person skilled in the art to which the invention pertains can easily make the
invention based on the cited invention since the concerned invention in claim O is identical
with the cited invention.
(5) If considered necessary for the convenience of an applicant (in his/her responding to the
notice of grounds for rejection) as well as for expeditious and accurate examination, an
examiner may suggest a division or conversion of an application in the notice of rejection
grounds.
However, an examiner shall stipulate in the notice that his/her suggestion has no legal
effects and a decision to carry out division or conversion shall be made by the intention of
an applicant.
(5) Where the written notice of rejection grounds having been issued contains errors in
writing, an examiner shall issue a correct notice of grounds for rejection again, regardless of
whether an applicant submits a written statement of argument. However, exceptions are as
follows.
① Where an applicant is deemed to submit a written statement of argument based on
his/her correct understanding and interpretation of errors
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② Where an applicant does not submit any arguments and the errors are just a simple
misspelling or missed letter that are not influential for an examiner's decision of grounds for
rejection.
(6) Where the description contains a self-evident error in writing, an examiner shall notify
the error as 「Considerations」if there is other grounds for rejection, If there is no other
grounds for rejection, an examiner shall communicate this with an applicant by telephone
(or others) and may advise an applicant to self-amend or amend ex officio (refer
to「Chapter 5. Amendment Ex Officio」).
The advice or guidance aforementioned by communication media shall be documented in
'Applicant/Attorney Personal Interview' in「Examination Report」.
5.2 Rejection without Additional Notice of Grounds for Rejection
Where an examiner finds that the grounds for rejection which have been notified still exist
to the notice of grounds for rejection with taking any amendments into consideration,
he/she should make a decision of rejection without an additional notice regardless of other
rejection grounds (however, the case in (5) below shall be the exception).
Here, 「the ground for rejection have been notified」 refers to a case where the concerned
ground for rejection in rejection decision primarily coincides with the previously-notified
rejection grounds. Decision of whether to primarily coincide with or not shall not be
confined to an expression or a sentence. It shall be evaluated in perspective of whether or
not an applicant is practically given an opportunity to submit his/her opinions.
The followings are examples where primary coincidence is not admitted and therefore the
notice of grounds for rejection is issued again.
(1) Where different provisions of the Act and Rules are applied to the same claim, an
examiner shall issue the notice of the ground for rejection again.
For example, grounds for rejection such as absence of novelty or inventive step, claims
with no supporting detailed description, and deficiency in claims and detailed description
are not deemed to be primarily coincident with each other. They shall be treated as separate,
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individual ground for rejection.
However, where despite the fact that different provisions of the Act and Rules are applied,
the claimed invention becomes identical (including de facto identical. Hereinafter the same
shall apply) with the invention in the claim where the ground for rejection had been already
notified, the grounds for rejection between these claims are regarded as primarily coincident.
An examiner shall render a decision of rejection based on this ground and shall stipulate this
ground in a written decision to reject.
(2) Where an examiner discovers a different type or number of cited inventions denying
novelty or inventive step, except for special cases, it is deemed a new ground for rejection.
An examiner, therefore, notifies the ground for rejection again. The same will apply to a
case where type or number of cited inventions changes due to new combinations with other
cited inventions in other claims.
For example, an examiner had denied inventive step by referring to cited invention 1 to
claim 1, cited invention 1 and 2 to claim 2, and cited invention 1 and 3 to claim 3. Again an
examiner, to deny inventive step in claim 3 to which technical subject matters of claim 1, 2
and 3 are combined through amendments, refers to cited invention 1, 2 and 3. This is not
admitted as primarily coincidence case.
(3) Where the ground for rejection lies in a claim newly-established by amendments, an
examiner, instead of issuing a rejection decision, shall deliver the notice of grounds for
rejection and provide an opportunity for an applicant to submit an opinion. Where an
applicant states a new invention in the claim number that had been deleted through
amendments, an examiner shall treat this claim as newly established.
However, where the invention described in newly-established claim is identical with the
invention in a claim to which the ground for rejection had been notified, an examiner may
render a rejection decision by the rejection ground in the claim to which the rejection
ground had been notified.
(4) Where an invention becomes identical with a claim in which the grounds for rejection
have never been notified, except for special circumstances under which it becomes also
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identical with the invention in other claim in which notice of grounds for rejection is already
notified, an examiner should render the notice of grounds for rejection again.
(Note) The judgment of whether or not amendments changes or expands the scope of
invention in a claim (including de facto change or expansion) does not influence to
determine the primary coincidence among grounds for rejection.
(5) Where a ground for rejection is notified and then the application is re-examined by
considering the amendment, but still the before-notified ground for rejection is a ground for
rejection, the examiner is supposed to make a decision of rejection without notifying a
ground for rejection. However, where it is deemed that the applicant clearly indicated the
intention of amendment to address the ground for rejection, but the amendment is omitted
in the written amendment, the examiner may notify the same ground for rejection again in
the certain condition.
The followings are the condition under which the examiner can re-notify the same ground
for rejection:
① Even though the purport and content of amendment to address the notified ground for
rejection are clearly indicated in the written opinion, etc.,
② the amendment is omitted from the written amendment;
③ if amendment is made to the amendment omitted in the written amendment, the
concerned ground for rejection is deemed to be addressed;
④ other notified grounds for rejection are all addressed, except for ground for rejection
regarding the amendment omitted from the written amendment.
The type of re-notified ground for rejection is the same as the type of ground for rejection
in the initial notification of the ground for rejection. In other words, if the re-notified
grounds for rejection are the initial grounds for rejection at the time of notification, the
initial grounds for rejection shall be notified. Where the re-notified grounds for rejection are
the final grounds for rejection at the time of notification, the final ground for rejection shall
be notified.
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Meanwhile, as for application filed without a legal representative, where the applicant
receives a ground for rejection, but indicates the intention of amendment only in the written
opinion and submits it because the applicant does not know how to make an amendment
of the specification, even though only the above-mentioned requirement ① is met (not the
requirements ②, ③, and ④), the examiner may re-notify the same ground for rejection if
deemed necessary to give the applicant opportunity of amendment.
5.3 Types of Notice of Ground for Rejection
Notice of grounds for rejection can be classified into two different types. Depending on
the type of notice, an applicant shall comply with different restrictions in terms of scope of
amendments in the specification or drawings.
One is a notice in which an examiner notifies only new rejection grounds incurring from
the amendments according to the previously-issued notice of rejection grounds (hereinafter
'final notice of grounds for rejection') and the other is a notice which is received by an
applicant first time or not a last time (hereinafter 'non-final notice of grounds for rejection').
5.3.1 「Non-final Notice of Grounds for Rejection」
(1) An examiner may issue „non-final notice of grounds for rejection‟ regardless of self-
amendments or not, if it is issued for the first time since the start of an examination.
(2) When identifying a ground for rejection in the amendment confirmation section which
has not been amended yet (including an amendment confirmation number in the Form (ix)
in the Enforcement Rules of the Patent Act. Hereinafter the same shall apply.), an examiner
shall issue „non-final notice of grounds for rejection‟.
(3) Even when an examiner shall issue the non-final notice of grounds for rejection on the
second time or more, if the grounds for rejection in this case are not necessitated by
amendments made in response to the previous notice of grounds for rejections, „non-final
notice of grounds for rejection‟ shall be notified.
(Example 1) In below example, an examiner has issued the non-final notice of grounds for
rejection and examines again the claim whose insignificant description deficiency (when
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referring to the detailed description, A' is deemed to be A) is amended. During this
examination, an examiner discovers prior art for equipment comprised of Constituents A+C
and decides to issue the notice of grounds for rejection. In this case, an examiner shall issue
the non-final notice of grounds for rejection, as this is related to novelty or inventive step in
inventions of claims before amendments.
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Before Amendment After Amendment
【Claim 1】: Constituent A' or B with C
attached
【Claim 1】: Constituent A or B with C
attached
(Example 2) Where having notifying the rejection ground to only a part of two or more
inventions stated in a single claim, and then notifying the grounds for rejection to the
remaining inventions afterwards, an examiner shall issue the non-final notice of grounds for
rejection despite that the claim has been amended according to the notice.
(4) Where the grounds for rejection are established due to reasons other than amendments,
an examiner shall issue the „non-final notice of grounds for rejection‟.
For example, when issuing the first notice of grounds for rejection, no defects had been
found in terms of legal competency as a foreigner. However, after amendments, a foreigner
loses the right to enjoy patent according to Article 25 of the Patent Act, this ground for
rejection is not generated according to amendments. Therefore, this is issued as the non-
final notice of grounds for rejection.
5.3.2 「Final Notice of Grounds for Rejection」
Where the ground for rejection incurs from amendments corresponding to the notice of
the grounds for rejection having been noticed to an applicant, an examiner shall deliver the
final notice of grounds for rejection. In other words, an examiner shall issue the final ground
for rejections where a rejection ground which had not been exist or does not need to be
examined prior to amendments, is caused newly or requires an examination after
amendments.
Amendments according to the notice of ground for rejection having been issued
previously are a prerequisite for the final notice of grounds for rejection. In other words, the
final notice of grounds for rejection can be issued only when the written amendment has
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been submitted and a new rejection ground incurred in the amendment confirmation
section.
Specific examples regarding the final notice of grounds for rejection are as follows.
(1) Where amendments of the description or drawings result in adding a new matter or
exceeding the permissible scope of division or conversion.
(2) Where amendments of a claim that had been examined cause the ground for rejection
regarding novelty or inventive step. However, where the invention of an amended claim has
been stated in the other claim and the other claim has never been notified for this rejection
ground, an examiner shall issue the non-final notice of rejection grounds.
(Example 1) In this below example, an applicant amends claim 1 corresponding to the notice
of rejection ground (violation of novelty or inventive step) and remedies this ground.
However where the addition of constituent D after amendment raises a need to cite a prior
art including D, it is regarded as the rejection grounds incurring from amendments. The final
notice of grounds for rejection is issued in this case.
If composition obscurity of inventions relating to constituents „A and B‟ had been the
ground for rejection, it would be the ground for reason having been existed before
amendments of attachment D. Therefore, in this case, the final notice of grounds for
rejection cannot be issued.
Before Amendment After Amendment
【Claim 1】: Constituent A and B with C
attached
【Claim 1】: Constituent A and B with D
attached
(Example 2) Where a claim is expanded after amendments according to the notice of ground
for rejection that is description deficiencies, and subsequently results in a violation of
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novelty or inventive step, an examiner is required to review prior art again by requesting
amendments. In this case, an examiner shall issue the final notice of grounds for rejection
despite the fact that both grounds for rejection (i.e. description deficiency and lack of
novelty or inventive step, in the example above) are pertinent to the same claim.
(3) Where a newly generated claim or a substantially changed claim equivalent to newly-
established claim contains grounds for rejection regarding novelty or inventive step.
However, where the concerned claim is amended with an invention in another claim where
notice of grounds for rejection has not been issued, an examiner shall issue the non-final
notice of grounds for rejection.
(4) Where an examiner examines again after amendments and discovers grounds for
rejection relating to novelty or inventive step in this amended claim which had not been
examinable due to lack of clarity or addition of new matters to such claim.
5.3.3 Selection of Notice of Grounds for Rejection (Final or Non-final)
(1) Where an examiner discovers the ground for rejection after examining again, he/she shall
issue the non-final notice of grounds for rejection unless all of the grounds for rejection fall
under the final notice of grounds for rejection.
(2) Where uncertainty pertains to the selection between two types of notices of grounds for
rejection, an examiner shall issue the non-final notice of grounds for rejection so that the
applicant‟s opportunity of amendment may not be unreasonably limited.
5.4 Examination on a Claim-by-claim Basis
5.4.1 Purpose
An examiner examines an application filed for in compliance with the requirements of
patentability. Even if only a single ground for rejection lies in an application, a patent shall
not be granted based on that application. Therefore, where an examiner notifies grounds for
rejection regarding an application comprised of two or more claims without full disclosure of
specific reasons for each claim, an applicant, having difficulties in identifying which claim can
be remediable, sometimes fails to acquire legitimate rights for claims that might have been
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patentable if identified.
Under the examination system by each claim, when notifying the ground for rejection
regarding an application comprised of two or more claims, an examiner shall stipulate the
concerned claim containing ground for rejection as well as the corresponding ground with
more specific explanations. This enables an applicant to respond an examiner's notice
without much difficulty by allowing an applicant to easily identify a claim to be deleted or
amended.
5.4.2 Instructions for Written Notice of Ground for Rejection
A written notice of grounds for rejection shall include [Examination Outcomes], which is
comprised of 「Claims to be Examined」, 「Relevant Provision regarding Grounds for
Rejection」, 「Patentable Claims」 and [Specific Grounds for Rejection] for matters notified as
grounds for rejection. Also, matters, which are not grounds for rejection but still useful for
applicant's response, can be included in 「Considerations in Amendment」. Specifics for
each part are as follows:
(1) 「Claims to be Examined」 stipulates the number of claims to be examined as of the date
when a written notice of the grounds for rejection is prepared.
(2) 「Relevant Provisions regarding Grounds for Rejection」 specifies claims containing the
grounds for rejection and its relevant provisions of the Act. If the ground for rejection is not
directly related to claims, the matters containing the ground for rejection are stated herein.
Where an amendment adds new matters or is not made within the prescribed scope of a
divisional or converted application, the matters either newly added or fallen out of the
scope of a converted or divisional application shall be stated as grounds for rejection.
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※ Example
No
Matters
Notified as Grounds for
Rejection
Relevant Provision in the Patent Act
1 Detailed description of
the invention
Article 42 (3)(ⅰ) (deficiency in
detailed description)
2 Claims 6 - 8 Article 42 (8) (manner of describing
the claims)
3 Claims 10 - 14 Article 45 (scope of
a single patent application)
4 Claims 1, 4 and 6 Article 29 (2) (inventive step)
5 Detailed description, Claim 15 Article 52(1) (scope of divisional application)
(3) 「Patentable Claim」enumerates all claims that are not identified as the ground for
rejection upon its notice.
Exceptionally, even if a claim itself has not been identified as the ground for rejection,
however, the claim which falls under the following cases may not be stated under
「Patentable Claim」; where a special circumstance makes it difficult to assess patentability
regarding the concerned claim upon the notice of the ground for rejection, or where a claim
is judged not to be patentable due to not the claim itself but other grounds related to such
claim. In this case, the reason for not-stating patentable claims shall be explained in
the「Considerations in Amendment」. This is designed to help an applicant to respond to the
notice of the ground for rejection without difficulties, where an examiner clearly discloses
his/her opinion about the concerned claim.
It is noted that 「Patentable Claim」is not an examiner's final decision. It is only a decision
at the point when the notice for the ground for rejection is issued. Therefore, where a new
ground for rejection is discovered afterwards, an examiner shall notify the ground for
rejection again without binding to his or her previous decision. Also, even if an examiner
states that a part or whole claims can be patentable, he/she may make a final decision to
reject where any of the grounds for rejection is not solved after an applicant's response.
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(4) 「Specific Grounds for Rejection」stipulates more specific reasons for matters notified as
the ground for rejection, which enables an examiner to inform the ground for rejection
without difficulties.
Where an examiner notifies the grounds for rejection an application involving two or more
claims, he/she firstly indicates claims involving the grounds for rejection and states the
specific grounds according to the claims. More specifics are as follows:
① An examiner shall specifically state to inform the grounds for rejection for each claim.
To avoid redundant statement, an examiner may just indicate the aforementioned ground or
collectively inform grounds regarding claims sharing practically the same ground for
rejection.
② Where an examiner stipulates the grounds for rejection by comparing the cited
invention with the claimed invention, he/she shall specifically indicate which parts of the
cited invention is considered in the comparison with the claimed invention. Where a multiple
number of cited inventions are compared to each other, an examiner shall select the closest
cited invention among them, and describe technical features of the closest cited invention
that corresponds to the claimed invention. Then, the examiner points the difference between
the claimed invention and the closest cited invention, and states technical features of other
cited inventions which supplement such difference, along with his or her assessment
regarding patentability with taking the common general knowledge into consideration.
③ An examiner can directly specify a cited invention pertaining to the claimed invention,
and may describe differences and his or her assessment regarding inventive step. In this
regard, such specification of the cited invention shall be made in a manner that an applicant
can easily understand the corresponding relations with the claimed invention.
④ Where identifying the grounds for rejection in terms of novelty or inventive step, the
grounds for rejection for independent claims and those for dependent claims are separately
stated. As for the grounds for rejection, an examiner may state as simply as to indicate
corresponding matter of cited invention to features added or limited to the dependent claim,
or indicate his or her assessment on the difference between the cited invention and the
dependent claim based on common general knowledge.
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Except for special cases, the grounds for rejection of dependent claims are deemed to
include all the grounds identified in claims (including independent and dependent claims)
which are cited by such dependent claims.
⑤ Where considered necessary for comparing the claims and the cited invention, a
component comparison table disclosed below can be prepared to show the relations
between distinguishing technical components of the claimed invention and its
corresponding features of the cited invention. An examiner can add in the table where the
corresponding features are written in the cited document. When using the comparison table,
an examiner may add his/her judgment regarding differences between the claims and the
cited inventions either within the table or below the table, which enables an applicant to
understand the comparison results without difficulties.
※ Examples
(1) Component Comparison Table and Assessment
Claim 1
Cited Invention 1
Publication in Patent Gazette
No.○○-○○○○
Cited Invention 2
US Patent No.○○○○○○
A(Constituent1) A (location of its description)
B (Constituent2) B (location of its description)
C (Constituent3) C' (location of its description)
The invention in claim1 is different from cited invention 1 because claim 1 has constituent 3
as shown above. However, C in constituent 3 is practically the same as C' in cited invention2.
C' in cited invention 2 can be easily combined with A and B in cited invention1 by a person
with ordinary skill in the art which the concerned technical subject matter pertains to.
Subsequently, the invention in claim 1 can be easily invented by a person with ordinary skill
in the pertinent art by using cited invention 1 and 2.
(2) Component Comparison Table and Assessment
Claim Cited Invention 1 Cited Invention2
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US Patent Publication
No. ○○-○○○○
US Patent Publication
No. ○○○○○○
Claim1
A(Constituent1) A (location of its description)
B(Constituent2) B (location of its description)
C(Constituent3) C' (location of its description)
Judgment
C in constituent3 is practically same as C' in cited invention
2. As A and B in cited invention 1 are easily combined with
C' in cited invention 2, claim 1 can be invented without
difficulties using cited 1 and 2.
(5) 「Considerations in Amendment」states matters, which are not the grounds for rejection
but those are useful to be referred for an applicant to easily respond the notice of the
ground for rejection. For example, an examiner's opinion about the description, reasons not
putting the claims (not notified as the ground for rejection) into the patentable claims, and
other considerations for amendments except for the notified grounds for rejection shall be
disclosed.
(Note) If an examiner intends to use the contents in「Considerations in Amendment」as the
grounds for rejection, he/she shall make notification of the ground for rejection again.
5.4.3 Preparation of Written Decision of Rejection
A written decision of rejection is prepared with the same method as a written notice of
grounds for rejection, except that 'a matter notified for the ground for rejection' in
[Examination Outcomes] is replaced with ' a matter where the ground for rejection is not
overcome'. Where a written statement of argument and a written amendment in response to
a notice of grounds for rejection are not submitted, an examiner may not separately state
[Examination Results] and [Rationale for Decision to Reject].
(1) 「Claims to be Examined」illustrates application numbers in the description which is
subject to a decision to reject the application.
(2) 「Relevant Provisions for Matters Where Grounds for Rejection Not Overcome」 states
matters where grounds for rejection are not overcome and accordingly the decision to reject
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the application shall be made and their relevant provisions of the Act shall be disclosed.
Where a new claim is added but it still includes the already-noticed ground for rejection,
it is considered that an opportunity for written argument has been given and then it is
stated as matters where grounds for rejection are not overcome, provided however that a
claim whose grounds for rejection have been notified before amendments and a newly
added claim shall be same.
※ Examples
No Matters Where Rejection Grounds Not
Overcome Relevant Provisions
1 Detailed description in claimed invention Article 42(3)(ⅰ) (deficiency in detailed
description)
2 Claims 1, 4 and 6 Article 29 (2) (inventive step)
(3) 「Patentable Claims」stipulates both claims where no grounds for rejection are notified
and claims where the having-notified grounds for rejection have been overcome during the
examination. Exceptionally, however, an examiner may not indicate patentable claims in the
following cases; where a judgment for patent requirements is not made in the claim due to
some certain reasons including an addition of a new claim, where an examiner discovers
new grounds for rejection in the claim incurring from an amendment, or where the claim is
judged to be unpatentable as it is related to other grounds for rejection.
Likewise, where a claim, which has not been notified as the ground for rejection, is not
stipulated as patentable claim, an examiner shall explain a reason in「Considerations」. By
doing so, an examiner can clarify his/her opinion about a claim which is not included as a
patentable claim despite the fact that it contains no ground for rejection. This clarification
helps an applicant in his or her response to an examiner's decision to reject a patent as
follows: where an applicant requests for a reexamination by submitting the written
amendment, an applicant may delete claims excluding patentable ones. Where an examiner
judges that there are no patentable claims as of the time for decision to reject a patent, no
entries are made in「Patentable Claims」.
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(4) 「Grounds for Decision to Reject」writes more specific rationale regarding the ground for
rejection that have not been overcome, in order for an applicant to better understand.
Where the ground for rejection is related to a claim, an examiner shall specifically state
reasons for rejection by the category of each claim. If the same reasons had already been
notified in the written ground for rejection, an examiner may avoid redundant statement by
indicating its source, instead of stipulating the same reason herein again.
Where both a written argument and an amendment are submitted together, an examiner
shall state reasons for why applicant's amendment does not overcome the ground for
rejection and why the arguments made by an applicant cannot be admitted. In such case,
for claims without practical amendments or for dependent claims without direct
amendments, just a statement of 'the ground for rejection having notified is not overcome'
would be sufficient.
Where only a written statement of argument is submitted without a written amendment,
an examiner states the reasons why he/she denies an applicant's argument along with
matters containing unresolved grounds for rejection.
(5) 「Considerations in Amendment Submission」states issues that are not the ground for
rejection but can be referred upon submitting the written amendment in subsequent
procedures such as a request for reexamination.
For example, where a decision to reject the application is rendered due to the previously-
notified grounds while new grounds are also produced from addition of claims or an
amendment, such can be added in 「Considerations」.
5.4.4 Instructions for Examination on Claim-to-claim Basis
(1) Even if the detailed description has deficiency, claims, which seem to relate to such
deficiency of the detailed description but do not contain any grounds for rejection
themselves, can be classified under [Patentable Claims]. However, it does not apply for some
exceptional cases where it is difficult to make a judgment about patentability of a claim
upon the notice of the ground for rejection, provide however that a claim is related to the
ground for rejection in the detailed description having been notified, or where an examiner
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judges that any amendment by an applicant cannot remedy the ground for rejection in the
detailed description. In such case, in「Considerations in Amendment Submission」, an
examiner shall describe why he/she does not include such claims as patentable claims.
(2) Where a claim cites another claims where the violation of Article 42(4) provides the
ground for rejection, an examiner shall pay special attention to whether or not the citing
claim continues to have such ground for rejection of a cited claim. If adjudged to still have
the ground for rejection of a cited claim, it is stated that a citing claim has the same ground
for patent rejection as a cited claim. However, where a cited claim violates only the manner
of describing the claims stipulated in Article 42(8) of the Patent Act and Article 5 of the
Enforcement Decree on the Patent Act, it is stated that only a cited claim has the ground for
rejection due to a violation of description manner.
(3) Where an examination is performed on an application involving two or more groups of
inventions, an examiner normally considers the requirement for patentability regarding the
inventions falling under at least one group. Therefore, when pointing out a violation of unity
of invention as the ground for rejection, an examiner shall indicate claims in another group
rather than the group whose patent requirements such as novelty and inventive step have
been evaluated.
Also, an examiner includes claims without grounds for rejection under the [Patentable
Claims] among claims falling under the group (where inventions in this group have been
evaluated in terms of the patent requirements). On the other hand, if an examiner found
grounds for rejection regarding novelty and inventive step for those claims, he or she shall
notify the ground for rejection together with grounds for rejection regarding unity of
invention for the claims in the other groups.
Where considered necessary to notify lack of unity before anything else from the
perspective of examination efficiency, an examiner shall state in 「Considerations in
Amendment Submission」 that he/she has not performed the patent requirements test for
the invention with no ground for rejection, though it is subject to the group (where
inventions subject to this group have been evaluated whether to satisfy their patent
requirements). An examiner shall not include this claim in the「Patentable Claims」.
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5.5 Disclosure of Information on Prior Art Documents
Where an examiner prepares the ground for rejection in relation to the technical subject
matter of a claim, he/she shall cite supporting documents for his/her rationale. Disclosure
methods for information on prior art documents, which are not decided in this section, shall
comply with WIPO Standard ST.14.
5.5.1 Citation of Patent Documents
(1) Where citation documents supporting the ground for rejection are patent documents,
the cited patent documents shall be clearly stated in the order of publishing country (can be
omitted, if Korea), title of patent documents, document number (laid-open number), and
publication date (public disclosure date, if published in patent gazette).
Title and document number are stated the same as they are in the concerned patent
documents. Specific examples can be found in the following table.
Publishing
Country Examples of Citations
Korea
Registered Utility Model Gazette No.oo-oooo(19××. ×. ×.)
Published Patent Gazette No.oo-oooo-oooooo(19××. ×. ×.)
Published Utility Model Gazette No.oo-oooo(19××. ×. ×.)
Registered Patent Gazette No.oo-oooo(19××. ×. ×.)
US
US Patent No. US ooooooo (20××. ×. ×.)
US Patent Application Publication No. US oooo/ooooooo (20××. ×. ×.)
US Patent Abstract No. US ooooooo (19××. ×. ×.)
Japan
JP Patent Gazette A No.ooooooo(20××. ×. ×.)
JP Registered Utility Model Gazette U No.oooooo(20××. ×. ×.)
JP Published Patent Gazette AH No.oo-oooooo(19××. ×. ×.)
JP Published Patent Gazette A No.2000-oooooo(20××. ×. ×.)
JP Published Model Utility Gazette S No.oo-oooo(19××. ×. ×.)
UK UK Patent Publication No.ooo Abstract (class ooo)(19××. ×. ×.)
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UK Patent Publication No.ooo Abstract(Group ooo)(19××. ×. ×.)
UK Patent Publication No.ooo Abstract(Heading ooo)(19××. ×. ×.)
UK Patent Publication No.ooo(19××. ×. ×.)
※ In case of citing an abstract of the description, the classification of abstracts
shall be stated in parenthesis ('class' refer to abstracts before 1930, 'Group'
refers to abstracts from 1931 to No.940,000, 'Divisions' refer to abstracts from
No.940,001, and 'Heading' is a sub-category of 'Divisions')
Germany
DE Patent No.oo-ooo(class oo)(19××. ×. ×.)
DE Patent Application Publication No.oo-ooo(class oo)(19××. ×. ×.)
DE Patent Application Publication No.oo-ooo(19××. ×. ×.)
※ The description of patent in Germany is classified with 'class' for the patent
document published in 1955 (No. 624,334 - No. 655,806) and after 1957, which
shall be stated in parenthesis.
※ The published description of patent application in Federal Republic of
Germany(West Germany) has been published from January 1, 1957
(No.1,000,001). The description published between 1959 and
1960(No.1,048,241-No.1,096,300) is classified with 'class' , which shall be stated
in the parenthesis.
Int.
Application International Publication WO78/ No. oooooo (19××. ×. ×.)
(2) When patent documents are cited for the grounds for rejection, an examiner shall clearly
state which part of the documents are used for citation by using No. of page or drawings in
the parenthesis as follows:
(Example) Published Patent Gazette No.oo-oooo-ooooooo(19××. ×. ×.) (No. of page and
drawing)
Published Patent Gazette No.oo-oooo-ooooooo(19××. ×. ×.) (Speed Reduction Gear)
Published Patent Gazette No.oo-oooo-ooooooo(19××. ×. ×.) (Drawing No. a, b, c )
5.5.2 Citation of Non-patent Documents
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(1) Depending on periodical publication, non-patent documents are cited as follows:
Type Citations Instructions
Periodicals,
Non-
Periodicals
(ⅰ) Order of description when citing publications is as follows; Name of Author, Title
of Thesis, Title of Publication. Location of Publication: Publisher. Publication Date,
Number of Volumes, Number of Issues, Page No.
Name of Author, Title of Thesis, and Title of Publication shall be discerned using a
period (.), while Location of Publication and Publisher is distinguished using a colon
(:). Put a period(.) after Publisher. Others are divided using a comma(,).
(ⅱ) Title of publication is generally not stated in abbreviations.
(ⅲ) Number of volumes and issues are stated as 'Volume oo, No.oo‟. For English
publications, 'Vol. oo, No. oo'
(ⅳ) Where publication date can substitute a number of volume, the statement of
volume and issue numbers can be omitted.
(ⅴ) Publication date herein refers to the publication date inscribed on the
documents. Where publication date in the documents do not inscribe a publication
day, then month/year of the publication is sufficient.
(ⅵ) For unclear publication date, the date of obtaining the documents can be stated
instead, with a clear explanation for the reason.
(ⅶ) For a publication with no concerns for misunderstanding of its publisher, name of
publisher can be omitted.
(ⅷ) Where a location of publication is not well known place, its country shall follow
right after the location, which is distinguished with comma (,). For publications
published in Korea, the location of publication is omitted.
(ⅸ) Name of author and title of thesis if considered unnecessary can be omitted.
(ⅹ) Pages in publications of periodicals or non-periodicals are indicated with the
consecutive number of volumes. If the consecutive number is not indicated, the page
number of the concerned issue is cited using 'pp' in front of numeral.
Where citation involves plural pages, hyphen (-) shall be used between the first
page and the last page number if they are consecutive pages, while comma (,) is used
for discontinuous pages.
(xi) Title of publication is written in the style of italics. For a publication translated in
foreign languages, it is principle to write an original language with Korean in the
parenthesis.
Books (ⅰ) Name of Author(or Name of Editor). Book Title. Location of Publication: Publisher.
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Publication Date, Number of Volume, No. of Edition, and No. of Page is the order for
book citation
For a translated book, Name of Author (or Editor), and Name of Translator are the
description order.
(ⅱ) Name of Author and Book Title shall be discerned using a period (.), while
Location of Publication and Publisher is distinguished using a colon (:). Put a period(.)
after Publisher. Others are divided using a comma(,)
(ⅲ) For a lecture, collective works, or series, title of lecture or series and the number
of volumes in collective works shall be stated before book title.
(ⅳ) Book title is written in the style of italic.
(ⅴ) Number of edition if not indicated on the book can be omitted.
(ⅵ) Where location of publication is not well-known, its country shall follow right
after the location, which is distinguished with comma (,). For a book published in
Korea, the location of publication is omitted.
(ⅶ) Page Number, is stated page number with 'pp.' before numerals. Where citation
involves plural pages, the rules for periodicals shall be complied with.
(2) Where a part of publication is cited for the grounds for rejection, in order to clearly
stipulate which part of document is used for the ground of rejection, page number or
drawing number shall be included in parenthesis.
(Example) Journal of Korean Chemistry Society. Corporation, Korean Chemistry Society.
19××.×.×., Vol.o, No.o (pp. o or pp. o)
Hong Gil-dong. Steam Engine. Daejeon: oo Publication Co. 19××.×.×., Edition o (pp. o)
5.5.3 Citation of Electronic Documents
Where citing electronic documents searched from CD-ROM, the internet, or on-line DB, an
examiner shall state the general information of the cited documents along with types of
search medium (state in a brace), search date (state in a brace after the publication date of
the cited documents) and search site.
(Example) Joint Authorship of 3 including Hong Gil-dong and et al. Method to Promote
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Search Speed through Effective Management of Patent Documents. Korean Association of
Computer, [online], February 2001, [Search on July 15, 2010], Internet: <URL:
http://www.kipo.go.kr/papers>
6. Instructions for Written Argument and Others
6.1 Extension or Reduction of Designated Period
Where the Commissioner of KIPO or an examiner designates the period for a patent
procedure, he/she may, upon request shorten or extend the period (hereinafter 'designated
period'), or extend the period ex officio. In such cases, the Commissioner of KIPO etc. shall
decide whether to shorten or extend the period in a way that does not unlawfully violates
the interests of the interested parties involved in the relevant procedure.
6.1.1 Extension and Approval of Designated Period for Substantive Examination
(1) The extension of the designated period pursuant to Article 16 of the Enforcement Decree
of the Patent Act can be requested once or twice a month. Where a request for extension
period is less than one month, it is regarded as one month extension.
Except for the period designated for submission of a written argument in response to the
notification of ground for rejection (hereinafter 'period designated for written argument
submission), a request for period extension is deemed to be approved on its request date.
However, even in this case, an examiner may approve the extension request to a partial
period if considered necessary and disapprove the remaining period if considered unlawfully
violating the interests of the interested parties. For the disapproved remaining period, an
examiner shall deliver a warning notification for disapproval in the period extension.
(2) Where a request for extending the period designated for written argument submission is
filed and the expiry date in the extended period is within four months from the original
expiry date having been designated in the written notification of ground for rejection
(hereinafter 'period designated for extension request'), the request for extension is deemed
to be approved on its request date. However, if the designated period for extension is
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beyond the prescribed period, an examiner reviews request reasons and approves the
request if considered necessary.
Where an expiry date of the extended period (designated for written argument submission)
arrives later than the period designated for extension request, an examiner shall approve the
extension up to expiry date of the period designated for extension request. For the
remaining period, an examiner shall review reasons for extension request and approves if
considered necessary as follows. After approving the period extension, an examiner delivers
to a written notification to a requester where he/she explains his/her purport of approval
decision and informs that an additional period extension afterwards can be requested
through a petition with additional reasons.
① Where an applicant elects an attorney for the first time or discharge or change an
attorney within a month from the period expiry date
② Where an applicant submits a form to change applicants within a month from the
period expiry date, only when new applicants are added.
③ Where an applicant receives patent examination outcomes from foreign patent offices
within two months from the period expiry date and submits the period extension request
along with the aforementioned
④ Where a delivery of the written ground for rejection is delayed more than one month
⑤ Where an original or later application is pending on a trial or a litigation
⑥ Where considered necessary for testing or evaluation of test results related to the
ground for rejection
⑦ Or other cases where considered unavoidable to extend the period
※ Where the period extension request is filed on an application by third party, request
reasons of ①～⑤ are not admitted.
(3) Where fees for period extension request are not paid, an examiner shall request an
applicant to pay within a time limit (determined by an examiner). If paid within the time limit,
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the extension request is regarded as valid. However, if not paid within the time limit, an
examiner invalidates the extension request. This guideline applies for both the statutory
period and the period designated for substantive examination.
(4) Where a request for period extension is made after the period designated for substantive
examination (or the extended period, if a request for extension having been made is
approved), an examiner gives an applicant with an opportunity to petition and returns the
request afterwards. In such case, the fees paid upon filing the extension request are
refunded.
(Note) Fees shall be refunded where a request for period extension is rejected.
6.1.2 Extension and Approval of Period Designated for Formality Examination
(1) The period designated for amendment according to Article 46 of the Patent Act, can be
extended several times for the minimum period of a month or longer upon request. Where
a request for extension period is less than one month, it is regarded as one month
extension.
(2) The period available for extension shall not exceed more than four months in total.
However, a further extension can be made if considered necessary as follows; where reasons
not liable for an applicant take place or where an international patent applicant enters
domestic stage.
(3) Where an extension request does not exceed four months and the concerned fee has
been paid, the request for period extension is deemed to have been approved upon filing.
For a request for four-month extension, a forewarning of "no further extension will be
approved afterward" attached to the written approval shall be notified of an applicant.
If an applicant makes another extension request afterwards, it shall be rejected.
(4) Where an applicant makes an overdue requests for an extension of the period
designated for formality examination (or extended period, if the extension request is
approved), an examiner shall provide an opportunity for petition to an applicant and return
the request form. At this time, an examiner shall refund too, along with the request form.
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(Note) Fees shall be refunded where a request for period extension is rejected.
6.1.3 Reduction of Designated Period and Others
(1) The period for a patent-related procedure having been designated can be reduced
according to a request. Where a request for period reduction is made or where a written
amendment or description stipulating the purport to reduce the designated period is
submitted, the designated period is deemed to have been expired as of the submission date
of a reduction request form or a written amendment.
(2) Any person can request to extend the period for requesting for a trial against to reject a
patent (a utility model) application only for once and for up to 30 days. However, the
number and the period of extension may be further extended for a person residing in an
area that is difficult to access. When such request is made, the President of IPT (Trial Policy
Division) shall review the requirements and determine whether it is approved or not.
(3) Where the written amendment for specification or drawing(s) is submitted after the
designated period, it shall be returned by reason of overdue submission. However, an
amendment of application as to formalities shall be admitted anytime before invalidation.
6.2 Instructions for Written Argument
(1) Where a written argument is submitted along with an amendment, an examiner shall
review both of the argument and the amendment in depth and determine as to whether the
notified grounds for rejection can be overcome or not based on such argument and
amendment. Also, where only a written argument is submitted without an amendment, an
examiner shall consider sufficiently an argument to determine as to the notified grounds for
rejection can be overcome or not.
(2) A written argument or other documents including experiment results in response to the
notification of the grounds for rejection shall not be a part of the specification of the
application. However, as these documents are submitted to clarify or verify the legitimacy of
matters in the detailed description, an examiner may refer them to decide the patentability
of the concerned application.
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(3) Where an amendment is submitted after the period designated in the notification of the
grounds for rejection shall be return to an applicant. However, as for a written argument, it
does not fall under cases not to be admitted (the Enforcement Rules of the Patent Act
Article 11(1)), an examiner may admit it reference.
(4) Where an applicant insists matters to be amended in a written argument but fails to
submit an amendment, an examination shall be made on the detailed description and claims
upon the notification of the ground for rejection. Also, where contents of amendments
having insisted in a written argument and the actual amendments show discrepancy, an
examination shall be made based on the actual amendments to the detailed description and
claims. However, where the matters to be amended are disclosed only in the written opinion,
not in the amendment, indicating that certain requirements are met, the examiner may re-
notify the same ground for rejection at his/her discretion. (See Part 5, Chapter 3, 「5.2
Rejection without Additional Notice of Grounds for Rejection」(5))
6.3 Treatment of Amendments
6.3.1 Confirmation Method for Amended Specification
(1) Where multiple amendments are submitted voluntarily before any notification of the
ground for rejection, each amendment is accumulatively reflected on the specification to be
examined. Therefore, the final specification to be examined is determined automatically
through the Patent Net (Internal examination supporting tool) after reflecting amendment to
the specification, claims and drawings. An amendment to the full text of the specification
shall be replaced as the final specification to be examined.
However, where multiple amendments are submitted to a single notification of the ground
for rejection within the designated period, applications applied with the Patent Act before
the revision (before the revision of Act no. 11654 on March 22, 2013) and applications
applied with the revised Patent Act (Act no. 11654, Promulgated on March 22, 2013, Taken
effect on July 1, 2013) shall be handled differently as in the following manners:
ⅰ) As for applications filed before June 30, 2013 and applied with the Patent Act before the
revision, where multiple amendments are submitted to the initial ground for rejection within
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the designated period, each amendment is accumulatively reflected to determine the final
specification to be examined. Where multiple amendments are submitted to the final ground
for rejection within the designated period, the amendments approved by the examiner
among all the amendments are accumulatively reflected to determine the final specification
to be examined.
ⅱ) As for applications filed after July 1, 2013 and applied with the revised Patent Act, where
multiple amendments are submitted to a ground for rejection within the designated period,
all amendments submitted before the final amendment shall be deemed to have been
withdrawn according to Article 47(4) of the Patent Act. Therefore, the final specification to
be examined shall be reflected only with the lastly-submitted amendment.
As for applications filed before June 30, 2013 and applied with the Patent Act before the
revision, the methods of determining the specification to be examined in the case of
submission of multiple amendments to the ground for rejection within the designated
period are as follows:
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(Example) Method to determine the specification to be examined where the 1st and 2nd
written amendment having been submitted within due time.
Matters to
be
Amended
Initial
Application
1st
Written
Amendment
2nd
Written
Amendment
2nd
Amendment
2nd
Amended
specification
1st
Amended
specification
Detailed
Description ◇ ◆ ◆ ◆ ◆
Claim 1 ○ ⅺ ⅺ ⅺ ⅺ
Claim 2 ⅻ ▒ ■ ■ ■ ▒
Claim 3 △ △ △
-
Claim 10 ☆ ☆ ☆
Drawing(s) ♤ ♠ ♠ ♠ ♠
※ As seen in the above example, where an applicant amends detailed description, claim 1,
claim 2, and drawing(s) of a claimed invention in the 1st written amendment and submits
the 2nd written amendment with claim 2 amended. the 2nd amendment is determined to
be a combination of final amendments individually made in claim 1 and claim 2 ((Detailed
Description(◆), Claim 1(ⅺ), Claim 2(■) and Drawing(s)(♠)), and the 2nd amended
description is determined to be a combination of matters not amended in the 2nd
amendment and an original description. (Detailed Description(◆), Claim 1(ⅺ), Claim 2(■),
Claim 3(△), ....Claim 10(☆) and Drawing(s) (♠)).
(2) Where an amendment in response the final ground for rejection or made upon the
request for reexamination is dismissed pursuant to Article 52(1) of the Patent Act, an
examiner considers the amendment deemed to have never been submitted. The dismissal of
amendment shall be referred to this section in 「11. Amendment in Response to Final
Notification of Ground for Rejection」.
6.3.2 Additional Matters to be considered
(1) A self-amendment submitted before examination starts and an amendment in response
to the non-final notification of grounds for rejection within the period (designated for
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submission of a written argument) are recognized as submitted. However, as for applications
filed after July 1, 2013, where amendments to the ground for rejection are submitted more
than twice within the designated period, all the amendments submitted before the final
amendment shall be deemed to have been withdrawn.
(2) An applicant may self-amend during the period between the delivery of the ground for
rejection by an examiner and its receipt by an applicant. To expedite an examination
proceeding, where an applicant submits an amendment during the period between an
examiner's sending of the grounds for rejection and an applicant's receiving of it, the
notification of the ground for rejection having delivered shall not be cancelled but be
treated as follows.
Where a date of applicant's receipt of the grounds for rejection, which can be confirmed
by the special mail (parcel) registered receipt, is the same as a date of amendment
submission, an amendment is regarded as being submitted earlier than receiving the ground
for rejection unless there is an evidential basis for the fact that a notification delivery
precedes amendment submission. Where a written amendment identifies a delivery number
of a notification for rejection ground, the notification delivery is regarded to be earlier than
amendment submission.
① Where just Amendment a is submitted
An examiner shall examine again the specification that have been reflected of
Amendment a.
(a) Where an examination of the amended specification discovers no ground for rejection,
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an examiner shall decide to grant a patent.
(b) Where an examination of the amended specification still discovers a ground for
rejection that is not a newly generated by Amendment a but has been notified, an examiner
shall decide to reject the application by reason that the amendment fails to overcome the
ground for rejection.
(c) Where an examination of the amended specification discovers that the grounds for
rejection having been notified are overcome but a new ground for rejection is generated
due to Amendment a, or where an examination of the amended specification discovers
grounds for rejection that have been existed in the original specification prior to
Amendment a but have not been notified previously, an examiner shall notify the non-final
ground for rejection again.
② Where Amendment a and Amendment b are submitted
An examiner shall examine again the specification that have been reflected of
Amendment a and Amendment b.
(a) Where an examination of the amended specification discovers no ground for rejection,
an examiner shall decide to grant a patent.
(b) Where an examination of the amended specification still discovers grounds for
rejection that are not a newly generated by Amendments but have been notified, an
examiner shall decide to reject the application by reason that the amendment fails to
overcome the ground for rejection.
(c) Where an examination of the amended specification discovers that the ground for
rejection having been notified is overcome but a new ground for rejection is generated due
to Amendment a, or where an examination of the amended specification discovers a ground
for rejection that have been existed in the original description prior to Amendment b but
have not been notified previously, an examiner shall notify the non-final grounds for
rejection again.
(d) Where an examination of the amended specification discovers no ground for rejection
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but a ground for rejection incurring from Amendment b, an examiner shall notify the final
ground for rejection.
6.4 Instructions for Reference Document in Examination
(1) If considered necessary to expedite an examination proceeding, an examiner may ask an
applicant to submit documents and other references required for examination.
(2) Documents or other things required for examination are as followings.
① Related documents and their translations in the case of an international application as
well as examination outcomes in other patent offices where its family application has been
filed, if considered necessary.
② A written statement presenting each claim's technical subject matter with its
corresponding detailed description by indicating paragraph number, and a written statement
explaining relation among claims where an application involves enormous amount of
detailed description and a vast number of claims.
③ A written statement summarizing gist of a claimed invention, where technical subject
matter of a claimed invention is too complex to comprehend within the designated period.
④ Samples or experiment results, where effects of a claimed invention cannot be verified
without them, provided however, the submission of samples or experiment results shall
enable to confirm that the description has been definite and sufficient upon filing an
application.
⑤ A written statement explaining a process of inducing the concerned formula and
definitions and meanings of technical terminology or signs, where a formula, technical
terminology, or sign is not clearly understood.
⑥ A written statement clearly explaining again an applicant's claim in the written
statement of arguments, where an applicant's claim in the written statement of arguments is
hard to understand and deemed to have serious impact on a decision for patentability.
(3) The request for documents required for examination shall be made under the name of
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an examiner in charge. He/she shall specifically clarify which document shall be submitted.
The period designated for document submission falls within the period designated for
submission of a written argument. To expedite an examination proceeding, an examiner may
include his/her request for documents under 「Considerations in Amendment」 in the
notification of the grounds for rejection.
(4) Even if an applicant fails to respond the document request by an examiner, an examiner
shall not invalidate an application procedure.
(5) Documents submitted by an examiner's request are only used for reference material,
which cannot substitute or supplement the description.
(6) Where receiving the documents or samples from an applicant, an examiner shall keep a
document list and store documents or samples in a file wrapper if possible, or store them
separately till the examination closes.
An examiner shall refer to the following with regard to documents or samples submitted.
① For documents or samples on return request by an applicant, an examiner shall pay
special attention in storing them undamaged.
② Even for documents or samples with no return request, an examiner shall also pay
special attention in storing them undamaged just where those documents or samples are
requested in trial
③ An examiner commences a procedure to return them right after examination closes.
(Note) Where a person who has submitted documents or samples, intends to get them back,
he/she shall state the purport to the return request form. After closing the examination, an
examiner shall designate the return period and notify a submitter to receive the documents
or samples within that period.
Where no request has been made for return of documents or samples, or where a
submitter fails to go through return proceeding within the designated period, documents or
samples can be disposed of as decided by the Commissioner of KIPO.
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(7) An examiner may use evidential documents submitted for information for his/her
examination according to Article 63 bis.
Where it is certain that evidential documents are periodicals or their copies, or copies of
description or drawing(s) having been published before the application date, an examiner
may use them as prior art without additional examination of evidence.
Where evidential documents submitted are documents other than periodicals or their
copies, or copies of description or drawing(s) having been published before the application
date, an examiner may use them as prior art only if an examiner is confident of the fact to
be verified without examination of evidence. However, where an applicant argues the
existence of the evidential fact in the written argument, an examiner shall not admit the fact
unless he/she finds its admission justifiable.
(Explanation) The Patent Act has no provisions regarding an examination of evidence
during examination. Therefore, where the evidential documents submitted for reference
information are documents other than periodicals or their copies, or copies of description or
drawing(s) having been published but the fact to be verified cannot be confirmed with
confidence, an examiner shall not decide to reject the application based on this evidence.
(Note) Except for an application which has been invalidated, withdrawn, or abandoned, or
whose patent grant or rejection has been decided by an examiner, anyone can provide
relevant evidence to an examiner to argue that an application of the claimed invention shall
not be patented. Information provision can be made by any person or corporation, except
for an incompetent minor who shall appoint a legal representative for such action. In the
meanwhile, an examiner may refer documents or information provided by a group or
association instead of invalidating or returning them.
7. Additional Search
During the examination stage, an examiner shall conduct additional searches for the
following cases.
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① Where an examiner finds through the written argument, personal interview, or
information provided that his/her incomplete understanding of claimed invention results in
the incomplete search.
② Where amended claims include subject matters not covered by the original search.
③ Where an examiner intends to examine the claimed invention which has been excluded
from the original search due to lack of unity of invention (i.e. a group of inventions that
form a single general inventive concept).
④ Where an international patent application that can be regarded as another application
in terms of Article 29 (3) enters the domestic stage and its translation is expected to be
submitted.
⑤ Or other cases where considered necessary for additional research
8. Examination Deferral or Extension of Processing Period
(1) An examiner may defer an examination or extend the processing period within 2 months
when an application under his/her examination falls under the following cases.
Note that examination deferral or period extension of processing period is not allowed
when the Commissioner of KIPO or an examiner designates the processing period for the
concerned application,
① Where an earlier application or conflicting applications is (or are) not laid open or
request for an examination for the conflicting applications is not made.
② Where the period, during which an earlier application serving as a basis of domestic
priority claim is deemed to have been withdrawn, has not elapsed.
③ Where a patent trial or proceeding related to the application concerned is pending.
④ Where the period extension for processing is required for the circumstances that
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search for prior art is outsourced to a specialized organization, that expert opinions are
inquired, or that the examination with consultation needs to be carried out.
⑤ Where the period designated for submission of evidential documents for priority right
in case of an application claiming priority under the treaty has not elapsed.
⑥ Or other occasions where considered necessary to defer examination start.
(2) Deferral of examination or extension of processing period shall be reported to the head
of Examination Unit, and be notified to the concerned applicant.
(3) For an application whose examination or processing has been already deferred or
extended respectively, an examiner shall review more than one time a month to confirm
whether the reasons causing deferral or extension have been resolved or not.
Where the review confirms all reasons for examination deferral or extension of processing
period have been cleared up, an examiner shall conduct the examination by the termination
date of the extension of examination deferral or processing period.
(4) Where the examiner considers the examination to be deferred and the processing period
to be extended again because the application does not overcome the previous deferral or
extension reason or new deferral or extension reasons occur, it shall be reported to the head
of the examination division (team) following a head of the examination unit, and the deferral
or extension shall be made within two months.
figure
However, where the examination deferral or processing period is extended because prior art
search is commissioned to a specialized institution, external consultation is sought or
consultation examination is required or where it is deemed to necessary to defer
examination on other grounds (④ and ⑥ among the grounds for examination deferral
mentioned in (1) above), the examination deferral or extension of processing period can be
extended again only in the case of causes not imputable to the examiner. Reasons not
imputable to the examiner include where examination cannot be conducted because the
prior art search report has not been delivered or where copies of the prior art literature are
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requested to external institutions, but have not been secured yet.
figure
(5) Where an examiner once again decides to defer the examination or extend the
processing period according to the abovementioned case (4), he/she notifies the applicant
specific reasons of deferral or extension.
(6) The case of 「③ Where a patent trial or proceeding related to the application concerned
is pending」 among the grounds for examination deferral specified in (1) includes where the
original application is pending in the trial against decision of rejection and a divisional
application the same claims as the original application is requested for examination and the
divisional application has the only ground for rejection under Article 36(2) of the Patent Act
(conflicting against the original application).
If a ground for rejection under Article 36(2) of the Patent Act is notified to a divisional
application when no opportunity of amendment is given to the conflicting original
application, it might be possible that the applicant cannot make amendment to the ground
for rejection and therefore, examination referral shall be deemed necessary. However, since
the above-mentioned cases do not happen to grounds for rejection other than the one
under Article 36(2) of the Patent Act, the examiner shall conduct the examination.
Specifically,
ⅰ) Where a divisional application has the only ground for rejection under Article 36(2) of
the Patent Act, the examiner shall defer examination until the trial against decision of
rejection on the original application becomes final and conclusive, without notifying the
ground for rejection.
ⅱ) Where a divisional application has other grounds for rejection than the one under Article
36(2) of the Patent Act (the ground identical with the ground for decision of rejection of the
original application, etc.), the examiner shall notify the grounds for rejection other than the
one under Article 36(2) of the Patent Act. Where the notified grounds for rejection are not
addressed, the examiner shall make the decision of rejection based on such grounds for
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rejection. Where all the notified grounds for rejection are addressed and only the ground for
rejection under Article 36(2) of the Patent Act is left, the examiner shall defer examination
until the trial on the original application becomes final and conclusive.
