- Under the current Act, if the right is extinguished due to failure to complete procedures required within stipulated periods, such as submitting documents or paying a fee, etc., it is possible to restore only when the failure is due to “a cause not attributable to the applicant” such as a natural disaster. According to the Amendments, however, the requirements for restoration of rights will be relaxed to “reasonable reasons”, for example, in case of sudden hospitalization due to COVID-19 causing to be unable to proceed with the procedures.

2. Introduction of an automatic recognition for priority claim in divisional applications  

- Under the current practice, the priority right must be explicitly claimed at the time of filing the divisional application, otherwise the divisional application is postdated and might be rejected due to an omission of the priority claim. According to the Amendments, however, if the priority right is claimed in an original application, the priority claim will be automatically recognized in a divisional application to prevent the application from being rejected by clerical mistake such as an omission of priority claim. 

3. Extension of an appeal trial period after decision of rejection

- Under the current Act, in response to decision of rejection, an applicant can appeal the decision and/or can file a divisional application, within an appeal trial period, i.e., within 30 days after receipt of the decision. According to the Amendments, however, the appeal trial period will be extended to 3 months to provide sufficient preparation time for responding to the decision and to reduce unnecessary extension of the period.

4. Protection of a non-exclusive license (right to use) of co-owners after transfer of rights

- Under the current practice, the co-owned patent right can be sold (transferred) by a foreclosure auction, etc. without consent of all other owners. In that case, the co-owners who actually use the patent right also lose their right and only the compensations are distributed according to their share ratios. The pledge that the foreclosure auction is grounded on may be established only when all other owners agree upon, so that losing the co-owners’ right is consequential liability coming out from such agreeing-upon. According to the Amendments, a non-exclusive license will be also granted to the co-owners who actually use the patent right so as to protect their ongoing business but whose shares have been lost in exchange of their shares in the sale’s proceeds.

- If a trademark has been used before the establishment of a pledge, a non-exclusive license will be likewise granted to the trademark right holder even if the trademark right is transferred by an auction, etc. (already introduced in the existing patent law and design law).

Patent Act​​​

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1. Introduction of “Separation Application” 

- (current) If an appeal against the decision of rejection is unsuccessful, even though some of the claims were acknowledged as patentable in the decision of rejection, it is not possible only for the acknowledged claims to be granted a patent right as the application is rejected as a whole once the appeal is dismissed.

- According to the Amendments, “Separation Application” is newly introduced, in which only the claims that are acknowledged as patentable (=not rejected) in the decision of rejection are separated and filed as new application, even if the appeal is dismissed.

- In comparison with “Divisional application”, the scope of claims of “divisional application” is allowed within the entire scope of the original application, but the scope of claims of “separation application” should fall within the claims that are not rejected in the decision of rejection.

​- However, a grace period for late submission of claims and to file as a foreign language application are not possible for the separation application, as well as to further divide/separate/modify from an existing separation application.

2. Expansion of subjects to be claimed as a domestic priority

- Under the current Act, it is possible for a Korean application to claim a priority only to a pending Korean application, thus claiming a priority to an allowed application is not possible. According to the Amendments, however, if the invention is improved according to market conditions after decision of allowance, it will be possible to file new application for an invention which is improved and added from the allowed application, with claiming a priority thereto.

3. Re-examination after decision of allowance

- Even after decision of allowance, a request for re-examination can be filed with amending the specification such as fixing a typo, etc.

Design Protection Act​​​

1. Introduction of Ex-officio re-examination proceeding after decision of allowance

- If any significant defects are found after decision of allowance, the decision may be cancelled by ex-officio, before a registration fee is paid.

2. Expansion of period for submitting amendments for re-examination

- Under the current Act, in response to decision of rejection, an amendment should be submitted at the time of requesting the re-examination. According to the Amendments, however, the amendment submission period will be extended to “within 3 months after receipt of the decision”.

3. Extinction of design right according to the liquidation procedure of a corporation

- If a transfer of the design right is not recorded by the date of registration for the completion of liquidation of a corporation, the design right will be extinguished on the day following the registration date of the completion of liquidation.

Trademark Act​​​

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1. Introduction of Ex-officio re-examination proceeding​ after decision of allowance

- If any significant defects are found after decision of allowance, the decision may be cancelled by ex-officio, before a registration fee is paid.