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PATENT | ||||||||||||
Amendments to the Korean Patent Act to Implement Patent Law Treaty | ||||||||||||
On April 29, 2014, a bill of amendments to the Korean Patent Act was passed by the Korean National Assembly in order to implement the Patent Law Treaty, which seeks to harmonize patent procedures in its member countries. The proposed amendments to the Korean Patent Act were signed into law by the president on June 11, 2014. The newly enacted amendments ("Amendments") include a number of important changes to Korean patent procedures, such as relaxing requirements for obtaining the filing date of a patent application. Most of the changes in the Amendments will go into effect on January 1, 2015.
Overall, these amendments will provide better protection and other practical benefits for parties who apply for patents in Korea. Some of the notable changes are briefly discussed below. Relaxed Requirements for Obtaining the Filing Date of a National Patent Application Under the current Patent Act, the filing date of a national patent application filed directly in Korea is obtained when a patent specification prepared in the Korean language according to the formality requirements defined in the Patent Act is filed with the Korean Intellectual Property Office. However, preparing a patent specification that meets all of the required formalities, including translation, often takes a significant amount of time, and results in delays in filing. Articles 42-2 and 42-3 of the Amendments help resolve this problem by easing the language and formality requirements for patent specifications. Specifically, the Amendments allow an applicant to obtain the filing date of a patent application as long as any form of an invention description is filed, even if it is in a foreign language (at this time, English has been selected as the only accepted foreign language but additional foreign languages are expected to be accepted in the future). These relaxed requirements under the Amendments will allow applicants to quickly establish a filing date by, for example, simply attaching a foreign language research paper to the application without a formal specification or further translation. It should be noted, however, that an applicant who obtains a filing date without filing any claims or using a foreign language specification must file the claims and/or the Korean translation within 14 months of the earliest priority date. Failure to do so will result in the patent application being considered to have been withdrawn. Reliance on PCT and Foreign Language Patent Applications for Corrections For PCT international applications in a foreign language as well as other foreign language patent applications, the Amendments provide that the proper basis for amending the specification of a Korean application will now be the "original" foreign language specification, not the Korean translation. However, in order to facilitate the examination of patent applications and provide accurate Korean translations of the application to the general public, the Amendments also provide that any amendments beyond the scope of the Korean translation can be the basis for a rejection by an examiner (although such amendments cannot constitute a ground for invalidation of a granted patent). Further, Articles 42-3(6) and 201(6) of the Amendments implement a new system that allows Korean translations of foreign language patent applications to be corrected within the scope of the originally-filed foreign language document. Thus, the Amendments are expected to significantly benefit foreign applicants, who will now be able to correct typographical errors or translation errors made in the process of translating the PCT international application into the Korean language and thereby more effectively protect the full scope of their patent rights. Extension of Time to Submit Korean Translations of PCT Applications Under the current Patent Act, in order for a PCT international application to enter the Korean national phase, it must be filed in Korea within 31 months of the priority date, and a Korean translation of the PCT application must be submitted with the application. Article 201(1) of the Amendments extends the translation submission deadline by allowing the applicant to request a one-month extension of time for submitting the Korean translation when the Korean national phase application is filed. In other words, the applicant will now have up to 32 months from the priority date to submit the Korean translation of a PCT international application when entering the Korean national phase (although the national phase application itself still must be filed within 31 months). Thus, it will be significantly easier for foreign patent applicants to file in Korea, who will no longer have to prepare a Korean translation simply to obtain a filing date. Other Changes The Amendments clarify the definitions of a number of terms in the Korean Patent Act in order to conform terminologies used in Korean patent applications and PCT international applications to international standards. In addition, the Amendments ease the conditions for requesting restoration of rights in the case of a withdrawn patent application for non-payment of fees, by allowing the applicant to restore its patent rights regardless of whether or not the patent is being worked and reducing the fees that must be paid for such restoration of rights. |
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