The recently-announced amendment to the Korean Patent Act became effective on April 20, 2022, and implements several significant changes that are likely to enhance convenience and protection of rights for applicants and patentees, as summarized below.

1. Deadline to respond to final rejection extended from 30 days to 3 months

The period to respond to a final rejection has been extended from 30 days to 3 months, with two further 30-day extensions available. This may reduce the need to take extensions in order to obtain sufficient time to prepare a response.

2. Applicants now permitted to file amendment with Request for Reconsideration even after Notice of Allowance

An applicant may now file a Request for Reconsideration with an amendment after a Notice of Allowance if necessary, in addition to after a Final Rejection. The Request for Reconsideration must be filed within 3 months of receiving the Notice of Allowance and before registration fees are paid, and results in the Notice of Allowance being withdrawn. As with any Request for Reconsideration, the amendment is limited to one or more of the following: (a) narrowing a claim; (b) correcting a clerical error; or (c) clarifying an ambiguous description.

3. New "separate applications" for non-rejected patent claims introduced

If a Final Rejection rejecting some but not all of the claims in the application is appealed to the Intellectual Property Trial and Appeal Board (IPTAB), but the IPTAB maintains the Final Rejection, the applicant now has the option of filing a "separate application" for any non-rejected claims in the application, to preserve at least those rights, in addition to or instead of filing a further appeal of the rejection. However, because a "separate application" can only be filed if less than all claims are rejected, and cannot be the basis for further divisional or separate applications, divisional applications may continue to be the preferred method of maintaining the ability to continue prosecution of claims.

4. Automatic recognition of priority for divisional applications

As long as priority is properly claimed in the original parent application, the same priority claim is now automatically recognized for any divisional application filed from that parent application.

5. Relaxed requirements for restoration of patent rights

Patent or other IP rights lost for failure to satisfy procedural requirements such as missing critical application deadlines may now be restored if the failure was for "reasonable reasons," instead of the previous stricter "reasons not imputable to a person" standard.

6. Non-consenting co-owners entitled to non-exclusive license if patent transferred

If a co-owner of a patent initiates a court auction to sell the patent to a third party despite lack of consent to the sale from other patent co-owners, the non-consenting co-owners retain non-exclusive licenses to the patent after the transfer (in addition to their portion of the proceeds from the auction).

7. Now possible to make priority claim after allowance to domestic Korean applications

A domestic priority claim can now be made for an application even after it is allowed, as long as it has not yet been registered as a patent.