IP Insights

Amendment to Korean Patent Act for implementation of Korea-US FTA

The Korean Patent Act was amended to reflect the Korea-US FTA that was ratified on November 22, 2011, and the amendment to the Korean Patent Act came into force on March 15, 2012, on the date on which the FTA became effective.

The major changes to the Patent Act are summarized below.

1. Patent Term Adjustment to Compensate Prolonged Registration of Patent: Article 92 (2) to (5)
Under the amended Patent Act, where the registration of patent is delayed due to the prolonged pendency with KIPO for 1) more than four years from the filing date or 2) more than three years from the date of the request of examination, whichever is later, the patent term may be extended to compensate the delays during the prosecution of the patent, upon petition by the applicant. Such petition may be filed within three months from the date of patent registration. If such delay is caused by the applicant, however, such as delays in responding to a notice from KIPO, the applicant will not be able to enjoy the benefit of patent term adjustment.

2. Prior Disclosure Grace Period is extended to 12 Months: Article 30 (1)
Under the amended Patent Act, a six-month prior disclosure grace period is extended to twelve months. This amendment is applicable to applications filed on or after March 15, 2012.

3. Introduction of Protective Orders for Trade Secrets obtained during Patent Litigation: Article 224 (3) to (5)
With the newly introduced provisions, the court may order that the parties involved in litigation related to the infringement of a patent right shall not disclose trade secrets that were obtained during the litigation procedure. A person who violates such protective order may be subjected to punishment of imprisonment of not more than five years or a fine of not more than 50,000,000 Korean won (equivalent to about USD 45,000).

4. Abolition of Patent Cancellation Provision due to Non-Working: Article 116 deleted Under the old Patent Act, KIPO could order a compulsory license to a patent that was not worked for three years without justifiable reason (Article 107 (1) (ⅰ)), and KIPO could revoke the patent right if the patent was not practiced for two years from the date of the award of a compulsory license (Article 116). In the amended Patent Act, however, Article 116 of the provision of revocation of patent was abolished.