IP Newsletter | Spring 2014
Multiple IP Applications Related to a Single Product May Now Be Examined Together
The Korean Intellectual Property Office ("KIPO") recently announced that batch examination is now available for all types of IP applications. Batch examination allows an applicant to pool together multiple IP applications related to a common product into one examination basket to be processed according to an applicant's designated timeline. By way of batch examination, the applicant can seek the examination of multiple applications within a unified examination timeframe that can be set according to the applicant's request. Applications that qualify for batch examination include patent and utility model applications, trademark applications and design applications.
Batch Examination Requirements
An applicant who has filed multiple IP applications related to a common product may file a request for batch examination. To qualify as a batch examination, all the IP applications should relate to a single product and each IP application in the batch should be waiting for a first office action. Thus, in the case of patent and utility model applications, a request for examination should already have been filed.
In addition, the IP applications should fall under one of the following categories: (i) applications are practiced or under preparation of being practiced by the applicant in Korea ("Self-practice"); (ii) applications are directly related to the promotion of exportation; (iii) applications are filed by a venture business enterprise or a technologically innovative small or medium sized company qualified under relevant laws; or (iv) applications are derived from developments by an individual or creative company qualified under the relevant laws. Foreign applicants seeking batch examination will typically qualify under the first category of self-practice in Korea.
Procedure for Filing a Request for Batch Examination
An applicant must file a formal request along with evidence supporting the grounds for requesting batch examination. In the case of self-practice, in principle, an applicant may submit evidentiary documents such as photographs, product manuals, invoices or other documents showing that the applications are practiced or under preparation of being practiced by the applicant. Alternatively, instead of submitting evidentiary documents to KIPO and to avoid such documents from becoming of record, the applicant can present evidence during a mandatory technical session with the examiner or examiner panel where the qualifications for batch examination will be reviewed.
Additionally, the applicant is required to set a desired timeline at the time of filing a request for batch examination. For instance, the applicant should designate (i) a date for a mandatory technical session with the examiner(s) within seven to fourteen days after filing the request for batch examination, (ii) an examination undertaking date, which is fourteen days after the technical session date (this is the date when the examiner(s) is expected to issue a first office action), and (iii) an examination closure date, which is between three months to one year after the undertaking date.
Once a request for batch examination has been filed and it undergoes a formality review, the applicant will be assigned a date for the mandatory technical session based on the applicant's designated timeline. The examiners assigned to examine the applications may also be required to attend the technical session. An examiner assigned to an application in the bundle is expected to follow the unified timeline for the examination designated by the applicant. An examiner is also expected to close the examination (either by issuing a notice of allowance or a notice of final rejection) by no later than the closure date. However, there are exceptions for going beyond the designated timeline, for example, if the examiner finds new grounds that necessitate a search for additional prior art or is compelled to issue an additional preliminary rejection (i.e., non-final office action).
Technical Session for a Request for Batch Examination
During the mandatory technical session, an applicant should explain which IP applications should be bundled for the batch examination, along with evidence to show that the bundled IP applications relate to a single product. The examiner(s) then decides whether to grant the batch examination and which applications qualify for the batch examination. The examiner(s) may also set the expected undertaking date and closure date based on the applicant's designated timeline.
Concurrent Filing of a Request for Expedited Examination
If an applicant requests an undertaking date that would require an office action to be issued at least three months sooner than the typical wait time for an office action for a patent or utility model application (and at least one month sooner for a trademark or design application), the examiner may request the applicant to file a request for expedited examination for the application. If an applicant fails to request expedited examination after being requested to do so by the examiner, the application may be excluded from the batch examination process.
Commentary on the Benefits and Risks of Batch Examination
Using the batch examination system will allow an applicant to coordinate the timing for obtaining multiple IP rights with a product's launch schedule so that the applicant can appropriately protect new products. Moreover, the batch examination will also streamline the examination process while making it faster and more consistent.
In the case of "self-practice" for a patent, utility model, or design application, an applicant can reduce the burden of showing evidence of "self-practice" by opting to present such evidence in-person to the examiner during the mandatory technical session, instead of submitting the evidence to KIPO. This should be considered if there are any concerns that the evidentiary documents may include trade secrets.
However, given that the batch examination was recently introduced, there is no data on whether the success rate for applicants in batch examinations are any higher than under normal examination.
Moreover, there are no detailed guidelines regarding how to determine the relevancy between applications and a product. Relevancy to a single product may cover multiple technologies utilized by the single product. Thus, we will have to wait and see how KIPO determines the relevancy in a diverse range of products embodying multiple technologies.
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If you have any questions regarding this article, please contact:
Sung Soo HWANG
Man-Kum LEE
Linda A. PARK
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