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The Korean Patent Act was revised in May 2011, with the purpose being to make it mandatory for an applicant for a patent to disclose information on prior art related to the invention in the specification. The Korean Utility Model Act was also revised in-line with the revision to the Patent Act. The revised Acts take effect July 1, 2011. Details and some important effects of the revision are provided below.
Previously, describing prior art in the specification was customary under Korean patent practice, though there was no specific rule requiring an applicant for a patent to do so. Lack of disclosure of background art information in the specification had been considered only in the context of the Enablement Requirement.
Now, according to revised Article 42, paragraph 3 of the Patent Act, the specification must describe “background technology of the invention.” Any application filed on or after the effective date (July 1, 2011) that fails to meet this requirement shall be rejected during the examination stage. Yet such failure does not constitute a ground for invalidation after grant. Moreover, applications filed before July 1, 2011, will not be affected by the revision.
Meanwhile, the Korean Intellectual Property Office recently released a revised version of the Examination Guidelines concerning the requirements for specifications in order to reflect the revised law. According to the revised Examination Guidelines, the background technology of the invention under Article 42, paragraph 3 of the Patent Act refers to prior art considered useful for a patent examiner to conduct a prior art search and examine for patentability, and helpful to a third party in understanding the technical meaning of the invention. The prior art must relate to the invention set forth in the claims and the applicant may include references to specific prior art documents, e.g., a publication number in the case of a patent document, or an author, title, publisher, or date of publication in the case of a non-patent document. If the prior art document cited in the specification provides adequate background information related to the claimed invention, the content of the document does not have to be described in detail.
The application will be rejected under the revised rule:
| i. |
In the case the specification contains no background technology; |
| ii. |
In the case the background technology described in the specification does not relate to the invention set forth in a claim; and |
| iii. |
In the case the disclosure of the background technology is insufficient to the extent that the disclosure cannot be considered useful for a patent examiner to conduct a prior search and examine for patentability. |
To overcome such a rejection through a response, an applicant may amend the specification to add relevant information on the prior art. The revised Examination Guidelines state that it is permissible to add references regarding prior art documents disclosing an appropriate background technology in the specification - and this amendment would not be regarded as adding a new matter. Meanwhile, great care must be taken when amending the specification to explain the prior art described in the documents, since such amendment can be regarded as adding a new matter, which is impermissible.
As mentioned above, the revised rule will be applied to applications filed on or after July 1, 2011, thus it is recommended that applications to be filed in Korea on or after the effective date contain prior art information in the specification in an appropriate manner, preferably references to specific prior art documents most closely related to the claimed invention, with a brief description of the prior art. Moreover, in the case the invention is related to an entirely new inventive concept, without having any particular related prior art, it is advisable to briefly introduce in the specification background art related to the main technical feature of the invention.
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