SUNYOUNG INT’L Patent & Law Firm Newsletter(February, 2015)
Overview on Revision of Patent Act and Utility Model Act
Overview on Revision of Patent Act and Utility Model Act (announced on June. 11. 2014)
1. Ease of requirement for acceptable filing date
Ease of requirement for the specification to take the earliest filing date (Article 42ter newly added, etc.)
※ Article 8bis, etc. of the Utility Model Act
(Ease of requirement for language in the specification) When filing patent application, it will be possible to state the specification not only in Korean but also in a foreign language (current English only). Provided, that it is necessary to submit a Korean translation within the time limit (14 months from the earliest priority date).
▶ Application from January. 1. 2015 will be applied.
Transition of criteria to amend or correct an application in a foreign language (Article 47, 208, etc.)
※ Article 47, etc. of the Patent Act applies mutatis mutandis to Article 11 of the Utility Model Act
Currently only a Korean translation of the specification can be amended even though it is mistranslated. By changing the criteria of amendment, the amendment of original document in a foreign language will be allowed.
| Category | Original document | Translation | Scope of amendment |
| Current (Translation) | Ca | kalium (meaning of potassium ) | kalium × calcium (Impossible) |
| Revised (Original document) | Ca | kalium | kalium → calcium (Possible) |
▶ International patent application in a foreign language (from January. 1. 2015) and patent application in a foreign language (from January. 1. 2015) will be applied.2. Reflection of demand on revised act to measure environmental change of patent at home and abroad
Unity of Patent Terminology (Article 42, etc.)
The current terminology will be amended along with the global trend. For example, the terms such as Title of invention, detailed description of the invention, etc. will be combined as description.
| Category | Description | Claim | Drawing |
| Current Patent Act | Article 42 | Specification | Drawing(s) |
| The title of an invention Brief description of the drawing(s), Detailed description of the invention | The scope of claim(s) | ||
| Article 201 | Specification | The scope claim(s) | Drawing(s) |
| Revised Patent Act (Article 42, 201) | Specification | Drawing(s) | |
| Description | Claim(s) |
Ease of provision to restore patent right related to unpaid patent fee (Article 81ter)
※ Article 81ter of the Patent Act applies mutatis mutandis to Article 20 of the Utility Model Act
(Details) Among the requirements to restore patent right extinguished due to the unpaid patent fee, the requirement, ‘working invention’, will be deleted and additional fee will be reduced from three times the amount to twice the amount of the patent fee.
| Current Act | → | Revised Act | ||
| Target | ‘working’patented invention only | All patented inventions | ||
| Restoration Fee | Three times the amount of the patent fee | Twice the amount of the patent fee | ||
| Time limit | within three months from extinguishment date | within three months from extinguishment date |
▶ The request to restore patent right after announcement date (June. 11. 2014) will be applied.Introduction of extension system of the time limit to submit a translation for international application (Article 201)
※ Article 35 of the Utility Model Act
(Extension System) According to the request of applicant, the time limit to submit a Korean translation of international application in a foreign language can be extended to one month.
| Current Act | → | Revised Act | ||
| Request | Submission of document to request for national phase | Submission of document to request for national phase | ||
| Submission of translation | Submission of a translation with the document | Principally, a translation is submitted with the document. Provided, that it is possible to extend the period of submission of translation up to one month according to the request. | ||
| Time limit of submission | 31 months from the priority date | 31 months from the priority date |
▶ International patent application filed internationally from January. 1, will be applied.Others
Regardless of a language, an extended opportunity for priority application will be granted to the specification filed initially. (For international patent application, the specification filed in international phase) (Article 29 (5)-(7))
* International patent application in a foreign language, which is not in national phase, will be excluded from the grant of an extended opportunity for priority application. (Same with current Act)
Amendment of provision related to the right to request for the payment of compensation for application about national defense (Article 41)
Amendment of matters prescribed in written statement for exemption from submission of certificate for a priority right (Article 54)
Preparation for provision to designate and manage National Depository Authority (Article 58)
Specified right for a presiding administrative patent judge to maintain public order and morality during an oral hearing (Article 154)
3. Making acts easy to understand
Making acts easy to understand (All provisions)
※ All provisions of the Utility Model Act
To make acts easy for the public to understand, Chinese letters will be changed into Korean and complicated texts will be divided into sub-category.
Ambiguous expressions will be made clear.
* This notice is not legally binding.