I. Preparation for filing a Patent Application

II. Prosecution of the Patent Application

A. Request for Examination
B. Laying-open of Applications
C. Preferential Examination
D. Amendments

E. Preliminary Rejection Notice

In order to be granted a patent, an invention must meet the following three requirements; industrial applicability, novelty and non-obviousness (inventive step). However, if the Examiner finds any reason for rejection of an application, a Notice of Preliminary Rejection Reasons is issued. The applicant can file a Response to this Notice as an Argument and Amendment, within one month (Korean applicant) or two months (foreign applicant) from the date of the Notification. A foreign applicant can usually obtain an extension of the one month term up to three times simply by filing a request.

1. Types of Rejection Reasons

a) Industrial Applicability

An invention may not be granted a patent unless it is industrially applicable. "Industrial" is not defined under the Patent Law, but is generally considered to be a very broad term. Patent applications for inventions which are impossible or difficult to work are usually rejected on the grounds that they do not have industrial applicability. (e.g. perpetual motion, invention using human body)

b) Lack of Novelty

Any invention identical with any of the following inventions is rejected as lacking novelty:

(I) Invention publicly known or worked in Korea prior to the filing date, or
(ii) Invention described in a publication distributed in Korea or in a foreign country prior to the filing date.

Rejection for lack of novelty is most often based on paragraph (ii), and rejections based on paragraph (I) are rather rare.

When the claimed invention is regarded as identical with, or anticipated by the prior art, the Examiner rejects the claim for the reason of lack of novelty. However, this type of rejection is made only when the claimed invention is disclosed in a publication issued before the filing date of the application.

Note that paragraph (I) is based on events that took place in Korea only and do not include any matter publicly known or worked in any foreign country. However, the Supreme Court has held that "due to easy transportation and communication between Korea and Japan, it is not difficult to infer an invention which was known or worked publicly in Japan to be considered as an invention which was known or worked publicly in Korea." In view of this Supreme Court precedent, it seems to be difficult to say whether "worked or known in other countries without any publication" is sufficient to negate novelty.

When an application is laid open after the filing date of an application that was filed prior to the filing date of the application and which discloses the claimed invention of the later-filed application, the disclosure of the claimed invention anywhere in the specification of the earlier filed but later laid-open Korean application will result in rejection of the later filed application.

Where the invention claimed in a later application is identical with that claimed in a prior application the later application is rejected to avoid duplicate patenting.

Whenever there is a conflict with an earlier application of a different applicant, the Examiner applies the whole content approach. A rejection based on duplicate patenting is therefore applied mostly where the same inventor or applicant (assignee) is named in both applications so that First-to-File rule cannot be applied in this situation, or in cases where the filing (priority) dates of both applications are the same.

c) Inventive Step or Non-Obviousness

Even if the claimed invention is not identical with any of the inventions so as to lose novelty under paragraph (I)-(ii), above, the invention may still be rejected, as lacking an inventive step, if the invention is readily conceivable by a person skilled in the art to which the invention belongs.

To determine whether or not an invention is readily conceivable or obvious from the prior art, the "features of the invention" are first studied. The invention is considered to have an inventive step or non-obviousness where the "features of the invention" are not readily conceivable from the prior art. Even if the "features of the invention" are readily conceivable, the invention may still be considered to have an inventive step where features of the invention bring about unexpected "advantageous effects or results." The non-obviousness type rejection is most often encountered by the applicant.

d) