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A Korean company entering US and Japan is able to obtain a patent within 3 months at the earliest by the patent prosecution highway (PPH)(News Letter No. 510)

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KH

Post Date 

2023-08-16

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1. A Korean company entering US and Japan is able to obtain a patent within 3 months at the earliest by the patent prosecution highway (PPH).

-KIPO and USPTO and JPO cooperated to implement a ‘PPH improvement policy’ (from August 1, 2023).
-An average process period at each examination stage of PPH is set as 3 months.
-It is expected to be helpful in establishing effective IP strategies and enter an overseas market.

On July 30, 2023, KIPO published the implementation of the ‘PPH improvement policy’ from August 1, 2023 under the cooperation with USPTO and JPO, to set an average of 3 months as the process period at each examination stage when an application is filed PPH.

Since it is possible to obtain a patent with 3 months at the earliest after a prioritized examination of PPH has been decided, this PPH improvement policy is expected to be helpful for a Korean company in establishing effective IP strategies and entering an overseas market.

[ Main content of the「PPH improvement policy」]

In the case of a prioritized examination under PPH, sending a first examination notice was managed previously within 4 months. However, according to the fixed regulations, this period has been advanced to within 3 months. In addition, after an applicant submits a written answer, the period of a next examination notice was also advanced to within 3 months. Therefore, an applicant who requests PPH in KIPO, USPTO and JPO is expected to register a patent within 3 months at the earliest after the prioritized examination has been decided.

[ Background and benefit of the PPH improvement policy ]

To improve the predictability of the examination time of an application filed for PPH, IP5 have discussed and last year, USPTO and JPO implemented the ‘PPH improvement policy’ to set the process period at each examination stage to be within 3 months. Taking an opportunity of the memorandum of understanding (MOU) for deepening cooperation in the Korea and US intellectual property field in June, KIPO also decided to positively join this policy and according to reciprocity the service equivalent thereto will be provided.

In the case where many countries in addition to KIPO, USPTO and JPO join in this improvement policy, it becomes easy for companies aiming for the global market to predict the examination time of each country. Therefore, companies seem to systematically manage their own intellectual properties and to strategically perform the global market entry.



2. KIPO enhances the reliability of IP valuation!

-IP valuation management center in charge of IP valuation and quality management has been launched (July 13, 2023).
-The IP valuation is expected to be used in various fields, such as IP finance, transaction, transfer, etc.

KIPO held the inauguration ceremony of the ‘IP valuation management center’ to enhance the reliability of IP valuation and has fully operated the center.

Through this center, the quality of IP valuation which is the basis of IP finance and the means of financing for an innovative company is expected to be systematically managed.

【IP valuation】
IP valuation is to indicate an IP’s present or future economic value as an amount, grade or score. IP valuation is actively used in the finance field, such as IP secured loan or investment, etc. IP valuation is expected to be widely utilized in various fields, such as IP transaction and transfer, patent infringement damages, analysis of damages caused by technology leakage, etc.

[Role of IP valuation management center]

The IP valuation management center is in charge of the quality management work of IP valuation which is newly established in the Korea Invention Promotion Act (effective in July 4, 2023). The IP valuation management center operates the valuation information system to develop diverse valuation models for IP valuation, to provide the models to a valuation agency and to manage the valuation results.

The IP valuation management center takes a sample from the valuation results and conducts a sample survey to diagnose the quality. The center also performs the investigation and analysis work of the valuation results by conducting a feasibility study as to whether a specific valuation is reasonably conducted according to the valuation standards.

[Background of IP valuation management center]

As the IP utilization, such as the expansion of the IP finance size, has been spread, the importance of IP valuation has been highlighted and thus the interest in the reliability to IP valuation has also grown.

As a part of the positive administration, KIPO prepares the foundation for the IP valuation quality management in the Korea Invention Promotion Act and newly established the IP valuation management center in the Korea Invention Promotion Association with professionals and experience in the IP valuation.


3. A patent trial will be changed in the second half of this year.

-A trial decision date notice system, etc. to increase the convenience of the trial parties have been operated from July.

A trial decision date notice system has been introduced so that the parties of a patent trial are correctly informed in advance of a date scheduled for a trial decision. An accelerated trial system and an preferential trial system are to be more systematically organized.

According to the Intellectual Property Trial and Appeal Board of KIPO, the amendment to the order, such as the ‘regulations for handling judgement affairs’ containing the above content, would be enforced from July 2023.

[Introduction of a trial decision date notice system ]

A trial decision date notice system has been introduced so that the parties of a trial are able to be correctly informed in advance of a date scheduled for a trial decision. The trial decision date notice system is expected to solve the uncertainty of a trial decision date by describing the date scheduled for a trial decision in a notice of the closure of a trial examination and to improve the parties’ convenience by enabling a plan prepared for a later dispute, such as whether to bring a lawsuit, etc.

