[LAW UPDATE] Recent Changes of the Korean IP Laws (Patent/ Trademark/ Design) Effective from 20 April 2022

In order to enhance the convenience and the rights protection of applicants/registrants, the Korean Patent Act, the Korean Trademark Act, and the Korea Design Protection Act have recently been amended, and the amendments are effective from 20 April 2022.

A brief overview of the amendments is as follows:

1. Common amendments (Patent/Trademark/Design)

1-1. Relaxation of restoration requirement

Before the amendments become effective, in case of a failure to meet procedural requirements such as the due date, the requirement of the restoration request is having "the reason not imputable by a person", such as a natural disaster. In the amendments, the term for the requirement of the restoration request is changed from having "the reason not imputable by a person" to having "reasonable reason". Therefore, after the amendments become effective, the restoration can be requested due to an applicant's medical condition.

1-2. Automatic recognition of priority claims in divisional applications

In the case of divisional applications filed after the amendments become effective, if priority is properly claimed and priority document(s) are submitted for the original application, claiming priority and submission of priority document becomes no longer necessary for the divisional applications filed from that original application.

1-3. Allowing a longer time period for responding to rejection decision

The period for responding to a rejection decision is extended from thirty (30) days to three (3) months. Therefore, for rejection decisions received after the amendments become effective, an applicant will have three (3) months after the receipt date of the rejection decision to respond to the rejection decision by, for example, filing an appeal or a request for re-examination.

1-4. Granting non-exclusive license after the transfer of right through auction or similar proceeding

Before the amendments become effective, for patent and design, if the right has been sold through auction or similar proceeding due to the pledge, the non-exclusive license is granted to the owner who has used the patent/design right before the establishment of the pledge. After the amendments become effective, for the trademark, the same non-exclusive license mentioned above is introduced.

Further, after the amendments become effective, if the partition of co-owned rights requested by some co-owners and the rights have been sold through auction or similar proceeding because the court accepts the partition request, the non-exclusive license is granted to the owner who has used the patent/design/trademark rights before the request for partition of co-owned rights and did not consent to the sale.

2. Patent Act

2-1. Introduction of "separate applications" for patent claims not rejected

If the rejection decision is received on or after the effective date and the appeal of the rejection decision is dismissed, the applicant can file a "separate application" within 30 days from the receipt of the appeal for any patent claims that were in the initial application but not rejected in the rejection decision. However, "separate application" has some limitations. For example, it is not possible to file further divisional/separate applications from a separate application.

2-2. Expanding applications that could be the basis of domestic priority

Before the amendments become effective, claiming priority based on an earlier domestic Korean patent application was possible before a Notice of Allowance for that earlier application. After the amendments become effective, claiming domestic priority is possible before the registration of that earlier application.

2-3. Allowing re-examination after Notice of Allowance is issued

Before the amendments become effective, re-examination could be requested in response to a "first rejection decision" but could not be requested if a Notice of Allowance, Decision of Grant of Protection, is issued. After the amendments become effective, during the period from receiving Notice of Allowance to the registration of that application, re-examination can be also requested.

3. Trademark Act

3-1. Introduction of Ex-officio re-examination after Notice of Allowance

If any significant ground of refusal is found in the domestic Korean Trademark application that is not registered yet, an examiner can cancel the Notice of Allowance before the registration and re-examined the application.

4. Design Protection Act

4-1. Introduction of Ex-officio re-examination after Notice of Allowance

If any significant ground of refusal is found in the domestic Korean Design application that is not registered yet, an examiner can cancel the Notice of Allowance before the registration and re-examined the application.

4-2. Extinction of design rights due to the liquidation of a company

Before the amendments become effective, for patent and trademark, if a transfer of the right is not recorded until the registration date of liquidation completion, a registration owned by a company in liquidation shall be extinguished one day after the registration date of liquidation completion. After the amendments become effective, for the design, the same extinction of rights due to the liquidation mentioned above is introduced.

4-3. Allowing a longer time period for submitting amendments for re-examination

Before the amendments become effective, filing an amendment is allowed when the amendment is accompanied at the time of requesting re-examination. After the amendments become effective, filing an amendment is allowed during the period given for requesting re-examination, that is, three (3) months after the receipt date of the rejection decision.

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