(Note) Requests of period extension for the ground for rejection mentioned in ⅱ) above,
exceeding four times, also can be approved. It constitutes 「⑤ Where the period designated
for submission of evidential documents for priority right in case of an application claiming
priority under the treaty has not elapsed」 among the grounds for approval of period
extension in 4.2, Chapter 3, Part 1.
The case where examination is deferred since it constitutes 「③ Where a patent trial or
proceeding related to the application concerned is pending」 includes where the
administrative trial ∙ litigation on the concerned application procedure is pending.
(7) As for ① among grounds for examination deferral specified in (1), where more than two
patent applications are filed on the identical invention, the examiner shall defer examination
for subsequent applications until the prior application has been processed or has been laid-
open or registered. However, where the subsequent application can be rejected based on
the same ground as the ground for rejection for the prior application, the examiner can start
examination. The detailed methods of starting examination for subsequent application are as
follows:
Identicalness of
Applicants of
Prior/Subsequent
Applications
Disclosure of Prior Application Start of Examination on Subsequent
Application
Identical Laid-open Examination conducted and Ground
for rejection under Article 36(1)
notified (Patentability determined
after confirming claims of prior
application)
Not Laid-open Examination conducted and Ground
for rejection under Article 36(1)
notified (Only application number of
prior application and invention
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disclosed in claims indicated,
Patentability determined after
confirming claims of prior
application)
Different Laid-open Examination conducted and Ground
for rejection under Article 29(3)(ⅳ)
notified (Article 36(1) applied when
inventors are identical)
Not Laid-open Examination deferred until the
disclosure of prior application
(8) When the prior application is examined or laid open or registered after examination on
subsequent applications is deferred, the examiner may conduct examination on subsequent
application. However, even though examination on subsequent application is conducted, the
examiner shall make the final decision on examination in applying Article 36(1) of the Patent
Act once the scope of claim of the prior application is determined.
9. Document Delivery
9.1 General Principles
(1) The documents shall be sent by registered mail except for the cases where the party or
his/her attorney receives in person or uses information network. In case of sending
documents by post mail, the registration receipt shall be kept.
(Note) A trial ruling or a written decision regarding a patent trial, retrial, or cancellation of a
patent right shall be delivered by a special delivery method according to laws on postal
service.
(2) The documents shall be delivered to a legitimate receiver, referring to an attorney if
appointed, sub-attorney or attorney appointed midway except for special cases. The special
cases herein refers to the occasion where a delivery is made to an attorney given no priority
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regarding notification, or where an attorney or the party goes through the procedure
directly related to the examination such as a written statement of argument or an
amendment (hereinafter the same shall apply).
In case of two or more agencies, except for special cases, a legitimate receiver shall be the
attorney described first in a written patent application.
For a multiple number of attorneys with general power, documents shall be delivered
preferentially to the attorney having appointed for the relevant case.
Where a receiver is incompetent, delivery shall be made to his/her legal representative.
Where two or more applicants involve in a patent application, delivery shall be made to a
representative if elected, or to the applicant stated first in the written application if no
representative is designated, except for special cases.
(3) The delivery of documents shall be made to residential or business address of a entitled
receiver unless reporting other address for delivery. The change of delivery address shall be
reported without delay.
(Note) Where a failure of delivery is due to rejection by a receiver without justifiable reason,
the date of sending is regarded as a receiving date. More details regarding document
delivery can be referred to 「Part 1 General Rules」.
9.2 Delivery by Public Notification
When documents cannot be delivered because the residential or business address of the
addressee is unclear, the documents shall be delivered by public notification. 'residential or
business address of the addressee is unclear' herein refers to the case where the address of
the addressee cannot be verified even using the resident registration use system. It includes
the case where two or more persons go through a patent procedure and all their addresses
cannot be verified.
Delivery by public notification shall be made as follows.
① Where documents are returned, an officer in general affairs division of examination
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bureau shall file the facts regarding the document returns such as return number, reason of
return to a computer system and communicate to an examiner in charge.
Where an examiner is notified of the aforementioned, he/she shall verify the address of
a legitimate receiver by telephone, to which an examiner shall send again the returned
documents and the "Guide to Report on Information Change in Applicant" with attachment
of the form to report the change of applicant's information (i.e. Form(v) in the Enforcement
Rules of the Patent Act).
② Notwithstanding the procedure in ①, where the address confirmed by the Resident
Registration Use System is identical with the address confirmed by telephone, an examiner
shall deliver documents by public notification. If not identical, an examiner shall deliver
again the documents to the address confirmed by the Resident Registration Use System
according to the procedure in ①.
③ Where documents were sent again to the address confirmed through the Resident
Registration Use System but returned again, documents shall be delivered by public
notification with no further procedure for address confirmation.
※ Where a receiver is a corporation, the Resident Registration Use System cannot be used.
In this case, an examiner shall exert most available efforts to confirm a correct address of a
corporation and send documents to a legal address at least once before public notification.
(Note) The delivery shall be made according to the Rules on Office Management and
Patent Net System. However, an examiner may adopt a different delivery method where
through case by case review an examiner finds a new delivery method for sure sending to a
legitimate receiver.
10. Personal Interview
Where an applicant or his/her attorney (hereinafter 'the party') requests or where an
examiner considers necessary for a prompt and fair examination, an examiner may have a
personal interview with the party as ancillary method for examination. Cases requiring a
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personal interview are as follows; where considered necessary for comparative explanation
between the claimed invention and the prior art, where clarification of the ground for
rejection is required, where the written argument requires explanation for clear
understanding, where the subject matter of the claimed invention is so complicated and
sophisticated that its understanding is difficult, or others where an examiner recognizes a
need for a personal interview.
10.1 Request and Grant for Personal Interview
(1) The party, seeking to have a personal interview, communicates the purport by fax,
telephone, information network including e-mail, or a written application submitted in
person on his/her visit to the patent customer service center. Where a request for personal
interview involves a multiple number of applications, the party shall file an interview request
individually for each application. However, if a multiple number of applications are assigned
to the same examiner, an applicant may file an interview request for all applications only
one time.
The request for a personal interview can be filed after an examination begins, but not
later than the decision to grant a patent. However, for an application decided to be rejected,
the party may request an interview till a trial against the decision to reject the application is
filed.
(2) If considered necessary, an examiner may request and set a date for an interview in
writing, by fax or telephone. An interview request by an examiner is allowed only when the
telephone discussion is not sufficient to reconcile ideas between the examiner and the
applicant.
The date of a personal interview designated by an examiner may change under agreement
with the party. The change of an interview schedule shall be included in a personal interview
log.
(3) Where the party requests for a personal interview, an examiner should respond actively.
However, where the party makes just a plain business contact, questions about an
examination progress, asks general questions about patentability, or requests a personal
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interview for the same application repeatedly or for other issues unrelated to the
examination, an examiner may ask the party to modify the contents of an interview request
or disregard such request aforementioned.
Where communicating with the party through telephone, fax, or e-mail regarding an
interview, an examiner shall include dates and persons in communications, due date and
form of an interview, and a contact number in the examination report in the Patent
Examination Processing System.
10.2 Procedure of Personal Interview
(1) A personal interview is face-to-face. For a face-to-face interview, it is principle to use the
meeting room located in the patent customer service center. For a video phone interview,
the long-distance video conference room located in the Multimedia Center of KIPO Seoul
Branch (13th Floor), the video conference room in KIPO, and other facilities available for
video phone interview can be used.
(2) For a personal interview to be more smooth and effective, an examiner shall in advance
review the relevant documents and print out them if necessary. If the prior contact with the
party confirms a discussion topic, an examiner shall review and organize the related issues in
advance.
If necessary, an examiner may request the party for reference documents including
document or multimedia material related to prior art in advance.
(3) Before an interview, an examiner shall confirm whether a participant in an interview is a
legitimate interviewee. The legitimate participant in a personal interview is a person who can
respond with authority regarding the concerned application, which includes an applicant (a
representative if corporation), an attorney of the concerned application, or a person with an
evidential statement showing he/she is a legitimate entrustee appointed by an attorney, an
applicant, or an attorney with the right to elect an attorney for him/herself (referred to sub-
attorney).
A participant with delegation limited to a personal interview shall submit a corresponding
proxy statement at every interview. However, a participant may combine delegations for
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multiple interviews into one proxy statement by stating all the application number on the
one proxy statement.
A legitimate interviewee may accompany an inventor or a person related to a patent.
(4) In the interview log, an examiner shall state an application number, name of an examiner
and participants, and contents and result of interview. The interview log, which is sealed with
signatures of an examiner and participants, shall be submitted to an officer in charge at the
patent customer service center. The contents of an interview shall be included in the
examination report of the Patent Examination Processing System.
When an examiner and an interviewee exchange opinions regarding the restricted issues,
the opinion exchanged shall be briefly stated in the interview log by the examiner.
10.3. Instructions of Personal Interview
(1) An examiner shall proceed to the procedure swiftly on a basis of personal interviews.
Also, any agreements made during a personal interview shall be conducted within the
shortest time possible.
(2) A personal interview shall not be a basis for an examiner to simplify or omit requisite
statements in the notification of the ground for rejection or the written decision to reject a
patent.
(3) Where an examiner discovers a new ground for rejection after a personal interview and
therefore intends to deliver a measure contrary to the outcome from the interview, he/she
shall communicate the purport to the party by the notification of the ground for rejection,
telephone, fax or e-mail and continue the examination process.
(4) An examiner may request the party to submit materials presented at the interview.
(5) It is principle that a personal interview is held one time per application. If necessary, it
can be held up to two times.
(Note) Where an interview is held within the period designated for the submission of the
written statement of the argument, a participant shall submit the responding documents
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(such as the written statement of the argument, the amendment, etc) in accordance with the
agreement at the interview. If an applicant decides respond differently from the agreement
made at the interview, he/she shall communicate the purport to the examiner in charge by
telephone, fax, e-mail, or post mail.
A personal interview shall not be a basis for an applicant to simplify or omit requisite
statements in the written statement of the argument.
10.4. Personal Interview on Visit
(1) An applicant may make an on-line request for an examiner to visit his/her for
communication (hereinafter 'personal interview on visit').
(2) For a request of personal interview on visit, an examiner contacts by telephone to
determine a need for personal interview on visit. A personal interview on visit is allowed
only if communication by telephone is difficult or if deems necessary for prompt and
accurate examination.
(3) A personal interview on visit is in principle carried out in a 「Regional Intellectual
Property Center」which is established pursuant to Article 23 of the Invention Promotion Act.
However, in some unavoidable circumstances, the interview can be carried out in places
other than the business site of the party under mutual agreement.
(4) For a personal interview on visit, when changing a date of a personal interview on visit
and keeping an interview log, an examiner shall comply with the procedure of general
personal interview.
11. Amendment in Response to Final Notification of Ground for Rejection
Unlike the non-final notification grounds for rejection, when receiving the amendment in
response to the notification of the final grounds for rejection, an examiner shall determine
whether to dismiss the amendment before assessing the requirements of patentability and
confirm matters to be examined.
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When submitting the written argument, an applicant may argue that the notification of
the final ground for rejection issued by an examiner is inappropriate as the final ground.
Where such argument is made, an examiner shall review whether it was appropriate to set it
to “the final notification of grounds for rejection”, considering the applicant‟ assertion in the
written opinion.
11.1 Remarks related to ‘Final Notification of Ground for Rejection’
(1) Whether the final notification ground for rejection is appropriate or not shall be referred
to 「5.3 Types of Notification of Grounds for Rejection」. Where an examiner judges that
issuance of the final notification of grounds for rejection is deemed to be appropriate, he or
she shall review whether amendment requirements are satisfied.
(2) On the other hand, where the issuance of final notification of grounds for rejection is
deemed to be inappropriate, an examiner shall not dismiss but admit the amendment.
Where the grounds for rejection indicated in the final notification are not overcome, the
examiner will take proper actions according to the following cases:
① Where no amendment is made or amendment is limited to response to the final
notification of the grounds for rejection
Where an examiner notifies of final grounds for rejection but is supposed to notify of
non-final grounds for rejection, and applicant submits the amendment only in response to
the final notification of grounds for rejection (for example, amending by reducing the claim
without adding a new claim) or fails to conduct amendment, an examiner shall notify
grounds for rejection again instead of making a decision to reject the application, despite
that the final grounds for rejection are not overcome. The type of the ground for rejection
shall be decided with referral to「5.3 Types of Notification of Grounds for Rejection」.
② Where final grounds for rejection are notified to an applicant, but he or she makes an
amendment with considering „the final notification of grounds for rejection‟ as „a non-final
notification of grounds for rejection.‟
Where an applicant, arguing the inappropriateness of the examiner ‟s issuing the final
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notification of grounds for rejection, submits the amendment in response to non-final
notification of grounds for rejection, an examiner shall make a decision to reject the
application.
For example, where an examiner notifies the deficiency in the description (which
should have been notified in the non-final ground for rejection) as the final ground for
rejection, an applicant argues that the deficiency had been in the application having been
filed first and submits the amendment where a new claim is added (recognized as the
amendment according to the first ground for rejection). In this case, an examiner shall admit
the amendment and make a decision to reject a patent application afterward if the
amendment still fails to remedy the deficiency in the description.
11.2 Examination of Amendment
(1) Where an applicant in response to the final notification of the grounds for rejection
submits a multiple number of amendments within the period designated for the submission
of written argument, an examiner shall determine whether he/she admit or dismiss the
amendments in reverse order of the submission.
(2) Where the amendment in response to the final notification of the grounds for rejection
fails to meet the amendment scope prescribed in Article 47(2) and (3), or where new
grounds for rejection occur from the amendment in response to the notification (the
amendments by deleting claims according to Article 47 (3) (i) and (iv) are excluded), the
amendment shall be dismissed.
Here, the occasion of「where new grounds for rejection occur from the
amendment 」refers to the occasion where the submission of the concerned amendment
causes unprecedented grounds for rejection (where the concerned amendment leads to the
deficiency in the description or where a new ground for rejection regarding novelty or
inventive step occurs). The new ground for rejection does not include the followings; the
grounds for rejection which have been noticed prior to the amendment and the grounds for
rejection which have existed without notification.
The judgment for the case 「where a new ground for rejection occurs from the
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amendment」 can be referred to the following examples.
(Example 1)
Claim 1 : Equipment comprised of A+B
[Final Notification of the Grounds for Rejection] Claim 1 is denied of inventive step
due to cited invention1
[Specification after Final Amendment]
Claim 1 : Equipment comprised of A+b
(still denied of inventive step due to cited invention1)
[Amendment Admitted] Since no ground for rejection is generated from the
amendment of claim 1, the amendment is admitted
[Decision to Reject] Claim 1(A+b) is denied of inventive step due to the cited
invention1. The decision to reject a patent is made.
(Example 2)
Claim 1 : Equipment comprised of A+B
[Final Notification of the Grounds for Rejection] Claim1 is denied of inventive step
due to the cited invention1
[Specification after Final Amendment]
Claim 1 : Equipment comprised of A+B+C
(Inventive step is admitted for the cited invention 1 but not for the cited
inventions 1 and 2. The cited invention 2 is required additionally due to the addition
of C)
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[Amendment Dismissed] The amendment of claim 1 generates a new ground for
rejection. Therefore, the amendment is not admitted, resulting in the dismissal of the
amendment.
[Decision to Reject] Claim 1(A+B) is denied of inventive step due to the cited
invention 1.
(Example 3)
Claim 1 : Equipment comprised of A+B
Claim 2 : Equipment comprised of claim1 with C attached
[Final Notification of the Grounds for Rejection] Claim 1 is denied of inventive step
due to the cited invention.
[Specification after Final Amendment]
Claim 1 : Delete
Claim 2 : Equipment comprised of claim1 with C attached
[Amendment Admitted] The amendment by deleting claim 1 is regarded as the
reduction of scope of the claim. Though the deletion of the claim1 causes a new
ground for rejection (i.e. deficient statement of claim2), this amendment is admitted
according to Article 51 (1) of the Patent Act
[Final Notification of the Grounds for Rejection] Since the deletion of claim 1 in
compliance with notification of the grounds for rejection causes the deficient
statement in claim 2, an examiner shall notify this deficient statement of claim 2 in
the final notification of the grounds for rejection.
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(Example 4)
Claim 1 : Equipment comprised of A+B
Claim 2 : Equipment of claim 1 with C attached
Claim 3 : Equipment of claim 1 or 2 with D+E attached.
[Final Notification of the Grounds for Rejection] Claim 1 is unpatentable due to
conflicting applications
[Specification after Final Amendment]
Claim 1 : Delete
Claim 2 : (Amended) Equipment comprised of A+B+C
Claim 3 : (Amended) Equipment comprised of A+B+D+E
Claim 4: (New Addition) Equipment comprised of A+B+C+D+E
[Amendment Admitted] Claim 4 is just an arrangement due to the deletion of the
claim1, and substantially corresponds to pre-amendment claim 3. Claim 4 is not
newly added. Since the addition of claim 4 is inevitable due to deletion and the
amendment is recognized as appropriate, the amendment is admitted.
(Example 5)
Claim 1 : Equipment comprised of A
[Final Notification of the Grounds for Rejection] Claim 1 is denied of inventive step
due to cited invention1
[Specification after Final Amendment]
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Claim 1 : Equipment comprised of A+B
(Cited invention 1 includes B, denying inventive step in claim 1)
[Amendment Admitted] The rejection reason having notified is that the invention in
claim 1 is denied of inventive step due to the cited invention1. Where the
amendment does not generate new ground for rejection, the amendment is
admitted.
[Decision to Reject] Claim 1(A+B) is denied of inventive step due to the cited
invention1
(3) Regarding the satisfaction of amendment requirements, an examiner may make a
judgment for the convenience of the examination procedure, disregarding the order of
provisions in law, or the sequence of amendment matters. Details regarding the violation of
amendment requirements shall be referred to this Part IV, Chapter 2.
(4) Where the amendment was deletion of claims and subsequently generated a new
ground for rejection (due to the deletion of claims, the claim referring only to the deleted
claim has deficiency in the description), an examiner shall not dismiss the amendment by
reason abovementioned. Note that an examiner shall admit the amendment unless there are
other reasons for amendment dismissal, and then notify the new rejection grounds at the
final notification of the grounds for rejection.
However, where the amendment is made to delete the claim, if the claim referring to the
deleted claim as well as other undeleted claims and the claimed invention is clearly
understood when interpreted excluding the deleted claim, it shall constitute a clerical error,
not a ground for rejection under Article 42(4)(ⅱ). Therefore, it is not a new ground for
rejection which is the subject for the withdrawal of the amendment. Also, it shall be subject
to ex officio amendment rather than the subject for notification of the final ground for
rejection even after approving the amendment (see Part 2, Chapter 4, 4.(4) for detail).
(5) The decision to dismiss amendment shall be made in writing separately from the
decision to reject an application, specifying reasons why amendment had to be dismissed
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for the subsequent procedural convenience for an applicant.
(Note) An applicant cannot appeal against a decision to dismissal of amendment during the
substantive examination, which can be dealt only in the trial against the decision to reject an
application. When a reexamination is requested, a decision to dismissal of amendment made
prior to the reexamination request shall not be appealed.
11.3 Examination after Admission of Amendment
(1) Where the amendment is appropriately made, an examiner shall admit the amendment
and determine the specification to be examined after reflecting the amendment, which is
followed by proper actions such as his/her assessment of requirements of patentability, its
corresponding notifications and decision to grant or reject.
(2) Where the grounds for rejection are not overcome by the amendment, an examiner shall
make a decision to reject an application. Otherwise, he or she shall make a decision to grant
a patent.
(3) Where the notified grounds for rejection are overcome, but other grounds for rejection
are generated, an examiner shall notify an applicant of these newly found grounds for
rejection. The type of the ground for rejection shall be referred to 「5.3 Types of Notification
of Grounds for Rejection」.
(Note) Where an examiner overlooks the fact that an inappropriate amendment in response
to the final notification of grounds for rejection is made and then makes a decision to grant
a patent or notifies first or final grounds for rejection, he/she cannot dismiss the previous
amendment retroactively upon his/her discovery.
11.4 Examination after Amendment Dismissal
(1) After dismissing amendment, an examiner shall continue examining the pre-amended
specification.
(2) Where reviewing the final notification of grounds for rejection and discovering the
ground not overcome, an examiner shall make a decision to reject the application. Where an
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examiner regards the appropriateness of issuing the final notification of the grounds for
rejection and discovers no other grounds for rejection, he/she shall make a decision to grant
a patent.
(3) Where an examiner discovers inappropriateness of issuing the final notification of the
grounds for rejection and also discovers other grounds for rejection, he/she shall notify
grounds for rejection again. The type of the ground for rejection shall be referred to 「5.3
Types of Notification of Grounds for Rejection」.
12. Final Decision
Once completing the examination, an examiner shall make a decision to grant or reject
without delay.
Where an examination of formalities discovers deficiency in application procedure (claims
subsequent to application, application filing procedure, etc.), the final decision shall be made
after the procedural deficiency is remedied.
12.1 Decision to Grant a Patent
(1) Where no ground for rejection is discovered, an examiner shall make a decision to grant
a patent in writing with rationale attached.
The written decision to grant a patent shall include an application number, title of
invention, name and address of applicant and attorney, the text of the decision of
patentability and its rationale, and number of claims to be patented, day/month/year of
decision to grant a patent, matters having amended ex officio, along with an examiner's sign
and seal.
(2) For a decision to grant a patent, the Commissioner of KIPO shall deliver a certified copy
of the written decision to grant a patent to an applicant. The decision to grant a patent is
confirmed upon the delivery of the certified copy.
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12.2 Decision to Reject an Application
(1) Where an examiner provides an opportunity for petition to an applicant with the
notification of grounds for rejection, he/she shall make a decision to reject an application in
writing with rationale attached if an applicant fails to overcome the grounds for rejection.
The written decision to reject an application shall include an application number, title of
invention, name and address of applicant and attorney, day/month/year of notice of grounds
for rejection, the text of decision and its rationale, and day/month/year of decision to reject
a patent, along with an examiner's sign and seal.
(2) For decision to reject an application, the Commissioner of KIPO shall deliver a certified
copy of the written decision to reject an application to an applicant. The decision of
rejection is confirmed when it cannot be revoked with methods prescribed in provisions of
the Patent Act. For example, where no appeal against the decision of rejection is filed within
the statutory period, where a trial decision is made supporting the rejection decision in the
appeal against the decision of rejection, or where a ruling or a trial decision is made to
dismiss a request for a trial, the decision to reject an application is confirmed.
(3) For decision to reject an application, an examiner shall indicate his or her determination
on the applicant‟s amendment in which the notified grounds for rejections were still not
overcome and the issuable items in the written argument.
(4) For an application involving two or more claims, where any of the claims contain
grounds for rejection, an examiner shall make a decision to reject an application.
(5) An examiner shall not make a decision of rejection based on unreasonable rationale
other than the already notified ground for rejection, which includes additional request for
new documents relating to prior art. To refer a new prior art, an examiner shall notify the
very fact as a ground for rejection.
12.3 Additional Notes
When examining an application with information provided by a third party as grounds for
rejection or an application filed by an unentitled person, an examiner shall take requisite
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measures before making his or her final decision.
(1) For an application with information provided by a third party as grounds for rejection, an
examiner shall notify an information provider of his/her decision and whether the provided
information is used or not in the examination, when the examination closes. However, where
the information is provided by a person without capacity to provide information
(incompetent person, or fictitious person), or where the application is abandoned, withdrawn,
or invalidated prior to examination, an examiner may not notify the use of information.
(2) Where an examiner decides to reject an application based on the ground that the
application is filed by an unentitled person, he/she shall deliver written notice to the lawful
right-holder without delay after confirming the decision of rejection. Where the confirmation
of the decision of rejection requires a long time in an appeal against the decision to reject,
an examiner before the confirmation of decision of rejection, may notify a lawful right-
holder of his/her decision to reject an application and the appeal against the decision of
rejection in advance.
13. Cancellation of Examination Measures
Where an examiner discovers defects in his/her measures during the examination, the very
examiner may cancel the measures. The cancellation of a measure loses its partial or whole
validity retroactively to the very beginning.
An examiner shall review whether his/her measure during the examination stage falls
under cancellation in the following cases; where an examiner resumes the once suspended
or deferred application, where an examiner resumes the once closed application including a
withdrawn or abandoned application, or where an examiner conducts an examination of
application which is not requested for examination.
(1) Any cancellation shall be made under the name of an examiner who originally has
conducted the concerned measure. For cancellation of a measure having been conducted by
an examiner, the measure can be cancelled only when the concerned measure displays
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definite defects and the benefits of its cancellation far outweigh than the benefits of its
maintaining. In other words, an examiner shall cancel ex officio only when the benefits
from law compliance outweigh those from confidence protection on a basis of comparative
analysis between 'the principle of law compliance' and the 'principle of confidence
protection'.
(2) For notification of the ground for rejection, request for amendment, and request for
supplementation, an examiner shall not cancel them because their cancellation is of less
practical use compared to keeping them through amendment or error correction.
(3) A cancellation of a measure having been carried out by an examiner shall be notified to
an applicant with definite and specific explanation of the measure to be cancelled and its
corresponding reasons after the communication to a managing director of the Examination
Bureau following a head of the Examination Part.
(4) In principle, the cancellation shall be made in the form of a notice for cancellation
provided by the Patent Examination Processing System. However, 「On-nara System(EDMS:
Electronic Document Management System in Korean Government)」can be used in cases as
follows; where three months have passed after the delivery due date, where new
documents are received after delivering the notice of the measure, or where a process
relating to fee payment is not completed, or where the form of notice for cancellation
cannot be prepared due to failures in other systems of subsequent procedure.
(5) When cancelling the measure having conducted by him/herself, the concerned examiner
shall execute the corresponding subsequent measures.
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Chapter 4. Reexamination
1. Overview
Within 30 days from the date of receiving a certified copy of the decision to reject a
patent application (or within the extended period if the period for a trial against a decision
to reject a patent application is extended), the applicant may amend the specification or
drawing(s) to request reexamination of the application. The reexamination is introduced to
reduce the patent fee burden and complexity in the previous system of reexamination
before a trial.
2. Reexamination Procedure
2.1 Reexamination Procedure Flow Chart
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2.2 Examination of Formalities in Reexamination Request
(1) The reexamination shall be assigned to the examiner who had performed the original
examination and had decided to reject an application. However, when the entrustment of
reexamination to the original examiner is not appropriate as seen in the case of his/her
transfer to other non-examination bureaus, an examiner in charge of the concerned
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technical classification of the claimed invention shall carry out the reexamination.
(2) Requirements for reexamination are as follows: an application ① has not been
invalidated, withdrawn or abandoned, ② has rejected (rejection after reexamination
excluded), ③ has not requested for a trial against decision to reject, and ④ declares the
intention to request an reexamination with amendment of the specification, drawing(s) or
claims.
As the amendment herein includes not only substantial amendment to the specification,
drawing(s) or claims but also any amendment made in the specification.
(3) The request for a reexamination shall be made by the submission of the amendment.
Therefore, the examination of formalities for reexamination request shall be made in
accordance with the examination of amendment procedure. In other words, where the
reexamination request is filed for an application which is not pending due to invalidation,
withdrawal, or abandonment, where a person other than an applicant files an reexamination
request by submitting the amendment, or where the amendment is submitted after the
statutory period, the examiner shall provide an applicant with an opportunity for explanation
and returns the written reexamination request.
Also, where an applicant request for a reexamination prior to the decision to reject a
patent application, or request again for an additional reexamination after a rejection
received from the first reexamination, an examiner shall return the written request for
reexamination.
(4) An applicant shall not request reexamination for an application for which a trial against
the decision of rejection has been requested. When requests for a reexamination and a trial
against the decision of rejection are filed simultaneously, the following should be complied
with.
① Where an applicant submits the amendment stating the purport for reexamination
request following the submission of the request for a trial
The proviso of Article 67-2 stipulates that an applicant shall not request for
reexamination where an appeal for a rejection decision have been already filed. And
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Regardless of whether the trial request is invalided or withdrawn as of the amendment
submission date, an examiner in this case shall provide an applicant with an opportunity for
explanation pursuant to Article 11(1) (XIX) of the Enforcement Rules of the Patent Act and
shall return the written amendment to an applicant. When receiving the written amendment
from an examiner, an applicant may amend by withdrawing an appeal against the rejection
decision and file a reexamination request provided however that the prescribed period of
Article 67-2 (1) shall not elapse.
② Where an applicant submits a request for a trial following the submission of the
amendment containing the purport to request for reexamination.
As the request for examination by submitting the amendment is legitimate, an
examiner shall regard the decision of rejection having been cancelled, and proceed with the
reexamination.
③ Where an applicant submit a request for a trial and the amendment containing the
purport for reexamination request, both of which are dated on the same day.
Where the submission dates of a trial request and an amendment are not confirmed
(i.e., it is not clear which of the two is made first), an examiner, considering the amendment
as being submitted later than the request for a trial, shall notify the reason for returning an
amendment. The notice of the reason for returning an amendment shall explain in detail
that an applicant may choose between a request for reexamination and a trial against
decision of rejection. Where an applicant withdraws an appeal against the decision of
rejection (a request for a trial), an examiner in the view of a request for reexamination
having been valid shall proceed to the reexamination procedure. When receiving a request
for returning an amendment, an examiner shall return it without delay.
④ Where an applicant submit a request for a trial and an amendment without stating the
purport to request for reexamination, both of which are dated on the same day.
Where an amendment does not state the purport to request for examination, it shall
not be regarded as being validly submitted within the amendment period (Patent Act
Articles 47, 67bis①). An examiner shall regard the amendment as document being
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submitted after the prescribed period in the Patent Act or Enforcement Decree of the Patent
Act (the Enforcement Rules of the Patent Act Article 11) and return the amendment after
giving an opportunity for petition.
2.3 Review of Amendment Appropriateness
(1) In the case of reexamination request, the previous rejection is deemed to have been
cancelled. Therefore, the examiner herein shall examine in the same manner as he/she have
examined an application with the amendment before decision of rejection was made.
However, the request for reexamination deems to cancel only the previous decision of
rejection, not the other previous procedure of the examination. In other words, a patent
procedure prior to rejection decision and the examination procedure conducted by an
examiner (notice of the non-final rejection ground, amendment, notice of final rejection
ground, or amendment dismissal), shall remain valid during reexamination stage.
(2) Where the amendment is submitted in order to file a reexamination request, an examiner,
before conducting reexamination, shall confirm specification be examined on a basis of
his/her judgment of whether the amendment shall be dismissed or not.
Judgment to dismiss the amendment having been made upon the request for
reexamination shall refer to the above-mentioned section of「11.2 Requirements for
Amendment」. 'An amendment according to the final notification of ground for rejection‟
reads to „an amendment conducting upon request for reexamination request‟.
(Note) The scope of amendment upon the request for reexamination is the same as that
of amendment according to the final notification of ground for rejection. For the scope of
amendment, Part VI Chapter 2 in this Guideline shall be referred to.
(3) In the case of request for reexamination, even if the amendment having been conducted
before the reexamination request is eligible to be dismissed but is disregarded, an examiner
shall not dismiss the amendment retroactively by the foresaid reason(Patent Act Article 51①
Proviso). It is designed to protect an applicant's confidence and interest in reexamination
procedure which is based on the amendment made before decision of rejection, of an
applicant.
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(4) A decision as to whether the amendment is appropriately made or not is made as
follows:
① Where a decision of rejection is made without amendment dismissal prior to request
for reexamination
An examiner examines the specification reflecting the AmendmentⅠ and delivers the
notice of first rejection ground. And after examining the specification reflecting Amendment
II, an examiner discovers that the rejection ground is not amended and accordingly delivers
the decision to reject a patent to an applicant. In response, an applicant submits the
Amendment III as a procedure of reexamination request. Under this circumstance, (a) an
addition to the scope of the matters pursuant to Article 47(2) of the Patent Act shall be
compared with the specification or drawing(s) originally attached to the written patent
application, and (b) another requirement for the amendment pursuant to Article 47 (3) shall
be compared with the specification or drawing(s) having reflected the Amendment II.
② Decision of rejection after the amendment dismissal, but before the request for
reexamination
During examining the specification reflecting the Amendment II, the examiner discovers
another rejection reason incurring from the Amendment II and notify to the applicant the
final rejection reason thereafter. And with the judgment that the Amendment III is not
sufficient to cure the rejection reason, an examiner dismisses the Amendment III and
examines the Amendment II. According to the examination, an examiner makes a judgment
that the final ground for rejection is not amended and accordingly delivers a decision to
reject a patent. In response, an applicant requests a reexamination with the submission of
the Amendment IV. Under this circumstance, (a) an addition to the scope of the matters
pursuant to Article 47(2) of the Patent Act shall be compared with the specification or
drawing(s) originally attached to the written patent application, and (b) another requirement
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for the amendment pursuant to Article 47 (3) shall be compared with the specification or
drawing(s) having reflected the Amendment II.
In other words, since the Amendment Ⅲ has been already dismissed and the applicant
shall not protest against the decision for amendment dismissal prior to a request for
reexamination shall not be protested, the judgment of requirements for the amendment
pursuant to Article 47 (3) shall not consider the Amendment III.
2.4 Examination after Admission of Amendment
(1) Where the amendment is regarded as appropriate, the examiner shall admit and reflect
the amendment to the specification to be examined. After confirming the specification,
he/she shall decide whether there are the grounds for rejection or not, and its
corresponding notification of the grounds for rejection, and make a decision to grant a
patent or reject the application.
(2) Where the amendment upon the request for reexamination still fails to resolve the
grounds for rejection, the examiner shall decide to reject the application. If cured, he/she
shall deliver a decision to grant a patent.
(3) Where an examiner considers the amendment overcomes the notified rejection grounds
but discovers other rejections grounds that were not indicated, the examiner shall notify
newly found grounds for rejection to the applicant. Types of grounds for rejection can be
referred to 「5.3 Types of Grounds for Rejection」.
(Note) Where the examiner disregards a partial inappropriateness in the amendment upon
the request for reexamination and delivers non-final and final notice of the grounds for
rejection or the decision to grant a patent, the amendment shall not be dismissed
retroactively even when the inappropriateness is discovered afterwards.
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2.5 Examination after Dismissal of Amendment
(1) After dismissing the amendment, an examiner shall immediately proceed with the pre-
amendment original specification.
(2) Where the grounds for rejection noticed are not amended, an examiner shall deliver a
rejection of a patent. However, if the review determines that the rejection decision is not
proper and discovers no other rejection grounds, an examiner shall deliver a decision to
grant a patent.
(3) Where the review discovers that the rejection decision is inappropriate and there arise
other rejection grounds, an examiner shall again notify the grounds for rejection. Types of
grounds for rejection can be referred to 「5.3 Types of Notice of Ground for Rejection」.
3. Instructions for Reexamination
(1) Where the grounds for rejection having been notified previously are not overcome upon
the reexamination request, those rejection ground shall not be regarded newly generated.
Therein, an examiner shall admit the amendment but make a decision to reject a patent.
(2) Where the request for reexamination is filed, the decision to reject a patent application is
regarded as cancelled. Therefore, an applicant shall not perform his/her act which can be
done within thirty days from the receipt of a certified copy of the decision to reject a patent
application. In other words, an applicant shall not either file a trial against decision of
rejection or a divisional application. However, an applicant may file a divisional application
either upon the request for a reexamination or within the period for submitting a written
argument in response to the notification of grounds for rejection during the reexamination
stage.
(3) Article 67-2 (3) of the Patent Act stipulates that the request for a reexamination shall not
be withdrawn. This is designed to prevent procedural confusion upon the withdrawal, since
the rejection ground deems to have been cancelled when a reexamination request is filed.
Where an applicant submits a request for withdrawal of the reexamination request, it shall
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be regarded as uncertain type of documents (the Enforcement Rules of the Patent Act
Article 11). In this case, an examiner shall provide an applicant with an opportunity for
explanation and return the written request for withdrawal.
(4) Where an applicant requests a reexamination in accordance with Article 67-2 (2) of the
Patent Act, the decision to reject the patent application made prior to the request shall be
deemed to have been cancelled. Therefore, where the amendment stating the purport for
the reexamination request dated on the same day is submitted a multiple times, any
amendment from the second submission shall not be deemed to be submitted within the
prescribed period (Articles 47, 67 bis (1) of the Patent Act). Since an examiner regards the
subsequent amendments following the first submission as documents submitted after the
statutory period according to the Patent Act or the Enforcement Decree of the Patent Act
(the Enforcement Rules of the Patent Act Article 11), he/she gives an opportunity for an
explanation and returns the subsequent amendments.
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Chapter 5. Amendment Ex officio
1. Overview
In the past, when the specification had minor deficiency, the examiner should have
notified the rejection grounds and have asked the applicant to amend the deficiency.
However, as the number of the notification of the grounds for rejection due to an
insignificant error or omissions had increased, it became a problem to procrastinate the
examination procedure.
The amendment ex officio by the concerned examiner is therefore introduced to solve the
aforementioned problems. When an examiner during the examination discovers only
obvious errors such as misspells, omissions, or inconsistent reference signs, the examiner is
allowed to amend ex officio the clearly erroneous matters instead of notifying the ground
for rejection, which accordingly prevents the examination delays and makes the description
of registration without deficiency.
However, the responsibility of the description generally lies in the applicant. In
consideration of Article 47 of the Patent Act, which strictly limits a person eligible for
amendment, amendment period, and scope, the amendment ex officio shall be applied
within the limited scope as a supplementary exception for the applicant's self amendment.
2. Matters to be Amended Ex officio
(1) 「Matters that are clearly erroneous」in the specification, drawing(s), or abstract according
to Article 66-2 of the Patent Act refers to the matters that do not fall under the grounds for
rejection and do not influence the substantive scope of right in the patent application,
provided however, that the matters shall have no possibility of arguments in the
interpretation from the context, in the confirming of the claim scope, and in the working of
the invention.
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(2) Matters for amendment ex officio are misspelling or missing word according to standard
Korean or its grammar, or inconsistent use of sign in drawing(s).
① Misspelled word in violation of Korean grammar
(a) Semiconducter → Semiconductor
(b) Boared → Board
② Missing word which is obvious in Korean grammar
(a) signal transmitted ○ line → signal transmitted to line
(b) linear ○tor → linear motor
③ Inconsistence in reference numbering
(a) When explaining in detail, [Drawing 2] Buffer (115) vs. Drawing [D2] Buffer (15)
④ Redundant writing
(a) The patent office, the patent office is → The patent office is
⑤ Error in simple explanation of drawing
(a) Number of drawing misstated
D 1 is cross section of regenerator
D 1 is side view of regenerator→ D 2 is side view of regenerator
D 3 is perspective view of regenerator
(b) Misspelled Reference signs in the drawing
3…Gear 3…Motor → 3…Gear 4…Motor
⑥ Misspelling in summary table
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When the misspelling is obvious in the summary table according to the detailed
explanation of the invention
⑦ Inconsistency in title between the description and the application
The examiner may amend ex officio the title of the invention stated in the description
to correspond to that of the application. However, when the title stated in the application
fails to satisfy the requirements for invention title under Section II, Chapter 000, the
examiner may amend ex officio the inappropriate invention title to the one which is deemed
to be proper (use the correction ex officio button on the website of Patent Net. Com), and
amend ex officio the title of the description correspondingly.
3. Instructions of Amendment Ex officio
The matters to be amended ex officio are limited to self-evident error. When an examiner
amends ex officio, he/she should not alter the scope of the claim, and the amendment ex
officio shall not be allowed if there arises any possibility of different interpretation.
(1) Where the misstatement is regarded as the ground for rejection, no amendment ex
officio is allowed. The rejection ground shall be notified.
(2) Where the description contains both the matters that are clearly erroneous, and the
grounds for rejection, the examiner shall send the notice of ground for rejection where the
matters to be amended ex officio are stated as reference and encourage the applicant to
amend the error.
(3) The examiner shall not add new matters to the first description or drawing(s) by
amendment ex officio. In particular, the examiner shall be careful not to include an
unintended new technical subject-matter during amendment ex officio in drawings.
(4) Where the indicated subject is unclear as in the term of the “above-mentioned” in claims
and therefore, the constitution of the invention is unclear, the examiner shall not make an
amendment ex officio.
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However, even though the matter to be indicated does not match literally, if the matter is
just a clerical error and a person skilled in the art can clearly understand the constitution of
the invention and recreate it, the matter does not constitute a ground for rejection under
Article 42(4)(ⅱ) of the Patent Act and therefore, is subject to ex officio amendment. (See
Part 2, Chapter 4, 4.(4))
(5) The miswriting of the claim referring to the deleted claims shall not be amended ex
officio. In such a case, which claim was meant to be cited is unknown and it is hard to
clearly understand the invention and these constitute a ground for rejection. Therefore, the
examiner shall not make an amendment ex officio. Rather, he/she shall address the lack of
description through amendment by notifying the ground for rejection.
However, as for a claim referring to two or more claims, where part of the cited claims is
deleted, but the claimed invention is clearly understood when interpreted except for the
citation of the deleted claims, it shall be considered not a ground for rejection, but a clerical
error. Therefore, the claimed invention shall be subject to ex officio amendment (See Part 2,
Chapter 4, 4.(4))
(Example) Claim 10 discloses „in any of claims 1 to 9,…‟, and claim 3 is deleted. Even so,
where the claimed invention is clearly understood when interpreted to refer to any of claims
1, 2 and 4-9, except for claim 3, claim 10 shall be subject to ex officio amendment since it
holds a clerical error, not a ground for rejection under Article 42(4)(ⅱ) of the Patent Act.
(2010 Won 4920)
For the use of 'the said' in the application without clear specification, the examiner shall not
delete ex officio unless there is no possible arguments in interpretation according to the
clear causation in the statement.
4. Procedure of Amendment Ex officio
(1) The examiner intending to amend ex officio shall notify the matters to be amended to
the applicant with a certified copy of the decision to patentability.
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Where the matters are recognized for amendment ex officio, the examiner shall describe
in definite and specific manners that which matters are to be amended ex officio in the
written decision to grant a patent. The examiner shall state the reason why the matter is to
be amended ex officio in order to help the applicant to decide to accept the amendment or
not.
(Example of Notice)
1. Second line of <20> in the description; “…signal ... transmitted …”; “…signal ...
transmitted to…”; definite omission
2. 3rd line of the Claim (3); “…Semiconductor Memory”; “…Semiconductor Memory”;
definite misspelling
Also, when the examiner describes where to amend ex officio, he/she shall stipulate
specifically using ID number or relevant line in the page, so that the applicant may not
confuse to determine to accept the amendment ex officio.
(2) When the applicant opposes to accept the amendment ex officio in whole or part,
he/she shall submit the written statement of argument before the payment of patent fee,
whereby the examiner may make selective decision for the amendment ex officio.
Where the applicant submits the written statement of argument regarding the amendment
ex officio, the concerned matter under the amendment ex officio shall be deemed never to
have existed. The description is digitized and published in the patent gazette except for
the matter that the applicant rejects to accept the amendment ex officio.
(Note) Where the examiner amends the matter which does not fall under the category of
the amendment ex officio and the applicant also overlooking such an illegitimate
amendment by the examiner publishes the description in the patent gazette, the concerned
matter having amended ex officio shall be deemed never to have existed unless the
amendment is recognized as legitimate afterward. This is designed to prevent unexpected
losses in patentees or the 3rd parties due to an illegitimate amendment by the examiner.
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Part VI – SPECIAL APPLICATIONS
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Chapter 1. Divisional Application
1. Article 52 of the Patent Act
Article 52 of the Patent Act (Divisional Application) ① An applicant who has filed a
patent application comprising two or more inventions may divide the application into two or
more applications within the scope of the matters disclosed in the specification or drawing(s)
originally attached to the written application of the patent application within one of the
following periods:
1. the amendment period prescribed under Article 47(1);
2. the period for requesting a trial under Article 132ter after the applicant received a
certified copy of the decision to reject a patent application.
② A divided patent application under paragraph (1) (hereinafter referred to as “a divisional
application”) is deemed to have been filed when the original patent application was filed.
However, when any of the following subparagraphs applies to the divisional application, the
divisional application is deemed to have been filed when the divisional application was filed:
(i) where Article 29(3) of this Act or Article 4(3) of the Utility Model Act applies because the
divisional application falls under another application for patent under Article 29(3) of this
Act or a patent application under Article 4(3) of the Utility Model Act;
(ii) where Article 30(2) applies;
(iii) where Article 54(3) applies; or
(iv) where Article 55(2) applies.
③ A person who files a divisional application under paragraph(1) shall state the purport of
the divisional application and indicate the patent application that forms the basis of the
division in a written application of the divisional application.
④ When filing a divisional application, an applicant claiming a priority under Article 54 shall
file the documents prescribed in paragraph(4) of Article 54 with the Commissioner of the
KIPO within three months from the filing date of the divisional application, regardless of the
period prescribed in paragraph (5) of Article 54.
2. Purport
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A divisional application is an application that has been filed as one or more new patent
applications, divided out of a patent application comprising two or more inventions
(hereinafter referred to as an „original application‟). A divisional application shall be deemed
to have been filed at the filing time of the original application.
A patent application involving inventions which do not fulfill the requirement for scope of a
patent application under Article 45 of the Patent Act is unpatentable. Therefore, filing a
divisional application can address grounds for rejection while retaining the original filing
date. Also, the divisional application system is designed to protect inventions described in a
specification or drawing(s), but not disclosed in the claims at the filing time of the
application, considering the purpose of the patent system in which an exclusive patent right
is granted to an invention for a limited time in reward of its disclosure.
3. Requirements for Division
3.1 Persons who may file Divisional Application
Article 52(1) of the Patent Act stipulates „an applicant… may divide…‟ and defines that a
person who may file a divisional application is an applicant who has filed a patent
application comprising two or more inventions. Therefore, a person who has the right to file
a divisional application is the applicant who has filed the original application or his/her
successor. Where an application is jointly filed, the applicants of the divisional application
shall be identical to those who filed the original application.
The following requirements shall be met in order to recognize that the applicant of the
original application and the applicant of the divisional application are identical: ① the same
domicile or business address of the applicants, ② the same name or title of the applicants,
and ③ the same seal of the applicants.
3.2 Time Requirement
(1) The time of filing a divisional application shall be categorized based on the filing date in
the following table.
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Filing
Date
Patent Application Utility Model Registration
Application
‟99.7.1
‟01.7.1
①Within one year and three months
from the filing date of the original
application (the earliest filing date in
case of priority claim)
②After one year and three months
from the filing date of the original
application, but no later than the
delivery of a certified copy of decision
to grant a patent
∙ In case of examination request
∙ Within three months from the date of
the examination notice in case of third
parties‟ request for examination
∙Within the period for submission of
written arguments
∙Within thirty days from the date of
request for an appeal against decision
of rejection
①Within one year and three months
from the filing date of the original
application (the earliest filing date in
case of priority claim)
②After one year and three months
from the filing date of the original
application, but no later than the
delivery of a certified copy of
decision to register a utility model
∙ In case of examination request
∙ Within three months from the date
of the examination notice in case of
third parties‟ request for examination
∙ Within the period for submission
of written arguments
∙ Within thirty days from the date of
request for an appeal against
decision of rejection
①Before the delivery of a certified copy
of decision to grant a patent,
but, only during the prescribed periods
in case of ② and ③
②Within the period for submission of
Within the periods of amendment
prescribed in the provisos of Article
12(2) and Article 13(1) of the Utility
Model Act as follows:
①Within two months from the filing
date of utility model registration
application
②Amendment period by an
examiner ‟s amendment request
specified under Article 12(2) of the
Utility Model Act
(amendment period by KIPO
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‟06.10.1
‟09.7.1
the concerned written argument in case
of receipt of notice of grounds for
rejection
③Within thirty days from the date of
request for an appeal against decision
of rejection
commissioner‟s amendment request
if an application was filed between
July 1, 1999 and June 30, 2001)
①Before the delivery of a certified
copy of decision to grant a patent,
but, only during the prescribed
periods in case of ② and ③
②Within the period for submission
of the written argument in case of
notice of grounds for rejection
③Within thirty days from the date of
request for an appeal against
decision of rejection
①Before delivery of a certified copy of decision to grant a patent. However,
after notice of grounds for rejection, only limited to within the period specified
in ② or only when a request in ③ is simultaneously made.
②Within the period for submission of the written argument in case of notice
of grounds for rejection
③Upon a request for reexamination
④The period allowed for an appeal against decision of rejection after the
delivery of a certified copy of decision of rejection
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(2) The original application which forms the basis of a divisional application shall be pending
before KIPO at the time of filing a divisional application. Therefore, if the original application
has been invalidated, withdrawn or abandoned or the decision to reject the original
application has become final and binding, a divisional application shall not be filed.
Where a division application is filed on the day when the procedure regarding the original
application has been terminated because the original application has been withdrawn or
abandoned, the divisional application shall be treated to have been filed when the original
application was pending before KIPO. It is because that if a divisional application is filed on
the same day when the procedure of the original application is terminated, it would be
difficult to distinguish which application was first-or later-filed. Also, it would be reasonable
to think that the procedure of the subsequent application is conducted in the applicant‟s
awareness of the fact that the original application is still pending before KIPO.
3.3 Substantive Requirement
(1) An invention eligible for a divisional application is the invention within the scope of
subject matter disclosed in the specification or drawing(s) initially attached to the original
application. The inventions described in the specification or drawing(s) of a divisional
application shall be all disclosed in the specification or drawing(s) of the original application.
If even a single invention among the inventions of the divisional application is not contained
in the original application, the divisional application shall be deemed to be invalid or have
grounds for rejection.
To figure out whether an invention for which a divisional application is disclosed in the
specification or drawing(s) initially attached to the original application, the examiner shall
determine whether the invention in the divisional application is explicitly described in the
specification or drawing(s) initially attached to the original application or whether the
invention is obviously understood to have been described without any explicit specification.
「Scope of Amendment」in Chapter 2 of Part Ⅳ shall be referred to regarding the specific
methods to determine the abovementioned cases.
(2) The specification or drawing(s) which forms the basis of validity for the scope of a
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divisional application is the specification or drawing(s) initially attached to the original
application. Therefore, even though an invention described in the specification or drawing(s)
initially attached to the original application is deleted and not described in the amended
specification, the deleted invention is eligible for a divisional application. However, an
invention newly added to the original application through amendments is eligible for the
divisional application since it was not disclosed in the specification or drawing(s) initially
attached to the original application in the first place.
(3) When a divisional application is filed, the application is deemed to have been filed when
the original application was filed. Therefore, if inventions disclosed in the claims of the
original application are the same as those in the original application, it would raise the issue
of double-filing of the two identical patent applications on the same date. In such a case,
since the divisional application fulfills the substantive requirements, it shall be recognized
and examined in accordance with Article 36(2) of the Patent Act. The same principle goes
for an invention which was not identical with the invention described in the claims at the
filing time of a divisional application, but has become identical with the invention in the
claims of the amended original or divisional application.
(Example) Where Invention B is identically described in the claims of both the divisional and
original applications, as suggested in the example below, the divisional application shall not
be invalidated, nor the grounds for rejection be notified citing Invention B is out of the
scope of division. Rather, consultation shall be requested according to Article 36(2) of the
Patent Act.
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4. Procedure of Divisional Application
(1) A patent application shall be newly filed for a divisional application by attaching the
specification or necessary documents prescribed in each paragraph to a written patent
application in Form (XIV) in according to Article 29 in the Enforcement Rules of the Patent
Act. In such a case, the patent application shall state the purport of the divisional
application and indicate the original application which forms the basis of division.
If the original application is not indicated at the filing of the divisional application, the
divisional application shall not be recognized as a legitimate divisional application. Moreover,
except for obvious errors, amendments of changing the original application by amending
the indication of the original application in the written divisional application after division of
the application shall not be accepted.
(2) Normally, along with submission of a divisional application, the applicant is supposed to
amend the original application to differentiate the invention described in the claims of the
original application from the claims of the divisional application. However, the original
application need not be amended if inventions described in the claims of a divisional
application are disclosed only in the detailed description of the invention or drawing(s) in
the original application.
(3) If a claim regarding non-prejudicial disclosure or priority claim is to be made for a
divisional application, the applicant shall state the purport of the divisional application and
submit the documents needed for such claims by the prescribed date from the filing date of
the divisional application (within thirty days from the filing date as for the application
claiming non-prejudicial disclosure or within three months as for the application claiming
priority). Where a claim for non-prejudicial disclosure or priority claim was not made at the
time of filing the original application, such claims shall not be recognized at the filing time
of the divisional application. However, even when the purport of a claim regarding non-
prejudicial disclosure or priority claim was set forth in the divisional application, but the
evidential documents were not submitted within the statutory period, if the applicant states
the purport of a claim for non-prejudicial disclosure or priority claim in the written divisional
application and submitted the evidential documents by the prescribed date from the filing
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date of the divisional application, the claims shall be deemed to be legitimate (except for
when the claim for non-prejudicial disclosure or priority claim of the original application has
been invalidated before the filing of the divisional application).
