1• Patent-related procedures, patent application and reinstatement of patent rights conditions were extended (Article 16(2), Article 67(3), and subsection (1) of Article 81(3) in Patent Law) (the same for utility model, trademark, and industrial design)

• Relax the conditions for invalidation of revocation process and the for restoration of trademark rights from “reasons unable to be responsible” to “justifiable reasons" to relieve rights

※Example) Justifiable reasons: Hospitalization due to illness, erroneously voluntary transfer of fees, etc.

This revised clause applies where the procedure is invalid, withdrawn, or a decision of refusal is determined, or the patent fee has not been paid or compensated before the Amendment Act takes effect, it is also applicable for situation that it has not been over 2 months since the date of grounds ceasing to exist when the Amendment Act comes into effect.

2. Claiming priority for divisional applications and omitting to submit documentary evidence (Article 52, Paragraph 4 of the newly established Patent Law) (the same for utility model, trademark and industrial design)

• If priority is claimed in the earlier application, the divisional application is also automatically acknowledged when the earlier application is filed, thereby preventing rejection due to omission of priority claim

This amendment applies to divisional applications filed after the amendments come into force.

3. Introduce separate application system (Article 52(2), Article 59(3), Article 62(6), Subsection 4 of Article 92(2) and Subsection 7 of Article 133(1) of the Patent Law were newly established) (the same for utility model)

• A system that can separate only the claims in the application without being rejected to apply even after receiving a rejection decision for reexamination being rejected (upholding a refusal decision) is introduced.

This amendment applies to separate applications that are part of a patent application requesting a trial of a patent rejection decision after the amendments come into force.

4. Expand the scope of applications claiming priority in Korea (Subsection 2 and subsection 4 of Article 55(1) and subsection 2 of Article 56(1) of the Patent Law) (the same for utility model)

• Expand the application scope for priority, whereby, after a patent is granted, it can be reapply and obtain patents for inventions that improve or add the corresponding patent application by claiming priority

This amendment applies to domestic priority claims in Korea based on the receipt of a copy of the patent grant decision after the Amendment Act taking effect.

5. Expand the objects and time limit of the reexamination request (paragraphs 1 and 3 of Article 67 (2) of the Patent Law) (the same for utility models) (just confined to the extension of the time limit for the reexamination request, and the same revision is for Design Protection Law)

• Expand the objects of patent reexamination request: the reexamination can also be requested by revising the specification after the grant decision

In the Amendment Act, the object of the reexamination request is expanded from the patent application for which the patent rejection decision was made before the amendment to the patent application for which the patent grant decision was made before the establishment of the registration, and the time limit for the request for reexamination is extended to 3 months (the time limit may be extended for the above-mentioned 3-month), and the separate application is excluded from the object of the request for review.

The amendments extending the time limit of a request for reexamination to 3 months apply to applications for which a copy of the rejection decision is received after the amendments come into force.

The amendments for reexamination can also be requested, in the case of making the decision to grant a patent, to be applicable for patent applications accepting a copy of the decision to grant the patent after the Amendment Act came into force.

6. Protect joint patent holders in operation (Article 122 of the Patent Law) (the same for utility model and design)

• In the case of that the patent rights of the joint holders are made separation request (auction), the general right of exploitation (use) is granted to the rest of the joint holders who have lost share, so as to protect the business in operation.

This amendment applies in the case of a request for separating jointly owned patent rights after the Amendment Act coming into effect.

7. Extend the time limit for trial requests for patent rejection decisions, etc. (Article 132(17), Subsection 2 of Article 52(1) and Subsection 1 of Article 53(1) of the Patent Law) (the same for utility model, trademark and design)

• Extend deadlines: provide abundant preparation deadlines and minimize unnecessary deadline extensions

In the Amendment Act, the time limit for requesting a trial of a rejection decision, etc., is extended to 3 months from the 30th day from the date of receiving the copy of the rejection decision. The above-mentioned three-month period can be added an extension as same as before the revision.

Moreover, with the same purpose, the time limit for a trial request of a decision not to accept an amendment to a trademark and a crock pot design has also been extended from 30 days to 3 months.

This Amendment applies to applications for which the copy of a rejection decision or applies to applications for revising a copy of the non-acceptance decision after the amendments come into force.

8. Protect the joint trademark holders in the use of trademarks (newly established Article 104 (2) of the Trademark Law)

• When using the trademark before the establishment of the pledge, the trademark right is transferred through auction, etc., and the general use right is also granted to the trademark holder (introduced in patent and industrial design)

This amendment applies to the case where a pledge is established with the trademark right as the catalogue or the division of the trademark right of the co-holder is requested after the amendment act takes effect.

9. Authority reexamination after the decision of trademark authorization (newly established Article 69 (2) of the Trademark Law) (the same for industrial design)

• In the case of finding explicit reason for rejection before paying the registration fee, it may be reexamined by pledge (introduced in patents as well)

This amendment applies to applications for trademark registration, applications for additional registration of products, or applications for the conversion and registration of commodity classifications, etc., which are filed after the amendments come into force.

10. Explicitly rectify the time limit when requesting reexamination in response to a rejection decision of the registration of industrial design (Subsection 2 of Article 48(4) in the Design Law)

• Increase amendment opportunities: extend the amendment of an application based on a reexamination request to the time limit of the reexamination request

This amendment applies where a copy of the rejection decision of the industrial design registration was received before the amendment act comes into force, and also where the time limit for a request for reexamination in terms of Article 64(1) has not expired when the amendment act takes effect.

11. Invalidation of rights of industrial design after the liquidation procedure of a legal person (newly established Article 111(2) of the Industrial Design Protection Law)

• In the case of that the transfer registration has not been completed till the date of registration of the liquidation termination of the legal person, it will take effect on the next day after the registration date

This amendment is applicable for the rights of industrial design of legal persons that have been registered for liquidation after the Amendment Act coming into effect.

From Moon & Moon International (Korea)

December 2021