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IP Newsletter | Spring/Summer 2018
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PATENT
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KIPO Announces Steps to Enhance Quality of Examination and Lower Invalidation Rates
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The Korean Intellectual Property Office (KIPO) has put a strong emphasis in recent years on reducing the pendency of examinations, and has been largely successful in this effort. However, there has been growing criticism in the Korean patent community that the invalidation rate of issued patents remains relatively high. In response, KIPO recently announced plans to take a number of steps to try to improve the quality of examinations and reduce invalidation rates, while maintaining the speed of examinations. These changes may lead to more office actions per examination and possibly lower overall grant rates.
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KIPO currently has one of the fastest examination processes of any major patent office (about 16 months from filing a request for examination to allowance). However, the invalidation rate of granted patents has been relatively high (the numbers below reflect the ratio of invalidation cases in which any claims of a challenged patent were invalidated, excluding withdrawn or procedurally dismissed cases):
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2012 |
2013 |
2014 |
2015 |
2016 |
2017 |
| Patent Invalidation Rate in IPTAB |
66% |
62% |
65% |
66% |
44% |
51% |
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KIPO's analysis seems to be that the high invalidation rate is due to the heavy workload of Korean examiners, which KIPO believes may be affecting the overall quality of examination. According to KIPO, Korean examiners review far more applications per year while spending less time examining each application than examiners in other major jurisdictions:
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Korea |
Japan |
U.S |
China |
Europe |
| Patent applications examined by a single examiner (in 2016) [ea] |
217 |
171 |
77 |
68 |
58 |
| Average time invested in examining one patent application (in 2016) [hour] |
11.0 |
17.4 |
26.0 |
29.4 |
34.5 |
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To address this issue, KIPO announced plans to hire 1,000 additional examiners by 2022, with the goal of reducing the invalidation rate to 33%. KIPO also indicated plans to revise the law to allow patentees to have annuities refunded if a granted patent is later invalidated.
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While having more examiners is certainly a welcome idea, it remains to be seen whether KIPO will actually be able to increase examiner headcount to this extent (which would approximately double the current size of KIPO). Further, it seems KIPO intends to examine patent applications more rigorously in general, which will likely mean issuing more office actions and possibly lower overall grant rates in the future. Korean patent practitioners will be watching closely to see how KIPO's examination practices change going forward.
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For more information, please visit our website: www.ip.kimchang.com
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