Korea’s IP High Court recently ruled that, if a rejection is issued during examination based on different elements of the compared prior art than previously compared with the claimed invention, the rejection is a new rejection ground giving the applicant another opportunity to submit a response and amendment.

Background

Under Korean patent examination practice, if an applicant submits a response (with or without an amendment) to a rejection, but the response/amended claims are deemed not to resolve the rejection, the applicant normally has limited scope for further amendments to the claims. However, a rejection based on incorrectly identified primary/secondary prior art or newly cited prior art (beyond conventional technology) does constitute a new rejection ground, for which the applicant is provided an opportunity to file another response and amendment. The recent IP High Court decision extends this practice to cases where a rejection is based on the same compared prior art, but on different elements of that prior art, if certain requirements are met.

IP High Court Decision

In this case, the Ministry of Intellectual Property (“MOIP”) had issued a Final Rejection denying the inventiveness of a claimed invention directed to a multilayer coating comprising (i) a high clarity gel coat layer, (ii) a visual effect layer, and (iii) a color layer, on the grounds that layers (i), (ii), and (iii) corresponded to the gel coat layer, the intermediate layer, and the back layer of the compared prior art. The Intellectual Property Trial and Appeal Board (“IPTAB”) upheld this Final Rejection, but on the grounds that layers (i), (ii), and (iii) of the claimed invention corresponded to the gel coat layer, the ink composition layer, and the intermediate layer of the prior art. In other words, MOIP and the IPTAB ruled that different elements of the prior art corresponded to layers (ii) and (iii) of the claimed invention. However, since both rejections were based on the same prior art, this difference was not deemed a new rejection ground, and the applicant was not given an opportunity to submit a new response and amendment based on the IPTAB’s reasoning.

On appeal, the IP High Court reversed the IPTAB’s decision, holding that: (i) when different elements of the prior art are compared for the first time in issuing a rejection during examination, and the change alters the inventiveness assessment between the claimed invention and the prior art, this constitutes new rejection grounds impacting the applicant’s response and amendment strategies, so the applicant should be given the opportunity to file a response and amendment accordingly; and (ii) the IPTAB’s decision was overturned for changing the compared elements of the prior art from the Final Rejection, but not providing the applicant an opportunity to submit a further response and amendment in such instance.

Repercussions

The IP High Court’s decision is significant for providing applicants more opportunities to respond based on the specific rejection grounds, even in the absence of newly cited prior art. Ultimately, the additional opportunity and time to formulate response and amendment strategies should help increase the applicants’ chances of obtaining allowances.