Where an applicant of a divisional application intends to rely on the evidential documents
of his/her original application which have been already submitted since the contents of the
evidential documents of both original and divisional applications are identical, the applicant
can substitute for the submission of the divisional application by stating the purport of
using the original application in the attached documents of the form.
If the evidential documents were submitted at the filing time of the original application,
and if the documents contained the same claim for non-prejudicial disclosure or priority
claim in a written divisional application as in the written original application, it is deemed
that the applicant has an intention of relying on the evidential documents of the original
application when filing the divisional application. However, Article 10(2) in the Enforcement
Rules of the Patent Act stipulates that the intention of reliance be stated. Therefore, if the
evidential documents were not submitted and the intention of relying on the evidential
documents of the original application was not stated, the examiner shall request
amendment, citing violation of description formalities in relying on the evidential documents.
5. Effects of Divisional Application
A divisional application shall retain the same filing date as the original application.
However, it would be unfair to give the retroactive filing date to a divisional application in
the following cases. Therefore, in such particular conditions below, a divisional application
shall be deemed to be filed when it is actually filed.
① Where a divisional application corresponds to „another application‟ prescribed in
Article 29(3) of the Patent Act or a „patent application‟ specified in Article 4(3) of the Utility
Model Act
Inventions in a divisional application are supposed to be stated in the specification or
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drawing(s) initially attached to the original application. However, new subject matter could
be added to the specification or drawing(s) attached to a divisional application to unfairly
obtain the status of the prior application. Therefore, a divisional application shall not take
the filing date of the original application if it becomes another application mentioned in
Article 29 (3) of the Patent Act. This, too, shall apply to the utility model registration
applications.
② Where an applicant who wants the proviso of Article 1(1)(1) of the Patent Act to be
applied to his/her invention in a divisional application states the purport in the patent
application and submits the evidential documents to the commissioner of KIPO
③ Where an applicant who wants to file a divisional application claiming a priority under
the Treaty states the purport of priority, the name of the country where his/her application
was first filed and the date of the application in the patent application
④ Where an applicant who wants to file a divisional application claiming Domestic Priority
states the purport of claiming a priority and the prior application in the patent application
6. Examination of Divisional Application
6.1 General Principle of Divisional Application Examination
(1) Once a divisional application is submitted, the examiner shall first examine whether the
application fulfills the formality requirements for a divisional application. Then, the examiner
shall determine whether the divisional application was filed by a person eligible for division
of application, whether the application was submitted within the designated period for filing
a divisional application, whether the prior application is properly stated in the divisional
application.
Where a divisional application was filed by a person not eligible for division of application
or where it was submitted after the designated period or where a divisional application was
filed after the termination of the procedure on the original application, it shall be deemed to
be in violation of Article 11(1)(7) or (11) and the examiner shall give an opportunity to
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explain to the applicant. If the applicant cannot give any explanation within the designated
period, the written divisional application shall be returned to the applicant.
(Note) Amendments to subject matter in a divisional application are allowed as long as the
application procedure is being carried out. However, such amendments shall be
limited to correcting obvious errors or deficiencies. Amendments of changing subject
matter shall not be accepted; therefore, if necessary, the examiner shall notify the
applicant of the scope allowed for amendment in amendment request form.
(2) Examinations on the scope of application in a divisional application shall be conducted
based on the periods of filing an application as follows.
①Where the original application was filed before September 30, 2006
Where a divisional application was filed for an invention not described in the original
application, the examiner shall deliver a warning notice for inadmissible division to the
applicant within the designated period. Where division of application is not accepted even
based on the written arguments submitted, the examiner shall deliver a notice for
inadmissible division and examine the application on a basis of the actual filing date of the
divisional application, without giving the retroactive filing date to the application. It shall be
noted that the published patent gazette on the original application can be utilized as
citation documents to deny novelty or inventive step if the filing date of the divisional
application cannot take effect retroactively.
If grounds for both inadmissible division and rejection are present when examining a
divisional application, the examiner shall deliver a notice of grounds for rejection after
confirming whether the divisional application has been accepted or not. However, if the
rejection grounds are not related to whether the divisional application retains the filing date
of the original application (whether a divisional application has been accepted or not), both
the warning notice for inadmissible division and the notice of grounds for rejection can be
simultaneously delivered in the separate forms.
Meanwhile, where an invention not described in the original application is deleted through
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amendment of the specification or drawing(s) of the divisional application while examining
the divisional application without allowing the retroactive filing date to the application, the
examiner shall examine the divisional application after retroactively calculating the filing
date.
(Note) Even when the examiner did not retroactively count the filing date since the
divisional application cannot be accepted, the examiner can make a decision to grant
a patent after delivery of a notice for inadmissible division.
②Where the original application was filed on or after October 1, 2006
When a divisional application was filed for an invention not described in the original
application, the examiner shall notify the applicant of grounds for rejection regarding the
divisional application. The examiner shall make a decision to reject an application if the
divisional application cannot be accepted even with the submission of written arguments or
amendments.
6.2 Instructions on Examination of Divisional Application
(1) Amendments to the specification or drawing(s) in a divisional application are
allowed only within the period prescribed in the subparagraphs of Article 47(1) of the
Patent Act.
Where a divisional application fulfills the procedural and substantive requirements, the
examiner shall regard the divisional application as an ordinary application and assess its
legality on amendments. In such a case, the specification or drawing(s) initially attached to
the divisional application shall become the patent specification which assesses the
substantial requirements of the amendments. If an invention not contained in the initial
specification or drawing(s) of the divisional application is newly added through amendments
after filing the divisional application, the examiner shall conduct the examination in
accordance with the requirement of prohibiting the addition of new subject matter. The
same principle shall apply to the case of the addition of an invention which was described in
the specification or drawing(s) of the original application, but excluded from the
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specification or drawing(s) initially attached to the divisional application.
(2) When a divisional application was rejected again as a result of reexamination specified in
Article 67(2) of the Patent Act, an applicant shall file a divisional application within the
period allowed for a request of an appeal against a decision of rejection on the divisional
application. In such a case, where the identical claim of the original application is included in
the divisional application and the divisional application only holds the ground for rejection
under Article 36(2) of the Patent Act, the examiner shall not notify the applicant of a ground
for rejection and rather defer examination until a ruling of a trial against a decision of
rejection becomes final and binding. However, where other grounds for rejection exist than
the one under Article 36(2) of the Patent Act, the examiner shall notify the applicant of the
grounds for rejection other than the ground under Article 36(2) of the Patent Act and
conduct examination. If all grounds for rejection are addressed, but the ground for rejection
under Article 36(2) of the Patent Act, the examiner shall defer examination until the trial on
the original application becomes final and binding.
See Part 5, Chapter 3 「8. Examination Deferral or Extension of Processing Period」 (6) for
details on examination deferral of divisional applications.
It is because that if the original application was rejected again after reexamination,
amendments to the specification or drawing(s) would be practically impossible, making
grounds for rejection clarified in Article 36(2) of the Patent Act difficult to address. Also,
whether a divisional application holds the status of the prior application mentioned in
Article 36(2) and (4) of the Patent Act can be confirmed only when a ruling of an appeal
against a decision of rejection becomes final and binding.
A divisional application formed on a basis of an application claiming a priority under the
Treaty or claiming Domestic Priority shall be accepted. In the example below, even when an
application claiming a priority of No.④ involves both the prior applications of No.①, ③
(the application claiming Domestic Priority) and the application in the country where it is
initially filed of No.② (the application claiming a priority under the Treaty), the divisional
application of No.⑤ based on an application claiming a priority of No.④ shall be accepted.
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In such a case, the divisional application of No.⑤ shall retroactively take the filing date of
the application claiming priority, but the reference date to determine patentability shall
change based on the filing date of the prior application involving the concerned invention.
In other words, Invention B takes the filing date of the application in the country where it
was initially filed of No.② and Invention C retains the filing date of the prior application of
No.③. Also, Invention D added at the time of filing the application claiming a priority of No.
④ has the same filing date as the application claiming a priority of No.④.
(Note) When the same invention is described in the application claiming a priority of No.④
and the divisional application of No.⑤, Article 36(2) of the Patent Act shall apply.
(4) Where the original application was pending at the time of filing a divisional application,
but was returned after the filing of the divisional application, the divisional application shall
not retain the filing date of the original application and be examined based on the filing
date when it was actually filed. When a divisional application has grounds for rejection, the
examiner shall notify the applicant of the reason why the divisional application cannot take
the retroactive filing date, along with grounds for rejection. In the absence of any ground for
rejection, 「On-nara System(EDMS: Electronic Document Management System in Korean
Government)」 shall be used to notify the reason why the divisional application cannot take
the retroactive filing date.
① Earlier Applicatio
n (A/A)
③ Earlier Application
(C/C)
Patent
Utility Model
② First Country Application
(B/B)
④ Priority Claim Application
(A,B,C,D/A,B,C,D)
⑤ Divisional Application
(B,C,D/A,B,C,D)
Examination
Deemed
Withdrawn
Amendment (A/A,B,C,D)
Deemed Withdraw
n
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(5) A single divisional application shall not be filed based on multiple original applications.
However, a divisional application can be filed when division of application is carried out after
an application claiming Domestic Priority is filed base on two or more prior applications.
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Chapter 2. Converted Application
1. Article 53 of the Patent Act
Article 53 of the Patent Act (Converted Application) ① An applicant who files a utility
model registration application may convert the utility model registration application to a
patent application within the scope of the matters disclosed in the specification or drawing(s)
originally attached to the written application of the utility model registration application.
However, the applicant may not convert the application if thirty days have elapsed since the
date on which the person received a certified copy of the first decision to reject the utility
model registration application.
② Any application that is converted under paragraph (1) of this Article (referred to as "a
converted application”, hereinafter) is deemed to have been filed on the date on which the
utility model registration application was filed unless it falls under either of the following
subparagraphs:
1. where Article 29(3) of this Act or Article 4(3) of the Utility Model Act applies because the
converted application falls under another application for patent under Article 29(3) of
this Act or a patent application under Article 4(3) of the Utility Model Act;
2. where Article 30(2) applies;
3. where Article 54(3) applies; or
4. where Article 55(2) applies.
③ A person who files a converted application under paragraph (1) shall state the purport of
the converted application and indicate the utility model registration application that forms
the basis of the conversion in a written application of the converted application.
④ The utility model registration application that forms the basis of a converted application
is deemed to be withdrawn when the converted application is filed.
⑤ Where the period stipulated in Article 132ter of this Act is extended under Article 15(1)
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of this Act, which applies mutatis mutandis under Article 3 of the Utility Model Act, the
thirty-day period stipulated in the proviso of paragraph (1) is extended by the period of the
extension given under Article 15(1).
⑥ In the case of the converted application, an applicant claiming a priority under Article 54
shall file the documents prescribed in paragraph (4) of Article 54 with the Commissioner of
the KIPO within three months from the filing date of the converted application, regardless of
the period prescribed in paragraph (5) of Article 54.
2. Purport
Conversion of an application is designed to convert the original application into more
favorable type of an application, retaining the filing date of the original application, when
the applicant has incorrectly chosen application formalities (patent, utility model) because
he/she has hurriedly filed the application under the first-to-file rule, misunderstood the
patent system, or it was difficult for the applicant to define subject matter for which an
application was filed.
3.Requirement for Conversion
3.1 Persons who may file Converted Application
Article 53(1) of the Patent Act stipulates that 「an applicant who files an application for
utility model registration may convert ··· to a patent application」and requires that the
applicant of the original application be identical to the applicant at the time of filing a
converted application.
3.2 Time requirement
(1) The time allowed for conversion of an application is the period between the date of
filing an application for utility model registration or the date of filing a patent application
and the date of the registration, and within thirty days from the date when the applicant
received the first certified copy of a decision of rejection (within the extended period when
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the period prescribed in the proviso of Mutatis Mutandis application of Article 33 of the
Utility Model Act or Article 132(3) of the Patent Act is extended by the proviso of Mutatis
Mutandis application of Article 3 of the Utility Model Act or Article 15(1) of the Patent Act
respectively).
Meanwhile, as for an international application deemed to be a patent application based on
Article 199(1) of the Patent Act or an international application deemed to be a utility model
registration application based on Article 34(2) of the Utility Model Act (Article 36(2) of the
Utility Model Act before the revision), conversion of an application shall be allowed only
when the fee specified in the provisions of Article 82(1) of the Patent Act or Article 17(1) of
the Utility Model Act is paid and the translation (except for the international application
written in Korean) clarified in the provisions of Article 201(1) of the Patent Act or Article 35(1)
of the Utility Model Act (Article 37(1) of the Utility Model Act before the revision) is
submitted.
(2) In order for a converted application to be recognized to be legitimate, the utility model
registration application before conversion (including the design registration application in
the case of an application filed before June 30, 1999) shall be pending before KIPO at the
time of conversion of the application. Therefore, a converted application shall not be filed
when the original application has been invalidated, withdrawn, abandoned or registered.
If a converted application is filed on the date when the procedure has been terminated due
to the withdrawal and abandonment of the original application, the converted application
shall be deemed to have been filed when the original application was pending before KIPO.
It is because that distinguishing which of the applications is filed initially or subsequently is
difficult if the procedure on the original application is terminated on the same date when
the converted application is filed. Also, it is legitimate to consider that the procedure for the
subsequent application is commenced in recognition that the original application was
pending.
3.3 Substantive Requirement
Article 53(1) of the Patent Act defines the substantive requirements which a converted
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application shall fulfill to be acknowledged as a legitimate application by stipulating that
「an applicant may convert the utility model registration application to a patent application
within the scope of the matters disclosed in the specification or drawing(s) originally
attached to the written application of the utility model registration application」.
In other words, for a converted application to be recognized as a legitimate application,
matters disclosed in the specification or drawing(s) of the converted application shall be
included in the initial specification or drawing(s) of the original application. The converted
application shall be deemed to be illegitimate and have ground(s) for rejection if even a
single matter disclosed in the converted application is not contained in the initial
specification or drawing(s) of the original application.
Whether an invention for which a converted application was filed is included in the
specification or drawing(s) of the original application shall be determined by the following
criteria: whether an invention in a converted application is explicitly described in the
specification or drawing(s) initially attached to the original application, or whether an
invention is understood to have been disclosed in the specification or drawing(s) without
any explicit description. 「Scope of Amendment」in Chapter 2 of Part Ⅳ shall be referred to
regarding information on determination methods.
4. Procedure of Converted Application
(1) When an applicant intends to file a converted application, he/she shall file a new
application by attaching the specification or relevant documents to a patent application
prescribed in Form (XIV) according to the subparagraphs of Article 30 of the Enforcement
Rules of the Patent Act. Also, the applicant shall state the purport of the converted
application, as well as the original application which forms the basis of conversion.
Where the original application has not been stated or incorrectly stated at the time of filing
a converted application, conversion of the application shall not be deemed to be legitimate.
Amendments of changing the original application by correcting the indication of the original
application shall not be accepted, except for the amendment of the explicit errors.
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(2) Where an applicant intends to file a converted application claiming non-prejudicial
disclosures or priority, he/she shall describe the purport of such claims in the written
converted application and submit the evidential documents needed to make such claims
within the prescribed period from the filing date of a converted application(within 30 days
from the filing date of a converted application in the case of an application claiming non-
prejudicial disclosure, within three months from the filing date of a converted application in
the case of an application claiming priority). Such claims shall not be accepted if a claim for
non-prejudicial disclosure or priority has not been made at the time of filing the original
application. However, even though the purpose of claims for non-prejudicial disclosure or
priority was described in the original application but the evidential documents were not
submitted within the statutory period, if the converted application contains the purpose of
the non-prejudicial disclosure or priority and the concerned evidential documents are
submitted until the prescribed date from the filing date of the converted application, the
claim for non-prejudicial disclosure or priority shall be deemed to be legitimate (except for
where the procedure of the non-prejudicial disclosure or priority in the original application
have been invalidated before filing the converted application concerned).
However, where an applicant intends to rely on the contents of the already-submitted
evidential documents of the original application since the evidential documents of both the
original application and the converted application are identical, he/she may state the
evidential documents of the original application by stating the purport of reliance in the
application documents.
5. Effect of Converted Application
(1) A converted application shall be deemed to have been filed when the original
application was filed. However, if a converted application falls under in the following cases,
the grant of the filing date of the original application to the converted application is unfair.
In such cases, the converted application shall be deemed to have been filed when the actual
procedure of the application commences.
① Where a converted application corresponds to „another application‟ clarified in Article
29(3) of the Patent Act or a „patent application‟ mentioned in Article 4(3) of the Utility
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Model Act
② Where a person intends to have Article 30(1)(1) of the Patent Act applied to an invention
for which a converted application is filed and states the purport in a written patent
application and submit the evidential documents to the commissioner of KIPO
③ Where a person intends to file a converted application claiming a priority under the
Treaty and states the purport of priority claim, Korean title and filing date of the original
application in a written converted patent application
④ Where a person intends to file a converted application claiming Domestic Priority and
states the purport of priority claim as well as the original application in a written converted
application
(2) When a converted application is filed, the utility model registration application shall be
deemed to be withdrawn.
After the original application is deemed to be withdrawn because of the filing of a
converted application, the original application shall not be valid even though a converted
application has been invalidated, withdrawn, abandoned or a decision to reject a converted
application has become final and binding, unless the converted application is returned.
6. Examination of Converted Application
6.1 General Principles in Examination of Converted Application
(1) Once a converted application is submitted, the examiner shall examine whether the
application fulfills the formality requirements of conversion. The examiner shall examine
whether the person eligible for the filing of a converted application filed a converted
application, whether a converted application was submitted within the period allowed for
conversion of an application or whether the original application is properly stated in a
converted application.
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The examiner shall provide the applicant with an opportunity to explain if the application
falls under in the following conditions, citing violation of Article 11(1)(7) or (11) in the
Enforcement Rules of the Patent Act: where the person not eligible for the filing of a
converted application filed a converted application, where a converted application was
submitted after the expiration of the designated period, or where a converted application
was submitted after the termination of the procedure of the original application. If the
applicant fails to explain such cases within the designated period, the examiner shall return
the converted application to the applicant.
(2) The examination on a converted application shall be categorized based on the time of
filing an application as mentioned below.
① Where the original application was filed before July 1, 1999
If a converted application was filed for an invention not described in the original
application, the examiner shall deliver a warning notice for inadmissible conversion within
the designated period. When a converted application cannot be accepted even with the
submission of written arguments or amendments, the examiner shall deliver a notice for
inadmissible conversion and examine the converted application on the basis of the date
when the application was actually filed, without giving the retroactive filing date to the
converted application. It shall be noted that the published patent gazette on the original
application can be cited as the documents to deny novelty or inventive step when a
converted application cannot retain the same filing date as the original application.
In principle, when both grounds for inadmissible conversion and grounds for rejection
exist when examining a converted application, the examiner shall notify grounds for
rejection after confirming whether a converted application is accepted or not. However, if
the rejection grounds are not related to whether the converted application retains the
filing date of the original application (whether the converted application is accepted), the
warning notice for inadmissible conversion and notice for rejection grounds can be
simultaneously delivered in separate forms.
Meanwhile, while examining the converted application without calculating the filing date
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of the application retroactively, where inventions not described in the original application
have been deleted while amendments of the specification or drawing(s) of the converted
application, the examiner shall examine the application based on filing date of the
original application.
(Note) Even where the filing date of the application is not retroactively counted since the
converted application cannot be accepted, it is possible for the examiner to decide to
grant a patent after the delivery of notice for inadmissible conversion if there is no
ground for rejection.
② Where the original application was filed on or after October 1, 2006
When a converted application was filed for an invention not described in the original
application, the examiner shall notify the applicant of the ground for rejection. When the
applicant cannot address the ground for rejection even with the submission of written
arguments or amendments, the examiner shall deliver a decision to reject a patent to the
applicant.
6.2 Instructions on Examination of Converted Application
(1) The period allowed for amendments to the specification or drawing(s) of a converted
application is within the period prescribed in the subparagraphs of Article 47(1) of the
Patent Act, retroactively counted from the filing date of the original application.
Where a converted application fulfills the procedural and substantive requirements, the
examiner shall regard the converted application as an ordinary application and examine its
legality on amendments. In such a case, the initial specification or drawing(s) of the
converted application shall serve as the specification or drawing(s) with which the
substantive requirements on the amendment are examined. If an invention not contained in
the initial specification of the converted application is newly added through amendments
after filing the converted application, the examiner shall examine the application in
accordance with the requirements of prohibiting the addition of new subject matter. This,
too, shall apply to the case of the addition of the invention described in the specification or
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drawing(s) of the original application, but not described in the initial specification or
drawing(s) of the converted application.
(2) An applicant can file a converted application by taking a divisional application as the
original application. However, the converted application shall not be deemed to be
legitimate if division and conversion of an application are carried out in the single patent
procedure, such as converting a part of a patent application to a utility model registration
application. Where an applicant intends to convert a part of the application to the other
type of the application, he/she shall file a divisional application first in the same application
form, and then file a converted application based on the divisional application.
(3) When an applicant files a converted application, along with making a request for
reexamination regarding the rejected application or making an appeal against the decision
to reject the application, the examiner shall accept the application if the procedure for the
application is legitimate in terms of the formalities. When a request for examination is made
for the converted application, the examiner shall conduct the examination. As for a request
for reexamination or an appeal against the decision to reject, the examiner shall carry out
the respective procedures with the original application deemed to be withdrawn according
to Article 53(4) of the Patent Act (Article 10(4) of the Utility Model Act).
(4) When the original application was pending before KIPO at the time of filing a converted
application, but was returned after the conversion of the application, the examiner shall
examine the converted application based on the date when it was actually filed, not giving
the same filing date of the original application. When the converted application has grounds
for rejection, the examiner shall notify the applicant of the reason why his/her application
cannot take the retroactive filing date, along with the grounds for rejection. In the absence
of any rejection grounds, the examiner shall notify the applicant why the application cannot
take the retroactive filing date, through 「On-nara System(EDMS: Electronic Document
Management System in Korean Government)」.
(5) A single converted application shall not be filed based on multiple original applications.
However, it shall be possible to file a converted application after a single application
claiming Domestic Priority has been filed on the basis on two or more prior applications.
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(6) If thirty days have elapsed from the date when an applicant received a certified copy of
the initial decision to reject, the applicant shall not file a converted application if the
decision to rejected was cancelled through a request for reexamination or a trial decision or
if thirty days have not elapsed from the date when a certified copy of the decision to reject
was delivered again. It is because that the cancellation of the decision to reject an
application through a request for reexamination does not necessarily mean to nullify the fact
that a certified copy of the initial decision to reject was delivered for the first time.
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Chapter 3. Application with Priority Claim under Treaty
1. Article 54 of the Patent Act
Article 54 of the Patent Act (Priority Claim under Treaty) ① If a national of a State party
to the treaty that recognizes under the treaty the priority for a patent application filed by a
national of the Republic of Korea has filed a patent application in the State party to the
treaty or another State party to the treaty and makes a priority claim for a patent application
filed in the Republic of Korea for the same invention, the filing date in the State party to the
treaty is deemed to be the filing date in the Republic of Korea while applying Articles 29
and 36. Where a national of the Republic of Korea who has filed a patent application in the
State party to the treaty that recognizes under the treaty the priority for patent applications
filed by nationals of the Republic of Korea makes a priority claim for a patent application in
the Republic of Korea for the same invention, this provision also applies.
② A person making a priority claim under paragraph (1) shall file a patent application
making a priority claim within one year from the filing date from the earliest application
which forms a basis of a priority claim.
③ A person making a priority claim under paragraph (1) shall specify the purport of a
priority claim, the name of the country in which the application was initially filed and the
filing date of the application in the written patent application at the time of filing.
④ A person who has made a priority claim under paragraph (3) shall submit to the
Commissioner of the KIPO the documents prescribed in paragraph (i) or the written
statement prescribed in paragraph (ii). However, the written statement referred to in
paragraph (ii) must be submitted only if the country is prescribed by Ordinance of the
Ministry of Knowledge Economy:
1. A written statement certified by the government of the country where the application
was initially filed and setting forth the filing date of the patent application and a certified
copy of the specification and drawing(s) of the patent application; or
2. A written statement setting forth the application number of the patent application in
the country where the application was initially filed.
⑤ Documents under paragraph (4) shall be submitted within one year and four months
from the earliest priority date among those prescribed in the following subparagraphs:
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1. The date on which the application was initially filed in the State party to the treaty;
2. Where the patent application contains other priority claims under Article 55(1), the filing
date of the application that would be the basis for a priority claim; or
3. Where a patent application contains other priority claims under paragraph (3), the filing
date of the application that would be the basis for a priority claim.
⑥ Where a person who has made a priority claim under paragraph (3) fails to submit the
document prescribed under paragraph (4) within the designated period under paragraph (5),
a priority claim loses its effect.
⑦ A person who complies with the requirements of paragraph (2) among the persons who
have made a priority claim under paragraph (1) may amend or add the priority claim(s)
within one year and four months from the earliest priority date among those prescribed
under paragraph (5).
2. Purport
Priority claim under the Treaty is designed to recognize the filing date in the State party to
the treaty as the filing date in the Republic of Korea while applying Articles 29 and 36 of the
Patent Act, if a national of a State party to the treaty that recognizes under the treaty the
priority for a patent application filed by a national of the Republic of Korea(State parties to
the Paris Convention for the Protection of Industrial Property, member states to the Trade-
Related Aspects of Intellectual Property Rights agreement or TRIPS as well as the signatory
states to the bilateral treaties) has filed a patent application in the State party to the treaty or
another State party to the treaty and makes a priority claim for a patent application filed in
the Republic of Korea for the same invention.
The multilateral international agreements under which a national of the Republic of Korea
is recognized to have a priority claim include the Paris Convention for the Protection of
Industrial Property (hereinafter referred to as the Paris Convention) and the WTO-TRIPS
Agreement based on the Paris Convention. The bilateral treaties under which a priority claim
for a patent application made by a national of the Republic of Korea and a national of the
signatory state to the bilateral treaties are recognized in both of the states were signed with
Spain (August 15, 1975), the Switzerland (December 12, 1977), the United Kingdom of
England (February 19, 1978), the United States (February 30, 1978), Canada (February 13,
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1979) and Finland (September 13, 1979).
(Note) Since January 1, 2002 when Taiwan joined the TRIPS Agreement, a priority claim for
an application filed in Taiwan has been accepted under the agreement.
3. Requirements for Priority Claim under Treaty
3.1 Persons who make priority claim under Treaty
(1) A person eligible for making a priority claim under the treaty is a national of a State
party to the treaty or a national of a non-State party to the treaty who has a domicile or a
real and effective industrial or commercial establishment in a State party. The State parties
include the member states of the Paris Convention and the WTO.
When an application claiming a priority under the treaty is filed by two or more applicant,
at least one of the applicants shall be a national of a State party to the treaty or a national
of a non-State party to the treaty who has a domicile or a real and effective industrial or
commercial establishment in a State party.
(Note) The signatories to the European Patent Office (EPO), the Eurasian Patent
Organization (EAPO), the organisation Africaine de la Propriété Intellectuelle (OAPI), the
African Regional Intellectual Property Organization (ARIPO) are the State parties to the
Paris Convention. Therefore, a priority claim can be filed based on the applications filed to
the abovementioned patent offices.
(2) A priority claim can be made only after an application was filed in a State party to the
treaty (the country where it was initially filed). If an inventor did not file the initial
application filed in one of the countries under the Treaty because he/she has granted the
right to file a patent application to another person, the inventor cannot make a priority
claim for the initial application filed in one of the countries under the Treaty, although it is
allowable for the inventor to file a patent application without any priority claim in another
country other than the country where the application was initially filed.
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(3) The right to make any subsequent filing in any of the other countries of the Treaty can
be transferred to other successors.
(4) The successor eligible for filing an application claiming a priority under the treaty shall
be a national of a State party to the treaty both at the time of filing the initial application in
one country under the Treaty and at the time of filing any subsequent application in any of
the other countries of the Treaty. However, the requirement need not be met during the
period from the time of filing the initial application filed in one country under the Treaty to
the time of any subsequent filing in any of the other countries of the Treaty. In other words,
if a person eligible for the succession of the right to file an application claiming a priority
under the Treaty was not a national of a State party at the filing of an application in the
country where it was originally filed, but has become a national of the State party before the
subsequent filing in any of the other countries of the Treaty, the succession of the right for
the priority shall become valid. Also, a national of a State party is allowed to transfer a
priority claim to a national of a non-State party to the Treaty and then, the transferee can
transfer the priority right back to another national of another State party to the Treaty. In
such a case, too, the priority claim shall become effective.
(5) A national of the Republic of Korea can, too, make a priority claim if he/she filed an
application in a State party to the Treaty, and then filed an application for the same
invention in the Republic of Korea. For example, a national of the Republic of Korea can
make a priority claim in the Republic of Korea based on an application which he/she initially
filed in the United Kingdom.
(6) Article 54 of the Korean Patent Act provides that a person eligible for filing a priority
claim shall be a national of a State party to the Treaty. However, a national of a non-State
party shall be allowed to make a priority claim under the Treaty if he/she has a domicile or a
business address in a State party to the Treaty. A person without any nationality shall be also
deemed as a national of a non-State party to the Treaty. It is because Article 3 of the Paris
Convention stipulates that a national of a non-State party to the Treaty who has a domicile
or a real and effective industrial or commercial establishment in a State party, too, shall be
deemed as a national of a State party to the Treaty. Also, Article 26 of the Patent Act defines
that where a treaty contains a patent-related provision that differs from this Act, the treaty
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prevails.
3.2 Time Requirement
(1) The period allowed for filing an application claiming a priority under the Paris
Convention shall be as follows.
① Within one year from the filing date of the initial application filed in one of the countries
under the Treaty if the priority claim is made based on a patent application or an application
for utility model registration
② Within six months from the filing date of the initial application filed in one of the
countries under the Treaty if the priority claim is made based on an application for design
registration
(2) The time period allowed for filing an application claiming a priority under the Treaty shall
be calculated from the day after the filing date of the initial application filed in one of the
countries under the Treaty according to Article 4C(2) of the Paris Convention. In such a case,
the filing date of the initial application filed in one of the countries of the Treaty shall be the
date marked on the evidential documents certifying the priority.
The time period for filing an application claiming a priority under the Treaty shall be
calculated in the same manner as calculating the period prescribed in Article 14 of the
Patent Act. For example, if the initial application filed in one of the countries under the
Treaty was filed on July 4, 2001, any subsequent application in the other countries of the
Treaty can be filed by July 4, 2002. If July 4, 2002 is an official holiday or a day when the
Korean Intellectual Property Office is not open for the filing of applications, an applicant can
file an application claiming a priority under the Treaty by the day after July 4, 2002.
3.3 Substantive Requirement
(1) The initial application filed in one of the countries under the Treaty shall be one of the
following applications: a patent application, an application for utility model registration or
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design registration or an inventor ‟s certificate. The Paris Convention does not specify the
type of the initial application filed in one of the countries under the Treaty. However,
according to Article 4E and 4I of the Paris Convention, the initial application allowed for
filing in another country under the Treaty can be translated as a patent application, an
application for utility model registration or design registration or an inventor ‟s certificate.
An application for design registration or a service mark shall not be recognized as a basis
for a patent application claiming a priority because of their characteristics.
(2) The initial application filed in one of the countries under the Treaty shall be legitimate.
The relevant law of the country where the initial application was filed under the Treaty shall
determine whether the application is a legitimate application which forms a basis for a
priority claim.
Whether the initial application filed in one of the countries under the Treaty which forms a
basis for priority claim is pending does not influence the effects of priority claim under the
Treaty. In other words, even when the initial application filed in one of the countries under
the Treaty has been withdrawn, abandoned, invalidated or rejected, priority claim shall be
still effective. Also, even for an application related to an invention for which a patent cannot
be granted from a country where the initial application was filed under the Treaty, priority
claim shall be still effective.
(3) The initial application filed in one of the countries under the Treaty shall be the earliest
application or an application to be recognized as the earliest-filed application. For example,
where an applicant filed an application on May 1, 2001 in the United States, claiming a
priority based on the application filed on March 1, 2001 in the United Kingdom, and then
intended to file an application on April 1, 2002 in the Republic of Korea, he/she could not
obviously make a priority claim for the application filed in the United Kingdom since twelve
months have elapsed since the filing date of the application in the United Kingdom. Also,
even if twelve months have not elapsed from the filing date of the application filed in the
United States, the applicant cannot make a priority claim for the same invention since the
application filed in the United State is not the earliest application for the same invention. If
the earliest application was filed in a country where priority claim cannot be made based on
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the application, the application filed in the country shall not be included in the definition of
the earliest application.
(4) In some cases, a subsequent application is filed for the same invention as in the initial
application in one of the countries under the Treaty (an prior application). Then, this
subsequent filing is deemed to be the earliest application claiming a priority in the country
concerned under the Treaty according to Article 4C of the Paris Convention. For this
subsequent application to be recognized as the earliest application filed, it shall fulfill the all
of the requirements below.
① The subsequent application shall be filed for the same invention in the same country
where the initial application was filed.
② The prior application shall be withdrawn, abandoned or rejected before the
subsequent application is filed.
③ The prior application shall not be published.
④ Any rights shall not be effective because of the prior application.
⑤ The prior application shall not serve as a basis for a priority claim in the same or
different countries.
4. Proceedings for Priority Claim under Treaty
(1) A person who intends to make a priority claim under the Treaty shall write the purport of
the priority claim and the country name as well as the filing date of the earliest application
in a written patent application. Also, the earliest application number which forms a basis for
a priority claim shall be indicated in the written application (Article 4D(5) of the Paris
Convention shall be referred).
Also, a person who intends to make a priority claim shall make related payments upon
making the priority claim under the Treaty.
(2) A person who has made a priority claim to under the Treaty shall submit to the
commissioner of KIPO the documents containing the application date recognized by the
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government of the country where the initial application was filed as well as the copy of the
specification or drawing(s) of the invention within one year and four months from the priority
date (the earliest priority date among the priority dates when a subsequent filing contains
multiple priority claims). However, in the countries designated in the Enforcement Decree of
the Patent Act, the submission of evidential documents certifying a priority claim can be
replaced with submitting evidential documents containing the application numbers in the
country where the initial application was filed.
When evidential documents certifying a priority claim are not submitted within the
designated period, the priority claim shall lose its effects.
(3) The countries with the streamlined procedures for the submission of evidential documents
certifying a priority claim currently include Japan, signatories to the European Patent
Convention (EPC) and countries which have agreed upon the online delivery of evidential
documents certifying the priority through the Digital Access System (DAS) of the World
Intellectual Property Organization (WIPO). These countries are published in 「the official
announcements on the online exchange of evidential documents for a priority claim」.
Whether a country in which an application is filed falls into the countries with the
streamlined procedures for the submission of evidential documents certifying a priority claim
shall be determined based on the filing date of the application in the Republic of Korea,
regardless of the filing date of the initial application in any of the countries under the Treaty,
the designated period for the submission of evidential documents for a priority claim, the
date when additional claims for a priority are added. Where an application claiming a
priority under the Treaty was filed based on an application filed in Japan after July 1, 2001
(an application filed in the signatories to the EPC, the United States and the countries with
access to the DAS of the WIPO after July 1, 2007, October 14, 2008 and July 1, 2009,
respectively), submitting the documents containing the application number of the initial
application in one of the countries under the Treaty or writing the initial application number
in a written patent application can replace the submission of the evidential documents
certifying a priority claim..
(Note1) Only the application filed to the EPO can replace the evidential documents
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certifying the priority of the applications filed in the signatories to the EPC. In the meantime,
the USPTO provides KIPO with the undisclosed evidential documents certifying the priority
only when a written authorization to permit access to application by participating offices;
PTO/SB/39) is submitted. This is possible only when the USPTO can confirm the condition in
which KIPO can be provided with the concerned evidential documents certifying the priority
through an electronic exchange within the period designated for the submission of
evidential documents for priority claim. Also, as for the countries with access to the DAS of
WIPO, since KIPO should be able to secure the concerned evidential documents from the
DAS of WIPO only with the application numbers, the countries with access to the DAS of the
WIPO, too, can confirm the condition in which KIPO can be provided with the concerned
evidential documents certifying the priority through an electronic exchange within the
period designated for the submission of evidential documents for a priority claim. For
example, the requests for access to the DAS shall be made in advance in the country where
the initial application was filed.
(Note2) Where multiple priority claims are made based on both the application filed in the
country which has the streamlined procedure for the submission of evidential documents
certifying the priority and the application filed in the country without the streamlined
procedure, only the evidential documents certifying the priority in the application filed in a
country with the streamlined procedure can replace the documents containing the
application number. However, the evidential documents claiming a priority in the application
filed in the country without the streamlined procedures for the submission of evidential
documents certifying the priority shall be submitted based on the existing procedure
according to Article 54(1)(1) of the Patent Act.
(4) Where an examiner, under the name of the Commissioner of KIPO, requires the applicant
to submit the Korean translation of the evidential documents claiming a priority within the
designated time period in order to determine the patentability in such cases as that a prior
art exists between the priority date and the filing date of the application claiming a priority
under the Treaty, the applicant shall submit the Korean translation of the evidential
documents claiming a priority within the designated time period to the examiner. In this
case, the allowed period is for two months and shall be extendable.
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Where the examiner requests the applicant to submit the Korean translation of the
evidential documents claiming priority, but the translation is not submitted within the
designated period, the examiner can invalidate the proceedings for the concerned priority
claim under the Treaty.
(Note) Since the translation of the evidential documents certifying the priority is just a
reference material for proving the priority claim, amendments to the translation shall be
deemed to be valid, even with the substantial changes in the contents of the translation.
5. Effects of Priority Claim under Treaty
Where a priority claim under the Treaty is legitimate, the same invention as the invention
described in the initial application filed in one of the countries under the Treaty shall retain
the same filing date as the filing date of the initial application in accordance with Articles 29,
36 of the Patent Act. Any invention excluded in the initial application filed in one of the
countries under the Treaty shall not take the same filing date as the filing date of the initial
application even if the priority claim for the invention is valid.
(Note) Except for the certain cases mentioned in the Patent Act, the filing date of an
application claiming a priority under the Treaty shall be deemed to be the actual filing date.
For example, in applying the provisions regarding a claim for non-prejudicial disclosure in
Article 30 of the Patent Act, if the applicant did not file an application claiming a priority
under the Treaty within twelve months after the disclosure of the application, the applicant
may lose novelty or inventive step for his/her invention even if the applicant filed an
application claiming a priority within one year from the filing date of the initial application
filed in one of the countries under the Treaty.
6. Amendment to Priority Claim under Treaty
(1) The period allowed for amendment or addition of priority claim is within one year and
four months from the earliest filing date. The designated time period for multiple priority
claims containing Domestic Priority claim is also one year and four months. Where additional
priority claims are added under the Treaty or part of priority claims has been withdrawn, the
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earliest filing date shall be calculated reflecting the addition or withdrawal of the priority
claims under the Treaty.
(2) Article 54(7) of the Patent Act dictates that a person eligible for amendments to a priority
claim under the Treaty is „the one who fulfills the requirement of paragraph(2) among the
persons who have made a priority claim according to paragraph(1) of the same article‟.
Therefore, in order to amend or add a priority claim, an applicant shall have made a priority
claim at the time of filing an application in accordance with Article 54(1) of the Patent Act
and at least one of the priority claims under the Treaty made at the time of filing the
application shall meet the requirement specified in Article 54(2) of the Patent Act.
Whether an applicant has made a claim for priority under the Treaty shall be determined
based on whether more than one priority claim can be specified based on the description
regarding the priority claim in the column 【Priority Claim】 in the written application
submitted at the time of filing the application.
If a priority claim under the Treaty does not fulfill the requirements specified in Article 54(1)
and (2) of the Patent Act, the priority claim shall be deemed to have uncorrectable errors.
Therefore, in such a case, amendments or addition of a priority claim under the Treaty shall
not be accepted.
(Note) Where an applicant filed an application claiming a priority under the Treaty based on
a hypothetical application, an application which another party filed or an application
which cannot be specified, the applicant shall not amend or add a priority claim
since the priority claim is basically invalid.
(3) Where a priority claim under the Treaty has been withdrawn or invalidated, where an
application claiming for priority under the Treaty has been invalidated, withdrawn or
abandoned, where the examiner made a decision to grant/reject a patent in the application,
the applicant shall not amend or add the priority claim. Also, after the applicant has
withdrawn all of priority claims under the Treaty, the applicant cannot amend or add the
priority claim. However, after the priority claim has been withdrawn, adding a priority claim
on the same date shall be accepted.
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The time at which the abovementioned decision of patent is confirmed is when a certified
copy of the decision to grant a patent is delivered to the applicant. Meanwhile, the time at
which the decision to reject a patent is confirmed is when thirty days have elapsed from the
date on which a certified copy of the decision to reject a patent is delivered to the applicant.
(4) Within one year and four months from the earliest filing date, the withdrawal of all
priority claims, withdrawal of part of priority claims in multiple priority claims as well as the
amendment of correcting clerical errors in priority claims and amendment of adding priority
claims shall be accepted.
Where amendment of withdrawing priority claims and adding priority claims within the
abovementioned period, an applicant need not submit a document for withdrawal for
his/her convenience and the applicant can just submit a written amendment containing such
contents for the priority claim to be recognized as valid.
(5) Amendments of a priority claim after one year and four months has elapsed shall be
accepted when correcting clerical errors in the description of the priority claim. In other
words, amendments of changing the initial application in one of the countries under the
Treaty, amendments of specifying the initial application in one of the countries under the
Treaty which has not been specified before or amendments of adding the initial application
in one of the countries under the Treaty shall not be accepted.
However, even in the abovementioned period, the withdrawal of all of priority claims or the
withdrawal of part of priority claims in multiple priority claims shall be accepted.
7. Examination of Application Claiming Priority under Treaty
7.1 Flowchart of Examination Procedure on Priority Claim under Treaty
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7.2 Overview of Examination
(1) Once an application claiming priority under the Treaty or a written amendment to priority
Application claiming priority
Order Amendment
Invalidation of Priority claim procedure
Examination on first country application
Examination on second country
application
Existence of Prior Art between first country
application and second country application
Formality deficiency of Priority Claim
Existence of invention for examination in first country
application
Correct
deficiency
Yes
No
Yes
Yes
Yes
No
No
No
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claim under the Treaty is submitted, the examiner shall examine the formalities of priority
claim based on the patent application or the written amendment. Unless any deficiency is
found in priority claim, the examiner shall carry out the substantive examination procedure.
Where the prior art search in the substantive examination reveals that any prior art
according to Article 29 of the Patent Act or any prior application specified in Article 36 of the
Patent Act is not found between the filing date of the initial application filed in one of the
countries under the Treaty and the filing date of the application claiming priority under the
Treaty, the examiner shall examine the patentability prescribed in Article 29 or 36 of the
Patent Act based on the filing date of the initial application in one of the countries under the
Treaty. However, if any prior art exists between the filing date of the initial application under
the Treaty and the filing date of the application claiming priority under the Treaty, the
examiner shall examine whether the invention described for examination in the application
claiming priority under the Treaty was described in the initial application filed in one of the
countries under the Treaty. In such a case, the examiner can request the applicant to submit
the translation of the evidential documents certifying the priority claim.
If the invention described in the application claiming priority under the Treaty is deemed to
be identical with the one in the initial application filed in one of the countries under the
Treaty after comparison of both applications, the examiner shall examine the patentability of
the invention based on the retroactive filing date of the initial application under the Treaty.
However, if inventions are not deemed to be identical through comparison, the examiner
shall examine the patentability based on the filing date of the application claiming priority
under the Treaty. When the examiner delivers grounds for rejection without giving a
retroactive filing date, he/she shall describe the reason why the retroactive filing date has not
been granted, along with the grounds for rejection.
7.3 Formality Examination of Application Claiming Priority under Treaty
(1) As for an application claiming priority under the Treaty, the examiner shall first examine
the formality requirements for the priority. When the examination reveals that priority claim
is found to be illegitimate, the examiner shall request an applicant to amend the application.
If the applicant did not address the deficiency in the priority claim within the designated
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period, the examiner can invalidate the proceedings for the priority claim. In such a case, it
should be noted that even though the proceedings for priority claim has become invalidated,
an application containing priority claim shall be treated to be valid as a normal application
without any priority claim.
(2) The requirements for formality examination on priority claim under the Treaty include:
the identicalness of the applicants, the earliest filing date of the initial application filed in
one of the countries under the Treaty, the legitimacy of the initial application, the
compliance with the priority period, the description of the purport of priority claim and the
submission of the evidential documents certifying the priority claim.
(3) In determining whether the initial application filed in one of the countries under the
Treaty is the earliest application based on a legitimate internal application, where the
examiner has noticed during the examination that the evidential documents certifying the
priority state the purport of the evidential documents certifying the priority according to the
Paris Convention except for any particular reasons, he/she shall accept the initial application
without conducting the investigation to determine whether the application is the earliest
filed application as a legitimate initial application under the Treaty.
(Note1) Where deficiencies are identified in part of multiple priority claims, the examiner
shall request the applicant to amend only priority claims containing deficiencies.
Where the applicant has not addressed the deficiencies within the designated
period, the examiner shall invalidate priority claims whose deficiencies were not
addressed, other than invalidating all of priority claims.
(Note2) The evidential documents certifying the priority in an international patent
application can be checked through the evidential documents for priority claims
posted onto the Patent Net (on the webpage for search on the international stage).
If the evidential documents certifying the priority are not available on the Patent
Net, the examiner can access the attached documents by looking up the
international patent number on the WIPO website (http://www.wipo.int/pctdb/en).
When the submission of the evidential documents certifying the priority is not
confirmed even through the above-mentioned procedure, the examiner shall make
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a request for amendment to the applicant and then determine whether to
invalidate priority claim after considering the submission of the evidential
documents certifying the priority as well as the grant of the opportunity to explain
to the applicant.
7.4 Substantive Examination on Application Claiming Priority under Treaty
(1) If the examiner has invalidated priority claim since the claim is illegitimate based on the
result of the formality examination regarding priority claim under the treaty and amendment
to priority claim, the examiner shall examine the application, regardless of the identicalness
of the inventions, based on the filing date of a priority claim under the Treaty (the filing date
in the Republic of Korea).
(2) Where priority claim is found to be legitimate based on the results of the formality
examination regarding priority claim under the Treaty, the examiner shall determine whether
to grant a retroactive filing date by invention when examining the patentability of the
inventions. In other words, as for the invention identical to the one described in the
documents regarding the initial application in one of the countries under the Treaty
(including the specification and drawing(s)), the examiner shall examine the invention based
on the filing date of the initial application in one of the countries under the Treaty in
accordance with Articles 29 and 36 of the Patent Act. If the concerned invention is different
from the one described in the documents regarding the initial application in one of the
countries under the Treaty, the examiner shall examine the invention based on the filing date
of priority claim under the Treaty.
(Example1) An invention comprising the alcohol composed of one to ten carbon atoms has
been patented in Korea. However, the specification of the invention in the initial application
under the Treaty forming the basis of priority claim indicates that the alcohol contains one
to five carbon atoms. In such a case, the examiner shall examine the alcohol with one to five
carbon atoms based on the priority date while examining the alcohol with six to ten carbon
atoms based on the date when the application was filed in Korea.
(Example2) The specification of the initial application under the Treaty indicates anticorrosion
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steel comprising chrome. However, the application claiming a priority specifies anticorrosion
steel containing chrome as well as anticorrosion steel with alloy of chrome and aluminum. In
such a case, the examiner shall examine anticorrosion steel containing chrome base on the
filing date of the initial application under the Treaty while examining anticorrosion steel with
alloy of chrome and aluminum based on the date when the application was actually filed in
Korea.
(Example3) An application claiming priority specifies a tube placed between a cathode,
control grid, anode, screen grid and anode; and having a third lattice sustained by a
cathode and electrokinetic potential. In such a case, the examiner shall examine the tube
based on the date when the application was actually filed where the specification and
drawing(s) of the initial application under the Treaty only describes the tube having a
cathode, control grid, anode, screen grid and anode.
(3) The requirements for the identicalness of the inventions in order to grant the retroactive
priority date for patentability does not necessarily mean that the inventions described in the
claims of both an application claiming priority under the Treaty and the initial application
filed in one of the countries under the Treaty must be identical. Rather, it means that the
invention described in the claims in the application claiming priority under the Treaty shall
be identical to the invention in the specification or drawing(s) of the initial application under
the Treaty. Whether the invention described in the application claiming priority under the
Treaty is the same as the invention described in the initial specification and drawing(s) of the
initial application under the Treaty shall be determined in applying the standard to
determine the identicalness in Article 29(3) of the Patent Act.
The inventions described in the initial application under the Treaty and the application
claiming priority under the Treaty shall be deemed to be identical in the following cases.
① Where an application claiming priority under the Treaty is filed for part of the
application initially filed in one of the countries under the Treaty
② Where two or more applications claiming priority under the Treaty are filed based on
the divisional application of the initial application under the Treaty
③ Where a single application claiming priority under the Treaty is filed based on more
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than two initial application under the Treaty
(Note) Even when an invention excluded from the initial application under the Treaty which
forms the basis of priority claim is described in the application claiming priority
under the Treaty, priority claim shall be acknowledged for the invention included in
the initial application under the Treaty. That is to say that priority claim can be or
cannot be acknowledged by invention.
(4) An application claiming priority under the Treaty including more than two priority claims
(multiple priority claims) shall be treated as follows.
① Where a single application claiming priority is filed based on multiple initial applications
under the Treaty, the examiner shall not reject the priority claim or the application citing
that the application claiming priority was filed based on two or more initial applications.
However, when the inventions of the applications claiming priority are not recognized to
be identical, the examiner can deliver the ground for rejection citing the violation of
Article 45 of the Patent Act.
② Where the examination reveals that the application does not meet the requirement of
identicalness of inventions, the applicant is allowed to divide the application. Even so,
the applicant can enjoy the benefit of priority claim for each application after division.
③ Where a patent application filed in Korea has priority claim for more than two initial
applications under the Treaty, the examiner shall examine the application based on the
earliest filing date of each invention under the Treaty in accordance with Articles 29 and
36 of the Patent Act.
④ Despite having made priority claim based on two or more initial applications under the
Treaty, where an invention in a patent application filed in Korea is based on one of the
initial applications, the examiner shall examine the invention based on the filing date of
the initial application describing the invention to determine the patentability of the
invention.
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⑤ As for an application claiming priority based on two or more initial applications under
the Treaty, where an invention consists of the subject matter separately described in
each of the initial applications under the Treaty, the examiner shall examine the
invention based on the actual filing date of the application in Korea. For example, in
Application C claiming the multiple priority claim based on Applications A and B, claim
「a+b」 is set forth by combining 「a」 only described in Application A and 「b」only
described in Application B, the examiner shall determine the patentability of Invention
「a+b」 based on the filing date of Application C.
⑥ Where a priority claim in the initial application under the Treaty having the earliest filing
date has been withdrawn among more than two priority claims, the filing date of the
earliest-filed application shall be deemed to be the priority date. In such a case,
however, the examiner shall determine whether the initial application under the Treaty,
which has newly become the earliest-filed application, meets the requirement of serving
as the earliest-filed application that can be the basis of a priority claim under the Paris
Convention.
7.5 Instructions on Examination of Application Claiming Priority under Treaty
(1) Countries around the world have various types of patent application systems for the
protection of inventions. However, in reality, it is difficult for each patent office to review
whether all of the applications submitted to their offices are legitimate domestic applications
seeking priority claim under the Paris Convention. Therefore, each patent office can
determine whether their applications are legitimate domestic applications seeking priority
claim under the Paris Convention, and then issue the evidential documents for priority claim.
As a result, the other patent offices can recognize priority claim of the concerned
applications based on the content of the issued evidential documents for priority claim.
(2) An application claiming priority under the Treaty based on the application filed in the
United States shall be examined as follows.
① Where a priority claim under the Treaty is based only on the continuation-in-part
application (hereinafter referred to as CIP application) in the United States
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Where a priority claim was based only on the CIP application and only the specification of
the CIP application was submitted as the evidential documents for priority claim, the
examiner shall examine the inventions based on the date to determine the patentability
without the grant of the retroactive filing date. Then, if the specification or drawing(s) of the
original application is submitted, the examiner shall follow the examination guideline ②.
