September 16, 2014

A Welcome Revision of the Korean Patent Law

Dr. Ilan Cohn, Senior Partner
Dr. Ilan Cohn

Senior Partner

Reinhold Cohn & Partners

The Korean Patent Law was recently revised to make it easier for non-Korean applicants to file patent applications in this country. The revisions will come into effect on 1 January 2015 and, among others, will enable to secure an effective filing date in Korea by initially submitting an English language patent specification, even without claims, and providing a 2-month time period from the filing deadline for submitting a Korean language specification. This revision also includes a number of other important changes.

The Korean Patent Law was recently amended and most of the revised provisions will come into effect on January 1, 20151.

The revised provisions, intended to make it easier to obtain an effective Korean filing date, reflect the general pro-patentee attitude of the Korean Patent Law. Under the new provisions, an effective filing date can be secured by submitting an English language specification2 In the case of a regular priority application, the time period in which to submit a Korean language specification will be extended to 14 months from the earliest priority date. In the case of a national phase of a PCT application, the time period in which to submit a Korean translation will be extended to 32 months from the earliest priority date (i.e. two months from the end of the 30 month period). This will avoid extra costs associated with rush translations, in the event of last minute filing decisions.

It is a well-known fact that mistakes in translation often occur, and, in the past, such mistakes could have presented issues in enforcement of the patent. Hitherto, it was not possible to correct errors in translation, even obvious ones; however, this will change with the new revision. Particularly, in the event of a national phase application of a PCT application, it will be possible to correct translation errors by making reference to the original text of the PCT application. In other words, under the new revision, the authentic and relevant document will be the non-Korean PCT application and, accordingly, a patentee will no longer be bound (and negatively affected) by errors which occurred during the translation process, as a result of inadvertent translation errors.

It is to be hoped that welcome changes, such as these, will be adopted in other countries that require translation of patent applications into their local language.

Another change, particularly relevant for a Korean applicant and, at times, also for foreign ones, is the ability to obtain an effective filing date, even without claims.

Other revisions of the recent Amendment include easier restoration of patents that lapse because of non-payment of maintenance fees, and revision of the patent term extension provisions.

1 Provisions relating to restoration of lapsed patents became effective immediately upon passing of the law on June 11, 2014.

2 The Law actually does not specify English, although the current announcement by the Korean IP Office (KIPO) is that other than Korean, only English language specifications will be accepted. This may be broadened to include other languages as well.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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