Previously, since a correct date of a trial decision was not described in a notice of the closure of a trial examination informing that the trial examination of a trial case had been closed, the parties of a trial were inconvenienced in that they should wait for a trial decision up to 20 days after receiving the notice of the closure of a trial examination.

※ Article 162 of the Korean Patent Act (trial decision) (3) When a case has been thoroughly examined and is ready to be ruled, the presiding administrative patent judge shall notify the parties and
intervenors thereof. (5) The decision shall be rendered within twenty days following the date on
which the closure of a trial examination is notified under Paragraph (3)

【Improved trial examination closing procedures】

Trial examination ->Inform of the trial examination progress (Inform of a due date of submitting the final document after the case has been thoroughly examined and is ready to be ruled.)
-> Notify of the closure of the trial examination (Inform of the trial examination closure fact and a date scheduled for a trial decision) ->Trial decision

[Organization of the accelerated trial system and preferential trial system]

The accelerated and preferential trial systems relating to a trial case which needs to be urgently processed are organized. The similar targets which are subjected to the accelerated and preferential trials are to be consolidated and organized to increase the convenience of using the systems. The cases with relatively less urgency are excluded from the targets for the accelerated and preferential trials, so that a process period of a general trial case should not be excessively longer.

【Patent trial system】
general trial -A trial case is to be processed according to the order of receiving the trial case

preferential trial -A trial case which is recognized to be processed with priority is processed prior to a general trial case
(a trial case relating to a drug approval-patent linkage, etc.)

accelerated trial -A trial case which is recognized of its urgency is processed rapidly than a preferential trial case
(a trial case relating to a pending lawsuit due to an infringement dispute, etc.)



4. A patent registration fee cut all 10% off.

-100 billion Korea Won which are companies’ burden will be reduced for the future 5 years.
-KIPO implement a drastic overhaul to the patent official fee system (on August 1, 2023).
-A positive administration is realized to relieve the financial burden of an inventor and a company.

On July 27, 2023, KIPO announced to promulgate and implement the amended ‘collection rules, such as patent fees, etc.’, which include a patent registration fee reduction, from August 1, 2023, to ease a company’s economic burden and to promote a technology innovation in the era of high price and high interest.

[ Overall 10% cut down of patent registration fees (1~20 years) ]

Among the patent official fees, the patent registration fees which are the biggest burden to inventors and companies are cut by 10% all at once for the first time in 20 years, to ease the economic burden.

Although KIPO has continued to carry forward various policies to reduce a part of the patent registration fees for an individual and a small/medium company which are the social and economically weak, this is an overall fee cut. This overall cut grants benefits to all economic subjects including inventors and companies, etc.

Due to these reduction measures, companies, etc. get reduced patent registration fees of about 40 billion Korea Won, which are to be invested in increasing the number of patents and the patent retention period. Therefore, these companies are expected to be more dedicated to the technical innovation.

[Strengthening a support policy for a small business by reducing trademark-related official fees, etc.]

To strengthen economical support for a small business and a self-employed, tec, the official fees at the stage of filing a trademark application and registering a trademark are reduced by 10,000 Korea Won per class.

In addition, the number of basic designated goods is adjusted from 20 to 10, to solve the problem of restricting the acquisition of a right and the trademark selection range of a true business by registering a trademark and goods which are not actually used.

Of patent, trademark, utility model and design transfer registration fees, the trademark transfer registration fees, 113,000 Korea Won, and the patent transfer registration fees, 53,000 Korea Won, are reduced by 65% and 25%, respectively, which are lowered to be the same as the utility model and design transfer registration fees, 40,000 Korea Won,

[ Creating a high-quality right and strengthening an examination competitiveness]

Measures to increase the examination efficiency are taken by inducing the creation of high-quality IP rights and preventing the abuse of excessive patent and trademark applications.

Considering the EPO’s cases, the progressive surcharges are imposed to solve the side effects of abuse that, beyond the purpose of a patent divisional application system, this system is used to merely keep an application state and as means to delay an examination process,

KIPO has widely approved of the exemption of 100% of the official fees and the number of cases to be exempted, compared to the major overseas countries. However, since these may lead to an examination burden due to poorly drafted applications, the number of cases to be exempted per year by right is reduced from currently 10 to 5.

Further, the official fees for requesting a patent examination, which are very low compared to the major overseas countries (such as EPO, USPTO, CNIPA, JPO, among others), are to be partially actualized to prevent the abuse of excessive patent applications
 

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