Where an invention for which an application claiming a priority under the Treaty was filed
is only described in the specification or drawing(s) of the CIP application, the date to
determine the patentability of the concerned invention shall be the filing date of the CIP
application. If an invention for which an application claiming priority under the Treaty is
described in the specifications of the original application as well as the CIP application in
the United States, the date to determine the patentability of the concerned invention shall
be the filing date of the application claiming priority under the Treaty.
② Where priority claim under the Treaty is based on the original application as well as the
CIP application in the United States
Where an application claiming a priority under the Treaty is filed within one year from the
filing date of the original application in the United States, the subject matter described both
in the specification or drawing(s) of the original application and the CIP application among
the inventions for which an application was filed in Korea shall take the filing date of the
original application as the date to determine the patentability of the invention. Meanwhile,
the subject matter only described in the specification or drawing(s) of the CIP application
shall take the filing date of the CIP application as the date to determine the patentability of
the invention. However, where an application claiming priority under the Treaty is filed when
one year has elapsed from the filing date of the original application in the United States, the
subject matter described in the specification or drawing(s) of the original application as well
as the CIP application among the inventions for which an application was filed in Korea shall
not take the retroactive date to determine the patentability for the invention. Meanwhile, the
subject matter only described in the specification or drawing(s) of the CIP application shall
take the filing date of the CIP application as the date to determine the patentability of the
invention.
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Priority claim defined in the Paris Convention is made only based on the initial application
filed in one of the State Parties under the Treaty. Therefore, as for the subject matter
described in the specification or drawing(s) of the original application as well as the CIP
application, the examiner shall treat the subject matter in the abovementioned manner, since
the CIP application is not recognized as the initial application prescribed in Article 4C(2) of
the Paris Convention.
(Explanation) Since the CIP application is filed based on the specification or drawing(s) of
the original application, it is not recognized as the initial application
prescribed in Article 4C(2) of the Paris Convention. Therefore, in principle, a
priority claim under the Treaty of the CIP application cannot be recognized.
However, the exception shall be the following case: where the copy of the
specification or drawing(s) (through which the examiner can confirm the filing
date, the application number and the contents of the evidential documents)
of the original application (including the application number) has been
submitted and the concerned application claiming priority under the Treaty is
ensured to be the application claiming priority based on the subject matter
described only in the specification or drawing(s) of the CIP application.
④ Where a priority claim under the Treaty is based on the provisional application or the
non-provisional application in the United States
Provisional applications filed on non-provisional applications under the U.S. Patent Act
include provisional applications requesting the benefit (priority claim) of non-provisional
applications in accordance with Article 111(b) of the U.S. Patent Act; and provisional
applications converted from non-provisional applications according to Article 119(e) of the
U.S. Patent Act. Since an application that can serve as a basis of priority claim changes
based on the different kinds of the provisional application, the examiner shall determine
the legality based on to which application the USPTO has issued the evidential document
for priority claim (priority documents, certified copy of the original application). It is
because the fact that the USPTO has issued the applicant with the evidential documents
certifying the priority for the provisional application means that the USPTO has recognized
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the non-provisional application as the non-provisional domestic application which serves
as a basis for priority claim under the Paris Convention.
Normally, where a non-provisional application has not been filed after the filing of the
provisional application, the provisional application shall serve as a basis of priority claim.
Where a non-provisional application is filed after converting the provisional application,
the provisional application loses its status. Therefore, a basic application for priority claim
under the Paris Convention is a non-provisional application and the priority period starts
on the filing date of the provisional application recognized as the filing date of the
legitimate application. Where a non-provisional application has been filed while claiming
the benefit (priority claim) of the provisional application, the provisional application shall
be a basic application and the priority period for the application begins on the filing date
of the provisional application.
(3) Where the evidential documents certifying the priority under the Treaty are not
submitted within one year and four months from the earliest filing date, the concerned
priority claim shall lose its effect. That evidential documents certifying the priority have not
been submitted means when only the evidential documents certifying the priority are
submitted, other than the specification or drawing(s).
Where the evidential documents certifying the priority have not been submitted within the
one year and four month period, the examiner shall request an amendment and invalidate
the priority claim procedure. In such a case, the procedural error that the evidential
documents certifying the priority have not been submitted cannot be addressed. That is
because the evidential documents certifying the priority is returned even though the
documents are submitted within the designated period for the request for amendments,
since the statutory period allowed for the submission of the evidential documents for a
priority claim.
Meanwhile, even though the evidential documents certifying priority of an international
patent application have not been submitted to the WIPO within one year and four months,
the examiner shall grant the applicant with the opportunity to submit the evidential
documents certifying priority after entering the national stage. When the evidential
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documents claiming priority are submitted in response to the amendment request, the
examiner shall accept the evidential documents.
(4) Where a priority claim under the Treaty based on the initial application submitted to the
country with the streamlined procedure for the submission of the evidential documents
certifying priority is made and the application containing the application number is filed, the
examiner shall check whether the KIPO was able to be offered with the concerned evidential
documents certifying the priority through the electronic exchange, except for the application
based on the applications submitted to JPO and EPO. Where the record of exchange of the
evidential documents within the submission period for the documents cannot be checked,
the examiner shall make a request for amendments regarding the concerned priority claim
and invalidate the priority claim.
In principle, where the evidential documents certifying priority are submitted or exchanged
after the designated period, the priority claim loses its effect in accordance with Article 54(6)
of the Patent Act. However, where the applicant has completed all the legitimate procedures
in order to exchange the evidential documents both in Korea and the country where the
initial application was filed under the Treaty, the examiner shall regard the evidential
documents certifying the priority submitted or exchanged after the expiration of the
submission period as legitimate and recognize the concerned priority claim to be legitimate.
(5) Where one year and four months have elapsed from the earliest filing date even though
the designated period has been extended because of the amendment request by the
examiner, it should be noted that amendments such as addition of priority claim cannot be
made.
The period allowed for amendment or addition of priority claim according to Article 54(7)
of the Patent Act is statutory and it cannot be extended after one year and four months
according to Article 54(7) of the Patent Act. Therefore, even if the request for amendment of
priority claim has been made within one year and four months from the earliest filing date,
amendments such as addition of priority claim cannot be accepted when one year and four
months has elapsed from the earliest filing date.
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In such a case, the examiner can describe the purport of refusing amendments or addition
of a priority claim prescribed in Article 54(7) of the Patent Act in the written request for
amendment.
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Chapter 4. Application with Domestic Priority Claim
Article 55 of the Patent Act (Priority Claim Based on a Patent Application etc.) (1) An
applicant for a patent may make the priority claim based on an invention disclosed in the
specification or drawing(s) originally attached to a written application of an prior application
for a patent or utility model registration (referred to as “an prior application”, hereinafter),
for which the applicant has the right to obtain a patent or utility model registration.
However, this shall not apply to the cases which fall under any of the following
subparagraphs:
(i) where the patent application is filed more than one year after the filing date of the
prior application;
(ii) where the prior application is a divisional application under Article 52(2) (including
those cases to which this Article applies mutatis mutandis under Article 11 of the
Utility Model Act) or a converted application under Article 53 of this Act or Article
10 of the Utility Model Act;
(iii) where the prior application has been abandoned, invalidated, or withdrawn when the
patent application is filed;
(iv) where an examiner's decision to grant or reject the prior application or a trial
decision thereto has become final and binding, when the patent application is filed.
(2) A person making the priority claim under paragraph (1) shall state the purport of the
priority claim and indicate the prior application in the written patent application when the
patent application is filed.
(3) A patent application that contains a priority claim under paragraph (1) is deemed to have
been filed when the prior application was filed when Articles 29(1) or (2), and (3) (main
sentence), 30(1), 36(1) to (3), 96(1)(iii), 98, 103, 105(1) and (2), 129, and 136(4) (including
those cases to which Article 136(4) applies mutatis mutandis under Article 133bis(4)) of this
Act, Article 7(3) and (4) and 25 of the Utility Model Act and Articles 45 and 52(3) of the
Design Law are applied to an invention that is identical to the invention that have been
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disclosed in the specification or drawing(s) originally attached to a written application of the
prior application that is the basis for the priority claim.
(4) In applying the main sentence of Article 29(3) of this Act and the main sentence of
Article 4(3) of the Utility Model Act, an invention disclosed in the specification or drawing(s)
originally attached to a written application of a patent application containing a priority claim
under paragraph (1), that is identical to an invention disclosed in the specification or
drawing(s) originally attached to a written application of an prior application that is the basis
for the priority claim, is deemed to have been laid open with regard to the prior application
that is the basis for the priority claim at the time when the application is laid open or at the
time of publication of registration.
(5) Where the prior application falls under any of the following subparagraphs, paragraphs
(3) and (4) of this Article shall not apply to an invention, among inventions disclosed in a
specification or drawing(s) originally attached to a written application of the prior
application, disclosed in a specification or drawing(s) at the time of filing of a patent
application that forms the basis of priority claim with regard to the prior application:
(i) the prior application contains a priority claim under paragraph (1); or
(ii) the prior application contains a priority claim under Article 4D(1) of the Paris
Convention for the Protection of Industrial Property.
(6) In applying paragraph (4), where the prior application falls under one of the following
subparagraphs, “an invention or device described in the specification, claim(s) or drawing(s)
of both the international application as of the international filing date and its translation” in
Article 29(4) reads "an invention or device described in the specification, claim(s) or
drawing(s) of the international application as of the international filing date”:
(i) the prior application is an international application that is deemed to be a patent
application in accordance with Article 199(1) (including an international application
that is deemed to be patent application in accordance with Article 214(4)); or
(ii) the prior application is an international application that is deemed to be a utility
model registration application in accordance with Article 34(1) of the Utility Model
Act (including an international application that is deemed to be a utility model
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registration application in accordance with Article 40(4) of the Utility Model Act).
(7) A person who makes the priority claim and complies with the requirements under
paragraph (1) may amend or add the priority claim(s) within one year and four months from
the filing date of the prior application (the earliest filing date if two or more prior
applications exist).
Article 56 of the Patent Act (Withdrawal of a Prior application etc.) (1) An prior
application which is the basis of the priority claim under Article 55(1) is deemed to have
been withdrawn when more than one year and three months has elapsed after the filing
date of the prior application. However, this shall not apply where the prior application falls
under any of the following subparagraphs:
(i) if the prior application has been abandoned, invalidated, or withdrawn;
(ii) if an examiner's decision to grant or reject the prior application or a trial decision
thereto has become final and binding;
(iii) if priority claims based on the concerned prior application have been withdrawn; or
(iv) deleted.
(2) The applicant of a patent application containing a priority claim under Article 55(1) may
not withdraw the priority claim more than one year and three months after the filing date of
the prior application.
(3) Where a patent application containing a priority claim under Article 55(1) has been
withdrawn within one year and three months after the filing date of an prior application, the
priority claim is deemed to have been withdrawn simultaneously.
2. Purport
Priority claim based on a patent application (hereinafter, referred to as „Domestic Priority
claim‟) is designed to ensure protection for an invention which has been developed, based
on a patent application (hereinafter, referred to as „prior application‟), to further specify,
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improve or add to the prior application.
Previously, where an invention which specified, improved, or added to an prior application
was filed in an ordinary patent filing process, the invention was rejected since it was the
same invention as in its own prior application. Or, adding an improved invention to the prior
application by amending the specification or drawing(s) of the prior application could lead
to a decision of rejection, citing addition of new matter. Therefore, priority claim based on a
patent application was introduced to address such irrationality and protect all of inventions,
which are the outcomes of technological development. Through this process, an invention
which is identical with the invention disclosed in the prior application is deemed to have
been filed on the date of filing the prior application and an invention newly added to the
application is deeded to have been filed on the date of filing the application claiming
Domestic Priority.
3. Requirements for Domestic Priority Claim
3.1 Persons who can file Application Claiming Domestic Priority
(1) A person who can make a domestic priority claim is the applicant of the prior application
(including a successor in title under Article 38(4) of the Patent Act). The applicants of both
the prior application and the subsequent application shall be identical at the time of filing
the subsequent application.
(2) Where an application is jointly filed, the applicants of the subsequent application shall be
the same as the applicants of the prior application. To prove the identicalness of the
applicants of both the prior application and the subsequent application, the following items
shall be identical: the residential or business address of the applicants, the name or title of
the applicants and the seals of the applicants.
3.2 Time Requirement
A subsequent application shall be filed within one year from the filing date of the prior
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application.
3.3 Substantive Requirement
(1) A domestic priority claim can be made based on the invention disclosed in the
specification or drawing(s) originally attached to the prior application. Even the invention
disclosed in the specification or drawing(s), other than in the claims, can be the basis of a
domestic priority claim.
(2) The prior application shall be neither a divisional application nor a converted application.
However, a divisional application or converted application can be filed based on the
application claiming Domestic Priority.
(Note) The reason why a divisional application and a converted application cannot serve
as the basis of a domestic priority claim is to increase the efficiency of the examination.
Otherwise, in determining whether priority claim is valid or not, the examiner would have
had to determine whether the applicants of both the earlier applicant and a divisional or
converted application are identical and the invention described in the application claiming
a domestic priority is identical with that of a divisional application or converted
application. Also, the examiner would have had difficulty in calculating the period allowed
for the filing of a subsequent application based on a divisional or converted application.
(3) The prior application shall not be invalidated, withdrawn or abandoned or a decision to
grant a patent or utility model registration shall not become final and binding at the time of
filing an application claiming a domestic priority.
The time at which the decision to grant a patent or utility model registration has become
final and binding is when a certified copy of a decision to grant a patent or utility model
registration is delivered to the applicant. Also, the time at which the decision to reject a
patent or utility model registration has become final and binding is when thirty days have
elapsed since the applicant received a certified copy of a decision to reject a patent or utility
model registration.
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(Note) Where the prior application has been withdrawn or abandoned on the filing date of
the application claiming a domestic priority, the priority claim is deemed to be valid. As long
as it is clear that a domestic priority claim has been made earlier than the time at which the
prior application was invalidated, the priority claim is deemed to be valid.
4. Procedure of Domestic Priority Claim
(1) A person making a domestic priority shall state the purport as well as the prior
application in the written patent application at the time of filing an application claiming a
domestic priority.
(2) The submission of the evidential document for priority is not necessary in the procedure
for making a domestic priority. Whether the domestic priority claim is valid or not shall be
determined based on a written prior application.
(3) When taking advantage of the provision of Article 30 of the Patent Act which has been
applied at the time of filing the prior application, while filing an application claiming a
domestic priority, the applicant shall state the purport and submit the evidential documents
under Article 30(2) of the Patent Act within the statutory period. However, where the
contents of the above-mentioned evidential documents are the same as those of the
documents submitted regarding the prior application, the applicant can state the purport
and indicate the evidential documents of the prior application in an application claiming a
domestic priority.
Where a claim for exception to the public disclosure has not been made at the time of
filing the prior application, making such claim at the filing time of an application claiming a
domestic priority shall not be acknowledged.
(Note) A priority claim under the Treaty cannot take the retroactive filing date under Article
30 of the Patent Act, whereas a domestic priority claim can retain the retroactive filing date.
(4) When taking advantage of the provision of Article 55(1) of the Patent Act to file a
divisional application or converted application based on an application claiming a domestic
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priority, the domestic priority claim shall be made at the time of filing the divisional
application or converted application.
5. Effect of Domestic Priority Claim
(1) As for an invention identical with the one disclosed in the specification or drawing(s) of
the prior application which forms the basis of the priority claim, among the inventions in the
application claiming a domestic priority, the subsequent application is deemed to have been
filed at the time of filing the prior application in applying the following requirements.
① Article 29(1),(2) of the Patent Act(Novelty, inventive Step)
② The main sentence of Article 29(3) of the Patent Act(Status of enlarged concept of
novelty)
③ Article 30(1) of the Patent Act(Exception to the public disclosure)
④ Article 36(1) to (3) of the Patent Act(Prior application, the same purport as Article
7 (3), (4) of the Utility Model Act)
⑤ Article 96(1)(3) of the Patent Act(Scope where the effect of a patent right does not
extend)
⑥ Article 98 of the Patent Act(Use of patented invention, registered utility model and
registered design of another person, Conflict between a patent right with a design right,
the same purport as Article 23 of the Utility Model Act and Article 45 of the Design
Protection Act)
⑦ Article 103 of the Patent Act (Non-exclusive license by prior use)
⑧ Article 105(1), (2) of the Patent Act(Non-exclusive license after the expiry of the duration
of the design right, the same purport as Article 52(3) of the Design Protection Act)
⑨ Article 129 of the Patent Act(Presumption of the patented process to manufacture)
⑩ Article 136(4) of the Patent Act (Trial for a correction)
(2) Where a prior application contains a domestic priority claim or a priority claim under the
Paris Convention, recognizing the priority claim twice to inventions disclosed in the
application which forms the basis of such claim in a subsequent application would
technically mean the extension of the priority period. Therefore, the priority claim of the
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above-mentioned invention shall not be acknowledged, whereas the effects of the priority
claim shall be on inventions newly added to the prior application.
(Note) To enjoy the effects of the priority claim even on the inventions disclosed in the basic
application of the prior application, the multiple priority claims shall be made based on the
basic application of the prior application in a subsequent application.
(3) The prior application which forms the basis of a domestic priority claim is deemed to
have been withdrawn when one year and three months have elapsed from the filing date of
the prior application. However, where the prior application has been invalidated, withdrawn
or abandoned or a decision to grant a patent or utility model registration has become final
and binding, no application is deemed to have been withdrawn since there is no application
deemed to have been withdrawn. Also, when a domestic priority claim based on the prior
application has been withdrawn within one year and three months from the filing date of
the prior application, the prior application is not deemed to have been withdrawn.
As for an application claiming a domestic priority based on multiple patent applications,
the prior applications are not deemed to have been withdrawn all at once when one year
and three months have elapsed from the filing date of the earliest filing date. Rather, it is
deemed that each application is withdrawn after one year and three months from the filing
date of each prior application.
(Note) Since only the pending applications are disclosed, prior applications deemed to have
been withdrawn are not disclosed. Where a request for early publication of a prior
application is made within one year and three months from the filing date of a prior
application, the prior application shall be disclosed.
(4) An application claiming a domestic priority can be withdrawn anytime. However, when
one year and three months has elapsed from the filing date of the prior application, the
domestic priority cannot be withdrawn. Also, where a subsequent application is withdrawn
within one year and three months from the filing date of the prior application, the domestic
priority claim is deemed to have been withdrawn at the same time as the withdrawal of the
subsequent application.
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(Note) If a subsequent application is withdrawn within one year and three months from the
filing date of the prior application, the priority claim is simultaneously withdrawn. Therefore,
even if one year and three months has elapsed from the filing date of the prior application,
the prior application is not deemed to have been withdrawn.
6. Amendment to Domestic Priority Claim
(1) An applicant can amend or add the domestic priority claim within one year and four
months from the filing date of the prior application (the earliest filing date if two or more
prior applications exist).
(Note) Where a multiple priority claim has been made based on the first country
application filed in another country under the Treaty and the prior application filed
domestically, adding another foreign application to the priority claim is possible within one
year and four months from the earliest date between the filing date of the first county
application and the domestic prior application under Article 54(7) of the Patent Act.
However, adding another domestic application to the priority claim is possible within one
year and four months from the filing date of the earliest-filed application among the filing
dates of the domestic prior applications. It is because the prior application defined under
Article 55(7) of the Patent Act refers to the application filed earlier which forms the
domestic priority claim under paragraph(1) of the same article.
(2) Article 55(7) of the Patent Act stipulates that a person allowed for amending the
domestic priority claim is the applicant who have fulfilled the requirements of paragraph (1)
of the same article and made the priority claim. Therefore, in order to amend or add the
domestic priority claim, the applicant would have made the domestic priority claim at the
time of filing the application. Also, at least one of the domestic priority claims made at the
time of filing the application would have satisfied the requirements of Article 55(1) of the
Patent Act.
(3) The application that can be added with the domestic priority claim shall meet the
requirements under Article 55(1) of the Patent Act. The requirements are as follows: ① the
prior application has been filed within one year prior to the filing date of the subsequent
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application, ② the prior application is neither a divisional application nor converted
application, ③ the prior application has been invalidated, withdrawn, or abandoned or a
decision to grant a patent or register a utility model has not become final, ④ the applicant
of the prior application is identical to the applicant of the subsequent application, and ⑤
the items related to the priority claim are written clearly enough to specify the priority claim.
The time to determine whether the above-mentioned requirements are fulfilled shall be
applied differently considering the intention of the relevant provisions. That is, the time to
determine when requirement ① is met is at the time of filing the subsequent application.
The time to determine when requirements ③ and ④ are met is the time of amending or
adding the domestic priority claim.
(Note) Where an application claiming a domestic priority is made based on a theoretical
application, application of another person or application which cannot be specified, the
domestic priority is inherently invalid. Therefore, the priority claim cannot be amended or
added.
(4) The scope allowed for amending the domestic priority claim within one year and four
months from the filing date of the prior application includes the whole or partial withdrawal
of priority claims in multiple priority claims, as well as amendments of correcting clerical
errors in the priority claim and of adding the priority claim. However, the priority claim
cannot be withdrawn when one year and three months have elapsed from the filing date of
the prior application under Article 56(2) of the Patent Act. As for multiple priority claims,
whether one year and three months have elapsed from the filing date of the prior
application shall be determined by calculating from the earlier filing dates of each
application.
The amendment of the domestic priority claim allowed after one year and four months
from the earliest filing date is only limited to clerical errors, just as the amendment of the
priority claim under the Treaty.
(Note) Where an applicant intends to withdraw the priority claim and add another priority
claim, the applicant doesn‟t need to additionally submit a written withdrawal notice. Just one
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copy of the amendment with all the amended features written would suffice.
7. Examination of Application of Domestic Priority Claim
7.1 Overview of Examination
Once an application claiming the domestic priority or a written amendment regarding the
domestic priority claim is submitted, the examiner shall examine the formalities of the
priority claim based on the specification and the written amendment. When no error is
found in the formalities of the priority claim, the examiner shall start prior art searches.
Where any prior art related to Article 29 or 36 of the Patent Act exists between the prior
application and the subsequent application based on the result of the prior art searches, the
examiner shall determine by invention whether each of the inventions in the prior
application are identical to the inventions in the subsequent application. As for the identical
inventions, the examiner shall examine the application based on the retroactive filing date to
determine the patentability of the application. When the inventions are not identical, the
examiner shall notify the applicant of the reason of not giving the retroactive filing date,
along with the grounds for rejection.
7.2 Flowchart of Examination of Domestic Priority
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7.3 Formality Examination of Domestic Priority claim
(1) Where a domestic priority claim exists at the time of filing a patent application, the
Application with Priority Claim
Amendment Request
Invalidation of Priority Claim
Procedure
Examination based on filing date of prior application
Examination based on filing date of
subsequent application
Existence of Prior Art between prior and
subsequent applications
Formality Deficiency of Priority Claim
Description of prior application regarding
invention to be examined
Address
Deficiency
Yes
No
Yes
Yes
Yes
No
No
No
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examiner shall examine the formalities of the priority claim. If any error is found in the
formalities of the priority claim, the examiner shall request the applicant to amend the
priority claim. When irregularities are not addressed even after the amendment, the
examiner shall invalidate the procedure for the domestic priority claim. The scope allowed
for the amendment of the domestic priority claim may change based on whether one year
and four months has elapsed from the filing date of the prior application.
The subject of the formality examination in the domestic priority claim is the whole
requirements of the domestic priority claim, except for unity of invention.
(2) Where an international patent application claiming priority base on a domestic patent
application or an international patent application which has designated only Republic of
Korea has entered the national phase, the examiner shall determine whether the prior
application is pending at the time of the formality examination since the above-mentioned
priority claim is deemed to be a domestic priority claim. Where the prior application has
been invalidated, withdrawn or abandoned at the filing date of the international application
or a decision to grant a patent has become final and binding, the examiner shall request the
applicant to amend the priority claim. If the irregularities are not addressed even after the
amendment, the examiner shall invalidate the priority claim.
7.4 Substantive Examination of Application with Domestic Priority claim
(1) When the domestic priority claim has been invalidated because of irregularities, the
examiner shall examine the application with the domestic priority claim based on the actual
filing date, rather than retroactively calculating the date to determine the patentability of the
application.
Where a domestic priority claim has been invalidated, the prior application is not deemed
to have been withdrawn. Therefore, the examiner shall be careful in applying Article 36 of
the Patent Act.
(2) When a domestic priority claim is valid based on the results of the formality examination
of the domestic priority claim, the examiner shall consider whether the dates to determine
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the patentability can be retroactively calculated by invention.
In other words, just as in the case of the priority claim under the Treaty, the examiner shall
examine the inventions disclosed in the specification or drawing(s) originally attached to the
prior application as if the application is deemed to have been filed on the prior application
when determining the patentability under Article 29 of the Patent Act. As for the inventions
not disclosed in the specification or drawing(s) originally attached to the prior application,
the examiner shall examiner the application based on the filing date of the subsequent
application.
7.5 Instruction of Examination of Application with Domestic Priority Claim
(1) As for an application claiming a domestic priority, the prior application which forms the
basis of the priority claim is deemed to have been withdrawn when one year and three
months have elapsed from the filing date of the prior application. Therefore, the examiner
shall not start the examination of the prior application, but defer the examination. The same
applies to where the request for accelerated examination on the prior application is made.
(2) A person allowed for claiming a domestic priority is the applicant of the prior application
and his/her successor in title. Under Article 38(4) of the Patent Act, if an applicant did not
file a report to change the applicant after the filing of the application, except for the
succession and inheritance, the effect of the succession would not come into force.
Therefore, if the name of the person who filed the prior application is not changed to the
name of the person filing the subsequent application before the filing date of the
subsequent application (including the filing date), the priority claim shall not be valid. When
the applicant of the prior application is different from the applicant of the subsequent
application, the examiner shall require the applicant to amend the application. If the
applicant cannot prove that the applicant of the subsequent application is the successor of
the applicant of the prior application, the examiner shall invalidate the domestic priority
claim.
(3) If the examiner did not require the applicant to amend the application after determining
the validity of the domestic priority claim soon after filing the application, this could make
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the prior application deemed to be unfairly withdrawn or lead the applicant to lose the
opportunity to re-file the application claiming priority after withdrawing the application.
Therefore, the examiner shall conduct the formality examination of the priority claim right
after filing the application. As for the items exceptionally left out, the examiner shall
additionally request the applicant to amend the application in the name of the
commissioner of KIPO.
(4) Where the domestic priority claim is in violation of each paragraph of Article 55(1) of the
Patent Act or the priority claim has been invalidated since the applicants of both the prior
and subsequent applications are not identical, the priority claim would be deemed to have
never been made since it has no legal effects. Therefore, the examiner shall change the
status of the examination deferral and withdrawal and resume the examination.
In such a case, the prior application can become another application under Article 29(3) of
the Patent Act or a prior application under Article 36 of the same act. Therefore, the
examiner shall be careful in the examination. Also, the subsequent application shall be
treated as a regular application without any priority claim.
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PART VII. Other Examination Procedures
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Chapter. 1 Extension of Term of Patent Right by Permission, etc.
1. Relevant Provisions
Article 89 of the Patent Act(Extension of Term of Patent Right by Permission, etc.) ①
Notwithstanding Article 88(1), where permission, registration, etc. under other Acts or
subordinate statutes were required to work a patented invention, and it has taken an
extended period to complete the activity test, the safety tests, etc., necessary to obtain such
permission, registration, etc. (hereinafter referred to as “permission, etc.”) and which is
prescribed by Presidential Decree, the term of the patent right may be extended by a period,
up to five years, during which the patented invention could not have been worked.
② In applying subparagraph(1), the period not attributable to a patent right holder shall not
be included in a period during which the patented invention could not have been worked in
subparagraph (1) above.
Article 7 of the Enforcement Decree of the Patent Act (Invention subject to Application
for Registration of Patent Right Duration Extension) For the purpose of Article 89 of the
Patent Act, the term “invention prescribed by Presidential Decree” means any of the
following inventions:
1. Invention of medicines [limited to medicines produced with the new matter (referring to
new matter whose chemical structure of the active part with medicinal effect (hereinafter the
same in this provision) as active ingredient and is obtained with permission for items] which
is obtained with the permission for items under Articles 31(2) or (3) or 42 (1) of the
Pharmaceutical Affairs Act for purpose of embodying the patented invention; and
2. Invention of agricultural chemicals or raw materials (limited to agricultural chemicals or
raw materials produced with the new matter as the active ingredient and registered for the
first time) thereof which are to be registered under Articles 8(1), 16(1) and 17(1) of the
Agrochemicals Control Act for purpose of embodying the patented invention
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2. Purport
The term of a patent right shall commence upon registration of the patent right and lasts
for 20 years from the filing date of the patent application. However, as for particular
inventions such as medicines and agrochemicals, permission, registration, etc. under other
Acts or subordinate statues are required to work such patented inventions. Also, the
inventions cannot be exclusively worked until permission or registration of such inventions is
obtained, raising the issue of fairness against other patent rights.
Therefore, notwithstanding Article 88(1), where permission, registration, etc. under other
Acts or subordinate statutes were required to work a patented invention, and it has taken an
extended period to complete the activity test, the safety tests, etc., necessary to obtain such
permission, registration, etc. and which is prescribed by Presidential Decree, the term of the
patent right may be extended by a period, up to five years, during which the patented
invention could not have been worked.
Meanwhile, as for an extension of the term of a patent filed and registered before
September 1, 1990, the system of request for an extension of the patent term shall apply,
rather than the system of registration for an extension of the patent term.
3. Subject for Registration for Patent Term Extension
3.1 Inventions entitled to Patent Term Extension
A patented invention entitled to registration for an extension of the patent term shall be an
invention defined in paragraph (1) of Article 7 of the Enforcement Decree of the Patent Act
according to Article 89(1) of the Patent Act, such as a product patent, a process patent, a
use patent, and a composition patent.
(Note) If an invention corresponds to an invention specified in paragraph (1) of Article 7 of
the Enforcement Decree of the Patent Act, whether it took long to obtain the permission or
registration (hereinafter referred to as “permission, etc.”) of the invention is not considered.
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3.2 Applicable Law on Permission or Registration
An invention subject to application for registration of an extension of the patent term shall
include: ① an invention of medicines [limited to medicines produced with the new matter
(referring to new matter whose chemical structure of the active part with medicinal effect
(hereinafter the same in this provision) as active ingredient and is obtained with permission
for items] which is subject to permission for the items under Article 31(2) or (3) or 42(1) of
the Pharmaceutical Affairs Act for embodying the patented invention; and ② an invention
of agricultural chemicals or raw materials (limited to agricultural chemicals or raw materials
produced with the new matter as the active ingredient and registered for the first time)
thereof which are to be registered under Articles 8(1), 16(1), 17(1) of the Agrochemicals
Control Act for purposes of embodying the patented invention. These inventions are only
limited to ones that have not been worked for a certain period of time to obtain the
permission or registration under the Pharmaceutical Affairs Act or the Agrochemicals Control
Act. Therefore, other inventions except for the above-mentioned kinds even if they have not
been worked before obtaining permission or registration under other acts or subordinate
statutes shall not be subject to application for registration of an extension of the patent
term.
3.3 Term of Patent Right
Application for registration of an extension of the patent right by permission, etc. can be
filed only when the right of a patented invention is still valid. Therefore, where the
concerned patent right has been invalidated or cancelled, or has been extinguished because
of the failure of patent fee payment, the application of registration for an extension of the
patent right shall not be recognized as valid. Where a trial for invalidating the concerned
patent right is pending, the application of registration for an extension of the patent right
can be filed.
Meanwhile, where a patent right eligible for an extension of the patent term was valid at
the time of the filing of the application of registration for an extension of the patent right,
but then became invalidated or cancelled, an examiner shall give an applicant an
opportunity to explain under Article 11 of the Enforcement Rules of the Patent Act and then
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if not addressed, return the written application of registration for an extension of the patent
term.
3.4 Determination of Extension of Patent Term
① Where multiple permissions are made on multiple active ingredients in a single patent,
an applicant can choose just one permitted ingredient from the permissions and apply for a
one-time extension of the patent term for the concerned ingredient.
For example, as for active ingredients A, B and C disclosed in a single patent subject to
the application of registration for an extension of the patent term, an applicant has obtained
three separate permissions A, B and C, respectively. In that case, he/she can file an
application of registration for a one-time extension of the patent term by choosing just one
permitted ingredient for which an extension of the patent term is sought.
② Where multiple permissions are made on the same active ingredient disclosed in a single
patent, application for an extension of the patent term can be filed on the initial permission
only.
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For example, as for the active ingredient (a) subject to the application for registration
of an extension of the patent term and Product Permission A, Active Pharmaceutical
Ingredient Permission B and Dosage Form Change Permission C were obtained consecutively.
Then, the patented invention can be worked by the initial permission of Product Permission
A. Therefore, application for registration of an extension of the patent term can be filed on
the initial permission A only.
③ Where multiple patents are involved in a single permission, the term of each patented
invention with respect to the concerned permission can be extended.
For example, where a product patent, a process patent, a use patent are each obtained
for the active pharmaceutical ingredient in Permission D and where the permission is
recognized to be necessary for the working of the patented invention, applications of
registration for an extension of the patent term can be filed for Patent A, Patent B and
Patent C separately.
4. Period allowed for Extension
The term of a patent right may be extended by a period, up to five years, during the
patented invention could not have been worked. In other words, even though more than
five years have elapsed to obtain permission or registration for the working of the patented
invention, the patent term cannot be extended exceeding five years.
The period during which a patented invention cannot be worked shall be calculated in the
following manner: only the period elapsed after the date of registration of the patent right
shall be considered for calculation. However, the elapsed period attributable to the holder of
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a patent right or an applicant during the period of reviewing relevant documents of the
application for permission or registration by the concerned office shall be excluded from the
calculation of the period.
①The total length of the period for clinical trials conducted after obtaining approval from
the Commissioner of the Korean Food and Drug Administration and the period for reviewing
relevant documents for the application for permission elapsed at the Korean Food and Drug
Administration to obtain items license of drugs(excluding veterinary drugs)
②The total length of the period for clinical trials conducted after obtaining approval from
the Commissioner of the Animal, Plant and Fisheries Quarantine and Inspection Agency and
the period for reviewing relevant documents for the application for permission elapsed at
the Animal, Plant and Fisheries Quarantine and Inspection Agency to obtain items license of
veterinary drugs
③The total length of the period for clinical trials conducted by test and research institutes
designated under the Enforcement Decree of the Agrochemicals Control Act and the period
for reviewing relevant documents for the application for permission elapsed at the Rural
Development Administration to obtain registration of agrochemicals or active
pharmaceutical ingredients.
5. Application of Registration for Extension of Patent Term by Permission,
etc.
5.1 Relevant Provisions
Article 90 of the Patent Act (Application to Register Extension of Term of Patent Right
by Permission, etc.) ① A person who intends to apply to register the extension of a patent
right under Article 89(1)(hereinafter referred to as “applicant for registration of extension”)
shall submit an application for registration of an extension of the term of a patent right to
the Commissioner of the Korean Intellectual Property Office, stating each of the following:
1. The name and domicile of an applicant for registration of extension (if the applicant is a
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legal entity, its title and the location of its place of business);
2. The name and domicile, or location of place of business, of the representative, if
designated (if the representative is a patent corporation, its name, location of office and
designated patent attorney‟s name)
3. The identification by the number of patent for which an extension is applied, and the
claims of that patent;
4. The period of extension applied for;
5. The requirements for permission, etc. under Article 89(1)
6. The grounds for extension prescribed by Ordinance of the Ministry of Knowledge
Economy (accompanied by materials substantiating the grounds).
②An application to register an extension of the term of a patent right shall be filed within
three months from the date of permission, etc. under Article 89(1) was obtained: Provided,
That such application may not be filed six months before the term of patent right provided
for in Article 88 expires.
③Where a patent right is owned by joint owners, an application to register an extension of
the term of a patent right shall be made in the names of all the joint owners.
④Where an application to register an extension of term of a patent right has been filed, the
term shall be deemed to have been extended: Provided, That where a decision of refusal for
registration of extension of term under Article 91(1) has become final and conclusive, the
same shall not apply.
⑤Where an application to register an extension of the term of a patent right has been filed,
the Commissioner of the Korean Intellectual Property Office shall publish the information
prescribed in paragraph (1) in the Patent Gazette.
⑥An application for registration of an extension may make an amendment to the matters
referred to in paragraph (1) 3 through 6, which are described in the application for
registration of an extension (excluding the patent number of the patent right to be extended
under subparagraph 3) until the examiner transmits a certified copy of the decision for
registration or rejection of the extension: Provided, That after receiving a notice of grounds
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for registration which is applicable mutatis mutandis pursuant to Article 93, he/she may
make an amendment in the period for presentation of a written opinion only, according to
the relevant notice of grounds for rejection.
④ Applicant of Registration for Extension of Patent Term
An applicant of the application to register an extension of the term of a patent right shall be
limited to a holder of the patent right. Where a parent right is jointly owned, an application
to register an extension of the term of a patent right shall be made in the names of all the
joint owners.
Where the person who filed an application to register an extension of the term of a patent
right is not the holder of the patent right or where an application to register an extension of
the term of a patent right was not filed in the names of all the joint owners, it shall
constitute a ground for rejection.
5.3 Period allowed for Application
An application to register an extension of the term of a patent right by permission, etc. shall
be filed within three months from the date of permission, etc. under the provision of Article
89 of the Patent Act. Provided, That the application cannot be filed six months before the
term of patent right provided for in Article 88 expires.
Where an application to register an extension of the term of a patent right was filed before
a permission, etc. defined under Article 89 of the Patent Act was obtained; after three
months have elapsed from the date of permission, etc.; during the period between six
months before the expiration of the term of a patent right and the expiration of the term of
a patent right; or after the term of a patent right expires, an examiner shall give an applicant
an opportunity to explain under Article 11 of the Enforcement Rules of the Patent Act and, if
not addressed, return the application to register an extension of the term of a patent right
by permission, etc. to the applicant.
5.4 Application Document
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(1) A person who intends to file an application to register an extension of the term of a
patent right shall attach „a copy of the evidential document of the ground for extension‟
and „a copy of the evidential document of legal representation (only when the procedure is
initiated by a legal representative)‟ to an application in Annexed Form No. 30 of the
Enforcement Rules of the Patent Act and submit such documents to the Commissioner of
the Korean Intellectual Property Office.
(2) An application to register an extension of the term of a patent right shall be written in
the following manner:
①The name of the holder of a patent right shall be written in the box for applicant of
registration of extension. Also, where a patent right is jointly owned, the name of all of the
joint owners shall be stated
② The patent number and the application number of the patent for which an extension of
the term is sought shall be written in the box for patent number and application number.
③ The name of the patented invention shall be written in the box for name of invention.
④ All the claims including active pharmaceutical ingredients for which an extension of the
term of a patent right is sought shall be written in the box for claims subject to extension.
How such claims include items for permission or registration under Article 89 of the Patent
Act shall be clearly stated and illustrated in detail.
(Example) In claim 1, compounds in the general formulas (I) R1=CH3 R2=OH correspond to
active pharmaceutical ingredient OOO in a popular term
⑤ A ground for a need to obtain permission or registration under Article 89 of the Patent
Act to work a patented invention for which an application to register an extension of the
term of a patent right is filed shall be written in the box for ground for extension. As for
drugs, the evidential document of the ground for extension shall include a copy of clinical
investigation plans, a copy of items license for drugs and the evidential document of the
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period for Phase Ⅲ trial conducted overseas and the period for review of document spent
at a permission agency for the concerned drug. As for agrochemicals, the evidential
document of the ground for extension shall be attached with a copy of a test application for
registration of items of agrochemicals and a copy of the registration certificate for items of
agrochemicals. The evidential document for raw agrochemical materials shall include a copy
of test and analysis applications and a copy of registration of raw agrochemical materials.
⑥ The number of days calculated in the manner as prescribed in <4. Period allowed for
Extension> of this Chapter shall be written in the box for the period for an extension of the
term of a patent right. However, where the period exceeds five years, the period for an
extension of the term of a patent right shall be the number of days in five years.
⑦ In the box for the date on which a permission, etc. under Article 89 of the Patent Act is
granted, the date of permission of drugs (in case of veterinary drugs, the corresponding
date) under Article 31(1) or Article 42(1) of the Pharmaceutical Affairs Act or the date of
registration in case of agrochemicals or active ingredients in agrochemicals under Article
8(1), 16(1) or 17(1) of the Agrochemicals Control Act shall be written.
⑧ In the box for the content of permission, etc. under Article 89 of the Patent Act, the
content of the relevant provisions and permission to work a patented invention shall be
written. Also, the evidential documents stating that a person who obtained a permission, etc.
is the exclusive licensee of a patent right of the application for registration for an extension
of the term, a registered non-exclusive licensee or a patent right holder shall be attached.
The following items shall be written in the box for the content of permission, etc.
1. As for drugs, permission for items‟ no., firm name, name of drug, dosage, efficacy and
effect of active pharmaceutical ingredient
2. As for agrochemicals, registration no., firm name, name of agrochemicals, type and
content of active ingredient
3. As for agrochemical raw materials, registration no., firm name, name, type and size of
agrochemical raw materials
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5.5 Effect of Application of Registration for Extension of Patent Term
Where an application to register an extension of term of a patent right has been filed, the
term shall be deemed to have been extended: Provided, That where decision of refusal for
registration of extension of term under Article 91(1) of the Patent Act has become final and
conclusive, the same shall not apply. Also, when an application to register an extension of
term of a patent right has been withdrawn, invalidated or returned before decision of refusal
for registration of extension of term has become final and conclusive, the term shall be
deemed not to have been extended in the first place.
(Note) Like a decision refusing to grant a patent right, a decision of refusal of registration
for extension of term shall become final and conclusive when thirty days have elapsed from
the delivery of a certified copy of a decision of refusal of registration for extension of term if
an appeal against the decision refusing registration for extension of patent term was not
initiated. Where an appeal against the decision refusing registration for extension of patent
term was initiated, the decision shall become final and conclusive when the ruling of an
appeal against the decision refusing registration for extension of term of patent right has
become final and conclusive.
5.6 Legal Representation of Application to Register Extension of Patent Term
(1) Unlike withdrawal, etc. of an application to register an extension of the term of a patent
right, an application to register an extension of the term of a patent right by permission, etc.
is not entitled to special authorization. Therefore, even without special authorization, an
application to register an extension of the term of a patent right can be represented by a
legal representative. However, since the procedure for an application of registration for an
extension of the term of a patent right is unclear to determine whether it is a procedure for
filing an additional application or a procedure for registration, the scope of power of
representation shall be determined as in the following manner:
① When filing an application to register an extension of the term of a patent right, where
the scope of power of representation in the evidential document of power of representation
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states “all patent-related procedures”, “all procedures related to registration of a patent
right”, or “ all procedures related to an application to register an extension of the term of a
patent right” and the name of the concerned legal representative is written in an application
of registration for an extension, all of the subsequent procedures for an application to
register an extension of the term of a patent right(However, the abandonment of an
application shall be determined based on the content of special authorization) can be
represented by a legal representative.
② When filing an application to register an extension of the term of a patent right, where
the evidential document of power of representation was not submitted and the scope of
power of representation in the initial patent application or the evidential document of power
of representation at the time of registration states “all patent-related procedures”, “all
procedures related to registration of a patent right”, or “ all procedures related to an
application to register an extension of the term of a patent right” and the name of the
concerned legal representative is written in an application of registration for an extension, all
of the subsequent procedures for an application to register an extension of the term of a
patent right can be represented by a legal representative.
However, where the name of the concerned legal representative is not written in an
application of registration for an extension even when the initial patent application or the
evidential document of power of representation at the time of registration claims that an
application to register an extension of the term of a patent right can be registered by a legal
representative, the legal representative shall be deemed not to have a power of
representation in a procedure related to an application to register an extension of the term
of a patent right.
③ The abandonment of an application to register an extension of the term of a patent right
is entitled to special power of representation. Therefore, where there is no special power of
representation, a legal representative cannot abandon an application to register an extension
of the term of a patent right and the power of representation of a legal representative with
general power of attorney shall be effective for an application to register an extension of the
term of a patent right, too.
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6. Examination
6.1 Relevant Provisions
Article 91 of the Patent Act (Decision of Rejecting Application to Register Extension of
Term of Patent Right by Permission, etc.) ①An examiner shall make a decision to reject an
application to register an extension of the term of a patent right where it falls under any of
the following situations:
1. Where it is deemed that permission, etc. under Article 89 is unnecessary for working the
patented invention;
2. Where the patentee, or a person who has an exclusive or non-exclusive license under the
patent right has not obtained permission, etc. under Article 89;
3. Where the term for which an extension is applied exceeds the period during which the
patented invention could not have been worked;
4. Where the application for registration of extension is not the patentee;
5. Where the application for registration of extension is made in violation of Article 90(3)
Article 92 of the Patent Act (Decision, etc. to Register Extending Term of Patent Right
by Permission, etc.) ① Where an examiner finds no reason under any subparagraph of
Article 91(1) to reject an application for an extension of the term of a patent right, he/she
shall make a decision to register the extension
②When a decision to register the extension has been made under paragraph (1), the
Commissioner of the Korean Intellectual Property Office shall register the extension of the
term of the patent right in the Patent Register.
③ When the registration under paragraph (2) has been made, the information prescribed in
the following subparagraphs shall be published in the Patent Gazette:
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1. The name and domicile of a patentee (if the patentee is a legal entity, its title and the
location of its place of business);
2. The patent number;
3. The date of registration of the extension;
4. The period of the extension;
5. The requirements for permission, etc, under Article 89
6.2 Flowchart and Overview of Examination Procedure
A procedure for examining an application to register an extension of the term of a patent
right by permission, etc. is similar to that of a patent application. Where there exists no
provision for the detailed procedure for examining an application to register an extension of
the term of a patent right by permission, etc., the examination procedure for a patent
application shall apply mutatis mutandis. Once an application to register an extension of the
term of a patent right is received and transferred to an examiner, the examiner shall initiate
examination on the application within four months from the date for receipt of the
application document.
(1) Formalities Examination
When an application to register an extension of the term of a patent right is accepted, the
division which has received the written application shall complete the formalities
examination and transfer it to an examiner. If the division which has received the application
failed to conduct the formalities examination, the examiner shall carry out the formalities
examination under the name of the Commissioner of the Korean Intellectual Property Office.
(2) ExaminationⅠ
A designated examiner shall initiate a substantive examination of the application and
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determine whether any ground for rejecting the application exists and when there is any
ground for rejection, the examiner shall notify an applicant of the ground for rejection and
give him/her an opportunity to submit a written opinion.
(3) Submission of Written Opinion or Amendment
An applicant can submit a written opinion within the period mentioned in a written
notification of submission of opinion designated by the examiner. Also, the applicant can
make an amendment to the application of registration for an extension of the term of a
patent right within the period for submission of a written opinion.
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(4) Determination of Registration
An examiner shall re-examine the submitted application to register an extension of the term
of a patent right, while considering the amendment and written opinion. Where the
application is to be rejected again after reexamination of the application, the examiner shall
make a decision to reject the registration. If the examiner finds no other reason to reject an
application for an extension of the term of a patent right, the examiner shall make a
decision to register the extension.
Meanwhile, where an examiner finds another ground for rejection which has not been
notified after reexamination, the examiner shall notify the applicant of the newly-found
ground for rejection and repeat the procedure above.
6.3 Formalities Examination of Application of Registration for Extension
Where an application to register an extension of the term of a patent right transferred from
the division of receipt of document is in violation of the formalities, an examiner shall treat
the application in the following manner.
(1) Where an application to register an extension of the term of a patent right was filed after
the period under Article 90(2) of the Patent Act has elapsed, an examiner shall notify an
applicant with indications of the intention to return the application, the ground for return
and the period allowed for explanation in a written notification of ground for return under
Article 11(2) of the Enforcement Rules of the Patent Act.
Where an applicant makes a request for return of the application document after
notification of the ground for return or the submitted explanation is acknowledged to be
groundless, an examiner shall return the relevant documents.
Where an application to register an extension of the term of a patent right was filed before
obtaining permission, etc. under Article 89 of the Patent Act, the application, too, shall be
treated in the above-mentioned manner.
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(2) Where an application to register an extension of the term of a patent right is in violation
of the provision regarding a legal representative under Article 46 of the Patent Act; where
fees have not been paid as specified under Article 46 of the Patent Act; or where it violates
the formalities specified in the Act or any order thereunder, an examiner shall order to make
an amendment to the application. The designated period for amendment is one month and
the designated period can be extended one additional month only.
Despite a request for amendment, where the irregularities are not addressed within the
designated period, an examiner shall invalidate the procedure for the application under the
name of the Commissioner of the Korean Intellectual Property Office.
6.4 Substantive Examination of Application of Registration for Extension
6.4.1 Determination of Subject for Examination
Documents subject to examination include a written application and relevant attached
documents of an application to register an extension of the term of a patent right. However,
where amendment was made to the application, an examiner shall decide the subject for
examination by determining whether the amendment is recognized to be legitimate. Where
the amendment is legitimate, an examiner shall examine the application by reflecting the
amended matters. Where the amendment is not recognized to be legitimate, an examiner
shall deem that the amendment has never been filed in the first place and conduct
examination on the application to register an extension of the term of a patent right before
the concerned amendment.
Where more than two amendments are made, an examiner shall determine the amended
matters based on the combination of the final amendments. The written application
reflecting the final amended matters deemed to be legitimate shall be subject to
examination. If two or more amendments are made, the guideline of determining the
amended matter in Chapter 5 <Examination Procedure> shall be referred.
(Example) Where claims subject to an extension of the term of a patent right are amended
in a first amendment and the patent number and the period allowed for request for an
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extension of the term of a patent right are amended in a second amendment, the second
amendment of correcting the patent number is not recognized as an amendment of
correcting clerical errors and the it is not deemed legitimate. Therefore, a written application
to register an extension of the term of a patent right only reflecting the amended matters in
the first amendment shall become the subject for examination.
Items for
amendment
Initial
Applicati
on
1st
Amendment
2nd
Amendment
2nd Amended
Matter
Application
for
Examination
Patent Number of
Application for
Extension
Patent
No.
001234
- Patent No.
004567
Patent No.
004567
Patent No.
001234
Claims of
Application for
Extension
Claim 1 Claim 2 Claim 2 Claim 2
Period for
Extension Request 2 Years -
1 Year
8 Months
1 Year
8 Months 2 Years
6.4.2 Determination on Existence of Ground for Rejection
Where an application to register an extension of the term of a patent right falls under any of
the following situations defined in Article 91, an examiner shall make a decision to reject the
application.
(1) Where it is deemed that permission, etc. under Article 89(1) of the Patent Act is
unnecessary for working the patented invention
If the working of the patented invention is to be recognized necessary to obtain permission,
etc. under Article 89(1) of the Patent Act, the following requirements shall be met: ①
permission is required for the working, such as manufacturing or production, of the
permitted subject matter under Article 89(1) of the Patent Act; ②the composition of the
patented subject matter shall be identical with that of the permitted subject matter; or ③
the use of the patented subject matter shall be identical with that of the permitted subject
matter.
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Whether such requirements are met shall be determined in more detail in the following
manner:
① Determination on Necessity for Permission of Patented Matter
As for a patented invention subject to an application to register an extension of the term of
a patent right, permission under Article 89(1) of the Patent Act needs to be obtained to
work the patented invention. Therefore, unless special conditions exist, a need to obtain
permission shall be recognized only based on the fact that an organization in charge of
granting permission permitted the concerned application.
For example, if permission for manufacturing items of drug was obtained under Article 31 of
the Pharmaceutical Affairs Act to test activity and safety of a certain drug, an examiner can
recognize that permission needs to be obtained under relevant provisions to manufacture
the drug and may not additionally examine the necessity of permission, unless special
conditions exist such as objection by a third party. However, if an examiner is unsure of the
necessity of permission, he/she can conduct an additional examination (request for opinion
from relevant organizations, etc.) and where permission is deemed not to be required based
on the results of the examination, an examiner shall notify the ground for rejection.
② Determination on Identicalness of Compositions between Patented Matter and Permitted
Matter
A patented invention subject to an application to register an extension of the term of a
patent right needs to be approved under the Pharmaceutical Affairs Act, etc. for the working
of the patented invention. Therefore, the permitted matter shall have the same composition
as the matter disclosed in claims in an application to register an extension of the term of a
patent right (where an invention disclosed in claims is an invention of substance) or as the
matter manufactured by the method described in claims (where an invention disclosed in
claims is a use invention).
Whether the matter disclosed in claims (or an article manufactured by the disclosed use, etc.)
