• Q: [Demand] Could you please let me know the deadlines for making voluntary amendments to a patent application. 2015.11.16
    A:

    Article 47 and 208 of the Korean Patent Law outline the deadlines for making amendments to PCT applications.

     

    Article 47 Amendment of Patent Application

     

    (1) An applicant may amend the description or drawing(s) attached to a patent application before the examiner issues a certified copy of a decision to grant a patent under Article 66.

    However, in the following circumstances, if the applicant makes an amendment, the amendment must be made within the periods designated in the following subparagraphs:

    (i) where an applicant first receives notification of the reasons for refusal under Article 63 (referred to as "a notice of the reasons for refusal") or receives a notice of the reasons for refusal that does not apply under paragraph (ii), the period is that designated for submitting arguments against the notice of the reasons for refusal;

    (ii) where an applicant receives a notice of the reasons for refusing an amendment made in response to a notice of the reasons for refusal issued under paragraph (i), the period is that designated for submitting arguments in response to the notice; or

    (iii) where an applicant requests a trial against a decision to refuse a patent under Article 132ter, the period is thirty days after the filing date of the request.

     

    (2) An amendment to a description or drawing(s) under paragraph (1) must be within the scope of the features disclosed in the description or drawing(s) originally attached to the application.

     

    (3) An amendment to the claim(s) made under paragraphs (1)(ii) and (iii) must be limited to the scope prescribed in any of the following subparagraphs, and where an amendment is made under subparagraph (iii), it must be limited to the scope indicated by the examiner in the notice of the reasons for refusal:

    (i) to narrow a claim;

    (ii) to correct a clerical error; or

    (iii) to clarify an ambiguous description.

     

    (4) An amendment made within the period designated in paragraph 1(ii) and (iii) must meet the following requirements:

     

    (i) an amendment to a description or drawing(s) must neither substantially expand nor modify the scope of the claim(s); and

    (ii) the matters described in the claim(s) after an amendment must have been patentable when the patent application was filed.

     

    Article 208 Special Provision on Amendment

     

    (1) Notwithstanding Article 47(1), no amendment to an international patent application (except an amendment under Article 204(2) and 205(2)) may be made until the fees prescribed under Article 82(1) have been paid, a translation of the application (except for an international patent application made in the Korean language) under Article 201(1) has been submitted, and the relevant date (which, if the relevant date is the date on which a request is made to examine the patent application, refers to the time of day on which the request to examine the patent application is made) has passed.

     

    (2) Deleted.

     

    (3) With regard to the scope of an amendment made to an international patent application, "the features disclosed in the description or the drawing(s) originally attached to the application" in Article 47(2) reads "the features disclosed in the description, claim(s) or the drawing(s) (only the textual matter therein) of the international patent application submitted on the international filing date and in the translated version or the features disclosed in the drawing(s) (except in the textual matter of the drawing(s)) of the international patent application".

     

    * DO : Designated office

    * EO : Elected office

  • Q: [Demand] I need to send a document to KIPO. What options are available? 2015.11.16
    A:

    Document submission to KIPO is possible either by fax or by mail.

    Facsimile number is 82-42-472-7140. You need to press 011 if dialing from the United States.

     

    Mailing address is as follows:

    International Application Division Korean Intellectual Property Office Government Complex-Daejeon, 139 Seonsa-ro, Seo-gu, Daejeon 302-701 Republic of Korea.

     

    Please bear in mind that it can take about a week for mail delivery. Your mail should arrive at KIPO within the due date.

  • Q: [Demand] It is my understanding that since Korea was designated as an International Searching Authority, the subsequent Chapter II Demand must also be filed in Korea. Could you please confirm if the Chapter II Demand is required to be filed in Korea? 2015.11.16
    A:

    In short, you are not obliged to select KIPO as the IPEA even if you already designated KIPO as the ISA. ISA selection and IPEA selection are separate.

     

    Currently there are 7 different IPEA's available to the US PCT applicants, that is, IP Australia, EPO, IPAU, JPO, KIPO, Rospatent, and USPTO.

     

    But EPO is available as the IPEA only when the international search is or has been performed by the EPO, the Austrian Patent Office, the National Board of Patents and Registration of Finland, the Nordic Patent Institute, the Spanish Patent and Trademark Office or the Swedish Patent and Registration Office. IP Australia has a similar approach. Thus you have two choices. Either KIPO or USPTO as the IPEA if you used the ISA/KR.

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