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South Korea: Advantages of accelerated examination




After requesting the examination of a patent application, it normally takes 10 to 12 months to receive a first office action (either a notice of preliminary rejection or a notice of allowance) from the Korean Intellectual Property Office (KIPO). When there is an urgent necessity to secure a patent right, how can one speed up the examination process before KIPO? The answer is to use accelerated examination.

According to KIPO's Examination Guidelines, accelerated examination can be requested at KIPO based on four grounds, each with a corresponding option: (1) general accelerated examination, (2) accelerated examination accompanying a prior art search, (3) patent prosecution highway (PPH), and (4) PCT-PPH.

First, to qualify for general accelerated examination, the patent application at issue should satisfy one of the conditions stipulated in Article 61 of the Korean Patent Act, which include (a) a third party is practising the claimed invention in Korea after the patent application is laid-open, and (b) the applicant or its licensee is practising or preparing to practise the claimed invention in Korea. In the case of (b), the applicant is required to submit a self-conducted prior art search report to KIPO.

If the applicant requests a prior art search at one of the KIPO-designated search agencies, the patent application is also eligible for accelerated examination. Approximately $550 will be incurred for requesting the search. The commissioned search agency is required to submit a prior art search report to KIPO within one month of the date of requesting accelerated examination.

When favourable examination results are obtained from foreign patent offices, the applicant may consider utilising the PPH programme. KIPO now participates in the PPH programme with patent offices in 26 countries: Japan, the US, Denmark, the UK, Canada, Russia, Finland, Germany, Spain, China, Mexico, Singapore, Hungary, the EPO, Austria, Israel, Sweden, Norway, Portugal, Iceland, Taiwan, the Philippines, Colombia, Estonia and Poland. To take advantage of the PPH programme, Korean claims should be amended to have the same or narrower scope as the allowed claims of a foreign counterpart.

In addition to the PPH programme, KIPO has PCT-PPH agreements with patent offices in 25 countries: Japan, the US, China, Austria, the Nordic Patent Organization, Denmark, the UK, Canada, Russia, Finland, Spain, Hungary, the EPO, Australia, Israel, Sweden, Norway, Portugal, Iceland, Singapore, Germany, the Philippines, Colombia, Estonia and Poland. The applicant can file a request for accelerated examination based on positive examination results from an international work product (WO/ISA, WO/IPEA, or IPER) issued by these patent offices. Under the PCT-PPH programme, Korean claims should correspond to the claims allowable in the international work product.

An applicant who wishes to proceed with accelerated examination should submit a separate request therefor together with the official fee of about $200, in addition to a normal request for substantive examination. Once a request for accelerated examination is filed, KIPO will determine eligibility within seven days. If granted, the examination results will be issued within two to four months. While accelerated examination is worthwhile to shorten the examination period, KIPO is not bound to the examination results obtained in a corresponding application.

The total number of requests for accelerated examination of a patent application in recent years based on the above grounds is summarized in the table.

Unlike patent applications, design and trade mark applications are automatically examined in order of filing date in Korea. Thus, no request for examination is needed for the initiation of substantive examination. However, as for patent applications, accelerated examination is available for design and trade mark applications.

Accelerated examination of a design application can be requested based on similar grounds to those for a patent application, such as a third-party practice, self-practice and prior art search. A design application undergoing accelerated examination will receive its first office action within one to two months, and will incur the official fee of approximately $70 per design.

Trade mark applications, except for international trade mark applications, are eligible for accelerated examination if (a) the applicant is using or is clearly preparing to use the mark for all designated goods, or (b) a third party is using the mark without the applicant's permission. The first office action will be issued within two months if a request for accelerated examination is granted. The official fee for accelerated examination of a trade mark application is approximately $160 per class.

In Korea, IP rights such as patents, designs, and trade marks can be enforced against a third party only after registration. Therefore, it is highly recommended to utilise accelerated examination to advance the registration date.

Year Ground 2010 2011 2012 2013 2014
Third party practice 7 3 10 12 71
Self-practice 5,383 5,037 5,344 5,712 6,205
Prior art search 7,622 8,306 8,322 7,880 8,072
PPH 490 588 1,141 1,459 2,108
PCT-PPH 22 181 283 523

Min Son

HANOL Intellectual Property & Law
6th Floor, 163, Yang Jae Cheon-Ro, Gang Nam-Gu
Seoul 06302, Republic of Korea
Tel: +82 2 942 1100
Fax: +82 2 942 2600
hanol@hanollawip.com
www.hanollawip.com


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