Patent Act and Utility Model Act Amended Patent Act and Utility Model Act Amended Amendments drafted for the Korean Patent Act and the Korean Utility Model Act were passed by the National Assembly on February 9, 2006, and officially announced on March 3, 2006. The substantial changes to the law are now as follow: 1. Provisions in effect from March 3, 2006 a. Saturday is no longer a working day at the Korean Intellectual Property Office (KIPO) Where the due date for filing documents at the KIPO falls on a Saturday, this shall not be considered a working day. The due date for filing shall therefore be extended to the following working day. (Patent Act, Article 14 Para 4) Comments: Previously, the KIPO considered Saturdays as a working day, so any due date falling on a Saturday was not carried over to the following Monday. As a result, many international applicants from countries observing the 5 day working week and inadvertently believing that the due date would be carried over to the following Monday, sometimes found themselves in the unfortunate position of missing the due date altogether. However, with this change in the law, international applicants will no longer encounter any such problems. b. The Sales Bar is now given a 6-month grace period Inventions deemed to be Novel (Patent Act, Article 30 Para 1): Where a person having the right to obtain a patent has caused details of his invention to be publicly known, the invention will not lose its novelty status if an application is filed within 6 months from the date of that publication. However, this will not be the case where the publication has been made after filing of the application. Comments: Previously, the six month grace period was given only for the following activities: Conducting an experiment on the invention, publishing the invention in printed matter, presenting the invention in writing at an academic meeting, disclosing details of the invention against the intention of the applicants, and displaying the invention at an exhibition held or authorized by governments. Hence, in cases where products related to the invention were sold or marketed anywhere in the world, the grace period did not apply and therefore the opportunity to file a patent application in Korea was lost. However, with this change in the law, applicants who have already marketed or begun selling products related to the invention can now file patent applications in Korea within six months from the time of marketing or selling of the products. c. The Korean national phase entry date for PCT applications is extended from 30 to 31 months The filing period for PCT applications entering the national phase has been extended. (Patent Act, Article 201 Para 1) The period for filing a translated international application is now 31 months, instead of 30 months, from the priority date. Comments: Previously, one had to enter the Korean national phase and submit a Korean translation of the application within 30 months from the earliest priority date. However, compared to its neighboring countries like China and Japan which allow two months of extension time from the 30 month entry due date to submit a translation, Korea was considered to be inflexible in providing consideration to foreign applicants needing extra time to translate their applications into Korean. However, with this change in the law, the due date for entry into the Korean national phase is extended to 31 months from the priority date, thereby giving more time to applicants to decide whether to enter the national phase of Korea, and if so, providing sufficient time to translate applications into Korean. d. Amendments to PCT applications can be made at the time of national phase entry Amendments to PCT applications (Patent Act, Article 204 Para 4): Amendments made to a specification attached to a PCT application entering the national phase and in response to an examiner¡¯s report will now be allowed. Comments: Previously, after the entry into the national phase, the earliest time an applicant could make an amendment was when the substantive examination was requested with the KIPO. Therefore, an applicant wishing to defer the examination also had to delay his amendments, sometimes for many years, until the examination was finally requested. However, with this change in the law, the applicant can now request making amendments at the same time the translation of the application is submitted to the KIPO. 2. Provisions to be in effect from October 1, 2006 a. Inventions known or worked by others anywhere in the world becomes a patent barring event Where details of an invention have been published, known or worked in and outside of the Republic of Korea, this will result in the invention becoming unpatentable. (Patent Act, Article 29 Para 1 sub-para 1) Comments: Previously, if a person who had traveled to a foreign country had seen an interesting invention that had not been disclosed by a publication in both Korea or a foreign country and which was not known or worked in Korea, that person could file a patent application for the same invention, as such fact of being known or worked in a foreign country was not a patent barring event in Korea. However, with this change in the law, an invention that is known or worked by others anywhere in the world will not be patentable in Korea. b. Abolishing the requirement of asexual reproduction for Plant Patents Equal treatment of Patents for Plant Inventions (Patent Act, Article 31-abolished): Patents will no longer be exclusively granted to a person who invents a new and distinct variety of plant capable of reproducing itself asexually. Instead, patents will be granted to a variety of new and distinct plants if they possess the necessary qualities required in any patent application. c. Abolishing the System of Registration without Substantive Examination for Utility Models Utility model applications will be granted registration on the same basis as patent applications meaning they will be examined and judged separately on their merits. Consequently, the need for a technical evaluation of utility models by an examiner has been abolished and the examination process used to assess patent applications will now be applicable. Comments: Previously, the KIPO had adopted the system of registration without substantive examination for utility models, as the lifecycles of products were becoming shorter and shorter because of the examination process. However, with the KIPO now aiming to drastically reduce the time it takes to complete substantive examinations, it felt that going back to the original system of filing utility model applications with substantive examinations would be more beneficial to applicants and the enforcement of their rights. 3. Provisions to be in effect from July 1, 2007 a. Abolishing the opposition procedure for Patents The procedure for filing an opposition to a grant of a patent will be abolished and merged with the procedure invalidating a patent registration. Consequently, those wishing to oppose a grant of a patent after the said date will be required to follow the procedures invalidating a patent instead which will still have the same effect. Comments: Since the frequency of people filing an opposition to a grant of a patent was very low compared to the invalidation action, the KIPO decided to merge the two. The change in the law means a third party may no longer file an opposition, however, he or she may still submit a citation of prior art or what we call a ¡°Submission of Information¡± to the KIPO before the grant of a patent.