▶ Extension of Time Limit for Submitting Response to Notice of Preliminary Rejection
Under the current Enforcement Regulations, the time limit that an examiner may set for the submission of a written opinion in response to a Notice of Preliminary Rejection is restricted to two (2) months from the date of issuance (see Article 16(1)).
This two-month period is comparatively shorter than the response period in other major jurisdictions—three (3) months in the U.S. and Japan, and four (4) months in Europe and China. As a result, applicants of patent applications filed in Korea often face difficulties in thoroughly reviewing and responding to preliminary rejections within the limited time frame and may have to request for extensions of time, incurring both procedural and financial burdens to applicants.
To address this issue, the KIPO has proposed a revision to Article 16(1) of the Enforcement Regulations to allow an examiner to set a period for responding to a preliminary rejection to up to four (4) months, in line with the practices in Europe and China.
▶ Postponement of Examination Decision and Deferred Examination for Divisional Applications Allowed
Under the current Enforcement Regulations, an applicant may file a request with the KIPO for a decision on patentability of a patent application to be postponed for up to twelve (12) months from the filing date, provided that such request is submitted within six (6) months from the filing date after filing a request for examination (see Article 40bis). However, this option is not available for a divisional application.
Also, under Article 40ter of the Enforcement Regulations, it is possible to defer initiation of substantive examination for a patent application by way of submitting, within nine (9) months from filing a request for examination, a petition for delayed examination indicating the desired time for initiation of substantive examination that should be later than twenty-four (24) months from the request for examination but earlier than five (5) years from the filing date. Yet, Article 40ter(3)(i) stipulates that a divisional application is an exception to such deferred examination.
The proposed amendment to the Enforcement Regulations eliminates these exclusions and allows an applicant to request both decision postponement and deferred examination for a divisional application, subject to the same conditions applicable to a general patent application.
This revision is to resolve the inconsistency due to the recent revisions to the Regulations on the Handling of Patent and Utility Model Examination Affairs, which changed the order for initiating the examination of a divisional application to follow the order of the examination request for the divisional itself, instead of that for the parent application. Despite this procedural change, divisional applications had remained excluded from decision postponement and deferred examination, limiting strategic flexibility for applicants.
▶ Impact of Amendment
The proposed amendment to the Enforcement Regulations of the KPA is a welcome step toward harmonizing Korea’s patent system with global standards and enhancing the convenience for applicants. Foreign applicants, in particular, may benefit from the extended response deadlines and the ability to defer examination or decisions for divisional applications.
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