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KIPO Announces Increased Discounts for Paying Multiple Years of Annuities at Once

2019.11.08

KIPO recently announced an amendment to the Enforcement Rule for Payment of Patent Fees that will increase the discount for paying multiple years of patent (and utility model/design) annuities in advance. Currently, in order to register an allowed application as a patent/utility model/design, the first three years' worth of annuities must be paid. For the 4th year of annuities and beyond, KIPO currently offers a discount of 5% if three or more years of annuities are paid at once. Under the amendment, this discount will be substantially increased, to 10%.

In view of the increased discount, it may be worthwhile for some patentees to consider renewing their Korean patents for at least 3 years at a time, instead of assessing whether or not to renew on a yearly basis, particularly in businesses where market conditions may not change so frequently. It should be noted that the per-claim annuities in Korea step up substantially every third year after the initial grant. Further, since annuities (and the initial registration fee) are calculated based on the number of claims being issued, patentees may wish to consider abandoning unneeded claims when paying a particular set of annuities, since claims can be abandoned at any time after grant. If multiple years of annuities are paid in advance, and then claims are abandoned while one or more years of pre-paid annuities have yet to expire, the annuities for years after the current year are refundable for those claims.

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