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has the same composition as the permitted matter shall be determined in the following
matter. Where the compositions of both matters are not identical, an examiner shall deem
that it falls under the ground for rejection under Article 91(1) of the Patent Act and notify
the applicant of the ground for rejection.
(ⅰ) Where the matter disclosed in claims is a substance invention, an examiner shall
compare the concerned matter and the permitted matter.
(ⅱ) Where the matter disclosed is a use invention, an examiner shall compare the matter
manufactured by the disclosed use with the permitted matter. The manufacturing processes
need not be compared.
③ Determination on Identicalness of Use between Patented Matter(Use Invention) and
Permitted Matter
A patented invention subject to an application to register an extension of the term of a
patent right needs to be approved under the Pharmaceutical Affairs Act for the working of
the patented invention. The working of a patented invention refers to the working of use of
a patented invention.
Therefore, where a patented matter is a use invention and the use of the permitted matter is
not the same with the use of the matter disclosed in a patented invention (the substance
where an invention disclosed in claims is a substance invention or the matter manufactured
by the disclosed use if an invention disclosed in claims is a use invention), the term of a
patent right shall not be extended even if the compositions of the permitted matter and the
patented matter are identical. However, when the use of the patented matter includes the
use of the permitted matter, it shall be deemed that the uses of both matters are the same.
(Note) A patent right regarding to a manufacturing device for a final product and a catalyst
used for manufacturing an intermediate and final product shall not be subject to extension
of the patent term.
Acts with the purpose of securing safety, such as the Pharmaceutical Affairs Act, govern the
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manufacture and sale of a final product, not the manufacture and sale of an intermediate
produced in the manufacturing process. Therefore, the working of an intermediate, etc. does
not need to be approved. Therefore, where an application to register an extension of the
term of a patent right of an intermediate or a catalyst and manufacturing device used for
manufacturing a final product was filed on the basis of approval of a final product, an
examiner shall notify an applicant of the ground for rejection under Article 91(1)(1) of the
Patent Act.
(2) Where the patentee, or a person who has an exclusive or non-exclusive license under the
patent right has not obtained permission, etc. under Article 89(1)
Even when only some of multiple patentees or persons who have jointly received permission,
etc. obtain an exclusive or non-exclusive license under the patent right, it does not fall
under grounds for rejection under Article 91(2) of the Patent Act since the it is deemed that
the patentee, or a person who has an exclusive or non-exclusive license under the patent
right has obtained permission, etc..
However, where the patentee or a person who has an exclusive or non-exclusive license
under the patent right who was not registered at the time of filing an application to register
an extension of the term of a patent right has obtained permission, etc., it shall be deemed
that it falls under grounds for rejection under Article 91(2) of the Patent Act.
(3) Where the term for which an extension is applied exceeds the period during which the
patented invention could not have been worked
The term for which an extension is applied shall not exceed the period during which the
patented invention could not have been worked. However, the term does not need to match
the period. In other words, where the term for which an extension is applied has not
elapsed even if the term has been incorrectly calculated, an examiner shall acknowledge the
term for which an extension is applied, rather than notifying an applicant of the ground for
rejection.
Calculation of the term for which an extension is applied shall be conducted based on
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calendar.
(Note) Where the date on which permission has been granted under Article 89(1) of the
Patent Act is before the date of registration for establishment of a patent right, it falls under
grounds for rejection under Article 91(3) of the Patent Act since the patented invention
could not be worked in the period.
(4) Where the applicant for registration of extension is not the patentee
An applicant who files an application to register an extension of the term of a patent right
shall be the applicant at the time of filing an application of registration for extension.
Therefore, even a person who has an exclusive or non-exclusive license under the patent
right cannot become an applicant for registration of extension.
Where irregularities exist such as a person not eligible for filing an application to register an
extension of the term of a patent right has filed an application for registration of extension,
an examiner shall notify an applicant of grounds for rejection, rather than making an
amendment request or notification for grounds for returning the application.
(5) Where the applicant for registration of extension is made in violation of Article 90(3)
Where a patent right is jointly owned, an application to register an extension of the term of
the concerned patent right shall be filed by all the co-owners of the patent right. Where
only some of the patent right holders files an application for registration of extension, it
shall fall under grounds for rejection under Article 91(1)(5) of the Patent Act.
6.4.3 Notification of Ground for Rejection
Where an examiner intends to reject an application to register an extension of the term of a
patent right by permission, etc. since the application under Article 63 of the Patent Act
which applies mutatis mutandis to Article 93 of the same act falls under the paragraphs of
Article 91 of the Patent Act, he/she shall notify an applicant of the ground for rejection and
give the opportunity to submit a written opinion within a designated period.
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Where an examiner decides to notify an applicant of the ground for rejection, the examiner
shall indicate relevant provisions or grounds for rejection precisely and concisely so that the
applicant clearly understands the ground for which his/her application is rejected. Contents
for notification of grounds for rejection in PART V. <Examination Procedure> shall be
referred to.
At the time of delivering a ground for rejection, an examiner shall notify an applicant that a
written opinion shall be submitted within two months. The period for submission of a
written opinion designated by an examiner can be extended. Extension of the period for
opinion submission can be allowed for one additional month each time and up to three
times.
6.4.4 Treatment of Opinion and Amendment
Where an examiner notifies an applicant of the ground for rejection for an application to
register an extension of the term of a patent right by permission, etc., the applicant can
submit a written opinion or amendment.
A written opinion shall be submitted within the period designated in a notification for
submission of a written opinion. An amendment can be presented before delivering a copy
of decision of registration of extension. However, after the notification of grounds for
rejection made by an examiner, an applicant can submit an amendment only within the
period for submission of opinion according to the notification of the ground for rejection
above.
(1) Where an opinion is submitted, an examiner shall determine whether the ground for
rejection really exists while considering the applicant‟s claim described in the written opinion.
(Note) Even when an opinion has been submitted after the period for submission of opinion
has elapsed or before the ground for rejection is notified, an examiner shall take the opinion
into consideration on examination, rather than returning the opinion.
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(2) Where an amendment is submitted, an examiner shall re-examine the concerned
application while reflecting the amended matters described in the amendment, as long as
the amendment is not recognized to be illegitimate.
Matters eligible for amendment in an application for registration of extension under Article
90(6) of the Patent Act include ① an indication of claims for registration of extension, ②
the period for extension request, ③ the content of permission, etc. under Article 89 of the
Patent Act, ④ the ground for extension specified in Ordinance of the Ministry of Knowledge
Economy. Therefore, amendment cannot be accepted except for amending clerical errors
such as amendment of changing the applicant for registration of extension and amendment
of changing the patent number of the patent right eligible for registration of extension.
Where an amendment is submitted, an examiner shall determine whether the subject for
amendment is legitimate. When the subject not eligible for amendment is found to have
been amended, the examiner shall deliver a warning notice for inadmissible amendment to
an applicant
And give him/her an explanation to explain. A warning notice for inadmissible amendment
can be replaced by writing the notice in a notification for submission of opinion when the
examiner intends to notify the ground for rejection again based on the warning notice for
inadmissible amendment indicating the ground for which the amendment cannot be
acknowledged.
Where an amendment cannot be acknowledged despite the explanation given by an
applicant, an examiner shall deliver a notification for inadmissible amendment and examine
the pre-amendment application again. A notification for inadmissible amendment can be
replaced by writing the notification in a notice for refusal when the examiner intends to
reject the application based on a notification for inadmissible amendment indicating the
ground for which the amendment cannot be acknowledged.
(Note 1) Where a procedure for an application for registration of extension is terminated
based on general principles regarding the procedure for filing a patent application, the
amendment cannot be acknowledged. Therefore, where an application for registration of
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extension has been invalidated, withdrawn, abandoned or returned or where the patent right
which forms the basis for an application for registration of extension has been invalidated or
abandoned, a written amendment cannot be submitted.
(Note 2) Under the provisions in Article 90(3) of the Patent Act, a patent right holder refers
to the one at the time of filing an application for registration for extension. Therefore, if a
person other than a patent right holder files an application to register an extension of the
term of a patent right of a third party and makes an amendment of changing the applicant
name for registration of extension in the name of the patent right holder, such amendment
shall not be acknowledged.
Moreover, in case a patent right is jointly owned, where, to address grounds for rejection
raised when filing an application for registration of extension, some of the co-owners make
an amendment of adding an applicant who was not initially listed in the application for
registration of extension, or where they make an amendment of changing the names of the
registered patent right holders to match the patent right holders with the applicants for
registration of extension, such amendment shall not be recognized.
Meanwhile, amendment of correcting the indication of an applicant or changing the patent
applicant to a general successor in the presence of general succession of a patent right shall
not be acknowledged.
(Note 3) A person who has initiated a patent-related procedure can amend the procedure as
long as it is still pending before the Korean Intellectual Property Office. However, under
Article 90(6) of the Patent Act, a question is raised whether a wrongly-indicated patent
number can be amended since the patent number is not entitled to amendment among the
contents of an application to register an extension of the term of a patent right.
Article 90 (6) of the Patent Act dictates that the contents claimed at the time of filing an
application for registration of extension can be changed, but the change of a patent number
is not allowed since it might alter the subject for registration of extension of the term of a
patent right. Therefore, no amendment is allowed except for amendment of correcting the
wrongly-indicated patent number in an application for registration of extension (where the
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indication of the patent number is recognized as a clerical error with the application number,
application date, patent number, patent date, title of invention, etc. all considered).
(3) When amendment is recognized to be legitimate, an examiner shall examine the
amended application while deeming that the application has been submitted at the time of
filing the initial application.
6.4.5 Determination of Registration of Extension
Whether the term of a patent right in an application for registration of extension is extended
shall be determined and be indicated in writing under Article 67 of the Patent Act which
Article 93 of the same act applies mutatis mutandis.
(1) Determination of Registration/Rejection of Extension
Where an examiner intends to make a decision on whether to register an extension for an
application to register an extension of the term of a patent right, he/she shall report such
intention to the general of an examination division (team leader) and make and sign a
written decision on registration of extension or refusal on registration of extension with the
below-mentioned indications. However, items in ③, ④ need not to be written in a written
decision on refusal of registration of extension.
① Number of application for registration of extension
② Patent number
③ Period for extension
④ Content of permission or registration under Article 89(1) of the Patent Act: Claims for
registration of extension, content of permission or registration, ground for extension, etc.
⑤ Name and address of applicant for registration of extension (in case of a legal entity, title
and address of its business)
⑥ In presence of an agent of applicant for registration of extension, name and address of
the agent or the address of the agent‟s business (where an agent is a patent firm, title and
address of the firm and name of the designated patent attorney)
⑦ Order of decision and ground for the decision
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⑧ Date of decision
(2) Transmittal of Decision on registration of extension
Where a decision on registration of extension is made for an application to register an
extension of the term of a patent right, the Commissioner of the Korean Intellectual Property
Office shall deliver a copy of such decision to an applicant. Detailed information on
transmittal of a written decision shall be referred to the provisions regarding the delivery of
a copy of a decision to grant a patent.
7. Other Examination Procedures
7.1 Publication in patent gazette, etc.
Where an examiner has made a decision to register an extension of the term of a patent
right, he/she shall ask the registration division to include the following items for registration
in a patent gazette: ① name and address of a patent right holder (in case of a legal entity,
its title and business address), ② patent number, ③ date of registration of extension, ④
period for extension and ⑤ content of permission, etc. under Article 89 of the Patent Act
(indications such as claims for registration of extension, contents of permission or
registration, ground for extension, etc.)
7.2 Trial on decision to reject registration
Where a person who has received a written decision on rejection of registration of extension
since his/her application to register an extension of the term of a patent right by permission,
etc. falls under the paragraphs of Article 91 of the Patent Act intends to appeal against the
decision of rejection, the applicant can make a request for appeal against a decision on
rejection of registration of extension within thirty days from the date of receipt of a copy of
the decision on rejection of registration of extension.
7.3 Invalidation trial on registration of extension of term of patent right
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Where the registration of an extension of the term of a patent right with respect to an
application to register an extension of the term of a patent right by permission, etc. falls
under the paragraphs of Article 134(1) of the Patent Act, an applicant can request a trial to
invalidate the registration of an extension of the term of a patent right.
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Chapter 2. Extension of Term of Patent Right by Delay in
Registration
1. Relevant Provisions
Article 92(2) of the Patent Act (Extension of Term of Patent right by Delay in
Registration) ① Notwithstanding Article 88(1) of the Patent Act, where a patent right is
registered later than four years from the date of filing a patent application or than three
years from the date of making a request for examination, whichever expires later, the term
of the patent shall be extended by the delayed length of time.
② In applying subparagraph (1), the period delayed due to an applicant shall be exempted
from extension of the term of a patent right under subparagraph (1). Provided, That if the
length of the period elapsed due to an applicant overlaps, the period exempted from
extension of the term of a patent shall not exceed the actually-periods of delay of time due
to the applicant.
③ Items regarding „the period delayed due to an applicant‟ under subparagraph(2) shall be
specified in Presidential Decree.
④ Notwithstanding Articles 34, 35, 52(2), 53(2), 199(1) and 212(4) of the Patent Act, in
calculating four years from the date of filing a patent application under subparagraph(1), the
following corresponding date shall be deemed to be the date of filing a patent application:
1. In case of a patent application filed by a lawful right holder under Article 34 or 35, the
date when the lawful right holder filed the application
2. In case of a divisional application under Article 52, the date of filing the divisional
application
3. In case of a converted application under Article 53, the date of filing the converted
application
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4. In case of an international application deemed to be a patent application under Article
199(1), the date of submission
5. In case of an international application deemed to be a patent application under Article
214, the date when the applicant of the international application applied for the decision
under Article 214(1)
6. In case of a patent application not falling under any of subparagraphs (1)-(5), the actual
date of filing the application
Article 7(2) of the Enforcement Decree of the Patent Act (Period delayed due to
Applicant) ① „The period delayed due to an applicant‟ specified in Article 92(2)(ⅲ) shall
fall under one of the following subparagraphs:
1. The period corresponding one of the below-mentioned periods in a patent-related period
pending before the Korean Intellectual Property Office or the Intellectual Property Tribunal
a. Where the Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal orders, under Article 10 of the Patent Act, an applicant to have
a patent-related procedure initiated by an agent or have an agent replaced, the period
between the date of order and the date of appointment/replacement of the agent
b. Where the period for requesting a trial or initiating a patent-related procedure is
extended at the applicant‟s request under Article 15(1) or (2) of the Patent Act, the extended
length of the period (After extension of the period, where the period for initiating a patent-
related procedure is shortened at the request of an applicant under Article 15(2) of the
Patent Act, the shortened length of the period shall be exempt.)
c. Where the date for initiating a patent-related procedure was designated under Article 15(3)
of the Patent Act and then it has been changed to the date later than the designated date
at the request of the applicant, the period between the following date of the initially
designated date and the changed date
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d. Where a patent-related procedure is subsequently amended after any cause not
attributable to the person ceased to exist under Article 17 of the Patent Act, the period
between the date when the cause ceased to exist and the date for amending the procedure
e. Where a patent-related procedure is interrupted or suspended under Articles 20, 23(2),
78(1) or 164(1) of the Patent Act, the period for interruption or suspension of the procedure
f. Where the Commissioner of the Korean Intellectual Property Office orders an applicant to
report the results of the consultation within the designated period under Article 36(6) of the
Patent Act, the concerned period (in case the designated period is shortened at the request
of an applicant under Article 15(2), the shortened period shall be exempt.)
g. Where a specification is amended to include claims within the designated period under
Article 42(2) of the Patent Act according to the newly inserted part of Article 42(5), the
period between the date when the intention of a request for examination was received and
the date for amendment of the specification
h. Where the Commissioner of the Korean Intellectual Property Office or the President of the
Intellectual Property Tribunal orders amendment within the designated period under Articles
46, 141(1), or 203(2) of the Patent Act, the concerned period (in case the designated period
is shortened at the request of an applicant under Article 15(2), the shortened period shall be
exempt.)
i. As for a prior application which forms the foundation for a priority claim under Article
55(1) of the Patent Act, where the priority claim of the prior application is withdrawn or is
deemed to be withdrawn under Article 56 of the Patent Act, the period between the date of
claiming the priority on the prior application and the date when the priority claim is
withdrawn or is deemed to be withdrawn
j. As for accelerated examination under Article 61 of the Patent Act, where making a
decision on accelerated examination under Article 10 is delayed due to an application, the
periods of delay
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k. Where an examiner (where Article 63 applies mutatis mutandis according to Article 170, it
shall refer to a trial examiner under Article 143. It shall apply in this chapter.) notifies an
applicant of the ground for rejection and gives him/her an opportunity to submit a written
opinion within the designated period under the main sentences of Article 63(1) of the Patent
Act [Provided, except for where an examiner notifies the ground for rejection and then
makes a decision to grant a patent under Article 66 of the Patent Act without amending the
specification or drawings to the notification of the ground for rejection (including where a
decision to grant a patent is made under Article 66 applied mutatis mutandis under Article
170 of the Patent Act)], the concerned period (where the period for submission of a written
opinion is shortened under Article 15(2) of the Patent Act at the request of an application,
the shortened period shall be exempt.)
l. Where an applicant pays patent fees under Article 79(1) after the date of receipt of a copy
of a decision to grant a patent under Article 67(2) of the Patent Act (including the cases the
additional payment of the patent fee under Article 81(1); where the remainder payment
under Article 81(2)(ⅱ); where the payment of patent fee or the remainder payment under
Article 81(3)(ⅰ) of the Patent Act) or where an applicant is exempt from patent fee payment
after he/she has submitted the documents designated by Ordinance of the Ministry of
Knowledge Economy, the period between the date of receipt of the copy of the decision to
grant a patent and the date of registration of the patent right under Article 87 of the Patent
Act
m. Where a request for re-examination is made under Article 67(2)(ⅰ) of the Patent Act, the
period between the date of receipt of a copy of the decision to reject a patent right under
Article 67(2) and the date of request for re-examination
n. Where a request for exclusion under Article 149 of the Patent Act or a request for
challenge under Article 150 failed to be accepted according to a decision under Article
152(1), the period in which the trial procedure is interrupted under the main sentence of
Article 153 of the Patent Act
o. Where a request for taking or preserving evidence by an applicant under Article 157 of
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the Patent Act is recognized not to be necessary, the period between the date of the
request and the date when taking or preserving evidence is recognized not to be needed
p. Where an examiner notifies an applicant of the closing of a trial under Article 162(4) of
the Patent Act and then resumes the trial at the request of the applicant, the period
between the date of resumption of the trial and the date of re-notification of the closing of
the trial under Article 162(3) of the Patent Act
q. Where a request for retrial under Article 178 of the Patent Act is made after an applicant
realized the ground for retrial, the period between the date when the applicant realized the
ground for retrial and the date of request for retrial
r. Where a presiding administrative patent judge has designated an additional period under
Article 186(5) of the Patent Act, the concerned period
s. Where transmittal or service by public announcement of documents under Article 218 or
Article 219 of the Patent Act is delayed because of an applicant (where a place for
transmittal has been changed under Article 18(10) and then the transmittal of documents is
delayed since the applicant failed to notify the intention of the change of the place for
transmittal to the Commissioner of the Korean Intellectual Property Office), the period of the
delayed transmittal
2. In a procedure for litigation regarding a trial decision or ruling under Article 186(1) or (8)
of the Patent Act, any of the following periods:
a. Where a litigation procedure is interrupted under Article 78(2) or Article 164(2) of the
Patent Act, the period during which the procedure is interrupted
b. Where a request for exclusion or challenge of a judge under the provisions of Articles 41-
43 of the Civil Procedure Act (a technical examiner to whom Article 188(2)(ⅰ) of the Patent
Act applies mutatis mutandis and a junior administrative officer to whom Article 50 of the
Civil Procedure Act applies mutatis mutandis shall be included) is not accepted due to the
decision under Article 45 or Article 46 of the Civil Procedure Act, the period from the date
of request for exclusion or challenge to the date of decision to reject the request or the
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period during which the litigation procedure is suspended under the main sentences of
Article 48 of the Civil Procedure Act
c. Where a court or a presiding judge orders amendment within a designated period under
Article 59 or Article 254(1) of the Civil Procedure Act, the concerned period
d. Where a special representative is appointed under Article 62 of the Civil Procedure Act,
the period from the date of request for appointment to the date of designation of the
special representative
e. Where the re-opening of a pleading under Article 142 of the Civil Procedure Act is caused
by an applicant, the period from the date when the re-opening of the pleading was ordered
to the date when the pleading is closed again
f. Where a court prohibits a party of a representative from speaking and sets a new date for
continuing the pleadings under Article 144(1) of the Civil Procedure Act, the period from the
date of prohibition of the pleading to a new date for making a pleading
g. Where a court orders the appointment of a lawyer under Article 144(2) of the Civil
Procedure Act, the period between the date of order of the appointment and the date when
the lawyer is designated
h. Where the date designated by a presiding judge is altered to another date later than the
initially designated date due to obvious reasons such as a request made by an applicant
under Article 165(1) of the Civil Procedure Act, the period between the following date of the
designated date and the altered date
i. Where a court extends a statutory period or a period fixed by the court or designates an
additional period in regard to the invariable period at the request of an applicant under
Article 17 of the Civil Procedure Act, the extended period or the additional period
j. Where procedural acts are subsequently completed after a cause not attributable to an
applicant ceased to exist under Article 173 of the Civil Procedure Act, the period between
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the date when the cause was extinguished and the date when the procedural acts are
subsequently completed
k. Where transmittal or service by public announcement of documents under Article 178,
Articles 186-188 or Article 194 of the Civil Procedure Act is delayed due to an applicant, the
periods of delay of the transmittal of the documents
l. Where a litigation procedure is interrupted or suspended under Articles 233-237, Article
239, Article 240 or Article 246 of the Civil Procedure Act, the period during which the
litigation procedure is interrupted or suspended
m. Where an applicant to a lawsuit has failed to appear on the date for pleading, or failed
to plead even if he/she appeared and then the presiding judge fixes another date for
pleading under Article 268(1) of the Civil Procedure Act, the period between the following
date of the initial pleading and the newly-set date for pleading
n. In applying for an examination of evidence under Article 289 of the Civil Procedure Act,
where the evidence is recognized to be unnecessary, the period between the date for an
examination of the evidence and the date when the evidence is deemed unnecessary
o. Where an applicant filed a petition for a retrial after becoming aware of the ground for
retrial under Article 451 of the Civil Procedure Act, the period between the date when the
applicant has become aware of the ground for retrial and the date of filing a petition for
retrial
3. In a procedure for administrative appeals or litigations initiated due to objection against a
disposition under Article 224(2)(ⅱ) of the Patent Act, any of the following periods:
a. Where a request for exclusion or challenge under Article 10 of the Administrative Appeals
Act is rejected or dismissed due to the decision under Article 12 of the Enforcement Decree
of the Administrative Appeals Act, the period during which the concerned appeals procedure
has been suspended under Article 13 of the same decree
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b. Where an appeal is brought after force majeure, such as natural disasters, war, emergency
or others, no longer exists under Article 27(2) of the Administrative Appeals Act, the period
between the date when such causes ceased to exist and the date on which the appeal is
brought
c. Where the Central Administrative Appeals Commission (hereinafter, referred to as
“commission”) orders a correction within a designated period under the main sentence
under Article 32(1) of the Administrative Appeals Act, the concerned period
d. Where the commission has designated the deadline for a written supplement under
Article 33(2) of the Administrative Appeals Act, the period between the date of setting the
deadline and the date of submission of the written supplement
e. Where a date for deliberation fixed by the commission is changed to the date later than
the one designated upon request by an applicant under Article 38 of the Administrative
Appeals Act, the period between the following date of the initially-fixed date to the changed
date for deliberation
f. Where the provisions regarding service of documents under the Civil Procedure Act apply
mutatis mutandis according to Article 57 of the Administrative Appeals Act, the period
corresponding to the above-mentioned subparagraph (k) of paragraph 2
g. Where provisions of the Civil Procedure Act apply mutatis mutandis according to Article
8(2) of the Administrative Litigation Act, the period corresponding to any of the
subparagraphs under paragraph 2 above
4. Beside the periods mentioned above, the periods of delay attributable to an applicant in a
patent-related procedure pending before the Korean Intellectual Property Office or the
Intellectual Property Tribunal, a litigation procedure against a trial decision under Article
186(1) or (8) or a procedure of administrative trial or litigation against a disposition under
Article 224-2(2) of the Patent Act and designated under Ordinance of the Ministry of
Knowledge Economy
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② Notwithstanding paragraph 1, where there is any ground objectively proving that the
delay in registration of a patent right under Article 92-2(1) of the Patent Act is not
attributable to an applicant, the corresponding period shall be exempt from the periods
under paragraph 1.
Article 54(5) of the Enforcement Rules of the Patent Act (Periods of delay Due to
Applicant) “Period designated by Ordinance of the Ministry of Knowledge Economy” under
Article 7-2(1)(ⅳ) of the Enforcement decree of the Patent Act shall refer to one of the
following periods:
1. Where the Commissioner of the Korean Intellectual Property Office, the President of the
Intellectual Property Tribunal or a presiding administrative patent judge orders submission of
electronic documents in writing within a designated period, the designated period (where
the period is shortened at the request of an applicant under Article 15(2) of the Patent Act,
the shortened length of time shall be exempt)
2. Where the Commissioner of the Korean Intellectual Property Office, the President of the
Intellectual Property Tribunal or a presiding administrative patent judge gives an applicant
an opportunity to explain within a designated period when ordering the submission of
evidential documents under Article 8(4) of the Patent Act, the designated period (where the
period is shortened at the request of an applicant under Article 15(2) of the Patent Act, the
shortened length of time shall be exempt)
3. Where documents containing the intention of returning application documents deemed
illegitimate by the Commissioner of the Korean Intellectual Property Office or the President
of the Intellectual Property Tribunal, ground for return and period for explanation are
delivered under Article 11(2) of the Patent Act, the period for explanation (where the period
is shortened at the request of an applicant under Article 15(2) of the Patent Act, the
shortened length of time shall be exempt)
4. Where an examiner defers the decision to grant a patent at the request of an applicant
under Article 40(2)(ⅰ) of the Patent Act, the period between the date when the applicant
submitted a request for deferral of the decision and the date when twelve months have
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elapsed from the date of filing a patent application
5. Where an examiner withholds an examination on a patent application at the request of an
applicant under Article 40(3)(ⅲ) of the Patent Act, the period between the date when the
applicant made a request for withholding examination and the desired expiration date of
withholding the examination (where the desired expiration date of withholding the
examination is changed, the changed date shall become the new desired expiration date).
However, where an applicant withdraws the request for withholding an examination, the
period between the date of request for withholding the examination and the date when the
request for withholding the examination is withdrawn
6. Where a court official of Grade V recommends amendment or requests the submission of
a correspondence which meets the formality requirements in order to supplement litigation
documents according to Article 5(3) or Article 65(3) of the Civil Procedure Rules, the period
between the date when the recommendation of amendment or the request for submission
of a correspondence was made and the date when the applicant amended the litigation
documents or submitted the correspondence
7. Besides the above-mentioned periods, in a patent-related procedure pending before the
Korean Intellectual Property Office or the Intellectual Property Tribunal, a litigation procedure
against a ruling or a trial decision under Article 186(1) or (8) of the Patent Act or a
procedure regarding an administrative trial or litigation regarding any objection against a
disposition, the delayed length of period attributable to an applicant due to any request,
amendment or submission made by the applicant.
2. Purport
A patent right is created upon registration for establishment of the right and lasts for 20
years from the date of filing a patent application once the patent right is registered.
Therefore, where a patent right is registered later than expected due to delayed examination,
the term of a patent right is shortened by the delayed length of time, which is unfavorable
to an applicant. Considering such fact, the free trade agreement between the Republic of
Korea and the United States of America (hereinafter referred to as the KORUS FTA)
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introduced a new system that where a patent right is registered later than a critical date
(between the date four years after the filing date of a patent application and the date three
years from the date of requesting examination, whichever is later, hereinafter referred to as
„the critical date for extension‟), the patent term can be extended for the length of the delay.
However, out of the period where the registration of a patent right is delayed, any delay
attributable to an applicant not because of the delay in examination at the Korean
Intellectual Property Office needs not be redeemed. Therefore, the periods of delay
attributable to an applicant shall be exempt from calculating the period for extension.
The newly-introduced system for extending the term of a patent right due to a delay in
registration of a patent right shall apply only to patent applications filed after the KORUS
FTA takes effect.
3. Period Allowed for Extension
3.1 Inventions eligible for Patent Term Extension
To be eligible for extension of the patent term due to a delay in registration of a patent
right, the date of registration of establishment of a patent right shall be later than a critical
date for extension. Also, since the periods of delay attributable to an applicant shall be
exempt from calculating the period for extension, the actual extension is for „the length of
the period between the critical date for extension and the date of registration of a patent
right with the number of the delayed attributable to an applicant taken away‟. Only when
the length of a period exceeds zero after calculation, it shall become the subject for
extension of a patent term.
The filing date of a divisional application, a converted application and an application filed by
a lawful right holder shall be retroactive to the filing date of the original application or the
date of filing the application by an unentitled person and an international application shall
have a filing date of an international application. However, when it comes to the extension
of the term of a patent right due to delay in registration, in determining „the date four years
after the date of filing a patent application‟, the actual filing date of a divisional application,
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a converted application or an application by a lawful right holder or the date for submission
of documents under Article 203(1) of the Patent Act shall be each deemed „the filing date of
a patent application‟. As for a divisional application or an international patent application,
the period between the filing date of the original application and the actual filing date of
the divisional application or between the filing date of an international application and the
date when the application enters into the national phase is spent by an applicant‟s choice.
Therefore, the periods of delay attributable to an applicant is exempt from the calculation
for extension of the term of a patent right and the date four years after the date of filing a
patent application‟ shall be calculated based on the actual filing date.
3.2 Implication of ‘Periods of delay Attributable to Applicant’
Delays attributable to an applicant mean that procedural delays are caused by an applicant.
It does not necessarily refer to the case that an applicant is responsible for all the delays.
Even when the date of registration of establishment of a patent right is later than the critical
date for extension, whether the concerned inventions are eligible for extension of patent
term and the length of a period allowed for extension are determined depending on periods
of delay attributable to an applicant. Therefore, it is crucial to precisely calculate the period
of delay attributable to an applicant in order to extend of the term of a patent right. Article
7-2 of the Enforcement Decree of the Patent Act specifies the types of procedural delays
attributable to an applicant and periods of delays in a patent-related procedure (Article 1(1)),
a litigation procedure regarding a court ruling, etc.(Article 1(2)), a procedure of an
administrative trial or litigation(Article 1(3)) in a total of 41 subparagraphs. Also, the
Enforcement Rules of the Patent Act which Article 1(4) of the Enforcement Decree of the
Patent Act mandates provides a total of six subparagraphs for the types of procedural delays
attributable to an applicant and periods of delays. Besides, if a procedural delay is
attributable to an applicant in a patent-related procedure, a litigation procedure regarding a
court ruling or a procedure for an administrative trial or litigation, it may constitute „periods
of delay attributable to an applicant‟ prescribed in Article 92-2(2) and (3) of the Patent Act.
Meanwhile, even though a period falls under the periods of delay specified under Article 7-
2(1) of the Enforcement Decree of the Patent Act, if such delay is objectively recognized to
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attributable to an applicant considering the specific condition of the concerned case, the
period shall not be deemed to fall under „periods of delay attributable to an applicant‟
indicated in Article 92-2(2) and (3) of the Patent Act.
3.3 Types of Periods of Delay Attributable to Applicant
The followings are some of the types of „periods of delay attributable to an applicant‟
specified under Article 7-2(1)(ⅰ) of the Enforcement Decree of the Patent Act regarding a
patent-related procedure pending before the Korean Intellectual Property Office or the
Intellectual Property Tribunal.
(1) Where an applicant extends the period for requesting a trial or the designated period for
initiating a patent-related period:
Since a procedural delay is caused by an applicant‟s extending the period for an appeal
against a decision of rejection or the period designated by the Commissioner of the Korean
Intellectual Property Office or an examiner, the length of the extended period shall be
deemed the period of delay attributable to an applicant. Where an applicant extends the
period and then shortens it, the length of the shortened period shall not be deemed „the
period of delay attributable to an applicant‟.
(2) Where a patent-related procedure such as examination, trial, etc., is interrupted or
suspended due to conditions beyond an applicant‟s control:
For example, where an applicant dies while his/her application is still pending, the period
between the date when the procedure is interrupted due to death of the applicant and the
date when the successor resumes the interrupted procedure shall be deemed „the period of
delay attributable to an applicant‟.
(3) Where the result of consultation is required to be reported under Article 36(6) of the
Patent Act:
As for more than two patent applications filed on the same invention at the same date,
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where the Commissioner of the Korean Intellectual Property Office orders an applicant to
report the result of consultation within a designated period, the designated period shall
constitute „the period of delay attributable to an applicant‟. Where the designated period is
shortened at the request of an applicant, the shortened length of the period shall not be
deemed „the period of delay attributable to an applicant‟.
(4) Where the Commissioner of the Korean Intellectual Property Office orders amendment
on irregularities in formalities under Article 46 of the Patent Act or amendment on
documents of Article 203(1) of the Patent Act according to Article 203(2) of the same act; or
a presiding judge orders amendment on irregularities in a request for trial or formalities of a
trial-related procedure:
Such amendments are requested because an applicant, etc. submitted documents which do
not observe formalities or failed to pay the fees prescribed under the act. Therefore, the
period which the Commissioner or the President designated while ordering amendments
shall be deemed „the period attributable to an applicant‟. However, where procedures for
amendment orders under Article 46 or Article 203(2) of the Patent Act and subsequent
procedures are completed before filing a request for examination and the registration of a
patent right is not recognized to be delayed due to the above-mentioned procedures, the
designated period for amendment shall not be deemed „the period attributable to an
applicant‟.
Meanwhile, where an amendment order is mistakenly made and the Commissioner of the
Korean Intellectual Property Office or the presiding patent judge recognizes after
reconsideration of the application that no irregularities are present in formalities and an
applicant, etc. needs not make amendment, the period which the Commissioner or the
presiding patent judge designated while ordering amendments
(5) Where an application was a basis of domestic priority claim and then the priority claim is
withdrawn or deemed to be withdrawn:
Where an application is withheld from examination on the ground that it is a basis of
domestic priority claim under Article 55(1) of the Patent Act and then the examination on
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the application is no longer withheld since the priority claim is withdrawn or the priority
claim is considered to be withdrawn under Article 56(3) of the Patent Act, the period during
which examination on the application was withheld shall be deemed „the period of delay
attributable to an applicant‟.
(6) Where the determination on whether an application is subject to accelerated examination
is made late because of an applicant:
Where a person in charge of granting an application accelerated examination status orders
amendment on a written request for accelerated examination or attached documents within
a designated period, the designated period shall not be deemed „the period of delay
attributable to an applicant‟.
(7) Where an examiner notifies a ground of rejection and gives an applicant an opportunity
to submit a written opinion under Article 63 of the Patent Act:
Where an examiner notifies an applicant of a ground of rejection since the applicant failed
to fulfill the requirements such as he/she filed an unpatentable invention or any deficiency is
found in the specification, the period allowed for submission of a written opinion shall be
deemed to be „the period of delay attributable to an applicant‟. However, after an examiner
notified a ground for rejection, where the examiner recognized that the ground for rejection
is addressed when the applicant submitted a written opinion or explanation without taking
any other measure to address the rejection ground, such as amendment on a specification
or drawing(s), withdrawal/abandonment of another application or transfer of an application,
and made a decision to grant a patent, the period for submission of the written opinion
shall not constitute „the period of delay attributable to an applicant‟.
Where a presiding patent judge notified a ground of rejection and give an applicant an
opportunity to submit a written opinion with Article 63 of the Patent Act applied mutatis
mutandis according to Article 170 of the same act, the aforementioned shall apply, too.
(8) Where the payment of a patent fee is made after a certified copy of a decision to grant a
patent is delivered:
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The period between the date of delivery of a certified copy of a decision to grant a patent
and the date when the patent right is registered after the payment of a patent fee (including
the case where an additional payment of a patent fee is made after the period for payment
has elapsed; the payment of the remaining patent fee is made; or the payment of a patent
fee or the remaining the patent fee is made under Article 81(3) of the Patent Act) shall
constitute „the period of delay attributable to an applicant‟.
Where an applicant is exempt from the payment of a patent fee under Article 83 of the
Patent Act, the period between the date of delivery of a certified copy of a decision to grant
a patent and the date when the applicant is exempt from the payment of a patent fee after
submitting documents specified under Ordinance of the Ministry of Knowledge Economy
according to Article 83(3) of the Patent Act shall be deemed „the period of delay
attributable to an applicant‟.
(9) Where a request for reexamination is made:
Where an applicant amended specification or drawing(s) and made a request for
reexamination, if the previously-notified ground for rejection is addressed due to the
specification or drawing(s) amended while requesting reexamination and a decision to grant
a patent is made in a procedure of reexamination or trial, etc., it may be deemed that the
applicant failed to address the ground for rejection through amendment and ended up
requesting reexamination. Therefore, the period between the date of delivery of a certified
copy of a decision to grant a patent and the date when a request for reexamination is made
shall be deemed „the period of delay attributable to an applicant‟.
(10) Where the delivery of documents is delayed because of an applicant:
Where the transmittal of documents is delayed since the address or business address of an
applicant or a legal representative to whom documents are to be delivered is unclear, the
length of delay for transmittal of documents shall be „ the period of delay attributable to an
applicant‟. For example, where a copy of a decision to reject a patent was returned because
the applicant failed to report a change of address to the Korean Intellectual Property Office
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and the examiner identified the new address of the applicant by using the administrative
information sharing system, etc., sent the decision again and then the applicant finally
received the copy, the period between the date when the applicant would have received the
copy of decision if he/she had reported a change of address and the date when the
applicant actually received the copy shall constitute „the period of delay attributable to an
applicant‟.
(11) Where examination on a patent application is withheld at the request of an applicant:
Where examination on a patent application is withheld at the request of an applicant, the
period between the date when the applicant made the request for withholding examination
and the date when the desired period for withholding examination elapses (where the date
when the desired period for withholding examination passes, the changed date) shall be
„the period of delay attributable to an applicant‟. However, where a request for withholding
examination is withdrawn, only the period between the date of request for withholding
examination and the date when the request is withdrawn shall be deemed „the period of
delay attributable to an applicant‟.
Also, some of the types of periods of delay attributable to an applicant specified under
Article 7-2(1)(ⅱ) of the Enforcement decree of the Patent Act regarding a litigation
procedure against a decision of rejection of a court decision, a request for trial, etc. or
another litigation trial against the ruling of the litigation are the followings:
(1) Where a request for exclusion or challenge of a judge, etc. made by an applicant is not
accepted:
Where an applicant made a request for exclusion or challenge of a judge, an official of
Gradeⅴor a court clerk, but the request is not accepted, the period between the date when
the request for exclusion or challenge was made and the date when a decision of rejection
is made or the period where a litigation procedure is suspended under Article 48 of the Civil
Procedure Act due to the request for exclusion or challenge of a judge, etc. shall constitute
„the period of delay attributable to an applicant‟.
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(2) Where a court orders amendment to litigation capabilities of the party concerned or
irregularities in the right of representation, or where a presiding judge orders amendment to
irregularities in petition:
Where a court orders amendment to litigation capabilities of the party concerned or
irregularities in the right of representation, or where a presiding judge orders amendment to
irregularities in petition within a designated period, the designated period for such
amendment shall constitute „the period of delay attributable to an applicant.‟
(3) Where a presiding judge resets the date for pleading since an applicant failed to be
present on the date for pleading:
Where a presiding judge resets the date for pleading since an applicant failed to be present
on the designated date for pleading or where, even though the applicant did show up,
he/she failed to make a pleading, the period between the following date of the initially-
designated date for pleading and the newly-designated date for pleading shall be „the
period of delay attributable to an applicant‟.
(4) Where a request for evidential documents made by an applicant is not deemed
necessary:
Where an applicant made a request for unnecessary evidential documents and the court
considers that the request is not necessary, the period between the date of request for
evidential documents and the date when such evidence is recognized not to be necessary
shall constitute „the period of delay attributable to an applicant‟.
Meanwhile, the length of period delayed because the Central Administrative appeals
Commission ordered amendment to a request within a designated period or designated a
period for submission of supplementary documents in an administrative trial or litigation,
such delayed period shall be deemed „the period of delay attributable to an applicant‟.
Also, periods delayed due to a request, amendment or submission made by an applicant in
a patent-related procedure, a litigation procedure against a trial decision or ruling or an
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administrative trial or litigation shall be deemed „the period of delay attributable to an
applicant.‟
3.4 Exceptions of Periods of Delay attributable to Applicant
As looked into by each item, where periods fall under any of the periods of delay
attributable to an applicant‟ under Article 7-2(1)(ⅰ)-(ⅲ) of the Enforcement Decree of the
Patent Act and Article 54(5)(ⅰ)-(ⅶ) of the Enforcement Rules of the Patent Act, such periods
shall be deemed to correspond to periods of delay attributable to an applicant. Therefore,
they shall be exempt from the calculation of the period for extension of the term of a patent
right due to a delay in registration. However, where such delays are not caused by an
applicant after specific conditions of the concerned periods of delay are considered, the
periods of delay shall be exempt from periods of delay attributable to an applicant under
the above-mentioned articles of the Enforcement Decree and Enforcement Rules of the
Patent Act.
The cases where the period is exempt from periods of delay attributable to an applicant
under Article 7-2(ⅰ) of the Enforcement Decree of the Patent Act in accordance with Article
7-2(ⅱ) of the Enforcement Decree of the same act are as follows: ⅰ) where such delay was
occurred before the request for examination on the application, not affecting the delay in
registration of a patent right; ⅱ) where an amendment order or notification was made by
mistake of the Korean Intellectual Property Office, etc.; or ⅲ) where such delay was caused
by other reasons, such as natural disasters, not an applicant.
Examples that correspond to the caseⅰ) include where a delay in registration of a patent
right is not caused since an amendment order and the subsequent procedures under Article
46 of the Patent Act were completed before the request for examination and where the
domestic priority claim of a prior application was withdrawn, but a request for examination
on the prior application has not been made yet. An example under the case ⅱ) is where,
after an amendment order or a notification of the submission of a written opinion,
irregularities in formalities or grounds for rejection are recognized to have been addressed
even without amendments to formalities or a specification, etc. Where a procedure is
interrupted because of natural disasters shall fall under the example of the case (ⅲ).
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4. Application for Registration of Extension of Patent Term due to Delay in
Registration
4.1 Relevant Provisions
Article 92-3 of the Patent Act (Application for Registration of Extension of Patent Term due
to Delay in Registration) ① A person who intends to file an application to register an
extension of the term of a patent right under Article 92-2 of the Patent Act (in this provision
and Article 92-4 of the Patent Act, referred to as „an applicant for registration of extension‟)
shall submit an application for registration of extension of a patent term indicating the
following items to the Commissioner of the Korean Intellectual Property Office.
1. The name and address of an applicant for registration of extension (in case of a legal
entity, the title and business address of the legal entity)
2. In the presence of a legal representative of an applicant for registration of extension, the
name and address of the legal representative or the business address of the legal
representative (in case of a patent law firm, the title and address of the firm and the name
of the designated patent attorney)
3. The patent number of a patent right eligible for extension of its term
4. The period allowed for extension request
5. The ground for extension designated under Ordinance of the Ministry of Knowledge
Economy (evidential documents of such grounds shall be attached)
② An application to register an extension of the term of a patent right under paragraph (1)
shall be filed within three months from the date of registration for establishment of a patent
right.
③ Where a patent right is jointly owned, all the owner shall jointly file an application to
register an extension of the term of a patent right.
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④ An applicant for registration of extension can make an amendment to the items of (1)(ⅳ)
and (ⅴ) among the items disclosed in a written application for registration of extension
before an examiner determines whether to register an extension of the term of a patent
right. However, after a notification of the ground for rejection which applies mutatis
mutandis under Article 93 of the Patent Act is delivered, an application is allowed to make
an amendment within the period for submission of a written opinion according to the
concerned notification of the ground for rejection.
Article 54-2 of the Enforcement Rules of the Patent Act (Written Application for Registration
of Extension of Patent Term due to Delay in Registration) A person who intends to make an
application for registration of extension of the term of a patent right under Article 92(3)(ⅰ)
of the Patent Act (in this provision and Article 54-4, referred to as „an applicant for
registration of extension‟) shall submit a written application of Annexed Form 30-2 to the
Commissioner of the Korean Intellectual Property Office with the following documents
attached:
1. Ground for extension and a copy of the evidential document of the extension ground
2. Where a legal representative initiated a procedure, a copy of the evidential document of
the legal representation
Article 54-3 of the Enforcement Rules of the Patent Act (Ground for Extension of Patent
Term due to Delay in Registration) Grounds for extension designated under Ordinance of the
Ministry of Knowledge Economy according to Article 92-3(1)(ⅴ) of the Patent Act are as
follows:
1. A need to extend the term of a patent since a patent right which was filed for registration
of extension was established after four years from the date of filing a patent or the date of
request for examination, whichever expires later.
2. The period of request for extension and the explanation that the period of delay
attributable to an applicant is exempt from the period of request for extension under Article
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92-2(2) of the Patent Act and the evidential document
3. Other necessary items to prove the ground for extension
4.2 Applicant for Registration of Extension
An applicant of the application to register an extension of the term of a patent right due to
a delay in registration only refers to a patent right holder. Where a patent right is jointly
owned, all the owners of the patent right shall file an application to register an extension of
the term of a patent right.
Where a person who filed an application to register an extension of the term of a patent
right due to a delay in registration is not a patent right holder or where the owners of the
jointly-owned patent right failed to file an application to register an extension of the term of
a patent right shall constitute a ground for rejection.
4.3 Period allowed for Application
An application to register an extension of the term of a patent right due to a delay in
registration shall be filed within three months from the date of establishment of a patent
right.
Where an application to register an extension of the term of a patent right is filed before
the date of establishment of a patent right or where an application to register an extension
of the term of a patent right is filed when three months have elapsed from the date of
establishment of a patent right, an examiner shall give an opportunity of explanation under
Article 11 of the Enforcement Rules of the Patent Act and return the application for
registration of an extension of the term of a patent right to the applicant.
4.4 Application Documents
(1) A person who intends to file an application to register an extension of the term of a
patent right due to a delay in registration shall attach „grounds for extension designated
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under Ordinance of the Ministry of Knowledge Economy and a copy of the evidential
documents‟ and „ a copy of the evidential documents of the legal representation if a
procedure is initiated by a legal representative‟ to a patent application under Annexed Form
30 of the Enforcement Rules of the Patent Act and submit the documents to the
Commissioner of the Korean Intellectual Property Office.
(2) An application for registration of extension shall be written considering the followings:
① The name of a patent right holder shall be written in the box of an applicant for
registration of extension. Also, where a patent right is jointly owned, the names of all the
owners shall be written.
② In the box for „Patent Numbers‟, the patent number for which the extension of the term
of a patent right due to a delay in registration is sought shall be written.
③ In the box for „Period of Request for Registration of Extension‟, the period of delay
attributable to an applicant (the number of delayed days)(F) shall be written. The periods of
delay attributable to an applicant includes the date deemed to be the filing date of a patent
application under Article 92-2(4) of the Patent Act; the date four after the date of filing a
patent application(A); the date of request for examination; the date three years after the
date of examination request(B); the later date between the date four years after the date of
filing a patent application or the date three years after the date of request for examination
request(C); the date of establishment of a patent right after the payment of patent fees(D);
the period(number of days)(E) from „the later date(C) of (A) and (c)‟ to „the date of
establishment of a patent right‟(D) or the period corresponding to any paragraphs of Article
7-2(1) of the Enforcement Decree of the Patent Act(the period for submission of a written
opinion, etc.). Also, the period of delay after calculation („the period of delay (E)‟-„the period
of delay attributable to an applicant (F)‟) shall be written.
④ In the box „Ground for Extension‟, the ground that an application to register an extension
of the term of a patent right has to be filed because the patent right was established later
than the critical date for extension(between the date four years from the date of filing a
patent application and the date three years after the date of request for examination,
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whichever expires later) shall be written. Also, explanations that the period of delay
attributable to an applicant is exempt under Article 92-2(2) of the Patent Act shall be written
by each ground(for example, 123 days for the period of submission of written opinion) in
detail in the box for „Period for Request for Registration of Extension‟. In addition, evidential
documents of the ground for extension shall be attached.
4.5 Legal Representation Right on Application for Registration of Extension
Unlike withdrawal of an application for registration of extension, etc., an application to
register an extension of the term of a patent right due to a delay in registration is not
entitled to a specially conferred authorization. Therefore, an application to register an
extension of the term of a patent right can be delegated without special authority. However,
since the procedure for filing an application to register an extension of the term of a patent
right due to a delay in registration is somewhat ambiguous with regard to whether it is for
filing another application or it is for registration, the part for „Legal Representation of
Application for Registration of Extension of Patent Term by Permission, etc.‟ under Chapter 7.
1. 5 shall be referred to regarding the scope of legal representation.
5. Examination
5.1 relevant Provisions
Article 92-4 of the Patent Act (Decision to Grant Rejection of Registration for Extension of
Patent Term due to Delay in Registration) Where an application to register an extension of
the term of a patent right under Article 92-3 of the Patent Act falls under any of the
following paragraphs, an examiner shall make a decision to reject the registration of the
extension on the application:
1. Where the period of request for extension exceeds the period for extension recognized
under Article 92-2
2. Where an applicant of registration for extension is not the patent right holder
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3. Where an application of registration for extension was filed in violation of Article 92-3(3)
of the Patent Act
Article 92-5 of the Patent Act (Decision to Grant Rejection of Registration for Extension of
Patent Term due to Delay in Registration, etc.) ① Where an application to register an
extension of the term of a patent right under Article 92-3 of the Patent Act is not found to
have any ground under each paragraph of Article 92-4 of the Patent Act, an examiner shall
make a decision to register an extension of the term of a patent right.
② Where the decision to register an extension of the term of a patent right is made under
paragraph (1) of the same article, the Commissioner of the Korean Intellectual Property
Office shall register the extension of the patent term in the Patent Register
③ Where the above-mentioned registration is made, the following items shall be written in
the Patent Register:
1. Name and address of the patent right holder (in case of a legal entity, the title and
business address)
2. Patent number
3. Date of registration for extension
4. Period for extension
Article 93 of the Patent Act (Mutatis Mutandis Application) Articles 57(1), 63, 67, 148(1)-(5)
and (7) of Patent Act shall apply mutatis mutandis to examination on an application to
register an extension of the term of a patent right.
5.2 Flowchart and Overview of Examination Procedure
A procedure for examining an application to register an extension of the term of a patent
right due to a delay in registration is similar to that for examination on a patent application.
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Where no provision on the detailed examination procedure is present, the procedure for
examination for a patent application shall apply mutatis mutandis. Regarding the flowchart
and overview of a procedure for examination, “6.2 Flowchart and Overview of Examination
Procedure” of an application to register an extension of the term of a patent right under
Article 7(1)(ⅵ) of the Patent Act shall be referred.
5.3 Formality Examination on Application of Registration for Extension
Where an application to register an extension of the term of a patent right due to a delay in
registration transferred from the division of document receipt is in violation of the
formalities, an examiner shall treat the application in the following manners:
(1) Where an application to register an extension of the term of a patent right due to a
delay in registration is filed when the period under Article 92-3(2) of the Patent Act has
elapsed (within three months from the date of establishment of a patent right), an examiner
shall write the intention to return the application, the ground for return and the period for
explanation in a notification of ground for return and deliver it to the applicant.
After the notification of the ground for return, where an applicant make a request for return
of the application documents or where the contents of the submitted explanation is
recognized to be groundless, the examiner shall return the relevant documents.
(2) Where an application to register an extension of the term of a patent right due to a
delay in registration is in violation of the provisions regarding a legal representative
designated in Article 46 of the Patent Act; where an applicant failed to make the payment of
fees; or where the application is in violation of the formalities specified in the Patent Act or
Decree, an examiner shall order an amendment to the application.
Despite amendment order, where the irregularities are not addressed within the designated
period, an examiner shall invalidate the patent-related procedure in the name of the
Commissioner of the Korean Intellectual Property Office.
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5.4 Substantive Examination of Application of Registration for Extension
5.4.1 Determination of Subject for Examination
The subject for examination is an application to register an extension of the term of a patent
right due to a delay in registration and relevant attached documents. However, where
amendment (A) was made, an examiner shall determine whether to recognize the
amendment and specify the subject for examination. Where the amendment is legitimate, an
examiner shall examine the application with the amended content reflected. Where the
amendment is not legitimate, the examiner shall deem that the amendment has never been
made and examine the application to register an extension of the term of a patent right
before the amendment.
