A. 2012 amendments to the Korean Patent Act (KPA)
1. Patent term extension for delayed registration [Art. 92bis of KPA] effective for applications filed on or after March 15, 2012
• The term of a patent begins on the date of registration of the patent and expires 20 years after the application date. Accordingly, a delay of registration will result in the shortening of the actual period granted for protection of the claimed invention. In order to compensate for such a patent term shortening due to a delay in the prosecution of the application, under the revised law the patent term can be extended by the time period during which prosecution was delayed as long as the applicant was not responsible.
• Under the revised law,
1) If the prosecution of a patent application is delayed, the patent term can be extended by the time period beginning four (4) years after the filing date of the application or three (3) years after the filing of the examination request, whichever is later, to the registration date of the patent.
2) However, if the delay is attributable to the applicant—i.e., delay is a result of request(s) for extensions of time by the applicant, submission of inappropriate documents, etc.—it shall be excluded from the extendable patent term.
3) The extension of the patent term must be requested within three (3) months after the date of patent registration.
2. Increase of the grace period exempting from the loss of novelty (6 -＞12 months) [Art. 30 of KPA] effective for applications filed on or after March 15, 2012 It was determined that the current six (6) month grace period was too short if the origin of the invention is a foreign country. Thus, the grace period becomes twelve (12) months under the revised law. It is more appropriate to extend the grace period to twelve (12) months considering that the time period allotted to claim priority is twelve (12) months.
3. Abolishment of the provision for cancellation of patent [Art. 116 of KPA] effective for patents arisen reasons of cancellation after March 15, 2012 Under the old law, a patent could be cancelled if the patented invention had not been continuously worked in Korea for two or more years after adjudication was made that the patented invention was non)worked for more than three consecutive years for unjustifiable reasons. This was the only means by which a lawfully registered patent could be cancelled. However, since this provision was enacted, no patent has been cancelled. Thus, this provision for cancellation of a patent was abolished under the revised law.
4. Order to maintain litigants’ confidentiality [Art. 224ter ~ 224quinquies of KPA] effective for lawsuit cases filed on or after March 15, 2012 Under the revised law, the Court may order litigants to keep business secrets submitted in the course of litigation confidential and those who break it are subjected to punishment. Thus, refusal to submit documents in the course of litigation related to patent infringement is expected to become less common under the revised law.
B. 2012 amendments to the Korean Trademark Act (KTMA)
1. Introduction of Untypical Trademark (Sound Mark, Smell Mark etc.) [Art. 2(1)(i) of KTMA] Effective beginning March 15, 2012] Under the old law, only a sign, a character, a figure, a three) dimensional shape, any combination of these or other visually recognizable constructs could be protected as a trademark. Under the revised law, although sound and smell of a trademark are not visually recognizable, if a trademark could be visually perceived as having a realistic description thereof, it can be protected as a sound trademark and a smell trademark.
2. Introduction of Certification Mark [Art. 2(1)(iv) of KTMA] Effective beginning March 15, 2012] Under the old law, Certification Mark did not exist. Under the revised law, Certification Mark refers to the mark which a person who has obtained permission from the owner of the Certification Mark right is using to certify the origin, raw materials, method of manufacturing, quality of a good or a service industry. Thus, it can be protected as a mark.
3. Confirmation of the Trademark’s Using Intention [Art. 23(1)(i) of KTMA] Effective beginning March 15, 2012] Under the old law, Art. 3 proviso of the KTMA, a trademark applicant’s intention for using the trademark was not a reason for refusal. Under the revised law, according to Art. 23(1)(i) of the KTMA’s amendment, if a trademark applicant has no intention of using a trademark for some of the designated goods, the examiner could issue a notice of reason for refusal to the related designated goods.
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