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IP Newsletter | Summer/Fall 2016
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PATENT
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Patent Term Adjustment in Korea
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In 2012, as part of the Korea-US Free Trade Agreement, Korea first introduced a patent term adjustment ("PTA") system to allow the extension of patent terms for patents whose issuance is unduly delayed by the Korean Intellectual Property Office ("KIPO"). Since the new PTA system applies only to patent applications filed on or after March 15, 2012, and since a patent is only entitled to PTA if issuance is delayed more than 4 years after the filing date of the application or more than 3 years after the request for examination, we may soon begin to see the issuance in Korea of patents eligible for PTA.
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Patents eligible for PTA
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As noted above, Korean patents filed on or after March 15, 2012 (or PCT international applications filed on or after March 15, 2012 designating the Korean national phase) may be eligible for PTA, if the registration of the patent is delayed more than 4 years from the filing date of the application or more than 3 years after the request for examination was made. For divisional applications, "filing date" refers to the date the divisional application itself was filed, not the priority date.
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Procedure for applying for PTA
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The Korean PTA system differs from the U.S. system in that the U.S. Patent and Trademark Office automatically calculates the applicable PTA and includes it in the notice of allowance, whereas KIPO does not take any action to calculate or determine eligibility for PTA until the patentee files a PTA request. Any such request must be made within 3 months of the date the patent issues (i.e., the date the registration fee for the patent is paid). Therefore, it is important for a patent applicant in Korea to monitor whether its patent is eligible for PTA, and if so to timely file a PTA application.
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Length of PTA
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The basic calculation of a PTA is the number of days beginning the day after 4 years after the filing date of the patent application (or in the case of PCT applications, 4 years after entering the Korean national phase) or 3 years after the request for examination (whichever is later) and ending on the date the patent is registered. This period is then reduced by the number of days of delay that are attributable to the applicant rather than KIPO.
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Delay attributable to the applicant
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The Enforcement Decree of the Korean Patent Act gives the following examples of delay attributable to the applicant:
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Any period of time taken by the applicant to respond to an office action or notice from KIPO rejecting the application, unless the asserted rejection grounds are overcome without any amendment to the application (in which case there is no applicant delay);
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Any extension of a designated deadline that is requested by the applicant (though only the time actually taken by the applicant to respond will be counted as delay, if the applicant responds prior to the extended deadline); and
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The period between the date the notice of allowance is received to the date the registration fee is paid.
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Calculation of PTA period
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The following diagram depicts a hypothetical PTA calculation involving various periods of delay attributable to the applicant:
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Extendible term = maximum extendible term – the sum of the periods of as those attributable to the applicant.
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The diagram illustrates that even if the patent registration is delayed more than 4 years past the filing date of the application (or more than 3 years past the examination request), no PTA will be granted if the delays attributable to the applicant exceed the maximum extendible term.
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Under the current pace of normal examination at KIPO (approximately 10 months between the request for examination and the first office action), it is unlikely PTAs will be relevant to the majority of patents issued in Korea. However, the issuance of a patent can be significantly delayed where the patent only issues after a final rejection is successfully appealed to the Intellectual Property Trial and Appeal Board, and in such cases PTAs are expected to be a substantial benefit to patentees in Korea.
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Back to Main Page
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If you have any questions regarding this article, please contact:
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For more information, please visit our website: www.ip.kimchang.com
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