KIPO (the Korean Intellectual Property workplace) has promulgated some brand new Enforcement guidelines through the Korean Patent Act (“KPA”), effective March 30, 2020. The enforcement that is new earn some modifications to Korean patent practice such as for instance leisure of formality demands for Korean patent actions, patent markings, and 3rd party challenges regarding pending patent applications. A number of the changes that are notable discussed below:

Formality Needs Relaxed For Korean Patent Applications – Making It Simpler To Have Priority Date

Presently, you are able to register a patent application in Korea with only the specification and with no claims. Article 42-2 KPA. The applicant will then have fourteen months from filing the initial application to prepare the claims. But, to be able to register minus the claims, the specification had a need to satisfy all the formality demands e.g., consist of name of innovation, up to date, brief description of drawings, detail by detail description for the embodiments, etc. properly, although a patent application might be filed without claims (comparable to US provisional applications), certain requirements about the specification were still burdensome.

The amended Enforcement Rules associated with the Korean Patent Act (“Amended Rules”) decreases the formality demands when it comes to specification. The specification may be substituted with any publication that merely identifies the applicant’s invention under the Amended rules. As an example, a scholastic article or a research note could be adequate. In addition, the existing KPA enables the specification that is initial be filed in English. Which means that an english article that is academic research paper need not be translated into Korean during the time of filing. Therefore, a concern date can be had with notably less expenses.

But, a job candidate who obtains a priority date without filing any claims or making use of a language specification must register the claims and/or the Korean translation within fourteen months associated with earliest concern date. Failure to take action can lead to the patent application being thought to have already been withdrawn.

Patent Marking Needs

In Korea, patent marking is not needed to get damages. The patentee can seek damages from the patent grant date (set alongside the US where damages are determined from date of real or constructive knowledge). As a practical matter, in Korea, patent marking can be used primarily for marketing and advertising purposes, which might be used in the patentee’s choice (instead of a formal appropriate advantage).

Article 223 associated with KPA provides some demands or guidelines regarding simple tips to mark an item because of the patent number ( e.g., by indicating “Patent” or “Method Patent” together aided by the patent number(s) or by indicating “Patent Application (under assessment)” or ” Method application that is patentunder assessment)” alongside the patent application number(s)). Additionally, Article 121 associated with Enforcement Rules associated with KPA permits digital marking, i.e., marking of an item with a hyperlink to an online site showing record of relevant patents and patent applications.

Now, Article 121 of Amended Rules provides more guidelines that are specific. For instance, Article 121 of this Amended Rules stipulates that “Patent” or “Method Patent” utilized in patent markings could be labeled in English (including abbreviation that is english or Chinese. Furthermore, a club code or code that is QR be applied as a way for digital marking. Further, Article 121 regarding the Rule that is amended stipulates to mark the termination regarding the patent right and sets forth sanctions for false marking (patent marking/indications that could mislead customers into convinced that a write-up is included in a patent if you have no released patent/pending application). Especially, the Amended Rule stipulates that when the marking/indications are believed as false marking, the Korea Intellectual Property Protection Agency (“KIPPA”) may suggest appropriate corrective measures such as for instance removal and modification regarding the false marking. Furthermore, if you have failure to conform to the corrective measures, the KIPPA may file a complaint that is criminal conformity aided by the Criminal Procedure Act. Violators might be susceptible to imprisonment as much as 36 months or a superb of as much as thirty million Korean Won (about USD 27,000).

Third Party Challenges to Pending Patent Applications

A third party may submit information challenging pending applications while it is being examined at KIPO under Article 63-2 of the KPA. The distribution may include, as an example, previous art sources and/or a short on technical and legalities to aid the examiner’s understanding. The challenger is still required to disclose their identity in the distribution even though the basic training is that the patentee will not have the challenger’s distribution. As such, numerous challengers have used a straw guy whenever publishing challenges to help keep their identities private.

The Rules that is amended eliminates dependence on challengers to reveal their identities. Therefore, challengers not any longer need certainly to work with a straw man whenever challenging patent applications.