Where multiple amendments are made, the examiner shall determine the amended content
based on the combination of the finally-amended parts. Then, the subject for examination
shall be the application that has reflected the content of the final amendments in the
legitimate written amendment. Where multiple amendments are made, „Determination
Standard of Amended Content‟ of Chapter 5 shall be referred.
5.4.2 Determination on Existence of Rejection Ground
Where an application to register an extension of the term of a patent right due to a delay in
registration falls under any paragraph of Article 92-4 of the Patent Act, an examiner shall
notify the ground for rejection on the application of registration for extension.
(1) Where the period of request for extension exceeds the period for extension recognized
to be legitimate under Article 92-2 of the Patent Act
The period allowed for requesting an extension is the length of the time period passed (the
number of days) (E) from the date of establishment of a patent right (D) based on the
critical date (C) which is the later date between the date four years after the filing date of a
patent application (A) and the date three years after the date of request for examination (B)
under Article 92-2(4) of the Patent Act, with the length of period of delay attributable to an
applicant (F) under the paragraphs of Article7-2(1) of the Enforcement Decree of the Patent
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Act subtracted.
The detailed calculation for the period of extension is conducted in the following manners:
① Determination on „Filing date of Patent Application‟
When calculating „four years from the date of filing a patent application‟ in an application
to register an extension of the term of a patent right due to a delay in registration,
notwithstanding Articles 34, 35, 52-2, 53-2, 199-1, 214-4 of the Patent Act, the date when a
lawful patent right holder filed an application, the date of filing a divisional application, the
date of filing a converted application, the date of submission of document under Article
203-1 and the date when an application of an international application requests for a
decision under Article 214-1 of the Patent Act shall be considered to be the date of filing a
patent application. As for a patent application which does not correspond to the above-
mentioned, its filing date shall be deemed when it was actually filed.
Therefore, for example, where an applicant of an application to register an extension of the
term of a patent right due to a delay in registration of the divisional application which has
been established submitted a written application to register an extension of the term of a
patent right due to a delay in registration after calculating four years from the date of filing
a patent application based on the filing date of the initial application as the filing date of a
patent application, an examiner can order amendment to the written application of
registration for extension.
② Determination on Later Date of Four Years from Filing Date of Patent Application and
Three Years from Date of Request for Examination
The critical date in calculating the period of delay shall be set on the later date between the
date four years from the date of filing a patent application and the date three years after
the date of request for examination. If an applicant incorrectly wrote the critical date and
submitted a written application to register an extension of the term of a patent right due to
a delay in registration, an examiner can order amendment to the written application of
registration for extension.
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③ Calculation of Period of Delay
The period (the number of days) from the above-mentioned critical date and the date of
establishment of a patent right after patent fee payment shall be calculated. If an applicant
incorrectly wrote the critical date and submitted a written application to register an
extension of the term of a patent right due to a delay in registration, an examiner can order
amendment to the written application of registration for extension.
④ Calculation of Period of Delay Attributable to Applicant
All of the periods of delay attributable to an applicant (for example: the period for
submission of a written opinion, etc.) which fall under any of the paragraphs under Article 7-
2(1) of the Enforcement Decree of the Patent Act (including the paragraphs of Article 54-5
of the Enforcement Rules of the Patent Act) shall be added up. However, where periods for
delay attributable to an applicant overlap, the period exempt from the extension of the term
of a patent right shall not exceed the period of actual delay attributable to an applicant.
Moreover, even though the period of delay attributable to an applicant falls under any of
the paragraphs of Article 7-2(1) of the Enforcement Decree of the Patent Act (including the
paragraphs of Article 54-5 of the Enforcement Rules of the Patent Act), where there is any
objectively-recognized ground that the delay in establishment of a patent right is not
attributable to an applicant, such period shall be exempt from the period of delay
attributable to the applicant. Such examples include where the procedure of substantive
examination is not affected since it happened before an applicant made a request for
examination, where an amendment order or a notification of ground for rejection, etc., was
made by mistake of the Korean Intellectual Property Office or a patent court, etc., or where
delays were caused by natural disasters, other than an applicant.
⑤ Calculation of Period of Request for Registration for Extension
The period allowed for request for registration of extension is the one with the period of
delay attributable to an applicant in ④ subtracted from the period of delay in ③ and it
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shall become the period for extension recognized under Article 92-2 of the Patent Act. If the
period of request for registration of extension written in a written application of registration
for extension exceeds the above-mentioned period for extension, an examiner shall notify a
ground of rejection to the applicant in accordance with Article 63 of the Patent Act which
Article 93 of the same act applies mutatis mutandis and give the applicant an opportunity
to submit a written opinion.
Where more than one of the above-mentioned items ①-④ is incorrectly written in a written
application of registration for extension and it leads the period of request for registration of
extension in ⑤ to exceed the period allowed for extension which is recognized under
Article 92-2 of the Patent Act, an examiner shall notify the ground for rejection that it is in
violation of Article 92-3(1) of the Patent Act. After notification, where the applicant
addressed the ground for rejection through amendment of correctly writing the items of ①-
⑤, the examiner shall make a decision to register an extension. Where the ground for
rejection was addressed through the amendment, but any of the items ①-④ is still written
incorrectly, the examiner shall order amendment to the written application of registration for
extension.
The following table shows the example of calculation of the period allowed for requesting
registration of extension according to the procedures above.
(Example)
Date Process
2013. 1. 1. Filing of Patent Application
2015. 1. 1. Request for Examination
2016.10. 1. Transmittal of Notification of Submission of Written Opinion
2016.12. 1. Request for Extension of Period (2 months)
2017. 2. 1. Submission of Amendment and Opinion
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2017. 8. 1. Transmittal of Copy of Decision to Reject Patent
2017. 9. 1. Request for Extension of Statutory Period
2017.10. 1. Request for Re-examination
2017.11. 1. Transmittal of Copy of Decision to Reject Patent
2017.12. 1. Request for Trial against Decision to Reject
2018. 8. 1.
Affirmed Decision of Request for Appeal against Decision of
Rejection
2018.10. 1. Transmittal of Copy of Decision to Register Patent
2019. 1. 1. Payment of Patent Fee (Establishment of Patent Right)
Since the date three years after the date of request for examination on a patent application
(2018.1.1) is later than the date four years from the filing date of the application (2017.1.1),
the critical date of calculating the period of delay shall be on 2018.1.1. The period between
the critical date and the date of establishment of a patent right (2019.1.1) after the patent
fee payment shall be for 365 days. Meanwhile, the period for submission of a written
opinion after the notification of the ground for rejection by an examiner (123 days,
2016.10.1~2017.2.1), the period of delay due to a request for re-examination (61 days,
2017.8.1~2017.10.1) and the period of delay commencing from the date of transmittal of a
certified copy of the decision to grant a patent right and to the date of establishment of the
patent right after the patent fee payment (92 days, 2018.10.1~2019.1.1) shall constitute the
period of delay attributable to an applicant (123+61+92=276 days). Therefore, the period
allowed for registration of extension shall be for 89 days, with the period of delay
attributable to an applicant (276 days) subtracted from the total length of period of delay
(365 days).
5.4.3. Notification of Ground for Rejection
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Where an examiner intends to make a decision to reject registration for extension under
Article 63 of the Patent Act which Article 93 of the same act applies mutatis mutandis since
the application to register an extension of the term of a patent right falls under the
subparagraphs of Article 92-4 of the Patent Act, he/she shall notify the ground for rejection
to an applicant and then give the applicant an opportunity to submit a written opinion
within a designated period.
When notifying a ground for rejection, an examiner shall write relevant provisions or
grounds precisely and concisely so that an applicant clearly understands the ground for
rejection. General information on notification of ground for rejection shall be referred to the
corresponding part in PART V.
At the notification of the ground for rejection, the period for submission of a written opinion
shall be within two months. The period for submission of a written opinion designated by an
examiner is extendable. The extension of the period for submission of a written opinion can
be made, at the request of an applicant, four times for one month each time (see „4.2
Extension and Acceptance of Substantive Examination-related Designated Period).
5.4.4 Treatment of Written Opinion and Amendment
Where an examiner notified a ground for rejection regarding an application to register an
extension of the term of a patent right, an applicant may submit a written opinion or an
amendment. However, an applicant does not necessarily have to submit a written opinion or
an amendment.
A written opinion can be submitted within the designated period specified in a notification
of submission of a written opinion. An amendment can be submitted until a certified copy
of the decision to register an extension is delivered after filing the application, but after an
examiner notifies the ground for rejection, the amendment can be submitted only within the
period for a written opinion according to the notification of the concerned ground for
rejection.
(1) Where a written opinion is submitted, an examiner shall re-determine whether the
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ground for rejection is actually present, taking the claim of the applicant described in a
written opinion into consideration.
(Note) Even though a written opinion is submitted after the period for submission of a
written opinion has elapsed or before the notification of the ground for rejection, an
examiner shall accept the written opinion and refer to it for examination.
(2) Where an amendment is submitted, an examiner shall re-examine the application
considering the amended parts disclosed in the written amendment, as long as the
amendment is legitimate.
Amendable parts in an application to register an extension under Article 92-3(4) of the
Patent Act include: ① the period of request for extension and ② the ground for extension
designated in Ordinance of the Ministry of Knowledge Economy. Therefore, amendment of
changing an applicant of registration for extension and amendment of changing the patent
number of the patent right shall not be allowed, except for correcting clerical errors.
Where an amendment is submitted, an examiner shall examine whether the subject for
amendment is legitimate. Where an applicant amended the part which cannot be amended
in the first place, the examiner shall notify a warning notice of inadmissible amendment and
give an applicant an opportunity of explanation. Where an examiner notifies the ground for
rejection again because of a warning notice of inadmissible amendment disclosing the
reason why the amendment cannot be accepted, the warning notice for inadmissible
amendment can be replaced with the notification of submission for a written opinion.
Where an examiner cannot accept a written opinion despite the explanation given by an
applicant, he/she shall make a notification of inadmissible amendment and re-examine the
pre-amendment application. Where an examiner intends to reject the application based on
the notification of inadmissible amendment indicating the ground for rejection, the
notification of inadmissible amendment can be replaced with a written decision of rejection.
(Note 1) Where a procedure for an application of registration for extension is terminated
according to general principles of the procedure of filing a patent application, any
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amendment cannot be recognized to be legitimate. Therefore, where an application of
registration for extension is invalidated, withdrawn, abandoned, or returned, or where a
patent right is invalidated or abandoned, an applicant cannot submit a written amendment.
(Note 2) Where a patent right is jointly owned, amendment where only some of the co-
owners filed an application of registration for extension and then the names of the
applicants who were not disclosed in the initial application of registration for extension are
included or amendment in which the names of the registered patent right holders are
changed to match the names of the patent right holders and the applicants of registration
for extension so as to address the ground for rejection shall not be recognized.
Meanwhile, amendment of correcting the incorrectly-written name of an applicant or
amendment of changing the name of a patent right holder to that of a general successor in
the case of general succession of a patent right shall be recognized.
(Note 3) A person who initiated a patent-related procedure can amend the procedure as
long as it is still pending before the Korean intellectual Property Office. However, under
Article 92-3(4) of the Patent Act, the patent number is restricted from amendment among
the contents of an application to register an extension of the term of a patent right due to a
delay in registration. Therefore, correcting the incorrectly-written patent number raises an
issue in amendment.
Article 92-3(4) of the Patent Act indicates that the period of registration for extension
claimed at the time of filing an application of registration for extension can be changed, but
the change of the patent number is allowed since it would change the subject for
registration of extension of the term of a patent right due to a delay in registration.
Therefore, where the patent number written in an application of registration for extension is
a clerical error (where the indication of the patent number is a clerical error with the filing
date, the patent number and the patent date considered), any amendment, except for
amendment of correcting the clerical error, shall not be recognized.
(3) Once amendment is recognized to be legitimate, the amended application is recognized
to have been filed in the first place. Then, an examiner shall conduct examination on the
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amended application.
5.4.5 Determination on Registration of Extension
Determination on whether to extend the term of a patent right due to a delay in registration
shall be in writing under Article 67 of the Patent Act which Article 93 of the same act
applies mutatis mutandis.
(1) Determination on registration for extension · Determination on rejection
Where an examiner intends to determine whether to register an extension of the term of a
patent right due to a delay in registration, he/she shall report the intention to the director
of the examination division (or the team head) and write and a decision of registration for
extension or a decision to reject registration for extension indicating the followings and sign
and seal such decision. However, a decision to reject registration for extension shall not
contain the items ③ and ④ below.
① Application Number of Registration of Extension
② Patent Number
③ Period for Extension
④ Content of Period of Delay
⑤ Name and Address of Applicant of Registration for Extension (Title and Business Address
in case of legal entity)
⑥ In presence of legal representative of applicant of registration for extension, Name and
Address or Business Address of Legal Representative (Title, Business Address and Name of
Designated Patent Attorney where a legal representative is a patent law firm)
⑦ Order and Ground for Decision
⑧ Date of Decision
(2) Transmittal of Determination on Registration for Extension
Where registration for extension of the term of a patent right due to a delay in registration
is determined, the Commissioner of the Korean Intellectual Property Office shall deliver a
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certified copy of the decision. Details related to transmittal of a decision shall be referred to
provisions regarding transmittal of a certified copy of a decision to grant/reject a patent
right.
6. Other Examination Procedures
6.1 Publication on Patent Gazette, etc.
Where an examiner determines registration of extension of the term of a patent right due to
a delay in registration, he/she shall request the Registration Division to publish ① the name
and address of a patent right holder (the title and business address in case of a legal entity),
② the patent number ③ the date of registration for extension ④ the period for extension
on the patent gazette.
6.2 Trial on Decision to Reject Registration of Extension
Where an applicant who has received a decision to reject an extension of the term of a
patent right appeals the decision since the application to register an extension of the term
of a patent right falls under any subparagraph of Article 92-4 of the Patent Act, the
applicant can request an appeal trial of the decision to reject registration for extension
within thirty days from the date of transmittal of a certified copy of the concerned decision.
6.3 Invalidation Trial on Patent Right Registered for Extension
Where a patent right whose term is extended falls under any paragraph of Article 134-2 of
the Patent Act since the application to register an extension of the term of a patent right
due to a delay in registration is determined for registration of extension, an applicant can
request a trial to invalidate the patent right.
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Chapter 3. Examination on National Defense-related
Application
1. Relevant Provisions
Article 41 of the Patent Act (Inventions, etc. Necessary for National Defense) ① If
necessary for the national defense, the Government may order an inventor, an applicant, or
a representative not to file a patent application for an invention in foreign patent offices
concerned or to keep such invention confidential: Provided, That if such persons obtain
permission from the Government, they may file an application therefor in foreign patent
offices.
② If an invention filed with the Korean Intellectual Property Office is considered necessary
for national defense, the Government may refuse to grant a patent and, for reasons of
national defense, such as in time of war, uprising or other similar emergency, may
expropriated the right to obtain a patent therefor.
③ The Government shall pay reasonable compensation for losses arising from the
prohibition of a patent application from being filed in a foreign patent office or from the
maintenance of confidentiality under paragraph (1).
④ The Government shall pay reasonable compensation in the event that a patent is not
granted, or the right to obtain a patent is expropriated under paragraph (2).
⑤ If there has been a violation of an order to prohibit an application from being filed for
an invention in a foreign patent office concerned or of an order to maintain confidentiality
under paragraph (1), the right to obtain a patent therefor shall be deemed to be abandoned.
⑥ If there has been a violation of an order to maintain confidentiality under paragraph (1),
the right request the payment of compensation for the loss arising from maintaining
confidentiality shall be deemed to be abandoned.
⑦ Matters relating to the procedure, etc. for prohibiting an application from being filed in a
foreign country, proceedings for maintaining confidentiality under paragraph (1), or for
expropriation or payment of compensation under paragraphs (2) through (4) shall be
prescribed by Presidential Decree
Article 12 of the Enforcement Decree of the Patent Act (Procedure foe Confidential
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Treatment) ① If a patent application filed by a person having a domicile or business place
in Korea is conformed to the criteria for classification as prescribed in Article 11, the
Commissioner of the Korean Intellectual Property Office shall refer the Commissioner of the
Defense Acquisition Program Administration to whether or not it is required to classify and
treat such application as confidential one.
② Where the Commissioner of the Korean Intellectual Property Office has made a reference
to the Commissioner of the Defense Acquisition Program Administration under paragraph
(1), he shall notify it to the inventor, the applicant and the attorney of the patent application,
and a person who is deemed to be learned of the invention (hereinafter referred to as the
“inventor, etc.”) and request them to maintain the confidence thereof.
③ The Commissioner of the Defense Acquisition Program Administration shall, upon
receiving a reference under paragraph (1), make a reply within two months
④ The Commissioner of the Korean Intellectual Property Office shall, upon receiving a
request to classify and treat any patent application as confidential one under paragraph (3),
take any necessary measures in conformity with the confidential service rules, and order the
inventor, etc. of the patent application to classify and treat it as confidential one, and if he is
not requested so, he shall notify the inventor, etc. of the patent application of a cancellation
of the request for maintenance of confidence as referred to in paragraph (2).
⑤ The Commissioner of the Korean Intellectual Property Office shall, upon receiving a reply
of the Commissioner of the Defense Acquisition Program Administration under paragraph
(3), issue without delay an order to classify and treat the patent application as confidential
one, or notify a cancellation of the request for maintenance of confidence under paragraph
(4).
Article 13 of the Enforcement Rules of the Patent Act (Cancellation, etc. of Confidential
Treatment) ① With respect to a patent application which is ordered to be classified and
treated as confidential one under Article 12(4), the Commissioner of the Korean Intellectual
Property Office shall take necessary measures after consulting twice or more times each year
with the Commissioner of the Defense Acquisition Program Administration on the
cancellation of confidence, extension of confidential maintenances period or whether or not
the confidential classification is modified.
② The inventor, etc. who is ordered to classify and treat the patent application as
confidential one under Article 12(4), may request the Commissioner of the Korean
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Intellectual Property Office to release it from confidential treatment, to modify the
confidential classification or to publish or license the invention for which a patent is applied,
in a specified limit.
2. Purport
National defense can be harmed if there is no measure to restrict a certain person from
wielding monopoly over an invention necessary for national defense in pursuit of personal
benefit or where an invention which was supposed to be classified as confidential one for
national defense is published to the general public without any restrictions. Therefore,
Article 41 of the Patent Act governs the treatment of inventions necessary for national
defense to address such cases.
Article 41 of the Patent Act states that a patent application for an invention necessary for
national defense is banned from being filed in foreign patent office; such invention be
ordered to maintain confidentiality; the government does not grant a patent right; or the
government may expropriate the right to obtain a patent right. Article 41 of the Patent Act
is about the government restricting an invention for which a patent application was filed,
whereas, in Article 106 of the Patent Act, an invention for which a patent application was
filed puts a restriction on the registered patent right.
Meanwhile, Article 23 of the Constitution of the Republic of Korea stipulates that the right of
property of all citizens shall be guaranteed and expropriation, use or restriction of private
property from public necessity and compensation therefor shall be compensated. The Patent
Act, too, dictates that any loss generated from the ban on filing a patent application in
foreign paten offices shall be fairly compensated.
3. Overview of National Defense-related Application
3.1 Classification Criteria of National Defense-related Application
The criteria for classification of a national defense-related application are determined by the
Commissioner of the Korean Intellectual Property Office after consulting with the
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Commissioner of the Defense Acquisition Program Administration under Article 11 of the
Enforcement Decree of the Patent Act. This is stipulated in Directive No. 651 of the Korean
Intellectual Property Office <Classification Criteria of Patent Application Related to National
Defense>.
According to the directive, applications related to national defense are divided into two
types. One is where an applicant files an application with the indication of the national
defense-related application and where the Defense Acquisition Program Administration
recognizes the application to be classified as a national defense-related application. In such
a case, an applicant submits a written opinion with the indication of the national defense-
related application and the Korean Intellectual Property Office keeps the application secret
for security reasons and transfer the application to the examination division after asking the
Defense Acquisition Program Administration to check whether it needs to be classified as
the national defense-related application. Detailed information shall be referred to Article 14
of the Handling Rules of Application-related Work.
The other type of applications related to national defense is one that is classified in the
international application under Annexed Table No. 651 of the Directive of the Korean
Intellectual Property Office Also, an examiner shall classifies the application as a national
defense-related application and the Defense Acquisition Program Administration, too,
recognizes the necessity to treat the application as a national defense-related application.
International patent classifications related to national defense include seven machinery
classifications such as submarine, missile, armored vehicle and four chemistry classifications
including explosive and detonator.
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Classification Standard of National Defense-related Patent Application
[Annexed Form] under KIPO Directive No.651
International Patent Classification of National Defense-related
Application
B63G 1/00, 3/00-3/06, 5/00, 6/00, 7/00-7/08, 8/00-8/42,
9/00-9/06, 11/00, 13/00-13/02 (Submarines)
C06B 21/00, 23/00-23/04, 25/00-25/40, 27/00, 29/00-29/22,
31/00-31/56, 33/00-33/14, 35/00, 37/00-37/02,
39/00-39/06, 41/00-41/10, 43/00, 45/00-45/36,
47/00-47/14, 49/00 (Explosive)
C06C 5/00-5/08, 7/00-7/02, 9/00, 15/00 (Detonating Device)
C06D 3/00, 5/00-5/10, 7/00 (Generation of pressure gas)
F41A 1/00-1/10, 3/00-3/94, 5/00-5/36, 7/00-7/10,
9/00-9/87, 11/00-11/06, 13/00-13/12, 15/00-15/22,
17/00-17/82, 19/00-19/70, 21/00-21/48, 23/00-23/60,
25/00-25/26, 27/00-27/30, 29/00-29/04, 31/00-31/02,
33/00-33/06, 35/00-35/06 (Weapons)
F41C 3/00, 3/14, 3/16, 7/00-7/11, 9/00-9/08, 23/00-23/14,
27/00, 27/06 (Weapons)
F41F 1/00-1/10, 3/00-3/10, 5/00-5/04, 7/00 (Rocket)
F41G 1/00-1/54, 3/00-3/32, 5/00-5/26, 7/00-7/36, 9/00-9/02,
11/00 (Weapon sights)
F41H 3/00-3/02, 5/00-5/20, 7/00-7/10, 9/00, 9/02, 9/10,
11/00-11/16 (Armour)
F42B 1/00-1/04, 3/00-3/28, 4/00-4/30, 5/00-5/38, 6/00-6/10,
7/00-7/12, 8/00-8/28, 10/00-10/66, 12/00-12/82,
14/00-14/08, 15/00-15/38, 17/00, 19/00-19/46, 21/00,
22/00-22/44, 23/00-23/32, 25/00, 27/00, 29/00,
30/00-30/14, 33/00-33/14, 35/00-35/02, 39/00-39/30(Explosive
charges)
F42C 1/00-1/14, 3/00, 5/00-5/02, 7/00-7/12, 9/00-9/18,
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11/00-11/06, 13/00-13/08, 14/00-14/08, 15/00-15/44,
17/00-17/04, 19/00-19/14, 21/00 (Ammunition fuzes)
3.2 Application Eligible for Classification of National Defense-related Application
A patent application filed under the Patent Act as well as a utility model application which
relevant provisions under the Patent Act apply mutatis mutandis are entitled to be classified
as a national defense-related application. The ground for such application is that Article 11
of the Utility Model Act and Article 9 of the Enforcement Decree of the Utility Model Act
apply mutatis mutandis to Article 41 of the Patent Act and Article 11 of the Enforcement
Decree of the Patent Act respectively.
Meanwhile, as for an international application, a member state can take measures for
national security according to Article 27(8) of the Patent Cooperation Treaty. Therefore,
Article 78-2 of the Security Operational Rule of the Korean Intellectual Property Office
stipulates that where an international application under the Patent Cooperation Treaty falls
under “Classification Standard of National Defense-related Patent Application” of Article 11
of the Enforcement Decree of the Patent Act, the Transmittal of a record copy and a search
copy under Article 12 of the Patent Cooperation Treaty to the International Bureau and the
competent International Searching Authority shall be withheld and the documents shall be
transferred the competent examination division.
4. Procedure for Handling National Defense-related Application
In principle, an application shall take any procedure regarding a national defense-related
application in writing. However, where an applicant is unaware that his/her application is
crucial to national defense, the applicant can file an application online. In such a case, an
examiner can classify and specially manage the application as a national defense-related
application. Most of the national defense-related applications are submitted in writing by an
applicant such as the Institute for Defense Development, with indication of a national
defense-related application.
4.1 Handling in Presence of Applicant’s Indication of National Defense-related
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Application
(1) Where an applicant files a national defense-related application in writing
① The division which received the application documents shall keep the application secret
for security reasons and transmits a copy of the application to the Commissioner of the
Defense Acquisition Program Administration to find out whether the application needs to be
kept confidential. Also, the division shall ask the inventor, applicant or legal representative of
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the patent application to keep the application secret.
② Where the application is asked to be kept confidential after consultation with the
Defense Acquisition Program Administration, the division which received the application
documents shall take security measures such as confidentiality order for an applicant, etc.
according to security operational rules and enter only bibliographic data electronically and
transfer the application to the Patent Examination Cooperation Division for classification.
Then, it shall transmit the application to the examiner in charge.
③ Where the application does not need to be kept confidential after consultation with the
Defense Acquisition Program Administration, the division which received the application
documents shall lift confidentiality order from the application and initiate the procedure for
handling the application in writing and then notify the inventor, application or legal
representative of the patent application of the lifting of the confidentiality order from the
application.
(2) Where an applicant notifies that the application is related to national defense before the
application documents are transferred to the examination division
① Where an applicant (electronically) filed an application without indicating that it is related
to national defense at the time of filing, but notified that the application is linked to
national defense before the application documents are transferred to the examination
division, the director of the Application Service Division shall ask the director of the
Information Management Division to print out the electronically-filed documents.
② The director of the Information Management Division shall print out the application
documents confidentially (the original and the copy and one copy of the floppy disc) and
transfer them to the Application Service Division while deleting the concerned electronic
documents on the PatentNet.
③ In such a case, the standard for handling a national defense-related application filed with
such indication by an applicant at the time of filing shall apply to consultation, etc. with the
Defense Acquisition Program Administration.
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4.2 Where an examiner classifies an application as national defense-related one
(1) Review on the granting of IPC and the necessity of confidentiality order
① When assigning an IPC code for an application under the International Patent
Classification scheme, where the section or class of the application is used as the IPC code
determined in the annexed form on the classification standard of a national defense related-
patent application, the examiner shall determine whether to treat the application as a
national defense-related one. Normally, when the Korea Institute of Patent Information
assigns an application with an IPC code and the application is entitled to be classified in the
IPC code for national defense, this is notified to the examiner in charge.
Where an application falls under the IPC code for national defense, in principle, the
application needs to be treated as a national defense-related application. However, if there
exist grounds for exception under the paragraphs of Article 651(2) of the Directive of the
Korean Intellectual Property Office, the application may not be treated as a national
defense-related application.
Therefore, where an applicant does not have an address or a business in the Republic of
Korea; where the application does not fall under major defense materials specified under
Article 35(2) of the Defense Acquisition Program Act according to Article 34(3) of the same
act and Article 39 of the Enforcement Decree of the Defense Acquisition Program Act or any
of the weapons systems specified under the paragraphs of Article 2 of the Enforcement
Decree of the Defense Acquisition Program Act;, or where an examiner recognizes that the
application can kept confidential for national defense, the application can be treated as an
ordinary patent application.
Where an examiner recognizes that the application cannot be kept secret for national
defense includes where a prior art identical or similar to the object matter in the application
has been already disclosed; where the claimed invention is not related to national security
and military secrets; or where an application supposed to be classified to be national
defense-related was incorrectly classified at first, but was laid open to the public before the
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change of the classification. Where it is hard to determine whether to handle the application
as a national defense-related one, an examiner may consult with the Director of the
Emergency Affairs Subsection from the General Services Division, an applicant or a military
expert.
Meanwhile, where an examiner found out in the process of examination of the classified
application according to the examination order that the application needs to be classified as
a national defense-related application and does not have any ground for exemption from
national defense-related classification, the examiner shall change the IPC code of the
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application to the national defense code and proceed the confidentiality procedure for
national defense.
② Where the application needs to be kept confidential based on the result of consultation,
an examiner shall immediately report this to the director of the Patent Examination Policy
Division with the Annexed Form 31 of Article 79 of the Administrative Instructions of the
Security Operational Rule of the Korean Intellectual Property Office.
③ Where there has been a report made by an examiner, the director of the Patent
Examination Policy Division shall determine whether the application meets the requirements
to be classified as a national defense-related application.
(2) Consultation on Confidentiality
Where an application reported by an examiner is recognized to be legitimated for the
qualification for national defense-related application, the director of the Patent Examination
Policy Division shall take the following measures:
① The director of the Patent Examination Policy Division shall request the director of the
Information Management Division to print out the concerned application and delete the
electronic file of the application. After receiving the request, the director of the Information
Management Division shall confidentially make the original and the copy and one copy of
the floppy disc of the electronically-filed application and transfer the documents to the
Patent Examination Policy Division and then delete the electronic file, except for the
bibliographic items and application history of the patent application.
② The director of the Patent Examination Policy Division shall confidentially handle the
original and the copy of the application transferred from the Information Management
Division and transfer the copy to the Defense Acquisition Program Administration to confirm
whether the application needs to be kept confidential. Also, the director of the Patent
Examination Policy Division shall request an inventor, applicant or legal representative of the
patent application or a person deemed to have knowledge of the invention to observe
confidentiality under Article 12(2) of the Enforcement Decree of the Patent Act.
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③ When asked for confidentiality of the application based on the result of the consultation
with the Defense Acquisition Program Administration, an examiner shall keep the application
secret under Article 80 of the Administrative Instructions of the Security Operational Rule of
the Korean Intellectual Property Office and transfer the application to the concerned
examination bureau, so that an examiner in charge of examination on applications in the
concerned IPC code can initiate examination on the application. A confidentiality order shall
be made to a person who is requested to observe confidentiality as in ② under Article 12(4)
of the Enforcement Decree of the Patent Act.
Meanwhile, where an application does not need to be kept secret, the director of the Patent
Examination Policy Division shall lift the confidentiality order and ask the director of the
Information Management Division to shift the application back to the electronically-file so
that the application is examined as an ordinary application. A confidentiality order shall be
lifted from a person who is requested to observe confidentiality as in ② under Article 12(4)
of the Enforcement Decree of the Patent Act.
5. Examination on National Defense-related Application Transferred to
Examination Bureau
Where an application is confirmed to be kept secret after consultation with the Defense
Acquisition Program Administration as mentioned in 4.1 or 4.2, the examination bureau
which has received the transferred application documents shall keep the documents
confidential according to Article 80(3) of the Administrative Instructions of the Security
Operational Rule of the Korean Intellectual Property Office.
The procedure for examining a confidential application is the same as the examination
procedure of an ordinary application. Therefore, an examiner in charge of the concerned IPC
code shall examine patentability of the application as an ordinary application is examined
when time for examination of the confidential application is up. However, considering the
application is confidential, an examiner shall be extra cautious of maintaining confidentiality
in examining the application by borrowing the confidential application documents from the
examination bureau.
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After an examiner determines patentability after examination, the examination bureau shall
send the final documents of the confidential application including an amendment, a written
opinion to the Patent Examination Policy Division if the examiner decides to grant a patent.
When determined to reject a patent, the final documents shall be sent to the Information
Management Division.
6. Management of Application Documents Deemed Confidential
A person in charge of the division managing confidential documents or examiners shall
carefully maintain confidentiality of confidential documents in the following manners:
① The director of the Patent Examination Policy Division shall consult with the
Commissioner of the Defense Acquisition Program Administration more than twice a year on
measures such as the lifting of confidentiality from the previously-confidential application,
extension of the period for confidentiality protection or change of confidentiality level.
② Where an examiner determines to grant (register) a patent on a confidential application,
the examiner shall notify the grant/registration of a patent right to the director of the
Registration Service Division and the director of the Information Management Division in
writing.
③ An application classified as confidential shall be withheld from the laying-open or the
publication of registration until the confidentiality order is lifted. When the confidentiality
order has been cancelled, the application shall be laid open or published for registration
without any delay.
④ Where an examiner determines after examining a confidential application that the
technical contents of the application do not need to be kept secret, whether to lift
confidentiality status can be consulted with the Defense acquisition Program Administration.
⑤ A notification on a confidential application shall be made in secret and approval and
transmittal, etc. of the application shall be conducted in writing.
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⑥ Registration documents of a confidential application shall be kept by the Patent
Examination Policy Division until the confidentiality order is lifted. Once the confidentiality
order is cancelled, the application shall be treated as an ordinary application. The director of
the Informational Management Division shall assign the management number to the
application on which the decision to reject a patent is made and handle the application
under the same provisions as those for any other confidential documents.
⑦ Amendments and written opinions of a confidential application shall not be assigned
with the management number. The documents shall be filed all together in the original and
the copy.
⑧ The copy of a confidential document shall be kept with the assigned management
number apart from the original of the application.
⑨ The division in charge of handling a confidential application shall observe the following
rules (Article 81 of the Administrative Instructions of the Security Operational Rule). The
other details shall be referred to Article 6 „Confidential Storage and Management‟ of the
Administrative Instructions of the Security Operational Rule of the Korean Intellectual
Property Office.
1. Confidential applications cannot be stored together with ordinary patent applications.
Confidential documents shall be kept in a double-layered steel container and the director of
the Patent Examination Policy Division shall be primarily responsible for managing such
confidential applications.
2. Confidential applications shall be kept at the confidentiality register and the management
numbers shall be written in the margin of the patent register for a better identification of
the applications.
3. Confidential files of patent registrations and patent rejections can be lent, but only by
writing on the confidential check-out list and an authorized person cannot be allowed for
the check-out of the files.
7. Prohibition and Permission of Application Filing Overseas
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7.1 Applications Banned From Filing Overseas
Under Article 41 of the Patent Act, an invention crucial for national defense can be banned
from filing overseas and can be filed for patent protection overseas only when permission
from the government is granted. When an invention vital for national defense has been filed
in foreign countries, it shall be deemed that the applicant has abandoned the right to get a
patent right for the invention. Also, the application shall pay reasonable compensation for
any loss due to the violation of the ban on filing a patent application for the invention.
Applications banned from filing overseas are those classified by an examiner from KIPO as
confidential or indicated by an applicant as a national defense-related application.
Applications deemed necessary to be kept confidential based on the result of the
consultation with the Defense Acquisition Program Administration shall be object to the ban
on filing a patent application overseas.
7.2 Permission on Application Filing Overseas
Where the Korean government granted permission to file a patent application banned from
filing overseas, an application may exceptionally file a patent application in foreign countries.
Currently, the Republic of Korea has signed the agreement of confidentiality on national
defense-related inventions with the United States of America to observe confidentiality and
allow the filing of applications related to national defense between the two parties. Such
applications cannot be filed in any other countries, except for the Republic of Korean and
the United States of America.
In order to get permission of filing a patent application in the United Stated of America, an
applicant shall submit a written request for permission of overseas application filing
(Annexed Form No.21) under the Enforcement Rules of the Patent Act.
Once the Korean Intellectual Property Office accepts the request for permission of overseas
application filing, where it is allowed to grant permission after consultation with the Defense
Acquisition Program Administration under Article 16 of the Enforcement Decree of the
Patent Act, the Office can issue a written permission to file a patent application in the
United States of America in the following conditions:
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1. The content of the invention in the specification shall be clear and specific to examine the
concerned application for national defense in the United States of America.
2. The right to claim damages caused by confidentiality of the invention in the United Stated
of America shall be waived (except for damages incurred because the United Stated of
America has used or disclosed the invention without permission of the application).
Meanwhile, an application who filed a patent application in the United States of America
after receiving permission to file an application shall attach two copies of application
documents, a copy of a permission to file a patent application in the United States of
America issued by the Commissioner of the Korean Intellectual Property Office, a copy of
the document indicating personal information of the legal representative and security
clearance to the US application document and submit the documents to the Commissioner
of the Defense Acquisition Program Administration. Also, a person intending to file a patent
application in the United States of America shall designate a legal representative who has
received a security clearance from the Government of the United States of America and
initiate a patent-related procedure through the legal representative. Then, the applicant shall
immediately notify the application number and the application date in the United States of
America to the Commissioner of the Defense Acquisition Program Administration.
The detailed information relating to permission to file a patent application in the United
States of America shall be referred to „the Administrative Instructions of the Agreement of
Confidentiality on National Defense-related Patented Inventions with the United States of
America and the implementation procedure of the agreement‟.
7.3 Handling of US-filed National Defense-related Application in Republic of Korea
An application kept confidential as a national defense-related application in the United
States of America can be filed in the Republic of Korea. In such a case, an applicant shall file
the application in writing and submit the application attached with two copies of the
application three copies of the specification, abstract and drawing(s) each (one of the three
copies of the specification does not need to contain the detailed description of the
invention), a copy of a permission for application filing in the Republic of Korea issued from
the United States of America and relevant security-related documents.
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Where the Korean Intellectual Property Office accepts the concerned application, the Office
shall keep the application confidential and the detailed contents shall be referred to the
above-mentioned Administrative Instructions.
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Chapter 4. Accelerated Examination
1. Relevant Provisions
Article 61 of the Patent Act (Accelerated Examination) The Commissioner of the Korean
Intellectual Property Office may direct an examiner to examine one application in preference
over another if the former falls under any of the following subparagraphs:
1. Where a person, other than the applicant, is commercially and industrially working the
invention claimed in a patent application after the laying-open of the application;
2. Where the Commissioner of the Korean Intellectual Property Office deems it necessary to
urgently process a patent application prescribed by Presidential Decree.
Article 9 of the Enforcement Decree of the Patent Act (Object of Prior Examination) The term
“patent application prescribed by Presidential Decree” in subparagraph 2 of Article 61 of the
Act means a patent application falling under any of the following subparagraphs, which is
designated by the Commissioner of the Korean Intellectual Property Office.
1. A patent application in the area of the defense industry;
2. A patent application directly related to green technology (referring to such technology
that minimizes emissions of greenhouse gases and pollutants by saving energy and
resources and making use of them efficiently through the whole process of social and
economic activities, such as technology related to reducing greenhouse gases, raising the
efficiency of energy utilization, pollution-free production, clean energy, recycling resources,
and eco-friendliness(including related convergence technology) or such);
3. A patent application which is directly related to the promotion of exports;
4. A patent application concerning the official duties of the State or local governments
(including any patent application concerning the duties of the national and public schools
provided for in the Higher Education Act, which is filed by the organization in charge of the
technology transfer and industrialization established within the national and public schools
pursuant to Article 11(1) of the Technology Transfer Commercialization Promotion Act);
5. A patent application filed by an enterprise confirmed as a venture business under Article
25 of the Act on Special Measures on the Promotion of Venture Business;
5-2. A patent application filed by an enterprise selected as a technology-innovative small
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and medium enterprise under Article 15 of the Technical Renovation of Small and Medium
Enterprises Act;
5-3. A patent application of a company designated as companies with outstanding
employee invention compensation system under Article 11(2) of the Invention
Promotion Act
6. A patent application concerning the results of the State‟s project for supporting the
development of new technology or quality certification;
6-2. An application of utility model registration of a company designated as companies
with outstanding employee invention compensation system under Article 11(2) of the
Invention Promotion Act
7. A patent application which is based on a priority right claim under treaties (limited to
cases where a foreign patent office, upon receiving such priority right claim based on the
relevant patent application, is in the process of taking procedures for such patent);
8. A patent-applied invention for which the applicant is in process of commercializing or is
preparing to do so;
9. A patent application which is directly related to the electronic transactions;
10. A patent application on which the Commissioner of the Korean Intellectual Property
Office has agreed with the commissioner of any foreign intellectual property office to
preferentially examine it; and
11. A patent application for which a person intends to file an application for prior
examination retained a specialized institution under Article 58 (1) of the Act to search prior
arts with respect to the invention for which the patent application is pending, and requested
the specialized institution to notify the results of the search to the Commissioner of the
Korean Intellectual Property Office.
Article 5 of the Enforcement Decree of the Utility Model Act (Applications Eligible for
Preferential Examination) The term “patent applications specified by Presidential Decree”
in subparagraph 2 of Article 61 of the Patent Act as applied mutatis mutandis in Article 15
of the Act means the applications for utility model falling under any of the following
subparagraphs and prescribed by the Commissioner of the Korean Intellectual Property
Office:
1. Utility model application for defense industry;
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2. Utility model application useful for the prevention of pollution;
3. Utility model application directly related to the promotion of export;
4. Utility model application related to the function of the State or local governments
(including the utility model application filed by an organization established within a national
or public school and exclusively dedicated to the technology transfer and the promotion of
commercialization thereof under Article 11(1) of the Act on the Technology Transfer and
Commercialization Promotion Act among the utility model applications related to the
functions of national and public schools as defined in the Higher Education Act);
5. Utility model application filed by an enterprise acknowledged as a venture business under
Article 25 of the Act on Special Measures for the Promotion of Venture Businesses;
6. Utility model application filed by an enterprise selected as one of technology-innovative
small and medium enterprises under Article 15 of the Act on Promotion of Technical
Renovation of Small and Medium Enterprises;
7. Utility model application related to a product from the State‟s project for the
development of new technology or quality certification;
8. Utility model application that serves as a ground for the priority right under a treaty
(limited to the process for a patent application or utility model application filed and pending
with a foreign patent office based on the claim of priority right);
9. Utility model application under which the applicant of the utility model application is
currently working, or is at the stage of preparation for working, the device for which the
application for utility model was filed;
10. Utility model application directly related to electronic transactions;
11. Utility model application filed simultaneously with a request for examination and for
which a request for preferential examination is filed within two months thereafter;
12. Utility model application for which a person who intend to file an application for
preferential examination retained a specialized institution under Article 58 (1) of the Patent
Act, which shall apply mutatis mutandis pursuant to Article 15 of the Act, to conduct a
survey on prior technology with respect to the utility model for which the utility model
application is pending, and requested the specialized institution to notify the results of the
survey to the Commissioner of the Korean Intellectual Property Office.
Article 36 (8) of the Act on Special Cases concerning the Regulations of the Special
Economic Zones for Specialized Regional Development (Special cases concerning 「the
Patent Act」) Notwithstanding Article 61 of the Patent Act, the Commissioner of the Korean
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Intellectual Property Office may order an examiner to examine one application directly
related to the specialized business in preference over another.
Article 26 of the Special Act on the Designation and Support of High-Tech Medical
Complex (Special cases concerning 「the Patent Act」) Notwithstanding Article 61 of the
Patent Act, the Commissioner of the Korean Intellectual Property Office may direct an
examiner to examine one application related to medical R&D within the high-tech medical
complex submitted by a tenant medical R&D institute in preference over another.
2. Overview of Preferential Examination
Normally, a patent application is taken up for examination in the order of filing the request
for examination thereof.
However, if an application that a person, not an applicant, is deemed to have been working
the patented invention after the laying-open of the invention or is deemed necessary to be
urgently examined for industrial development or the public interest is to be examined in the
order of filing the request for examination thereof, the national interest or the protection of
the invention would be compromised.
Therefore, the Preferential Examination System under the Korean Patent Act allows
applications which fulfill certain requirements to be examined regardless of the order of
filing the request for examination under Article 38 of the Enforcement Rules of the Patent
Act.
The scope of applications eligible for the preferential examination system has been
expanding since its introduction in 1981. Until June 30, 1999, applications entitled to
preferential examination only included ① patent applications in the defense industry, ②
patent applications useful for air pollution prevention, ③ patent applications directly related
to promoting trade, and ④ patent applications related to duties of the central or local
governments. Then, starting July 1, 1999, ⑤ patent applications of companies which are
confirmed as to whether it may be categorized as a venture business or not under Article 25
of the Act on Special Measures For the Promotion of Venture Businesses, ⑥ patent
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application regarding the outcomes of national projects of new technology development
support or quality assurance, ⑦ patent application forming priority claims under the Treaty
(only limited to patent applications whose patent-related procedures for the priority claim
are filed before foreign patent offices) and ⑧ patent applications which are worked or are
to be worked by a patent applicant were added to the scope of applications under the
preferential examination system., ⑨ patent applications directly related to electronic
commerce and ⑩ patent application of companies designated as technology innovative
SMEs under Article 15 of the Act on the Promotion of Technology Innovation of Small and
Medium Enterprises have been each included from July 1 of 2001 and February 11 2005,
respectively. Since July 1 of 2005, ⑪ patent applications regarding the duties of national
and public schools, filed by technology transfer & commercialization offices within the
national and public schools, have become one of the applications related to the duties of
the central or local governments. Starting October 1 of 2006, the preferential examination
system has been applied to applications for of utility model registration (applications for
utility model registration included to the applications worked by the third party and the
above ①-⑪ applications) and ⑫ patent applications that the Commissioner of the Korean
Intellectual Property Office agreed for preferential examination with the commissioner of any
foreign intellectual property offices and ⑬ applications for utility model registration of
which the request for examination is made at the same time of filing the application and the
request for preferential examination is filed within two months from the application filing
have been included. Also, the scope of applications eligible for preferential examination has
been expanded to contain patent application directly related to regulation special cases of
specialized district business under Article 36(8) of the Act on Special Cases concerning the
Regulation of the Special Economic Zones for Specialized Regional Development since April
1 of 2007. Also, since the Special Act on the Designation and Support of High-Tech Medical
Complex took effect on June 29 of 2008, patent applications related to medical R&D within
the High-Tech Medical Complex filed by a tenant medical R&D institute under Article 26 of
the same act has become entitled to preferential examination.
Moreover, where a person intending to request preferential examination has requested a
specialized institution under Article 58(1) of the Patent Act to search prior arts of the
claimed invention, patent applications whose search results are required to be notified to
the Commissioner of the Korean Intellectual Property Office by the concerned specialized
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institution have been also included in the scope of application for preferential examination
since October 1 of 2008. In an attempt to support Low-Carbon, Green Growth pursued at
the pan-governmental level, patent applications directly related to green technology
(replacing patent applications useful for preventing air pollution) have become entitled to
preferential examination since October 1, 2009. Especially, where the search results of patent
applications directly related to green technology made by a special institution are notified to
the Commissioner of the Korean Intellectual Property Office, such patent applications can be
eligible for super-accelerated examination. Meanwhile, considering the enactment of the
Framework Act on Low Carbon Green Growth on April 14 of 2010, patent applications
directly related to green technology financially-supported and certified based the Framework
Act on Low Carbon Green Growth or other national policies can become entitled to
preferential examination. From September 23, 2013, a patent application of a company
designated as companies with outstanding employee invention compensation system
under Article 11(2) of the Invention Promotion Act to facilitate the compensation for
inventions created by employees.
3. Objects Eligible for Preferential Examination
3.1 General Criteria to be Eligible for Preferential Examination
3.1.1 Person who can request Preferential Examination
(1) Anyone, including an applicant, can make a request for preferential examination. However,
only the central or local governments (including technology transfer & commercialization
offices of the national and public schools) can request preferential examination as for a
patent application concerning the duties of the central or local governments.
(2) Where a minor or an incompetent makes a request for preferential examination, his/her
legal representative shall initiate the procedure for preferential examination on behalf. A
corporation, not an association, can request preferential examination under the name of its
representatives.
(3) Where an application filed by a foreigner is entitled to preferential examination, the
request for preferential examination on the concerned application shall be recognized and
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the procedure for preferential examination shall be initiated. Whether to examine a
foreigner-filed application under the preferential examination system shall be determined
based on the same criteria as those of application filed by a Korean.
For example, where an invention for which a patent application was filed by a foreigner is
disclosed and a third party is working the invention, the request for preferential examination
for the invention shall be accepted on the ground of “the working of the invention by a
third party”. Also, the request for preferential examination based on “the working of the
invention by the applicant him/herself” can be recognized if an applicant, a licensee or a
person authorized to work the invention by the licensee has worked the invention or is
preparing to work the invention. However, where an applicant is a foreigner, the working of
the invention of the foreigner means the working within the Republic of Korea. Therefore,
the request for preferential examination based on the working of the invention outside the
Republic of Korea shall not be accepted.
3.1.2 Applications eligible for Preferential Examination
(1) Patent applications or applications for utility model registration filed after October 1 of
2006 are eligible for preferential examination. Under Article 2(1) of the Directive concerning
the request for preferential examination on patent applications or applications for utility
model registration (hereinafter referred to as „Directive‟), patent applications as well as
applications for utility model registration filed before June 30 of 1999 or after October 1 of
2006 are defined as applications and they are deemed to be applications eligible for
preferential examination.
The preferential examination system was introduced in the amendment carried out on
October 1 of 2006 of transition from the quick registration system of utility model to post-
examination registration system. Therefore, only applications for utility model registration
filed after October 1 of 2006 can be eligible for preferential examination.
Meanwhile, in the case of filing a dual application (a converted application after October 1
of 2006) which means a patent application is filed based on an application for utility model
registration filed before October 1 of 2006, the concerned patent application can be entitled
to preferential examination.
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(2) Since preferential examination can be conducted on applications for which the request
for examination has been already made, a requester of preferential examination shall make a
request for examination before or at the same time with filing for preferential examination.
3.1.3 Point of Time for Standard of Determining Eligibility for Preferential Examination
Where an application requested for preferential examination is eligible for preferential
examination either at the time of request for preferential examination or at the time of
determining whether to be accepted for preferential examination, the application shall be
recognized to be eligible for preferential examination. Meanwhile, like an application filed by
an enterprise confirmed as a venture business, where an applicant is required to meet the
qualification of a venture company, the applicant shall be confirmed as a venture company
between the date of request for preferential examination and the date of determining
whether to be accepted for preferential examination.
For example, ① where an applicant was not a venture company at the time of filing an
application or time of requesting for preferential examination, but it has become a venture
company at the time when preferential examination is determined, or where an applicant
was a venture company at the time of filing an application or time of request for preferential
examination but its existing period has expired at the time of determining whether the
application is eligible for preferential examination, such applications shall be recognized to
be eligible for preferential examination if the business type of the venture company and the
claimed invention are associated.
② Even though a patent application of an enterprise designated as a technology-innovative
SME which was added to the object for preferential examination under Enforcement Decree
of the Patent Act taken effect on February 11 of 2005 was filed before February 10 of 2005,
the application shall be eligible for preferential examination if the request for preferential
examination on the application was made after February 11 of 2005.
③ Even though a patent application added to the object of preferential examination under
the Enforcement Decree of the Patent Act enacted on October 1 of 2006 and agreed for
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preferential examination between Commissioner of the Korean Intellectual Property Office
and the commissioner of any foreign intellectual property office was filed before October 1
of 2006, the application shall be eligible for preferential examination if the request for
preferential examination on the application was made after October 1 of 2006.
④ Where a third party was working the invention at the time of request for preferential
examination, but the third party has stopped working the invention at the time of
determining whether the invention is eligible for preferential examination or where the
invention was not worked by a third party at the time of request for preferential examination
but the third party started working the invention after making a request for preferential
examination, such inventions shall be recognized to be eligible for preferential examination.
3.1.4 Claims Serving as Object for Determination of Eligibility for Preferential
Examination
(1) In determining whether an invention is eligible for preferential examination, the invention
eligible for preferential examination shall be disclosed in the claims. Therefore, if an
invention eligible for preferential examination is disclosed only in the detailed description of
the invention, but not in the claims, the invention is not recognized to be eligible for
preferential examination. For example, where an invention entitled to working by the
patentee is not disclosed in the claimed but only in the detailed description of the invention,
the invention shall not become eligible for preferential examination.
(2) Whether an application is eligible for preferential examination shall be determined based
on the claims amended before the time of determining the eligibility of preferential
examination. Where multiple claims are present in the claims and one of the claims is
recognized to be eligible for preferential examination, the application as a whole shall be
accepted as the object for preferential examination.
For example, when determining based on the claims disclosed in the application at the time
of requesting for preferential examination, where the application was initially eligible for
preferential examination, but it was exempt from the objects for preferential examination at
the time of determining eligibility for preferential examination due to amendments of the
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claims, the request for preferential examination on the application shall not be recognized.
In the opposite cases, the request for preferential examination shall be accepted.
(3) When determining eligibility for preferential examination, only whether the claimed
invention is eligible for preferential examination shall be assessed, rather than determining
whether new claims are added or whether the application fulfills the requirement of unity of
invention or inventive step.
