New Regulation for Time Extension for Patent Applications
December 29 2008 |
The Korean Intellectual Property Office ("KIPO") has introduced an important revision to the regulation with regard to the term extensions allowed for responding to a Provisional Rejection issued by KIPO examiners.
In particular, KIPO has implemented limitations to the number of the term extensions for responding to a Provisional Rejection to a total of FOUR MONTH EXTENSIONS from the original due date, which is six months from KIPO’s issuance date of Notification of Provisional Rejection. This is unlike the regulation prior to the change, wherein there were indeed no limits on the number of extensions the applicant may apply for.
However, the revised regulation provides that additional extensions are allowed in the following circumstances:
â‘ In the case that the Attorney was firstly appointed or where the responsible Attorneys have all been dismissed or substituted within one month prior to the due date four-month extended from the original deadline.
â‘¡ In the case that a Petition for Recordation of Change of Applicant was filed within one month prior to the due date four-month extended from the original deadline.
â‘¢ In the case that the examination result has been received from the foreign Patent Office within two months prior to the due date four-month extended from the original deadline and that the Applicant wishes to reflect said result (received within said time limit) in the Amendment to be filed to KIPO (In such a case, a copy of the examination result in question and that of claims examined by the foreign Patent Office should be submitted at the time of requesting an additional extension of time).
â‘£ In the case that the delivery of the Notification of Provisional Rejection has been delayed by KIPO more than one month (In such a case, an additional one-month extension is allowed).
⑤ In the case that the parent application or the divisional application is pending for a trial or a lawsuit.
â‘¥ In the case that additional time is required for KIPO examiner to carry out experiments or measure results with regard to the Grounds for Provisional Rejection.
⑦ In the case that KIPO acknowledges that an additional extension of time is necessary for unavoidable reasons (for example, due to a cause for which the Applicant is not responsible).
※ However, in the case that an examination was requested by a third party, an additional extension of time would not be allowed under the above ①~⑤.
These new rules apply to the Response to Notification of Provisional Rejection of which issuance date is on or after July 1, 2008, and will not affect Notifications issued prior to July 1, 2008. They also apply to the second Notification of Provisional Rejection and onwards of which issuance date is on or after July 1, 2008.
