IMPORTANT CHANGE TO KOREAN EXAMINATION RULE - NEW LIMITS ON MAXIMUM NUMBER OF MONTHLY EXTENSIONS IN RESPONDING TO KIPO OFFICE ACTIONS
The Korean Intellectual Property Office ("KIPO") has introduced an important change to the rules governing patent and utility model examinations in Korea.

Under the previous KIPO examination rules, there was no express limitation on the number of extensions available when responding to office actions. Instead, the number and duration of extensions was at the Examiner's discretion. In certain instances, this has led to excessive extensions being granted. In one example cited by KIPO, the applicant obtained extensions for fifty-seven (57) months. Consequently, the rule change is intended to prevent such purposeful delay tactics.

Under the new rules, extensions are available for up to FOUR (4) months only (i.e., a total of six (6) months, including the initial two (2) month reply period) for responding to office actions, absent "special reasons" warranting further extensions. This new examination rule will apply to applications with office actions issued on or after July 1, 2008. In principle, KIPO will allow extensions for up to four months only. Any further extension request will need to be accompanied by a separate description of reasons justifying further extensions. The Examiner will then grant or deny the extension request after reviewing the reasons for the extension. Special reasons warranting extensions beyond the four (4) month include additional time needed for testing, existence of a parent or divisional application pending trial or on appeal with the patent board, or adverse conditions beyond the control of the applicant.

According to KIPO, providing six (6) months (i.e., two (2) months given as the initial deadline, plus four additional months as needed) to respond to office actions is in line with practices in the United States (initial period of three (3) months; extendible by three (3) months); Japan (initial period of three (3) months; extendible by three (3) months); and Europe (initial period of four (4) months; extendible by two (2) months).

While the four (4) month extension limit rule change does not apply to office actions dated prior to July 1, 2008, Examiners still have discretion to grant or deny extension requests. Accordingly, in light of the rule change, Examiner's may be more unwilling to grant extensions liberally. Therefore, we urge all applicants to provide responses to office actions before the end of six (6) months.