3.1.5 Whether to Disclose Application at Request for Preferential Examination
Article 61 of the Patent Act and Article 9 of the Enforcement Decree of the Patent Act define
the object for preferential examination. Except the case that an application is laid open due
to the requirement for preferential examination, that is, the request for preferential
examination because of the working of the invention by a person other than the applicant
under Article 61(1) of the Patent Act, the laying open of other objects of preferential
examination, such as the working of the invention by the applicant, is not the requirement
of preferential examination.
However, a request for preferential examination filed because of the working of the
invention by a person, other than the applicant, before the laying open of the application
shall be withheld in determining eligibility for preferential examination without the dismissal
of the request for preferential examination, where the date of laying open the concerned
application is approaching even though the application is not disclosed under Article 64 of
the Patent Act (an application expected to be laid open within 15 days from the date when
a written request for preferential examination was transferred) or where an applicant made a
request for early disclosure of the application. Except where it is confirmed that the
application is not laid open early because the request for early disclosure of the invention is
abandoned after withholding the determination of eligibility for preferential examination, etc.,
once the concerned application is laid open, the examiner shall proceed the preferential
examination on the application.
3.1.6 Preferential Examination and Necessity of Urgent Proceeding
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(1) Object of Preferential Examination to be Determined for Necessity of Urgent Processing
Article 61 of the Patent Act and Article 15 of the Utility Model Act which Article 61 of the
Patent Act applies mutatis mutandis indicate that the applications specified under Article 9
of the Enforcement Decree of the Patent Act and Article 5 of the Enforcement Decree of the
Utility Model Act, other than the working of the invention by a person, other than the
applicant, are limited to be eligible for urgent processing. Therefore, in principle, objects of
preferential examination, except for the working of the invention by a person, other than the
applicant, can be eligible for preferential examination only when it is deemed necessary to
urgently process a patent application.
Meanwhile, considering the purpose of the preferential examination system under the Patent
Act, a patent application included in the objects of preferential examination according to
acts other than the Patent Act and the Utility Model Act (Article 36(8) of the Act on Special
Cases concerning the Regulation of the Special Economic Zones for Specialized Regional
Development and Article 26 of the Special Act on the Designation and Support of High-Tech
Medical Complex) shall be eligible for preferential examination only when it is deemed
necessary to urgently process the application.
(2) Ways of Determining Necessity of Urgent Processing
Whether to urgently process a patent application shall be determined by a person in charge
of determining eligibility for preferential examination considering ① whether the concerned
invention is crucial for national policies, ② whether the invention is vital for the protection
of an applicant‟s interest or ③ whether the invention is certain to be granted with a patent
right if it is urgently processed.
Since ① and ② are already considered when determining the objects for preferential
examination under the Enforcement Decree of the Patent Act and the Enforcement Decree
of the Utility Model Act, they need not be reconsidered when determining whether it is
necessary to urgently process a patent application.
③ shall be considered when a requester of preferential examination searches prior arts on
the claimed invention (utility model) and submits the search results on the patentability of
the claimed invention to the Commissioner of the Korean Intellectual Property Office. Then,
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the examiner in charge recognizes that it is necessary to urgently process the application
and utilizes search results for substantive examination.
Explanation on patentability in order to state why it is necessary to urgently process a
patent application shall be determined based on whether the self-search results on prior art
and the contrastive explanation are well-written in an explanation of request for preferential
examination submitted at the time of request for preferential examination according to the
way to write the search results and contrastive explanation.
Meanwhile, where a patent application is agreed for preferential examination between the
Commissioner of the Korean Intellectual Property Office and the commissioner of any
foreign intellectual property office (Article 9(10) of the Enforcement Decree of the Patent Act)
and where a patent application is commissioned for prior art search to a specialized institute
(Article 9(11) of the Enforcement Decree of the Patent Act and Article 9(12) of the
Enforcement Decree of the Utility Model Act), it can be deemed that there exists explanation
of patentability, Therefore, a requester of preferential examination can skip the description of
the prior art search results and contrastive explanation in an explanation of request for
preferential examination and the person in charge of determining eligibility for preferential
examination shall recognize the necessity of urgent processing of the application.
(3) Process and Analysis of Description of Self-Search Results and Contrastive Explanation
In order for an application to be recognized necessary for urgent processing, a requester of
preferential examination must describe the search process of prior arts and the contrastive
explanation of one prior art closest to the search result and the subject matter in the claims
in a written explanation of request for preferential examination.
In principle, more than four searched prior arts closest to the claimed invention for
preferential examination shall be disclosed. However, where special conditions exist, such as,
no relevant prior arts are found in the new technical field, less than three search results may
be disclosed. Also, where the searched prior art is directly related to the technical field of
the claimed invention or arts or all of components of the claimed invention, the description
of the search result shall be recognized to be appropriate.
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In the contrastive explanation, the similarities, differences and contrastive analysis between
each claim of the application for preferential examination and the closest prior art document
to the concerned claim shall be described consecutively. The contrastive explanation of all
independent claims shall be described and the contrastive explanation of dependent claims
can be left out. Also, in the presence of an independent claim whose contrastive explanation
is not disclosed, where the concerned independent claim involves the same components as
those of an independent claim whose contrastive explanation is written, but both claims are
in different categories, the independent claim whose contrastive explanation is not disclosed
may be substantially deemed to be contrastively analyzed based on the independent whose
contrastive explanation is written. Therefore, the independent claim whose contrastive
explanation is not disclosed shall be deemed to be appropriately described.
(Note) Where there exist additional search results related to the claimed invention, such as
search results made with support of local IP centers, the results may be submitted instead of
search processes and search results. Even so, the contrastive explanation shall be disclosed
in an application.
(4) Handling where self-search results and contrastive explanation are not submitted or
inappropriately disclosed
Self-search results and contrastive explanation shall be disclosed to explain the necessity of
urgent processing. However, where they are not submitted or inappropriately disclosed, an
examiner shall order an applicant to supplement the application. If no response to the
supplementation order is made from the applicant; self-search results and contrastive
explanation are not submitted even after the response from the applicant is made; or it is
recognized that self-search results and contrastive explanation are still inappropriately
disclosed, an examiner shall reject the request for preferential examination.
Where self-search results are inappropriately disclosed refer to the case where any of the
mandatory contents of disclosure of self-search results〔① search processes of prior arts and
search results (more than four results), ② contrastive explanation on independent claims〕 is
not disclosed or inappropriately disclosed. However, that an examiner has additionally found
prior arts to deny novelty and inventive step does not necessarily mean that the self-search
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was inappropriately conducted.
Self-search results and contrastive explanation would suffice if an examiner can easily
comprehend the results and explanation. An applicant does not need to follow the
disclosure requirements of a written explanation of request for preferential examination in
Annexed Form no. 5 of the Directive on Request for Preferential Examination of Patent
and Utility Model. Also, where a requester of preferential examination explained about
special cases, such as relevant prior art of a new technical field cannot be found, and an
examiner can recognize the case, self-search results and contrastive explanation can be
recognized to be disclosed.
3.1.7 Reference on Processing Time
Where documents to which an examiner cannot send a notification in response, such as a
report of change of applicant, a report of change of legal representative, a report of
resignation of legal representative, are received, the processing time shall be calculated with
the period from the receipt of the concerned documents and the acceptance of the
documents excluded. For example, where a decision of preferential examination is made on
February 1 and a report of change of applicant is submitted on March 20 and the
application is accepted after amendment on April 20, the preferential examination shall be
conducted by May 3. In other words, preferential examination shall be conducted within two
months from the decision of preferential examination (only preferential examination under
Article 4(1) or (2) of the Directive). However, since examination cannot be carried out during
the period (for 32 days) in which a report of change of applicant is received, the processing
period shall be calculated with such period in consideration.
3.2 Request for Preferential Examination
3.2.1 Overview of Request for Preferential Examination
Since a request for preferential examination is similar to a request for examination, where no
detailed provision regarding request for preferential examination exists under the Patent Act
or any decree under the Patent Act, provisions regarding request for examination shall apply.
3.2.2 Procedure of Request for Preferential Examination
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(1) A requester of preferential examination shall attach the following document and article
(where the article which forms the basis for request of preferential examination exists) to a
written request for preferential examination in Annexed Form no. 22 under the Enforcement
Rules of the Patent Act and submit the documents to the Customer Service Division of the
Korean Intellectual Property Office or the Application Registration Service Division of the
Seoul Branch Office.
- One original copy of a Written Explanation of Request for Preferential Examination
(attached with evidential documents of preferential examination in the annexed form)
- One original copy of the evidential document of legal representation when the procedure
is initiated by a legal representative
(2) A requester of preferential examination shall pay a fee for requesting preferential
examination under the Collection Rules of Patent Fee, etc. to national treasury receipt banks.
However, where an applicant wants to use the automated fee payment system (only for
electronically-filed applications), he/she does not need to pay fees of request for preferential
examination. When an applicant fills out the form for automated payment, patent fees shall
be automatically transferred from the applicant‟s bank account of a pre-registered financial
institution to the national coffers.
(Note) An automated fee payment system refers to a system under which a client has patent
fees transferred from the applicant‟s bank account of a pre-registered financial institution
(only Industrial Bank of Korea available for now) to the national treasury, rather than directly
paying patent fees. In order to use the automated fee payment system, the following
procedure shall be carried out in advance: Go to the PatentRo website at www.patent.go.kr→
Click Fee Management→ Move onto Automated Fee Payment→ Enter Application for
Automated Payment. If an applicant intends to make an automated payment of patent fees,
he/she shall submit the aforementioned application in electronic form.
(3) A person who intends to make a request for preferential examination for an application
under Article 4(1) of the Directive (a third party‟s working of the invention under the
provision of Article 61(1) of the Patent Act) shall specify the condition under which a third
party worked the claimed invention or the utility model in a written explanation of request
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for preferential examination.
(4) A person who intends to make a request for preferential examination for an application
under Article 4(2) of the Directive (an application under Article 9(1)-(9) of the Enforcement
Decree of the Patent Act, Article 5(1)-(11) of the Enforcement Decree of the Utility Model
Act, Article 36(8) of the Act on Special Cases concerning the Regulation of the Special
Economic Zones for Specialized Regional Development or Article 26 of the Special Act on
the Designation and Support of High-Tech Medical Complex) shall fill out a written
explanation of request for preferential examination in Annexed Form no. 5.
※ Items to be indicated in Written Explanation of Request for Preferential Examination of
Annexed Form no.5
(a) Self-search results and Contrastive explanation
(b) Ground for request of preferential examination
(c) Whether a claimed invention is being worked (is prepared to be worked) and whether the
invention is worked as business when preferential examination is requested on the ground
that an application constitutes the claimed invention which an applicant is working or
preparing to work as business under Article 4(2)(i) of the Directive)
(d) Whether a claimed invention is related to the type of business of a certified company
(when preferential examination is requested on the ground that the applicant is a venture
company, an innovation business(INNO-BIZ), company with outstanding employee
invention compensation system or a component material technology development
business)
(e) Whether a claimed invention is funded or certified in relate to green technology (when
preferential examination is requested on the ground of Article 4(2)(b) of the Directive)
(5) A person who intends to make a request for preferential examination on an application
(a patent application on which the Commissioner of the Korean Intellectual Property Office
agreed to preferentially examine with a commissioner of a foreign patent office) under
Article 4(3) of the Directive shall fill out a written explanation of preferential examination in
annexed forms no. 2, no.3 or no. 6 according to the indication guidelines.
(6) Where preferential examination is requested on the ground of an application under
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Article 4(4) of the Directive (an application outsourced to an external specialized institute for
prior art search), an applicant can replace a written explanation of preferential examination
under Article 5(1)(1) of the Directive by indicating that the concerned application has been
outsourced to an external specialized institute for prior art search in a request for
preferential examination under Annexed Form no. 22 of the Enforcement Rule of the Patent
Act as well as the name of the external specialized institute and the date of request for prior
art search.
3.2.3 Availability of Withdrawal of Request for Preferential Examination
Where a notification of a decision of preferential examination has been made, a request for
preferential examination shall not be withdrawn since once an examiner notifies a decision
of preferential examination, the request for preferential examination takes effect and the
examiner (or the Korean Intellectual Property Office) starts examination with consideration
that the request for preferential examination is valid.
Once a written withdrawal of request for preferential examination is submitted after the
decision of preferential examination is made, an examiner shall notify a requester of
preferential examination (a person who requested withdrawal) of the intention that a written
withdrawal of preferential examination cannot be accepted.
3.3 Procedure of Determination of Preferential Examination
3.3.1. Flowchart of Examination Procedure
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3.3.2 Overview of Examination by Stage
3.3.3.1 Formalities Examination
The Director General of the Customer Service Bureau shall complete the formalities
examination on a request for preferential examination and transfer the request to the
director general of the concerned examination bureau.
Once relevant documents of preferential examination are transferred from the Customer
Service Bureau, a person in charge of determination on preferential examination shall
conduct the formalities examination on the concerned application and the written request
for preferential examination. The formalities examination on a request for preferential
examination shall be as follows:
(1) Amendment Order and Notification of Ground for Return
A person in charge of determination on preferential examination shall order amendment or
notify a ground for rejection in the name of the Commissioner of the Korean Intellectual
Property Office when it has been found out based on the results of the formalities
examination on the transferred documents that the documents do not comply with the
statutory formalities or all or part of fees have not been paid.
When irregularities fall under Article 11 of the Enforcement Rules of the Patent Act, a person
in charge of determination on preferential examination shall notify a ground for rejection. As
for irregularities which do not fall under the article, he/she shall order amendment.
Where a person in charge of determination on preferential examination orders amendment
or notifies a ground for return due to the irregularities found from the formalities
examination, the designated period for submission of a written opinion (amendment) or a
written explanation shall be one month and the opinion or explanation shall specify the
irregularities in detail.
(2) Determination on Addressing Irregularities and Decision
After the designated period has elapsed, where irregularities have been deemed to be
addressed based on a written opinion (amendment) or explanation submitted by an
application, a person in charge of determination on preferential examination shall determine
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whether the concerned application is eligible for preferential examination. Where
irregularities are not addressed, he/she shall invalidate the procedure of request for
preferential examination in the name of the Commissioner of the Korean Intellectual
Property Office or return the documents of request for preferential examination.
Even when a requester of preferential examination has submitted a written opinion
(amendment) or explanation after the designated period has elapsed, a person in charge of
determination on preferential examination shall treat the documents of request for
preferential examination as a valid written opinion (amendment) or explanation and reassess
whether irregularities are addressed or not, rather than invalidating the procedure or
returning the concerned documents, if he/she has not invalidated the procedure of request
for preferential examination or returned the documents of request for preferential
examination.
(3) Fee Return
Where a person in charge of determination on preferential examination intends to invalidate
the procedure of request for preferential examination or return the documents of request for
preferential examination, he/she shall make an overpayment notification additionally or send
a notice on the procedure of fee return attached to a notification on invalidation of the
procedure or return of documents.
A notice on invalidation of the procedure of request for preferential examination or return of
documents of request for preferential examination shall contain the intention to invalidate(or
return) a request for preferential examination, information on administrative trial or lawsuit
against the decision, amount of fees to be returned or the way to apply for the fee return.
Where a procedure of request for preferential examination is invalidated or documents of
request for preferential examination are returned, the whole amount of fee of request for
preferential examination shall be returned.
3.3.3.2 Determination on Preferential Examination
(1) IPC Assignment of Application for Preferential Examination
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When the assignment of IPC is delayed, it postpones the designation of a person in charge
of determination on preferential examination. Therefore, an examiner shall assign IPC on an
application requested for preferential examination preferentially over other applications. An
examiner shall confirm the IPC within one week from the transfer date of the application (in
the case of request for super-accelerated examination, within two weeks) or request for re-
classification.
The IPC of an application requested for preferential examination shall be automatically
assigned unless it is not confirmed within one week from the transfer date of the application.
(2) Determination Deadline for Preferential Examination
A person in charge of preferential examination shall determine whether to conduct
preferential examination within one week (in the case of request for super-accelerated
examination, within two weeks) from the transfer date of a written request for preferential
examination.
However, in the case of amendment order under Article 58 of the Examination Practice
Handling Provision, correction order under Article 60 or consultation under Article 61, a
person in charge of determination on preferential examination shall calculate seven days
again from the date of termination of a period for amendment designated by the person in
charge or the date on which the concerned documents were transferred to the person in
charge, whichever expires later.
The period spent calculating the deadline shall not be included.
(3) Consultation from Relevant Institute
Where it is hard to determine whether the concerned application is eligible for preferential
examination under Article 4 of the Directive, a person in charge of determination on
preferential examination shall request consultation from relevant agencies.
(4) Complement Order of Request for Preferential Examination
Where an application requested for preferential examination is deemed not eligible for
preferential examination under Article 4 of the Directive or the submitted documents cannot
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clarify whether an application is eligible for preferential examination, a person in charge of
determination on preferential examination shall order complement a request for preferential
examination within the designated period of one month. However, if the complement order
is related to the outcome of prior art search, such as the failure of submission of search
results, he/she shall notify such complement order to the requester of preferential
examination as well as the specialized institute.
Where items necessary for determination on preferential examination are unclearly written
or cannot be recognized, a person in charge of preferential examination shall order
complement a written request and do not order to complement a request just because an
explanation of request for preferential examination does not comply with the annexed form
of the Directive.
Where irregularities are not addressed after submitting the document after
complementation, a person in charge of determination on preferential examination shall
dismiss a request for preferential examination after the designated period for
complementation of preferential examination has elapsed and notify such fact to a requester
of preferential examination and applicant (only when an applicant is not a requester of
preferential examination).
(5) Items Available for Complementation of Request for Preferential Examination
A request for preferential examination can be complemented from the time of request for
preferential examination until the determination on preferential examination. Items available
for complementation of request for preferential examination are not limited. However,
complementation of changing an application of request for preferential examination or a
requester of preferential examination shall not be recognized.
(6) Notification of Determination on Preferential Examination
Where the concerned application is eligible for preferential examination under Article 4 of
the Directive, a person in charge of determination on preferential examination shall notify
such fact to the requester of preferential examination and applicant (only when an applicant
is not a requester of preferential examination) immediately.
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However, as for a patent application agreed for preferential examination between the
Commissioner of the Korean Intellectual Property Office and a commissioner of a foreign
patent office, the fact that the preferential examination on such application is determined
shall not be notified.
(7) Fee Return
The procedure for fee return after dismissal of request for preferential examination is the
same with the procedure for fee return of the case where a request for preferential
examination is invalidated or returned. However, the returned fee shall amount to the
request fee of preferential examination with the fee for determination on preferential
examination extracted.
(8) Other Cases regarding Request for Preferential Examination
① Where a request of preferential examination is made on multiple grounds
A request for preferential examination can be made on the basis of multiple grounds for
request of preferential examination. In such a case, an examiner shall not invalidate a
request for preferential examination and determine and proceed preferential examination if
a requester holds at least one ground for request of preferential examination.
② Where a ground of request for preferential examination which a requester did not claim
exists
When making determination on preferential examination, a ground for request of
preferential examination shall be assessed based on the ground for preferential examination
indicated in an explanation of request for preferential examination. Therefore, whether to
conduct preferential examination cannot be determined on the ground that a requester of
preferential examination did not claim. However, where a ground for request of preferential
examination is obvious or explained enough, it can be considered when determining
whether to grant the preferential examination status.
As a result of examination on a request for preferential examination, where preferential
examination cannot be conducted on the ground for request of preferential examination
submitted by a requester or where other grounds for preferential examination exist, a
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person in charge of determination on preferential examination shall order to complement a
request for preferential examination before the dismissal of the request. When a ground for
preferential examination is changed after the complementation order, he/she shall determine
whether to conduct preferential examination based on the newly-submitted ground for
request of preferential examination.
For example, where preferential examination was requested based on the ground for the
working by a third party and then a person in charge of determination on preferential
examination ordered to complement the evidential document on the third party‟s working,
but a requester of preferential examination failed to complement the evidential document
on the third party‟s working and changed the ground for request of preferential examination
on the ground that the concerned application is filed by a venture company, if the claimed
invention is considered to be related to the type of industry to which the venture company
belongs, the person in charge of determination on preferential examination shall recognize
the application to be eligible for preferential examination.
③ Where multiple requests for preferential examination are made
After submission of a request for preferential examination, where a new request for
preferential examination is submitted before an examiner in charge of the application
determines whether to conduct preferential examination based on the previously-submitted
request, the subsequently-submitted request for preferential examination shall be subject to
return.
Note: It shall be deemed the same with the case where a request for examination is
submitted and then another request for examination is submitted subsequently. (Dual
Requests)
After a person in charge of formalities examination returns or invalidates a request for
preferential examination or after an examiner in charge of the concerned application made a
decision to invalidate preferential examination, a request for preferential examination can be
submitted again.
④ Availability of whether to determine preferential examination before the submission
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deadline based on the complementation order on request for preferential examination
Where the requirements of request for preferential examination are fulfilled through
complementation such as submission of relevant documents even before the submission
deadline of complementation order of request for preferential examination, preferential
examination can be determined even within the period. However, since relevant documents
can be additionally submitted within the period as for determination on dismissal of
preferential examination, determination on dismissal of preferential examination shall be
made after the termination of the concerned period.
3.3.3.3 After Determination on Preferential Examination
(1) Processing Period after Determination on Preferential Examination
An examiner shall start examination on an application determined for preferential
examination either within two months from the transmittal date of a written decision on
preferential examination (as for an application agreed for preferential examination between
the Commissioner of the Korean Intellectual Property Office and the commissioner of a
foreign patent office or an application determined for preferential examination based on the
request for prior art search by a specialized institution, four months) or within one month
from the transmittal date of the search results to the examiner under Article 8(3)(2) of the
Enforcement Decree of the Patent Act(including Article 8(3)(2) of the Enforcement Decree of
the Patent Act which Article 9 of the Utility Model Act applies mutatis mutandis), whichever
expires later(hereinafter referred to as „processing period‟).
In setting the order of examination among applications determined for preferential
examination, in principle, an examiner shall conduct the application whose processing period
expires first, however, the examiner may change the order of examination for the effective
proceeding of examination.
Where an amendment is submitted under the main text of Article 47(1) of the Patent Act or
the main text of Article 47(1) of the Patent Act which Article 11 of the Utility Model Act
applies mutatis mutandis before examination, preferential examination shall be started
within the abovementioned processing deadline or within one month from the transmittal
date of the concerned amendment, whichever is later.
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※ Where preferential examination cannot be conducted within the processing deadline
because of a jump in requests for preferential examination, it shall be reported to the
director of the concerned examination division or examination team (the proviso of Article
66(1) of the Directive)
※ As for a patent application agreed for preferential examination between the
Commissioner of the Korean Intellectual Property Office and the commissioner of a foreign
patent office, a notification of the decision on preferential examination is not made.
Therefore, the date of determination on preferential examination or the date of
redetermination on preferential examination, whichever expires later, shall be deemed to be
the transmittal date of the notification of the decision on preferential examination.
※ As for a patent application determined for super-accelerated examination, an examiner
shall start examination within fourteen days from the transmittal date of a decision on
super-accelerated-examination. Where examination cannot be started within the processing
deadline because an amendment is submitted after transmittal of a decision on preferential
examination, an examiner can change the processing deadline by reporting such fact to the
director of the examination division (or team).
The intermediate documents of an application for preferential examination shall be
processed within two months (as for super-accelerated examination, within one month) from
the expiration date of the designated period or the date when the concerned documents
are transmitted to an examiner, whichever is later.
(2) Notification, etc. of Result of Preferential Examination
① A person in charge of determination on preferential examination shall notify a requester
of preferential examination(only when a requester of preferential examination is not an
applicant) of the final processing results on the application determined for preferential
examination (patent grant, utility model registration grant, patent refusal, utility model
registration refusal, withdrawal, abandonment, etc.) (Article 67 of the Directive).
② Where relevant documents of preferential examination (including the original copy of the
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receipt of request fee of preferential examination) are not in electronic form, an examiner
shall notify a requester of preferential examination of the final processing results and
transmit the relevant documents of preferential examination to the principal director of the
concerned examination bureau. The principal director shall turn the transmitted documents
into electronic files. However, relevant documents of preferential examination are in
electronic form, the abovementioned procedure can be skipped.
(3) Other Relevant Cases
① Deferral of Preferential Examination for Application filed before June 30, 2001
Where preferential examination is conducted for an application filed before June 30, 2001
and requested for examination by a third party, an examiner shall defer determination on
preferential examination for three months after the filing date and after three months have
elapsed from the filing date, he/she shall make a determination on whether to grant a
patent.
It is because, when a third party makes a request for preferential examination on the
concerned application filed before June 30, 2001, the application can be amended within
three months from the date when the request for examination by a third party is notified to
the applicant.
② Time to Start Examination on Divisional Application of Application requested for
Preferential Examination
Where a divisional application is filed based on the original application requested for
preferential examination, but the divisional application is not requested for preferential
examination, the time to start examination on the divisional application shall be calculated
based on the date of request for examination on the original application, regardless of the
time of division.
However, where a divisional application is requested for preferential examination, an
examiner shall start examination on the application with the earlier examination order
between the divisional application and the original application requested for preferential
examination, according to the examination order.
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③ Where Examination is Conducted before Transmittal of Relevant Document for
Preferential Examination
Where preferential examination is requested after the start of examination on an application
and the application is eligible for preferential examination, an examiner shall recognize the
application to have been requested for preferential examination and conduct preferential
examination on the application.
④ Where an application requested for preferential examination is a prior application of an
application claiming domestic priority
Where a prior application of an application claiming domestic priority is a patent application,
the application shall be deemed to be withdrawn when one year and three months have
passed from the date of filing the prior application. Where a prior application is withdrawn,
the prior right shall be deemed not to exist in applying Article 36 of the Patent Act. However,
if a patent is granted before the prior application is deemed to be withdrawn, a subsequent
application cannot be granted a patent since the prior application holds the prior right.
Therefore, where an application requested for preferential examination becomes a prior
application of the application claiming domestic priority, it shall be treated as follows:
Where an application requested for preferential examination is confirmed to be a prior
application of the application claiming domestic priority before the determination on
preferential examination, the application is not eligible for preferential examination because
the ground for the urgent processing of the application under Article 61(2) of the Patent Act
is not recognized. Therefore, an examiner shall order an application to complement the
request for preferential examination within the designated period(with that indication that
preferential examination cannot be conducted because an application requested for
preferential examination does not need to be urgently processed since it is a prior
application of the application claiming domestic priority). After the designated period has
elapsed, the examiner shall dismiss the request for preferential examination.
However, where priority claim is withdrawn before the dismissal of the request for
preferential examination, an examiner shall deem it as valid request for preferential
examination and conduct preferential examination.
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Also, where an application eligible for preferential examination after determination on
preferential examination has become a prior application of the application claiming
domestic priority, an examiner shall withhold examination until the application is deemed to
be withdrawn.
3.4 Super-Accelerated Examination on Green Technology
(1) Super-Accelerated Examination
As green technology is getting more recognition worldwide and it is closely related to
policies on low carbon, green growth being pursued at the pan-government level in Korea,
the Korean Intellectual Property Office has adopted the Super Accelerated Examination
System under which an application can be examined earlier than other applications
requested for preferential examination if it fulfills certain requirements for super-accelerated
examination, in order to support the early grant of patent on Korean green technology. The
system aims to provide examination result within one month from the request for super-
accelerated examination.
(2) Subject for Super-Accelerated Examination
A patent application fulfilling the below-mentioned requirements A and B at the same time
and requested according to the request procedure C can be eligible for super-accelerated
examination.
A. A patent application which falls under Article 4(2)(b) or (n) of the Directive on Request for
Preferential Examination of Patent and Utility Model.
- A patent application directly related to green technology financed or certified by the
Korean government
①Patent application granted with green technology certification under the Framework Act
on Low Carbon Green Growth and Article 19 of the Enforcement Decree of the same act
② Patent application of a company certified as green-tech enterprise under Article 32 of the
Framework Act on Low Carbon Green Growth and Article 19 of the Enforcement Decree of
the same act
③ Patent application of an applicant subsidized from the Korean central or municipal
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government under Article 31 of the Framework Act on Low Carbon Green Growth
④ Patent application of an applicant who received investment of Green Technology
Investment Co., Ltd. established under Article 29 of the Framework Act on Low Carbon
Green Growth and Article 16 of the Enforcement Decree of the same act
⑤ Patent application of an applicant stationed in Green Technology Industrial Cluster
established under Article 34 of the Framework Act on Low Carbon Green Growth and Article
22 of the Enforcement Decree of the same act
⑥ Patent application financed or certified based on other national policies
-Article 4(2)(n) of the Directive: a patent application on green technology with the main
purpose of pollution prevention or pollutant elimination designated under the environment-
related statute
① Noise/vibration control facility, soundproof facility, vibration proof facility designated
under Article 2 of the Noise and Vibration Control Act and Article 3 of the Enforcement Rule
of the same act
② Water-pollutant prevention facility under Article 2 of the Water Quality and Ecosystem
Conservation Act and Article 7 of the Enforcement Rule of the same act
③ Air pollution control facility under Article 2 of the Clean Air Conservation Act and Article
6 of the Enforcement Rule of the same act
④ Waste management facility under Article 2 of the Waste Control Act and Article 5 of the
Enforcement Decree of the same act
⑤ Resource-making facility, purification facility, public treatment facility under Article 2 of
the Act on Livestock Manure Treatment and Use and Article 3 of the Enforcement Rule of
the same act
⑥ Recycling facility designated under Article 2 of the Act on the Promotion of Saving and
Recycling of Resources and Article 3 of the Enforcement Rule of the same act
⑦ Public sewage treatment facility, livestock manure treatment facility, sewage or private
waste treatment facility under Article 2 of the Sewerage Act
B. A patent application requested for prior art search for a specialized institute under Article
4(4) of the Directive
An application shall be filed by a requester of preferential examination and requested for
prior art search for any of the specialized institutes for prior art search designated by the
Korean Intellectual Property Office (Korea Institute of Patent Information, WIPS Co.,Ltd., IP
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SOLUTION Co.,Ltd.) under Article 58(1) of the Patent Act. Also, the concerned specialized
institute shall notify the search result to the Commissioner of the Korean Intellectual
Property Office within 10 days from the request for preferential examination.
C. An electronic application with an indication of intention in a written request for
preferential examination
The box for Others in a written request for preferential examination shall contain the
indication of „a patent application directly related to green technology and requested for
prior art search‟ and the name of the specialized institute for prior art search and request
date based on the information on the request for prior art search. The written request for
preferential examination shall be electronically filed. Meanwhile, if a request for preferential
examination is submitted in writing, more time would be spent on the receipt of documents
and electronization, making it impossible to start examination within one month from the
submission of the written request for preferential examination. Therefore, only a patent
application submitted in electronic form shall be eligible for super-accelerated examination.
(Note) Determination on attachment of a written request for preferential examination in the
case of super-accelerated examinations: in order for an application to be eligible for super-
accelerated examination, an applicant shall indicate in a written request for preferential
examination that the concerned application is directly related to green technology and has
been commissioned for prior art search to a specialized institute as well as the information
on commission of prior art search by the specialized institute( the name of the specialized
institute and the date of commission, etc.) and then submit a written explanation of request
for preferential examination indicating that the concerned application is entitled to
preferential examination for green technology (attached with the evidential documents, if
necessary). Therefore, where a written explanation on preferential examination does not
include such indications or an applicant fails to submit a written explanation on preferential
examination, an examiner shall order a correction order. However, in the case of super-
accelerated examination, since search results are submitted by a specialized institute, an
applicant need not indicate the search process of prior art and any contrastive explanation
on prior art in a written request for preferential examination.
(3) Processing Period of Application Requested for Super-Accelerated Examination
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(4) Process of Determination on Preferential Examination of Application Requested for Super-
Accelerated Examination
If an application is eligible for super-accelerated examination, an examiner shall determine
whether to grant the preferential (super-accelerated) examination status by reviewing on the
two grounds for preferential examination (application entitled to preferential examination on
green technology(Article 4(2)(b) or (n) of the Directive) and the requirement of request for
preferential examination based on prior art search results made by a specialized
institute(Article4(4) of the Directive)) on the PatentNet website. However, an examiner shall
make a correction order if either of the two grounds for preferential examination is not met
and shall determine whether the concerned application is eligible for super-accelerated
examination based on the subsequently-submitted documents or argument. However, where
an applicant asks for only preferential examination, an examiner may directly determine to
grant the preferential examination status without any correction order and even after the
correction order is made, the examiner can determine to conduct preferential examination
on the concerned application if the applicant wishes.
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Where an application is eligible for super-accelerated examination and is determined for
preferential(super-accelerated) examination, an examiner shall start examination within the
designated processing period of super-accelerated examination. Where the concerned
application is only determined to be preferentially examined, an examiner shall follow the
procedure for preferential examination. Meanwhile, other process of determining a request
for super-accelerated examination shall be referred to the process of determining
preferential examination.
(5) Cases of Determination on Preferential Examination on Application requested for Super-
Accelerated Examination
Where an application is eligible for super-accelerated examination but has not been filed
electronically
If an applicant made a request for super-accelerated examination claiming that the two
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grounds for preferential examination(application entitled to preferential examination on
green technology(Article 4(2)(b) or (n) of the Directive) and the requirement of request for
preferential examination based on prior art search results made by a specialized
institute(Article4(4) of the Directive))) are met, but he/she failed to file the application
electronically, the concerned application shall not be returned since the application does not
fall under Article 11 of the Enforcement Rules of the Patent Act. However, where an
examiner orders to file an electronic application and determines to conduct a preferential
examination after the correction order, or where an applicant wishes, the examiner can
determine to conduct a preferential examination right away. Provided, however, that an
amendment to a request for preferential examination is electronically submitted after the
correction order and the above-mentioned grounds are fulfilled, an examiner may determine
to conduct a super-accelerated examination on the concerned application.
(6) Comparison of Super-Accelerated Examination and Preferential Examination
The comparison of deadlines for processing super-accelerated examination and preferential
examination is as follows:
Super-accelerated examination Preferential examination
Definitive Classification
Within two days from the date
of transfer or hand-over of pre-
IPC assigned application
documents
Within one week from the date of
transfer or hand-over of pre-IPC
assigned application documents
Submission Period of
Prior Search Report
by Specialized Institution
Within 10 days from the request
for preferential examination
Within one months from the request
for preferential examination
Determination Process
and Period of
Determination
on Preferential
Examination
Within two days from the date
of transfer of a written request
for preferential examination (the
date of transfer of the search
results since the application falls
under Article 4(4) of the
Directive)
Within seven days from the date of
transfer of a written request for
preferential examination (the date of
transfer of the search results since
the application falls under Article 4(4)
of the Directive)
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Pendency Period
after Determination on
Preferential Examination
Within 14 days from the
transmittal date of a written
determination on preferential
examination
The later date between two months
from the date of transmittal of a
written determination of preferential
examination(four months as for
applications agreed for preferential
examination between KIPO
commissioner and a commissioner
of foreign patent offices or
applications preferentially examined
by commission of prior art search
by specialized institute) and one
month from the date when the
search results under Article 8(3)(2) of
the Enforcement Decree of the Patent
Act are delivered to examiner
Pendency Period of
Interim Documents
after Start of Examination
Within one month from the later
date between the expiration
date of the designated period
and the date of transmittal of
the concerned documents to an
examiner
Within two months from the later
date between the expiration date of
the designated period and the date
of transmittal of the concerned
documents to an examiner
※ As for a patent application agreed for preferential examination between the
Commissioner of the Korean Intellectual Property Office and the commissioner of a foreign
patent office, the later date between the date of determination on preferential examination
and the date of re-determination of preferential examination
4. Guidelines of Determination on Preferential Examination by Subject
4.1 Application being worked by Third Party
4.1.1 Subject
Applications for an invention or utility model deemed to have been worked as business by a
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third party after the laying-open of the application shall be included.
4.1.2 Examination Guidelines
(1) Definition of Laying-open of Application
“Laying-open of application” refers to the disclosure of an application specified under Article
64 of the Patent Act. Therefore, where an application has not been laid open as described in
Article 64 of the Patent Act at the time of request for preferential examination (or where a
request for early disclosure of the application has not been filed, or the laying-open is not
impending), an applicant shall make a request for early disclosure of the application.
(2) Definition of Third Party
“A third party” refers to a person other than an applicant and who has not obtained the
permission to work the claimed invention or utility model.
As long as no particular ground exists, an examiner does not need to additionally
investigate whether the permission to work the claimed invention is obtained and just may
recognize the argument made by a requester of preferential examination as it is.
(3) Definition of Working
“Working” of the working of the invention by a third party refers to the acts of the working
under Article 2(3) of the Patent Act or Article 2(3) of the Utility Model Act.
a. In the case of an invention of a product, acts of manufacturing, using, assigning, leasing,
importing or offering for assignment or lease (including displaying for the purpose of
assignment or lease) of, the product
b. In the case of an invention of a process, acts of using the process
c. In the case of an invention of a process for manufacturing a product, acts of
manufacturing, using, assigning, leasing, importing, or offering for assignment or lease of,
the product manufactured by the process, in addition to the acts mentioned in the
preceding paragraph (b)
d. Acts of manufacturing, using, assigning, leasing, importing, or offering for assignment or
lease (including displaying for the purpose of assignment or lease) of, the product related to
utility model registration
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Also, „working‟ means the working of an invention in the Republic of Korea. Therefore,
where an invention filed in the Republic of Korea is being worked only in a foreign country,
it shall not constitute the working of an invention. However, where a claimed invention
produced in a foreign nation is imported to the Republic of Korea, it shall constitute the
working of an invention.
(4) Determination on Identicalness between the Invention worked by Third Party and the
Claimed Invention
A request for preferential examination made by an applicant on the ground that a third
party is working the applicant‟s invention shall clarify that the invention claimed to be
worked by the third party is identical with the invention of the applicant. Also, a requester of
preferential examination shall verify the ground for identicalness of the two inventions.
By submitting the below-mentioned documents, a requester of preferential examination can
verify the fact of the invention being worked by a third party with the description of the
detailed condition where the third party is working the requester‟s invention(time, place,
product name, number of sales made, etc.). For example, a requester may verify the fact of
the invention being worked by a third party by submitting the detailed explanation on the
time and date of the purchase of the product and the correlation between the concerned
product and the claimed invention or utility model by submitting a photograph of the
product being sold by a third party along with a written explanation on request for
preferential examination.
Example)-Submission of Product being worked by Third Party
-Submission of Photograph of Product, Place of Invention being worked or Invention being
sold
-In the case of content-certified mail requesting the ban on the working of the invention by
a third party being sent, submission of a copy of the content-certified mail
-Submission of other evidential documents or products of the invention being worked by a
third party
An examiner shall determine on the identicalness of the concerned product being worked by
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a third party and the claimed invention or utility model by comparing them with reference
to the evidential materials such as products or pictures presented by a requester of
preferential examination. However, where identicalness cannot be determined only based on
the submitted materials, an examiner may order to complement evidential documents.
However, where it is deemed difficult for a requester of preferential examination to verify the
fact that the invention is being worked by a third party due to lack of cooperation from the
person working the concerned invention and the possibility of the identicalness between the
invention being worked by the third party and the claimed invention is pretty high, an
examiner may recognize the request for preferential examination without requesting the
submission of additional materials from the requester of preferential examination. That is to
say that where it is not clear whether the invention or utility model being worked by a third
party and the claimed invention or utility model are not identical after the review of both
inventions or utility models, an examiner may recognize the request for preferential
examination without conducting additional investigations, except for obvious cases where
the two inventions or utility models are substantially not the same. However, where the two
inventions or utility models are different, an examiner shall dismiss the request for
preferential examination.
4.1.3. Handling of Request for Preferential Examination based on Working of Invention
by Third Party prior to Laying-open
Where an invention or utility model is being worked by a third party, the concerned
application shall be laid open under Article 64 of the Patent Act as of the date of
determination on preferential examination. Also, an application laid open based on a request
for early publication shall fall under the laying-open of the application under Article 64 of
the Patent Act.
Also, as for a request for preferential examination made based on the working of the
invention by a third party before the laying-open of the application, where the publication
of the concerned application is imminent (an application expected to be laid open within 15
days from the date of transmittal of a written request for preferential examination) or an
applicant made a request for early publication of the application even though the concerned
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application has not been laid open under Article 64 of the Patent Act, an examiner shall
withhold the determination on preferential examination without dismissal of the request for
preferential examination.
Except for the case where it is determined that an application is not to be laid open early
through the dismissal of the request for early publication after withholding the decision on
preferential examination, once the concerned application is laid open, an examiner shall
conduct preferential examination.
4.1.4 Handling of Request for Preferential Examination in Presence of Warning from
Applicant
A person who has received a warning on the working of the published invention or utility
model without permission from an applicant may make a request for preferential
examination on the claimed invention or utility model by submitting the written warning or
a copy of the warning, along with the indication of the detailed condition (Date of warning,
Means of Warning, Contents of Invention or Utility Model related to Warning as well as
Contents of Invention or Utility Model being worked) in a written explanation of request for
preferential examination. An examiner shall recognize the request for preferential
examination as long as there is no special ground for the applicant‟s rejection to the fact
that the applicant delivered a warning to the third party and the invention or utility model
being worked by the person who has received the warning is not recognized to be clearly
different from the claimed invention or utility model.
4.2 Application related to Defense Industry
(1) Subject
Applications related to the defense industry and applications on defense materials or the
manufacturing process of the defense materials defined under Article 34 of the Defense
Acquisition Program Act and Article 39 of the Enforcement Decree of the same act and
Articles 27 and 28 of the Enforcement Rule of the same act
※ Defense materials under the Defense Acquisition Program Act are divided into major
defense materials and general defense materials
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① Major Defense Materials
- Firearms and other fire power weapons, guided weapons, aircraft, vessels, ammunition,
tanks, armored vehicles and other mobile combat equipment, radars, identification friend or
for and other communication and electronic equipment, night observation devices and other
optical or thermal imaging devices, combat engineering equipment, chemical, biological and
radiological warfare equipment, command and control systems, or other materials that the
Administrator of the Defense Acquisition Program Administration designates as recognized
to be important for military strategy or tactical operations
② General Defense Materials
- Defense materials other than major defense materials
(2) Examination Guidelines
A request for preferential examination on an application related to the defense industry
does not require the submission of additional evidential documents. A requester may
indicate the name of at least one of the items listed under Article 4(2)(a) of the Directive
(Example: Firearms and other fire power weapons under Article 35(2)(1) of the Defense
Acquisition Program Administration) in a written explanation on request for preferential
examination and explain that the claimed invention or utility model constitutes the
concerned item.
Even where a requester of preferential examination did not specify defense materials in a
written explanation of request for preferential examination and generally indicated the
subject matter as “a patent application in the defense industry” under Article 9(1) of the
Enforcement Decree of the Patent Act, if an examiner can determine that the subject matter
falls under the defense materials defined under the above-mentioned Defense Acquisition
Program Act , he/she may recognize a request for preferential examination without making
an additional correction order.
4.3 Patent Application directly related to Green Technology, Utility Model Registration
Application useful for Pollution Prevention
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4.3.1 Overview
Under Article 9(2) of the newly-amended Enforcement Decree of the Patent Act, a patent
application useful for pollution prevention is changed to a patent application directly related
to green technology and this article applies to a request for preferential examination filed
since October 1 of 2009. A patent application directly related to green technology shall
include a patent application useful for pollution prevention, which was eligible for
preferential examination before the revision of the Patent Act.
Patent applications directly related to green technology and applications of utility model
registration useful for pollution prevention which are eligible for preferential examination are
specified under Article 4(2)(b) and (n) of the Directive on Request for Preferential
Examination on Patent and Utility Model and can be divided into two categories:
① Patent applications on green technology financed or certified by the government, etc.
(excluding applications of utility model registration)
② Applications on pollution prevention facilities and methods of pollution prevention which
the facilities hold (including both patent applications and applications of utility model
registration)
4.3.2 Definition and Scope of Green Technology
In order to be eligible for preferential examination, a claimed invention shall constitute
green technology. In general, green technology refers to technology which minimizes the
emission of greenhouse gases and pollutants by saving and effectively using energy sources
in the entire course of socioeconomic activities such as greenhouse gas emission reduction
technology, energy efficiency technology, cleaner production technology, cleaner energy
technology, resource circulation and eco-friendly technology (including relevant convergence
technology). Green technology is defined under Article 2(3) of the Framework Act on Low
Carbon Green Growth and Article 9(2) of the Enforcement Decree of the Patent Act.
When requesting preferential examination on green technology, a requester shall explain on
what ground the claimed invention constitutes green technology in a written explanation on
request for preferential examination. Then, a person in charge of determination on
preferential examination shall make a decision on whether the claimed invention constitutes
green technology based on the argument presented by the applicant.
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Meanwhile, since an invention on pollution prevention facilities and methods of pollution
prevention which the facilities hold constitutes environmentally-friendly technology in the
definition of green technology, the invention shall be deemed as green technology.
Where there is not ground for denial that the claimed invention is a technology which saves
and uses energy sources efficiently and minimizes the emission of greenhouse gas and
pollutants, the invention shall be recognized as green technology. Especially, the below-
mentioned technology shall constitute green technology.
<27 Major Green Technology Initiatives on Comprehensive Measures of Green Technology
R&D>
1. Climate Change Forecast and Modeling Development
2. Climate Change Effect Evaluation and Adaptation
3. High Efficient, Low Cost Silicon Solar Cell Technology
4. Non-Silicon Solar Cell Mass Production and Core Technology
5. Bioenergy Production Element and System
6. Advanced Light Water Reactor Design and Construction
7. Eco-Friendly Non-Proliferation Reactor and Nuclear Fuel Cycle System Development
8. Nuclear Fusion Reactor Design and Construction
9. High Efficient Hydrogen Production and Storage
10. Next-Generation High Efficient Fuel Battery System
11. Eco Friendly Plant Growth Promotion
12. Integrated Gasification Combined Cycle
13. High Efficiency-Low Emission Vehicle
14. Intelligent Transportation and Distribution
15. Ecological Space and Urban Generation
16. Eco-Friendly and Low Energy Construction
17. Green Process considering Environmental Load and Estimation of Energy Consumption
18. LED Lights and Green IT
19. Electric Power IT and Electrical Device Efficiency Promotion
20. High Efficient Secondary Battery
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21. CO2 Capture, Storage and Processing
22. Non-CO2 Greenhouse Gases Treatment
23. Water Quality Evaluation and Management
24. Alternative Water Resources Securement
25. Waste Reduction, Recycling, Waste-to-Energy Technology
26. Harmful Substance Monitoring and Environment Purification
27. Virtual Reality
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<Green Technology from 17 New Growth Engines>
1. New and
Renewable Energy
Technology
Solar Battery, Hydrogen Fuel Battery, Bioenergy(Biodiesel,
bioethanol, biogas, BtL(Biomass-to-Liquids), Ocean
Energy(Tidal Power Generation,
2. Carbon Emission
Reduction
Technology
Carbon Capture & Storage(CCS), Nuclear Power, Nuclear
Fusion, Technology for more efficient Fossil Fuel, Non-CO2
Gas Treatment Technology, etc.
3. Advanced Water
Treatment
Technology
Smart Sewage System(Energy-Efficient Membrane Purification,
Intelligent Membrane Purification, etc.), Sewage and
Wastewater Treatment, desalination, Aquatic Ecosystem
Restoration, Soil & Groundwater Remediation, etc.
4. LED Application
Technology
Eco LED, LED Smart Module, LED Lighting, etc.
5. Green
Transportation
System-related
Technology
Green Car(Hybrid Car, Plug-in Hybrid Car, Clean Diesel Car,
Fuel Cell Car, etc.), WISE Ship(Futuristic Eco-friendly Ship,
Leisure Boat, etc.), Advanced Train(High-Speed Train, Tilting
Train, Magnetic Levitating Train, etc.), Bicycle, etc.
6. Advanced Green
City-related
Technology
Ubiquitous City(U-City), Intelligent Transport System(ITS),
Geographic Information System(GIS), Energy-efficient Green
House, etc.
Where a requester of preferential examination gave no explanation on the claimed invention
requested for preferential examination on the ground for green technology or where the
claimed invention is deemed irrelevant to green technology based on the explanation given
by a requester of preferential examination, an examiner shall order to correct the request of
preferential examination based on such grounds.
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4.3.3. Patent Application on Green Technology Financed or Certified by State, etc.
(1) Subject
Article 4(2)(b) of the Directive on Request for Preferential Examination on Patent and
Utility Model governs patent applications directly related to green technology and one of
the following patent applications shall be eligible for preferential examination.
① Patent application certified as green technology under Article 32 of the Framework Act of
on Low Carbon Green Growth and Article 19 of the Enforcement Decree of the same act
② Patent application filed by a certified green business under Article 32 of the Framework
Act of on Low Carbon Green Growth and Article 19 of the Enforcement Decree of the same
act
③ Patent application of an applicant subsidized by the State or local municipal governments
under Article 31 of the Framework Act of on Low Carbon Green Growth
④ Patent application of an applicant who received investment from Green Technology
Investment Co., Ltd. established under Article 29 of the Framework Act of on Low Carbon
Green Growth and Article 16 of the Enforcement Decree of the same act
⑤ Patent application of an applicant stationed in Green Technology Industrial Cluster
established under Article 34 of the Framework Act on Low Carbon Green Growth and Article
22 of the Enforcement Decree of the same act
⑥ Patent application financed or certified based on other national policies
(2) Examination Guidelines
A person in charge of determination on preferential examination shall decide whether to
recognize the concerned application to be eligible for preferential examination based on the
explanation given by a requester of preferential examination that the claimed invention
constitutes green technology written in a written explanation of preferential examination and
is financed or certified by the State, etc.(As for the eligibility of green technology, the above-
mentioned guidelines shall be referred to).
When determining whether the concerned invention is financed or certified by the State, etc.,
an examiner shall check if a requester of preferential examination has submitted the
following evidential documents by each of the above-mentioned grounds for request of
preferential examination and the applicant and the claimed invention shall be identical with
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the person who got the financial support and certification for the invention from the State,
etc. and the concerned technology.
<Green Technology-related Evidential Documents>
Ground for Request Evidential Document
Green Technology
Certification
Each document under Paragraphs 1 and 2
1. Explanation on the concerned technology used for green
certification request
2. Certification of green technology under Article 32 of the
Framework Act on Low Carbon Green Growth
Green Business Each document under Paragraphs 1 and 2
1. Document that verifies the claimed invention and the green
business belong to the same industry (Explanation on the
concerned technology(business) for green certification request,
sales proportion statement, etc.)
2. Certification of green technology under Article 32 of the
Framework Act on Low Carbon Green Growth
Subsidization Evidential document of subsidization from the State or local
municipal governments
Investment from
Green Technology
Industry Co., Ltd
Evidential document of receiving investments from Green
Technology Industry Co., Ltd (loan statement, etc.)
Green Technology
Industrial Cluster
Evidential document that an applicant is stationed in Green
Technology Industrial Cluster
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Other Financial
Support
Certification
Document that constitutes any of the followings
1. Evidential document of R&D financing from a state agency
(Announcement on technology development program
designation, etc.)
2. Evidential document of green technology-related financing
from a financial institution (Loan statement, etc.)
3. Environmental mark certification, Carbon footprint labeling
certification, New technology certification, Technology
verification(Issuer: Ministry of Environment, Korea Environmental
Industry & Technology Institute)
4. GR(Good Recycled) certification (Issuer: Korea Agency for
Technology and Standards)
5. Evidential documents of financial support or certification
based on other national policies
4.3.4 Application on Pollution Prevention Facilities and Method of Pollution Prevention
that Such Facilities hold
(1) Subject
Article 4(2)(n) of the Directive on Request for Preferential Examination on Patent or Utility
Model:
Applications whose primary purpose is to prevent or eliminate pollution and which is related
to one of the following environmental pollution prevention facilities or the methods that
such facilities hold:
① Noise/Vibration Control Facility, Sound proof Facility or Vibration proof Facility under
Article 2 of the Noise and Vibration Control Act and Article 3 of the Enforcement Rule of the
same act
② Water Pollution Preventive Facility under Article 2 of the Water Quality and Ecosystem
Conservation Act and Article 7 of the Enforcement Rule of the same act
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③ Air Pollution Control Equipment under Article 2 of the Clean Air Conservation Act and
Article 6 of the Enforcement Rule of the same act
※ Facilities that are to eliminate or reduce malodorant substances produced from malodor-
emitting facilities under Article 2 of the Malodor Prevention Act and Article 3 of the
Enforcement Rule of the same act and fall under the Annexed Form no. 4 of the
Enforcement Rule of the Clean Air Conservation Act shall be deemed air pollution control
equipment.
