Notable Changes towards the Enforcement Rules associated with Korean Patent Act

KIPO (the Korean Intellectual Property workplace) has promulgated some brand new Enforcement guidelines through the Korean Patent Act (“KPA”), effective March 30, 2020. The brand new Enforcement guidelines earn some modifications to Korean patent practice such as for example leisure of formality needs for Korean patent actions, patent markings, and alternative party challenges regarding pending patent applications. A few of the changes that are notable talked about 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 just the specification and minus the claims. Article 42-2 KPA. The applicant will then have fourteen months from filing the application that is original prepare the claims. Nonetheless, to be able to register with no claims, the specification had a need to satisfy all the formality needs e.g., consist of name of innovation, high tech, brief description of drawings, detail by detail description for the embodiments, etc. correctly, although a patent application might be filed without claims (comparable to US provisional applications), what’s needed in connection with specification were still burdensome.

The amended Enforcement Rules regarding the Korean Patent Act (“Amended Rules”) decreases the formality demands for the specification. The specification may be substituted with any publication that merely identifies the applicant’s invention under the Amended rules. As an example, an article that is academic a research note might be enough. In addition, the present KPA permits the initial specification to be filed in English. Which means an english article that is academic research paper don’t need to be translated into Korean during the time of filing. Therefore, a concern date can be had with even less expenses.

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 Failure to take action can lead to the patent application being considered to have already been withdrawn.

Patent Marking Demands

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

Article 223 associated with the KPA provides some needs or guidelines regarding just how to mark something using the patent number ( ag e.g., by indicating “Patent” or “Method Patent” together because of 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 for the Enforcement Rules associated with the KPA permits virtual marking, i.e., marking of something with a hyperlink to an online site showing the menu of relevant patents and patent applications.

Now, Article 121 of Amended Rules provides more guidelines that are specific. As an example, Article 121 for the 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 QR rule may be utilized as a way for digital marking. Further, Article 121 for the Rule that is amended stipulates to mark the termination associated with the patent right and sets forth sanctions for false marking (patent marking/indications that could mislead consumers into convinced that a write-up is included in a patent if you find no released patent/pending application). Particularly, 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 example removal and modification associated with the marking that is false. More over, if you have failure to conform to the corrective measures, the KIPPA may register a complaint that is criminal conformity with all the Criminal Procedure Act. Violators can be susceptible to imprisonment as much as 36 months or a superb of up to thirty million Won that is korean 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, for instance, previous art sources and/or a short on technical and legalities to help the examiner’s understanding. The challenger is still required to disclose their identity in the submission even though the general practice is the fact that patentee will not have the challenger’s distribution. As a result, numerous challengers have used a straw guy whenever submitting challenges to help keep their identities private.

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

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