The Korean Intellectual Property Office (KIPO) recently partially revised its regulations on patent examinations, effective June 23, 2021. The two most notable changes are summarized below.

1. Expedited Examinations

Expedited examination is available in Korea for certain patent applications where specific conditions apply as set forth under the Korean Patent Act ("KPA"), which include (i) if the application is filed under a patent prosecution highway (PPH) program, (ii) if a third party is engaging in an on-going use of the claimed invention, or (iii) if the prior art search is conducted by an agency specifically designated by KIPO. Assuming any of the conditions for expedited examination are met, the applicant can then file a separate request for expedited examination, either together with the application or at a later date. Under the previous regulations, if the request to expedite was accepted, the first office action would then issue within about 2-4 months (as opposed to about 12-16 months for a non-expedited examination).

However, under the revised regulations, KIPO now treats requests for expedited examination under category (iii) above somewhat differently from other expedited examinations, by extending the internal deadline to issue the first office action for such examinations to 8 months, rather than the regular 2-4 months. This change seems to have been driven because it has generally been easier to qualify for expedited examination under category (iii) than other categories (all that is required is to pay the additional fee for the prior art search), and KIPO now appears to believe it is necessary to prevent delays to regular examinations due to overuse of category (iii) to expedite examinations (according to 2020 statistics from KIPO, expedited examinations under category (iii) account for about 40% of all expedited examinations). 

2. Third Party Observations

Any third party may file a third party observation in a pending application to try to discourage the grant of the application by bringing information to the attention of the examiner (such as new prior art). However, under previous law, the applicant was not required to be notified of such third party submissions, which often prevented a timely response. The revised regulations should allow applicants to more effectively respond to third party observations by requiring the patent examiner to (i) notify the applicant of any third party submissions within 1 month, and (ii) specifically identify any patent publication, academic article, or technology standards document submitted in the third party observation.