④ Waste disposal facilities under Article 2 of the Wastes Control Act and Article 5 of the
Enforcement Decree of the same act
⑤ Facilities for converting into resources, sanitation facilities, public disposal facilities under
Article 2 of the Act on the Management and Use of Livestock Excreta and Article 3 of the
Enforcement Rule of the same act
⑥ Recycling facilities under Article 2 of the Act on the Promotion of Saving and Recycling
of Resources and Article 3 of the Enforcement Rule of the same act
⑦ Public sewage treatment plant, waste treatment plant, reuse plants for water treated by
public sewerage or private sewage treatment facility under Article 2 of the Sewerage Act
(2) Examination Guidelines
Where preferential examination is requested on the ground of an application related to
facilities under the above-mentioned acts, a requester does not need to submit additional
evidential documents upon request for preferential examination and just indicate in a written
explanation of request for preferential examination that the concerned application falls
under one of the above-mentioned subject for examination (example: Annexed Form 3-1.
Intermediate Treatment Facility A. Combustion Facility (2) high-temperature combustion
facility under Article 2 of the Wastes Control Act and Article 5 of the Enforcement Decree of
the same act).
Even where a requester of preferential examination did not specify a pollution prevention
facility in a written request for preferential examination, and just indicate it as “a patent
application useful for pollution prevention”, an examiner may recognize the request for
preferential examination without any additional correction order where he/she deems that
the concerned facility corresponds to one of the environmental pollution prevention facilities
under the above-mentioned environment-related laws.
Also, even if the application is useful for pollution prevention, where it does not fall under
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any of the above-mentioned pollution prevention facilities, the application shall not be
deemed eligible for preferential examination. Even applications related to medicine, agent or
living organism directly used for the operation of the above-mentioned pollution prevention
facilities shall not be eligible for preferential examination.
(3) Where the application is not related to a facility(device) directly removing pollutants or a
pollution prevention facility
Where the claimed invention is directly used for pollution prevention, but the facility is not
one of the pollution prevention facilities designated under the above-mentioned
environment-related laws, the application shall not be deemed eligible for preferential
examination.
Under the above-mentioned environment-related acts, pollution prevention facilities refer to
those which are to remove or reduce pollutants emitted from the pollutant-emitting facilities.
Therefore, even though the facilities directly reduce the emission of pollutants, if they are
not the facilities which reduce the emission of pollutants coming from the pollutant-emitting
places, the concerned facilities sometimes do not belong to pollution prevention facilities.
For example, a car is not one of the air pollutant emitters designated under Article 2(11) of
the Clean Air Conservation Act and the Annexed Form no.2 of Article 5 of the Enforcement
Rule of the same act. Therefore, an exhaust gas converter installed within a car which aims
to reduce the emission of the air pollutants from a car shall not be eligible for preferential
examination since it is not deemed to correspond to air pollution prevention facilities of
Article 2(12) of the Clean Air Conservation Act and the Annexed Form no. 4 of Article 6 of
the Enforcement Rule of the same act.
4.4 Applications directly related to the Promotion of Trade
(1) Subject
Applications directly related to the promotion of trade (export)
(2) Examination Guidelines
① Evidential Documents
Applications directly related to the promotion of trade shall be determined for preferential
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examination by reviewing the following documents:
1. Statement of export result
2. Evidential document of arrival of letter of credit(L/C)
3. Evidential documents of request on necessity of patent right, utility model right or design
right by purchaser of exported goods
4. Evidential documents of export contract
5. Evidential documents that the procedure for adopting the concerned invention as
international standards is being carried out or the invention contributes to the promotion of
trade after being adopted as international standards
6. Other evidential documents that the concerned invention is directly related to trade
promotion
② Determination on Identicalness of the Invention to be exported and the claimed
invention
As for a request for preferential examination on application directly related to the trade
promotion, the invention to be exported and the claimed invention shall be identical.
Whether the invention directly related to the trade promotion is the same as the claimed
invention shall be proved by a requester of preferential examination. However, normally, the
identicalness cannot be determined just based on the documents about the request of
preferential examination. In such cases, an examiner can recognize the request of
preferential examination without requiring the submission of additional evidential
examination as long as there is a high possibility that the application directly related to
trade promotion and the claimed invention are the same and no particular grounds to
doubt such possibility exist.
4.5 Application on Duties of State or Municipal Governments
(1) Subject
Applications related to duties of state or municipal governments (Applications on duties of a
national or public school under the Higher Education Act. Applications on an organization
exclusively responsible for technical transfer and commercialization set up in national or
public schools under Article 11(1) of the Technology Transfer and Communization Promotion
Act shall be included).
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(2) Examination Guidelines
Duties of state or municipal governments refer to the work that the state or municipal
governments are obliged to conduct. Where a requester of preferential examination is the
state or municipal governments(an organization exclusively responsible for technical transfer
and commercialization set up in national or public schools), the concerned application may
be deemed to be related to duties of the state or municipal government(duties of national
or public school under the Higher Education Act).
A request for preferential examination related to duties of state or municipal governments
shall be deemed valid only when the state or municipal governments (an organization
exclusively responsible for technical transfer and commercialization set up in national or
public schools) make a request for preferential examination(Article 3 of the Directive). Where
a requester of preferential examination is not state or municipal governments (an
organization exclusively responsible for technical transfer and commercialization set up in
national or public schools), an examiner shall deem the concerned request for preferential
examination not valid and order to correct the request within the designated period. Where
the request is not addressed within the designated period, the examiner shall dismiss the
request for preferential examination.
Meanwhile, as for an application on duties of national or public schools under the Higher
Education Act filed by an organization exclusively responsible for technical transfer and
commercialization set up in national or public schools, the concerned application shall be
treated as the same application as the one related to duties of the state or municipal
governments.
A national school refers to a school established and managed by the state and a public
school means one set up and run by a municipal government. An organization exclusively
responsible for technical transfer and commercialization set up in national or public schools
shall be a legal entity only.
4.6 Applications related to Companies Certified as Venture Businesses
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(1) Subject
An application of a business who received confirmation as a venture business under Article
25 of the Act on Special Measures for the Promotion of Venture Businesses
(2) Examination Guidelines
① Where an application is jointly filed and one of the applicants is a venture business, the
request for preferential examination shall be accepted.
② Where the names of the company certified as venture business and the applicant are
identical, the request for preferential examination shall be accepted.
③ At least one of the dates among the filing date, the date of request of preferential
examination or the date of determination on preferential examination shall be within the
valid period written on a certificate of.
④ The original copy of the confirmation of being a venture business shall be used to verify
the status of venture business. However, a copy of the confirmation of being a venture
business can be used if it is recognized to be the same with the original copy. A written
notice on the result of evaluation for confirmation of being a venture business cannot
replace the confirmation of being a venture business.
⑤ Where a request for preferential examination is made even though there is no correlation
between the type of the venture business and the claimed invention, the request for
preferential examination shall not be accepted. Where no correlation is found, an examiner
shall order to correct the request for preferential examination and when the correlation is
well explained, the examiner shall accept the request for preferential examination.
⑥ The correlation between the type of the venture business and the claimed invention shall
be examined based on the explanation given by a requester of preferential examination
along with the written explanation of request for preferential examination and evidential
documents (business registration certificate, etc.). If necessary, the business type and the
main products written on the Company Overview of the concerned business and the content
of the claimed invention can be compared on the website for the system for confirmation
and announcement of being a venture business(http://www.venturein.or.kr/) run by Korea
Technology Finance Corporation. Where no correlation on the type of business is found or
can be accepted when determining preferential examination, an examiner shall order to
correct the request for preferential examination.
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※ The confirmation of being a venture business is issued by the agency or organization
designated by Article 25 of the Act on Special Measure for the Promotion of Venture
Businesses and Article 18(3) of the Enforcement Decree of the Act on Special Measure for
the Promotion of Venture Businesses.
(3) Where the business written on the confirmation of being a venture business is not an
applicant
Where an applicant cannot file an application in the name of the company under Article 4
of the Patent Act since the company indicated on the confirmation of being a venture
business is not a legal entity, an examiner shall deem the concerned application as an
application filed by a venture business and recognize the request for preferential
examination only when the applicant and the head of the venture business indicated on the
confirmation of being a venture business are the same.
For an application filed in the name of a natural person to be recognized as an application
filed by a venture business, the venture business at the time of filing the application shall
not be a legal entity, beside the requirement that the applicant and the head of the venture
business are identical.
Where the company written on the confirmation of being a venture business is not the same
as the applicant, an examiner shall order an applicant to submit business registration
certificate and then determine whether the venture business is a legal entity.
(Note) Way to determine whether a venture business is a legal entity: Where the second
group numbers from the registration numbers of the business registration certificate are
from 81-87, the venture businesses are legal entities and the other numbers indicate they
are not legal entities.
<Example>Registration Number: 000-00-00000(81-87: legal entity, other numbers: non legal
entity)
(4) Where a request for preferential examination is made by adding a venture business to an
applicant after filing the application
To be eligible for preferential examination on the ground for a venture business, the
applicant shall be a venture business when filing an initial application. Therefore, where an
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applicant was not a venture business at the time of filing an initial application, but made a
report of change of applicants(change or addition of venture business) and then made a
request for preferential examination on the ground of change or addition of venture
business, the application shall not be eligible for preferential examination. However, where a
venture business works the claimed invention with the right to get a patent transferred from
the original applicant, a person in charge of determination on preferential examination can
confirm such fact and recognize it to be eligible for preferential examination. Meanwhile, the
same shall apply to innovation businesses, companies with outstanding employee invention
compensation system or components· materials technology developers, too.
(5) Determination on Relevance between the Claimed invention (Utility Model) and Business
Type of Certified Company
Applications filed by companies certified as venture companies, innovation businesses,
companies with outstanding employee invention compensation system, part·material
technology development companies (hereinafter referred to as „certified company‟) are
themselves entitled to preferential examination, but only when the relevance between the
claimed invention(utility model) and the business type of the certified company is confirmed.
Normally, when the business type of the certified company confirmed through the business
registration certificate submitted by a requester of preferential examination or the
announcement website related to confirmation is the same as all or part of the industrial
field and the claimed invention, the relevance between the business type and the claimed
invention shall be confirmed.
4.7 Application by Company designated as Innovation Business (Inno-Biz)
(1) Subject
Applications filed by the company designated as the Inno-Biz under Article 15 of the Act
on the Promotion of Technology Innovation of Small and Medium Enterprises
(2) Examination Guidelines
① Where the application is jointly filed by more than two applicants and at least one of
them is designated as the Inno-Biz, a request for preferential examination shall be
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recognized.
② Where the names of the company designated as the Inno-Biz and the applicant are
identical, a request for preferential examination shall be recognized. Where the names of the
company and the applicant are different, only applications filed by the company certified as
the venture company under Paragraph 4.6. shall be eligible for preferential examination.
③ At least at one point among the date of filing an application, the date of request for
preferential examination or the date of determination on preferential examination, an
applicant shall constitute an Inno-Biz.
④ Documents used to confirm the Inno-Biz shall be the original copy of the Inno-Biz
Confirmation issued by the Small & Medium Business Administration, except for a copy is
deemed to be identical with the original document.
⑤Where a request for preferential examination is made despite no relevance between the
business type of the Inno-Biz and the claimed invention, the concerned application shall not
be eligible for preferential examination. Where the relevance between the claimed invention
and the Inno-Biz is not confirmed, an examiner shall order the requester of the preferential
examination to correct the request for preferential examination and when the relevance is
well-explained, the request for preferential examination shall be recognized.
⑥The relevance between the business type of the Inno-Biz and the claimed invention shall
be confirmed with the explanation that a requester of preferential examination makes based
on the evidential documents (such as business registration certificate, etc.) in a written
explanation of request for preferential examination. If necessary, the business type of the
concerned certified company and the content of the claimed invention can be compared on
the website of the Inno-Biz certified company information system at http://www.innobiz.net.
Where the relevance cannot be confirmed or recognized in determining preferential
examination, the examiner shall order to correct the explanation of request for preferential
examination.
4.8 Applications of Company designated as Companies with Outstanding Employee
Invention Compensation System
(1) Subject
A patent application filed by a company designated as companies with outstanding
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employee invention compensation system under Article 11(2) of the Invention Promotion
Act. (Article 9(5-2) of the Enforcement Decree of the Patent Act)
(2) Examination Guidelines
① Where an application is jointly filed by more than two applicants and at least one of the
applicants is designated as company with outstanding employee invention compensation
system, a request for preferential examination shall be accepted.
② Only where the title of the company designated as company with outstanding employee
invention compensation system and the name of the applicant are identical, a request for
preferential examination shall be accepted. Where the title of the company and the name of
the applicant are different, the examiner shall handle the application according to
„Applications related to Companies Certified as Venture Businesses‟.
③ The company shall constitute the company with outstanding employee invention
compensation system at least at one of the points of time of application date, date of
request for preferential examination or date of determination on preferential examination.
④ The evidential document of company with outstanding employee invention compensation
system shall be the original copy of 「Certificate of Company with Outstanding Employee
Invention Compensation System」 issued by the Korean Intellectual Property Office. However,
where a copy is deemed to be identical with the original copy, the copy can be
exceptionally accepted.
⑤ Where, despite the fact that the business type of company with outstanding employee
invention compensation system is not relevant to the claimed invention, a request for
preferential examination is made, the invention shall not be deemed to be subject for
preferential examination. Where the relevance is not recognized, the examiner shall deliver a
notice to complement the request for preferential examination. Where the relevancy is
explained, the examiner shall accept the request for preferential examination.
⑥ The relevance between the business type of company with outstanding employee
invention compensation system and the claimed invention shall be determined based on the
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content of the evidential document (business registration certificate, etc.) of the written
explanation of request for preferential examination attached by the applicant. Where the
relevance on the business type cannot be identified or accepted in determining whether to
conduct preferential examination, the examiner shall make a correction order.
4.9 Applications related to National New Technology Development Support Project
(1) Subject
Applications related to the outcomes of national new technology development support
project and filed based on the outcomes of technology development according to the
business contract signed between the head of relevant central administrative institutions and
one of the following institutions mainly in charge of the project or the participating
institutions
① Projects for industrial technological innovation under Article 2 of the Industrial
Technology Innovation Promotion Act
② Technological innovation projects under Article 10(1) of the Act on the Promotion of
Technology Innovation
③ Energy Technology Development Activities under Article 12 of the Energy Act
④ New and renewable energy development projects under Article 11 of the Act on the
Promotion of the Development, Use and Diffusion of New and Renewable Energy
⑤ Industrial convergence projects under Article 24 of the Industrial Convergence Promotion
Act
⑥ Information and communications technology development projects under Article 8 of the
Information and Communications Industry Promotion Act
⑦ National research and development projects under Article 11 of the Framework Act on
Science and Technology
⑧ Sole-proprietor creative business under Article 11(1) of the Act on the Fostering of Sole-
Proprietor Creative Business
⑨ Other national new technology development support projects
Determination on other national new technology development support projects can be
determined by each project. However, whether the project is financed by the government
related to technology development shall be determined. If necessary, the opinion of the
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division in charge of the concerned project can be consulted.
(2) Examination Guidelines
To be recognized as applications related to the outcomes of national new technology
development support projects, the applications shall be related to the direct outcome of the
new technology development support projects. Even if it is hard to determine that the
applications are directly related to national new technology development support projects,
but where there are documents proving that the application is confirmed to be related to
the outcomes of the new technology development support projects by the institution in
charge of the projects or the participating institutions, the application shall be recognized to
be eligible for preferential examination.
4.10 Application related to Outcome of National Quality Authentication Projects
(1) Subject
Applications related to the outcome of national quality authentication projects and
corresponding to one of the followings:
① Applications related to products authenticated as new products under Article 16 of the
Industrial Technology Innovation Promotion Act and Article 18 of the Enforcement Decree of
the same act
② Applications related to technology certified as new technology under Article 6 of the
Technology Development Promotion Act and Article 9 of the Enforcement Decree of the
same act
③ Applications related to products certified as industrial convergence products under
Article 13 of the Industrial Convergence Promotion Act and Article 14 of the Enforcement
Decree of the same act
(2) Examination Guidelines
① New Product Authentication Project : NeP (New Excellent Product) Mark
This project authenticates products with great economic and technological impacts and
high performance and quality among the commercialized products with application of the
first local technology or similar substitute technology as new products. The project features
written new product certification issued by the Minister of Knowledge Economy through
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examination and evaluation based on the new product authentication standards of the
Korean Agency for Technology and Standards.
② New Technology Authentication Project : NeT (New Excellent Technology) Mark
The project authenticates technology that can enhance the performance of existing
products and process technology which can significantly improve the productivity or quality
of existing products as new technology. Such technology include completed technology
whose quantitative evaluation indexes are secured by testing or operating the prototypes
produced based on theoretical technology and that can be commercialized within two years.
This project features new technology certification issued by the Minister of Knowledge
Economy through new technology examination and evaluation of the President of the Korea
Industrial Technology Association.
③ Industrial Convergence Product Authentication Project
This project authenticates products with great economic and technological impacts and
high performance and quality manufactured based on the outcome of industrial
convergence(activities that innovate existing industries or create new industries with social
market value through the creative combination and complication between industries,
between industry and technology, between technologies) as industrial convergence products.
This project features the industrial convergence project certification issued by the head of
the concerned central administrative institutions(central administrative institutions which
govern approval, permission, certification, verification and license under the statutes related
to industrial convergence products) through authentication examination.
④ Where it is unclear to determine that the claimed invention is the direct outcome of the
national quality certification project, an examiner may order a requester of preferential
examination to verify the correlation. However, where the claimed invention is likely to be
related to the direct outcome and there exist no other special grounds, an examiner may
recognize the claimed invention to be eligible for preferential examination without any other
investigation.
4.11 Applications forming Basis of Priority Claim under Treaty
(1) Subject
Applications which forms the basis of priority claim under the Treaty and whose patent-
related procedure is being conducted before foreign patent offices based on the priority
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claim made on the concerned patent application
(2) Examination Guidelines
1) Where an application is filed to the Korean Intellectual Property Office and then is filed to
a foreign patent office claiming priority, it shall be checked whether the application filed to
the foreign patent office claims priority under the Paris Convention based on the application
filed in Korea.
2) Where an application is filed to the Korean Intellectual Property Office and then a PCT
application is filed based on the application claiming priority, a request for preferential
examination shall be recognized except for self-designation application. In such a case,
priority claim can be determined based on the PCT Form PCT/RO/105.
3) Where a converted application, divisional application or application with domestic priority
is filed based on the application with priority claim under the Treaty, a request for
preferential examination shall not be recognized since the converted application, divisional
application or the application with domestic priority is not the application which forms the
basis of priority claim under the Treaty. For example, when Application A is filed in Korea,
Application B is filed in the United States claiming priority under the Treaty and then
Application C with domestic priority is filed based on Application A, a request for
preferential examination shall not be recognized since Application C is not the application
which forms the basis of priority claim under the Treaty.
4) Where a request for preferential examination is filed on an application under PCT self-
designation
Where a PCT application is filed claiming priority based on an application filed in the
Republic of Korea and it has indicated the Republic of Korea as a designated state, which is
so called an application under PCT self-designation, when it comes to an application
claiming domestic priority an early application filed in the Republic of Korean and a PCT
application can be deemed an early application and a subsequent application respectively.
Then, the early application in the Republic of Korea is deemed to have been withdrawn
when one year and three months has elapsed from the date of filing the application.
Therefore, where a request for preferential examination has been made on the early
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application, the request shall not be recognized.
Where a request for preferential examination on an early application is filed, an examiner
shall order to correct the request by indicating the ground for rejecting the request for
preferential examination within the designated period. Where an application under self-
designation is not withdrawn within the designated period, an examiner shall dismiss the
request for rejection.
4.12 Application on the claimed invention being worked or to be worked by applicant
(1) Subject
An application on the claimed invention being worked or to be worked by an applicant
(including an application filed by a business certified as components and materials
technology developer under Article 6 of the Enforcement Rule of the Act on Special
Measures for the Promotion of Specialized Enterprises, etc. for Component and Material)
① Definition of Working as Business
a. The term “working” is identical with “working” from the working by a person other than
an applicant.
b. “Working as business” refers to “working as running business”. In general, the
personal/domestic working, the working for educational purposes, the one-off working for
experiments shall not constitute the working as business. Even for the one-time working for
non profit purposes, if the invention is being worked as business for the public interest, it
shall constitute as the working as business.
② Subject of Working
An applicant shall work or be working the invention. However, where an applicant is a head
of the company working the invention or an applicant is different from the person working
the invention, the company which was approved to work the invention or the person who is
working the invention can become the subject of working the invention.
③ Determination on Working as Business or Preparing to Work as Business
A requester of preferential examination shall explain that the claimed invention is being
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worked (or being prepared to be worked) and the working of the invention is carried out as
business in a written explanation of preferential examination and submit the evidential
documents for both explanations.
An examiner shall conduct preferential examination on the claimed invention where the
submitted explanation on preferential examination and evidential documents can confirm
that the invention is being worked or being prepared to be worked as well as the claimed
invention is being worked as business.
a. Determination on Working (or Preparation for Working) of Invention
An examiner shall recognize the working (or preparing for working) of the claimed invention
where he/she can confirm that the claimed invention is being worked based on evidential
documents such as the written explanation of preferential examination, photos of prototypes,
catalogs, product manuals and samples.
b. Determination on Working (or Preparation for Working) of Invention as Business
An examiner shall recognize the working(or preparing for working) of the claimed invention
where he/she can confirm that the claimed invention is being worked as business based on
the written explanation of preferential examination and the evidential documents. Evidential
documents of the working of the invention as business are the followings:
Example) Transaction Sheet (including that the product on sale is the claimed invention)
Delivery Confirmation
Purchase Contract (when an application sells his/her product), Product Supply Agreement
Plant Registration Certificate
Investment Performance from Enterprise Start-Up Investment Company/New Technology
Project Investment Cooperative
Loan Issuance from Bank, etc.
Contract related to Working of Claimed Invention (Indication of Subject, Period, Place, and
Condition of Working)
Lease-Rental Agreement
Evidential Document on Application of Component Material Technology Development
Business
Other Evidential Document on Working of Claimed Invention as Business
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④ Determination on Identicalness between Invention Being Worked (or Prepared to be
Worked) and Claimed Invention
As for a request for preferential examination based on the working (or preparation to be
worked) of the invention, the invention being worked and the claimed invention shall be
identical. A requester of preferential examination shall prove the identicalness of the two
inventions.
An examiner shall determine the identicalness of the two inventions based on article,
photographs or any other evidential documents submitted by a requester of preferential
examination as well as a written explanation of preferential examination. When the
identicalness cannot be confirmed, an examiner shall order to correct a request for
preferential examination.
⑤ Recognition of Application filed by Company confirmed as Component Material
Technology Development Business
a. A request for preferential examination on application filed by a company confirmed as a
component & material technology development business under Article 6 of the Enforcement
Rule of the Act on Special Measure for the Promotion of Specialized Enterprises, etc. for
Components and Materials shall be accepted as the invention being worked or prepared to
be worked as business without submission of the above-mentioned evidential documents as
the claimed invention being worked or prepared to be worked.
b. The correlation between the business type of the concerned component & material
technology development business and the claimed invention shall be determined according
to the explanation that the requester of preferential examination made based on the written
explanation of preferential examination and the evidential documents (business registration
certificate, etc.). If necessary, the relevant business type of the confirmed business and the
contents of the claimed invention shall be compared at the website of information on
specialized components & materials companies operated by Korea Materials and
Components Industry Agency (http://company.kmac.or.kr/)
c. Where an application is jointly filed and one of the applicants is a component & material
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technology development business, the request for preferential examination on the
application shall be accepted. However, the request for preferential examination shall be
accepted only when the names of the company confirmed as component & material
technology development business and the name of the applicant. (4.6. Applications related
to Venture Company shall apply mutatis mutandis when the names of the company and the
applicant are different)
d. At one point among the date of filing a patent application, the date of request for
preferential examination or the date of determination on preferential examination, an
application shall be a component & material technology development business.
e. Evidential documents of component & material technology development business shall be
the original copy of the confirmation of component & material technology development
business. Where a copy of the confirmation of component & material technology
development business is deeded to be identical with the original copy, the copy shall be
accepted.
4.13 Application directly related to Electronic Commerce
(1) Subject
Applications shall be related to electronic commerce which promotes electronic transactions
Article 2 of under the Framework Act on Electronic Commerce and the applications directly
related to electronic commerce shall be the followings:
① Patent application related to method of electronic transaction
-Patent application related to transaction methods on technology realized for any
transactions on goods or service over the network, such as auction, reverse auction,
advertisement, education, etc.
② Patent application related to electronic money, payment technology for electronic
transaction
-Patent application related to electronic money such as IC Card Type electronic money,
Network-based electronic Money, cyber coin and payment technology using electronic
money, online payment method using bank account transactions, payment method using
credit cards, etc.
③ Patent application related to security or verification technology for electronic transactions
-Patent application related to security or verification technology such as technology of
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blocking access over the network, transaction verification technology, electronic signature or
smart cards
④ Other patent application recognized for necessity of preferential examination for
promotion of electronic transaction
-Patent application on technology recognized to be crucial for the promotion of electronic
transaction such as technology developed by the government or government-funded
research centers for the active promotion of electronic trade and technological development
or technology developed on government funding
(2) Examination Guidelines
Applications shall be related to “electronic transaction”.
Applications shall be related to electronic transaction under Article 2 of the Framework Act
on Electronic Commerce as in the followings:
1. The term “electronic document” means any information prepared, transmitted, received
or stored in the electronic form by the information processing system.
5. The term “electronic commerce” means any transaction of which the whole or party of
good or service is made through electronic documents in transacting goods or service.
4.14 Patent Application agreed for Preferential examination between KIPO
Commissioner and Commissioner of Foreign Patent Office
4.14.1 Subject
Patent Applications that the Commissioner of the Korean Intellectual Property Office has
agreed for preferential examination with the commissioner of a foreign patent office and
that are the followings(applications of utility model registration shall not be eligible):
① Patent applications claiming priority under the treaty filed in the Republic of Korea based
on an initial patent application (an international patent application under the Patent
Cooperation Treaty (hereinafter referred to as „international application‟) and including
international applications without any priority claim entering the national phase of the
counterpart country) filed in a counterpart country (Japan, the U.S., England, Canada, Russia,
Finland, Germany, Spain, China, Mexico, Singapore, Hungary, Austria) or patent applications
without any priority claim which entered the national phases of both the Republic of Korea
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and the counterpart) shall be eligible and such patent applications are as follows:
a. Patent application claiming priority under the Paris Convention (hereinafter referred to as
„priority claim under the treaty‟) based on the patent application filed validly in the
counterpart country (including an application entering the national phase of an international
application)
b. International patent application without any priority claim entering the national phase and
designating the Korean Intellectual Property Office and a counterpart patent office as
designated offices
c. Patent application claiming priority under the treaty since it was filed on an international
application without any priority claim
d. Patent application claiming multiple priorities since the priority claim under the treaty was
filed on multiple patent application of a counterparty country or multiple international
applications
e. Divisional application or application with domestic priority of Korean patent application
which corresponds to the above-mentioned a, b, c and d
② An international application whose international search or international preliminary
examination have been conducted in the concerned countries (the Republic of Korea, the
United States of America, China, Japan and Austria) and which has entered the national
phase of the Republic of Korea or a patent application claiming priority under the Treaty to
the Republic of Korea based on international patent application whose international search
or international preliminary examination have been conducted in the concerned countries
shall be eligible and the eligible applications are the followings:
a. International patent application whose international search or international preliminary
examination has been conducted in the concerned countries and which has entered the
national phase of the Republic of Korea
b. Patent application claiming priority under the Treaty to the Republic of Korea based on
the international application whose international search or international preliminary
examination have been conducted in the concerned countries or forming the basis of
priority claim of the international application whose international search or international
preliminary examination has been conducted in the concerned countries
c. Patent application with multiple priority claims based on multiple international patent
applications whose international search or international preliminary examination has been
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conducted in the concerned countries as the basis of the priority claim under the Treaty
d. Divisional application or application with domestic priority of Korean patent application
that corresponds to the above-mentioned a, b and c
4.14.2 Request for preferential examination in presence of prior art search report
secured from a foreign patent office or intergovernmental organization due to the
relevance with the concerned patent application
It shall be eligible only when a counterpart is Japan and a requester of preferential
examination shall submit the evidential documents corresponding to the following (1), (2),
and (3).
(1) A copy of the prior art search report secured from a foreign patent office or
intergovernmental organization
Prior art search reports drawn up by a foreign patent office or an intergovernmental
organization (e.g., prior art cited on a written notification of opinion submission of a foreign
patent office, PCT international search report, prior art search report of the European Patent
Office) as well as prior art search reports made through commission of a foreign patent
office (e.g., reports that the Japanese Patent Office commissioned an external organization
for) shall be included.
※ A prior art search report drawn up by a requester of preferential examination on his/her
own or by an external organization through the commissioning work shall not be
recognized as a prior art search report. Therefore, where such prior art search reports are
submitted, an examiner shall order to correct the request for preferential examination.
※ Even a prior art search report made by an external prior art search organization upon the
request of the Korean Intellectual Property Office shall not be recognized to have been
secured from a foreign patent office or an intergovernmental organization.
(2) A copy of prior art literature indicated in the above-mentioned prior art search report
※ Where a prior art cited in a prior art search report is a patent literature, it does not need
to be submitted since a patent examiner can easily secure the patent literature. As for a
non-patent literature, however, a requester of preferential examination is obliged to submit
the concerned non-patent literature and when not submitted, an examiner can order to
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submit the concerned non-patent literature.
(3) Detailed comparative explanation between the patented invention and the invention
indicated in the above-mentioned prior art literature
A requester of preferential examination shall examine the comparisons of the claimed
invention of the concerned application and the invention indicated in a prior art literature
and write the differences of the two inventions and the possible technical effects of the
claimed invention in detail but concisely. Where a certain part of the literature is cited, the
explanation shall specify the cited part.
Where the content in a comparative explanation is deemed to be insufficient, an examiner
can order to correct the comparative explanation.
4.14.3 Request for Preferential Examination under Patent Prosecution Highway
The Patent Prosecution Highway refers to a system under which if the office of first
filing(OFF) has assessed the patentability of a patent application, the office of second
filing(OSF) ensures that the applicant is entitled to benefit from an accelerated examination
for the corresponding application as well as the office of second filing can utilize the prior
art search result and the examination results of the office of first filing.
The Republic of Korea has signed the PPH with 14 countries (Japan, the United States of
America, Denmark, England, Canada, Russia, Finland, Germany, Spain, China, Mexico,
Singapore, Hungary and Austria). The Korea-Japan PPH shall apply to a request for
preferential examination filed after April 1, 2007; the Korea-US PPH after January 28, 2008;
the Korea-Denmark PPH after March 1, 2009; the Korea-England PPH and the Korea-Canada
PPH all after October 1, 2009; the Korea-Russia PPH after November 2, 2009; the Korea-
Finland PPH after January 14 , 2010; the Korea-Germany PPH after July 1, 2010; the Korea-
Spain PPH after July 1, 2011, the Korea-China PPH after March 1, 2012, the Korea-Mexico
PPH after July 1, 2012, the Korea-Singapore PPH and the Korea-Hungary PPH after January
1, 2013 and the Korea-Austria PPH after March 1, 2013.
※ Where an application claiming priority under the treaty is filed in the Republic of Korea
based on an initial application filed in a first country and an application claiming priority
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was filed in another country other than the country of the first filing and the Republic of
Korea based on the initial application filed in the first country, and then the examination
result from the patent office of the third country says that the concerned application is
patentable, the concerned application is not eligible for the PPH even though the first
county and the third country are counterpart countries of the PPH program. The PPH
request shall be recognized only when an application claiming priority filed in the Republic
of Korea based on an initial application in a first country is deemed patentable in the office
of first filing. However, under the Korea-England PPH, even when an application claiming
priority filed in England and the Republic of Korea based on an application in another
country other than England and the Republic of Korea is recognized to be patentable in
England, the concerned application shall be eligible for the PPH between Korea and England.
(1) Patent Prosecution Highway Requirements
① A patent application filed in a counterpart country corresponding to the concerned
patent application shall contain claims that the patent office of the counterpart country
considers to be patentable
Claims that the patent office of the counterpart country considers to be patentable are as
follows:
a. Claims deemed patentable in a written decision to grant a patent
b. In the absence of a written decision to grant a patent, claims deemed patentable in the
most recently-delivered notification of opinion submission or decision to reject a patent
※ “A patent application‟ filed in a counterpart county corresponding to the concerned
patent application” includes a patent application of a counterpart country which serves as
the basis of the priority claim of the patent application filed in the Republic of Korea and
another patent application filed in counterpart country clearly linked to a counterpart patent
application which is the basis of priority claim (for example, a divisional application, an
international patent application entering the national stage early).
※ Where a patent application of a counterpart country deemed patentable by a patent
office of the counterpart country is not the application which serves as the basis of the
priority claim, a requester of preferential examination shall explain the relation between „the
patent application of counterpart country with patentable claims‟ and „the patent
application which serves as the basis of the priority claim filed in the Republic of Korea‟ in a
written explanation of the request for preferential examination.
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② All claims of the concerned patent application shall correspond to the claims deemed
patentable in a patent application filed in a counterpart country.
This means that all the claims of the concerned patent application are substantially identical
with the claims of the patent application filed in a counterpart country recognized as
patentable and it also includes where the concerned claims deemed patentable are specified
by adding special items.
Where there are merely differences in translation or claim types (for example, independent
claims, dependent claims), the claims of the concerned application and the foreign
counterpart application shall be deemed substantially the same.
③ Evidential documents necessary for request for preferential examination under PPH
A requester of preferential examination shall file a written examination of request for
preferential examination in reference to Annexed Form no. 3 of the Directive on Request for
Preferential Examination on Patent · Utility Model and submit the following evidential
documents.
a. 『A copy of the written scope of claim including claims that the counterpart patent office
recognizes as patentable』 (referring to the claims at the examination-related notification
most recently filed by the counterpart patent office)
b. 『A copy of an examination-related notification on the counterpart patent application filed
by the counterpart patent office』
※ Where an examiner can secure the above-mentioned evidential documents ①, ②
through the information communication network〔example: AIPN(Japan), public PAIR(United
State), PVS online (Denmark), etc.〕, such evidential documents do not need to be submitted.
※ Where the evidential documents ①, ② are written in a language other than Korean or
English, their translation shall be submitted together. Where an examiner can fine the
English or Korean translation through the information communication network, the
translation do not need to be submitted.
c. A copy of prior arts cited in an examination-related notification (except for the absence of
cited prior arts)
※ Where prior arts cited in an examination-related notification are patent literature, an
examiner ay easily secure such prior art and they do not need to be submitted. However,
where prior arts are non-patent literatures, a requester for preferential examination is
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obliged to submit the concerned non-patent literatures. If not submitted, an examiner shall
order a requester to submit the concerned non-patent applications.
d. Contrastive Explanation on 『Each claim of a patent application』 and 『Claims deemed
patentable』
Grounds for correspondence of each claim shall be indicated in a written contrastive
relationship explanation. For example, when claims are literally translated, the identicalness
of the claims shall be explained. Also, where mere differences in translation exist,
correspondence of each claim despite such differences shall be indicated in a written
contrastive explanation.
Unlike any other evidential documents, a contrastive explanation must be submitted in any
case.
4.14.4 Request for Preferential Examination under PCT-PPH
The PCT-PPH, Patent Cooperation Treaty-Patent Prosecution Highway, refers to a system
where a request for preferential examination is filed for a patent application comprising the
claims substantially identical with the claims recognized to involve novelty, inventive step,
and industrial applicability in an international search or international preliminary examination
on an international application under the Patent Cooperation Treaty.
PCT-PPH counterparts of the Republic of Korea include the United States of America, China,
Japan and Austria. The Korea-US PCT-PPH shall apply to requests for preferential
examination filed after July 1, 2011 and the Korea-China PCT-PPH after March 1, 2012, the
Korea-Japan PCT-PPH after July 1, 2012, and the Korea-Austria PCT-PPH after March 1, 2013,
respectively.
(1) Requirements of PCT-PPH
① An international search or international preliminary examination (a written opinion from
an international search authority, a written opinion or an international preliminary
examination report from an international preliminary examination authority) on the
concerned patent application conducted in the member countries shall include claims
deemed to involve novelty, an inventive step and industrial applicability.
※ Where the concerned patent application is an international application, „an international
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search or international preliminary examination on the concerned patent application
conducted by the member countries‟ shall mean an international search or international
preliminary examination on the international patent application. Or „an international search
or international preliminary examination on the concerned patent application conducted by
the member countries‟ can refer to an international search or international preliminary
examination on the international application where the concerned patent application claims
the priority under the Treaty based on an international application.
※ Where an international search or international preliminary examination is not conducted
on the concerned patent application (that is, in the international phase of the concerned
patent application), a requester of preferential examination shall explain the correlation
between the concerned patent application and „the international patent application on
which an international search or international preliminary examination is conducted‟ in a
written explanation on request for preferential examination.
② All the claims of the concerned patent application shall „correspond to‟ the claims
deemed to involve novelty, an inventive step and industrial availability in an international
search or international preliminary examination conducted by the member countries.
The term „correspond to‟ refers to the cases where both claims are substantially identical
and where the claims deemed to involve novelty, an inventive step and industrial
applicability are limited with the addition of specified subject matter.
Where there are mere differences in translations or types of claims (e.g., independent claims,
dependent claims), the two claims shall be deemed to be identical.
Whether claims correspond to each other shall be determined based on a claims
correspondence table that a requester of preferential examination submits with a written
explanation of request for preferential examination.
③ Evidential Documents necessary for Request for Preferential Examination under PCT-PPH
A requester of preferential examination shall fill out a written explanation of request for
preferential examination based on Annexed Form no. 6 of the Directive on Request for
Preferential Examination on Patent Application · Utility Model Registration and submit the
following evidential documents:
a. 『A copy of patent claims deemed to involve novelty, inventive step and industrial
applicability in an international search or international preliminary examination』 (The
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concerned claims refer to those subject to a written opinion of an international search
authority, a written opinion of an international preliminary examination authority or an
international preliminary examination report all notified most recently.)
b. A copy of a written opinion of an international search authority, a written opinion of an
international preliminary examination authority or an international preliminary examination
report all related to the concerned patent application
※ Where an examiner can easily secure the evidential documents a, b through the
information communication network (for example, Patentscope
(www.wipo.int/patentscope/en/dbsearch/)).
※ Where the evidential documents a, b are written in another language beside Korean or
English, its translation shall be submitted as well. Where an examiner can secure its Korean
or English translation through the information communication network, its translation does
not need to be submitted.
c. 『A copy of prior art documents cited in a written opinion of an international search
authority, a written opinion of an international preliminary examination authority or an
international preliminary examination report』(except for where no cited prior art literature
exists)
※ Where the cited prior art is a patent literature, it does not need to be submitted since an
examiner can easily secure the document. However, if it is a non-patent literature, a
requester of preferential examination is obliged to submit the concerned non-patent
document and if not submitted, an examiner may order the requester to submit the
concerned non-patent literature.
d. 『Contrastive Explanation』 of 『All claims of the Patent Application』 and 『Claims
recognized to involve Novelty, Inventive Step and Industrial Applicability in International
Search or International Preliminary Examination』
Grounds for correspondence of each claim shall be indicated in a contrastive explanation.
For example, when claims are literally translated, the identicalness of the claims shall be
explained. Also, where mere differences in translation exist, correspondence of each claim
despite such differences shall be indicated in a written contrastive explanation.
Unlike any other evidential documents, a contrastive explanation must be submitted in any
case.
e. Where „opinions on an international application‟ (opinions related to the case where an
international application is ambiguous or its claims are not well clarified in a specification)
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are indicated in Box No. Ⅷ of a written opinion of an international search authority, a
written opinion of an international preliminary search authority, or an international
preliminary examination report related to the concerned patent application, the intention
that all the claims of the concerned patent application are not affected by „opinions on an
international application‟ shall be explained.
※ Explanations on the intention that all the claims of the concerned patent application are
not affected by „opinions on an international application‟ may include ⅰ) responses to
„opinions on an international application‟ ⅱ) claims that irregularities are addressed through
amendments. Where such explanations are not indicated, an examiner may order to amend
the application.
4.14.5 Instructions on determination/redetermination of preferential examination
When determining preferential examination on a patent application agreed for preferential
examination by the Commissioner of the Korean Intellectual Property Office and the
commissioner of a foreign patent office, the result of the determination shall not be notified
to a requester of preferential examination. However, where a request for preferential
examination is determined to be rejected, it shall be notified to a requester of preferential
examination, just like any other requests for preferential examination.
A written determination on preferential examination is not delivered to a requester of
preferential examination. Therefore, where an applicant amended a specification with claims
not included in the contrastive explanation with the prior art literature; amended a
specification with claims not substantially identical with the claims that a foreign patent
recognizes to be patentable; or amended a specification with claims not substantially
identical with the claims deemed to involve novelty, inventive step and industrial
applicability in an international search or international preliminary examination before
examination is initiated after the determination on preferential examination, the applicant
may undertake the procedure for re-determining the preferential examination through the
corresponding amendment. In such a case, an examiner may grant an amendment order by
designating a period of up to one month by his discretion.
Where an applicant submits a contrastive explanation between all the claims including the
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ones that were amended when the claims was amended and the prior art cited in an
examination-related notification of a foreign patent office; submits the contrastive
explanation with the claims recognized to be patentable by a foreign patent office; or
submit the contrastive explanation with the claims deemed to involve novelty, inventive step
and industrial applicability in an international search or international preliminary examination,
preferential examination shall be conducted without undertaking the procedure of re-
determining preferential examination.
4.15 Application of utility model registration requested for examination upon filing and
then requested for preferential examination within two months from the filing
(1) Subject
Since an application of utility model registration requested for examination upon filing and
then requested for preferential examination within two months from the filing date of the
application, a patent application shall not be eligible. Additional evidential documents do
not need to be submitted.
(2) Basic Requirements
① The term of the right of a utility model registration lasts for 10 years, relatively shorter
than that of a patent right (for 20 years), most of applications of utility model registration
are filed by individual applicants and technologies with shorter life-cycles are filed for utility
models. Considering all, a utility model is eligible for preferential examination once it is
requested for examination upon filing the application of utility model and requested for
preferential examination within two months from the filing date.
② A utility model application divided or converted from the earlier application cannot hold
the retrospective filing date of the earlier application and a divisional or converted utility
model application cannot be requested for preferential examination. Therefore, such
applications are not eligible for preferential examination based on these requirements.
4.16 Patent application directly related to any specialization project under Article 36-8
of 『Act on Special Cases Concerning the Regulation of the Special Economic Zones for
Specialized Regional Development』
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(1) Subject
A patent application directly related to any specialization project shall be eligible. Since only
patent applications are eligible, utility model applications shall not be filed for preferential
examination under the act.
(2) Basic Requirements
① Where an application is jointly filed, one of the applicants shall be a person recognized
by the heads of appropriate central administrative agencies to a specialization project
operator or to be participating to any specialization project under the specialized regional
development project in a special economic zone (hereinafter referred to as „participant of
specialization project‟).
② An applicant shall be designated as a specialization project operator or a participant of a
specialization project at least on one of the dates among the date of filing an application,
the date of request for preferential examination and the date of determination on
preferential examination.
③ Determination on a specialization project operator can be found on an official gazette of
the concerned central administrative agencies submitted by a requester of preferential
examination. Once a person recognized by the heads of appropriate central administrative
agencies to be a participant of any specialization project under the specialized regional
development project in a special economic zone a participant of a specialization project
submits the required documents for such recognition, he/she shall be recognized as a
participant of specialization project.
④ Inventions disclosed in an application of request for preferential examination shall be
directly related to the concerned specialization project. Correlation between the claimed
invention and the specialization project shall be determined based on the written
explanation of preferential examination and the official gazette of the regional administrative
agency in charge of the concerned special economic zone. If necessary, the website of the
Office of the Specialized Regional Economic Development operated by the Ministry of
Knowledge Economy (http://www.mke.go.kr/sezone/conduct/list.jsp) may be referred to for
checking the content of the concerned specialization project and the ground for designation
of the special economic zone, etc. Where the claimed invention is not recognized to be
directly related to the concerned specialization project, an examiner may order to correct the
application to verify the correlation. However, where the claimed inventions and the
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specialization project are likely to be directly related and there are no special grounds, an
examiner may recognize the application to be eligible for preferential examination without
any further investigations.
As of July 1, 2013, 34 special economic zones are designated in the Republic of Korea.
4.17 Patent application related to Research and Development of Medical Services within
the relevant high-tech medical complex filed by any resident research and development
institute of medical services under Article 26 of the Special Act on the Designation and
Support of High-Tech Medical Complexes
(1) Subject
A patent application directly related to research and development of medical services shall
be eligible. Only a patent application, not an application of utility model registration shall be
the subject.
(2) Basic Requirements
① Where an application is jointly filed, at least one of the applicants shall be a resident
research and development institute of medical services under the above-mentioned act.
② An applicant shall be designated as a resident research and development institute of
medical services at least on one of the dates among the date of filing the application, the
date of request for preferential examination or the date of determination on preferential
examination.
③ Inventions disclosed in applications requested for preferential examination shall be
directly related to research and development of the concerned medical service. Therefore,
where the concerned invention is hard to be recognized to have a direct relation with
research and development of medical services, an examiner may order to correct the
application to verify the correlation. However, where the concerned invention is likely to be
directly related to research and development of medical services and there are no particular
grounds, an examiner may recognize the application to be eligible for preferential
examination without any further investigation.
4.18 Patent application commissioned to specialized institution for prior art search
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(1) Subject
A requester of preferential examination shall request prior art search on the claimed
invention to one of the specialized institutions (Korea Institute of Patent Information, WIPS
Co., Ltd., IP Solutions) designated by the Commissioner of the Korean Intellectual Property
Office (hereinafter referred to as „specialized institution‟) under Article 58(1) of the Patent
Act.
① Patent applications whose search results the concerned specialized institution is required
to notify the Commissioner of the Korean Intellectual Property Office shall be eligible.
② The concerned shall submit Search results under the Annexed Form no. 4 of the Directive
of Request for Preferential Examination on Patent/Utility Model to the Commissioner of the
Korean Intellectual Property Office within one month after the request for preferential
examination (as for super-accelerated examination, within 10 days).
※ Where the concerned specialized institution failed to submit a search report (for
preferential examination) within one month from the date of request for preferential
examination(as for super-accelerated examination, within 10 days), an examiner shall make a
correction order. When the examiner in charge clicks „the failure to submit the search result‟
or „the necessity of correction to the search result‟ as the ground for correction order on
the messages window which pops up after clicking the transmittal of a request for
correction‟ on the website, the request for correction is sent not only to the requester of
preferential examination, but also the concerned specialized institution.
(2) Basic Requirements
As for an application requested for preferential examination whose search report is
submitted by a specialized institution, an examiner shall make a determination on
preferential examination. Where the claims to be examination are identical with the claims in
the prior art search report, a request for preferential examination shall be recognized. Where
the specialized institution failed to meet the guideline to write the report below-mentioned
search report (for preferential examination) and the report cannot be used for examination,
an examiner shall make a correction order within the designated period. Where the search
report is not corrected even after the correction order, the examiner shall reject the request
for preferential examination.
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Meanwhile, a written explanation of request for preferential examination shall be attached to
make a request for preferential examination. However, as for a request for preferential
examination on the application whose prior art search is requested to a specialized institute,
the application shall be marked as the application requested for prior art search. Then, if a
written request for preferential examination including the information on the specialized
institution and the date of request for prior art search is submitted, the ground for request
of preferential examination is clearly explained and, therefore, an additional written request
for preferential examination does not need to be attached.
※ Where preferential examination is determined to be conducted on an original application
based on the submitted prior art search reports by a specialized institution and all the
claims of a divisional application in the search report of the original application are already
examined, a request for preferential examination under Article 4(4) of the directive related to
divisional applications can be filed without an additional request for prior art search since
the prior art search on the divisional application is deemed to have been requested.
In such a case, where an applicant submits a request for preferential examination with the
contrastive explanation indicating that all the claims of the divisional application are
identical with the claims of the original application (before division) as well as a written
explanation that the prior art search results on the claims of the divisional application are
included in the prior art search report of the original application drawn up by the
specialized institution, an examiner shall make a determination on preferential examination
deeming that the prior art search report on the divisional application is already submitted.
Where an examiner considers that the search results on all the claims of the divisional
application are not indicated in the prior art search report on the original application by the
specialized institution, the examiner shall order to correct the prior art search report on the
ground for deficiency. Where deficiencies are not addressed despite the correction order, an
examiner shall make a decision to reject a request for preferential examination. Where
deficiencies are addressed after the correction order by submitting additional prior art
search report of the specialized institution, etc., the examiner shall make a decision on
preferential examination.
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(3) Instructions on Drawing Prior Art Search Report (for Preferential Examination)
① Number of prior art literature to be indicated in the search report
In principle, more than five prior art documents shall be included. However, where no close
prior art does not exist when compared with the claims invention or where no relevant prior
art does not exist since it is a new technical field, such grounds for the lack of the required
number of prior art documents shall be stated and the indication of less than four
documents shall be allowed (Paragraph (2)(c) of the instruction on drawing prior art search
report shall be referred).
② Indication of „Search Result‟ in the search report
Among the problems to be solved in the prior art literature which have been searched in
comparison with all of the claims and the means for solving the problems (the concerned
pages and lines shall be indicated), the contents related to the claimed invention shall be
written consecutively.
The search results shall be indicated by searched prior art literature and the claims related
to the claimed invention must be indicated in the box for „Relevant Claims‟ in the search
report (Paragraph (2)(c) of the instruction on drawing prior art search report shall be
referred).
③ Indication of „Contrastive Explanation‟ in the search report
a. Similarities and differences with the closest prior art literature shall be separately
described claim-by-claim in detail. However, the contents in the prior art literature shall be
indicated in detail (the concerned pages and lines, etc.) (Paragraph (2)(d) of the instruction
on drawing prior art search report shall be referred).
b. The closest prior art literature to each claim shall be chosen and similarities and
differences shall be explained. Each claim does not need to be compared with all prior art
documents indicated in the „search results‟.
c. In principle, contrastive explanation shall be indicated to all the claims. However, as for
independent claims that only differ in the dependent claims and the categories, more than
two claims can be indicated together for the contrastive explanation (Paragraph (2)(d) of the
Instruction on drawing prior art search report shall be referred).
d. Where novelty and an inventive step are recognized in the independent claims (where the
relevance is marked as „A‟), a brief contrastive explanation on the dependent claims may be
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indicated.
④ Other relevant cases
a. Where a specification is amended after a request for preferential examination is filed
Where a prior art search is commissioned to a specialized institution; a request for
preferential examination is filed after the amendment to the claims; and then the prior art
search is conducted by the specialized institution based on the pre-amended claims, the
specification to be searched and the filed specification are different based on the time of
request for preferential examination. Therefore, where a search report on the specification is
re-submitted at the time of filing a request for preferential examination after the correction
order, an examiner shall make a determination on preferential examination.
b. Where a ground for request of preferential examination is changed due to the prior art
search by specialized institution after the correction order of preferential examination
Since the ground for request for preferential examination can be changed while submitting
the corrected documents, an examiner shall make a decision on preferential examination
based on the legitimacy of the ground for change. However, since the ground for request of
preferential examination is changed due to the prior art search by the specialized institution,
an applicant shall indicate the date of request for prior art search and the name of the
specialized institution in the corrected document and submit them. Then, the examiner in
charge shall click „Designation of Search Institution‟ on the window of „Determination of
Preferential Examination‟ so that the concerned prior art search report can be uploaded
onto the system (Even when the written request for preferential examination contains the
ground for request of preferential examination due to the prior art search by the specialized
institution, but the written request for preferential examination does not specify the date of
request for prior art search and the name of the specialized institution, an examiner shall
undertake the same procedure and designate the search institution).
Meanwhile, in principle, a prior art search report for preferential examination shall be
submitted within one month from the date of the request for preferential examination (as
for super-accelerated examination, within 10 days). Therefore, if the prior art search report is
not submitted until the examiner makes a decision on preferential examination after the
period for correction of the search report has elapsed, the examiner shall make a correction
order once again.
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Editorial Board
Patent Examination Policy Division
Publisher
Korean Intellectual Property Office
Government Complex-Daejeon 139 Seonsa-ro, Seo-gu,
Daejeon Metropolitan City 302-701, Republic of Korea
Tel : +82(42)481-5399
Fax : +82(42)472-3470
Web site : http://www.kipo.go.kr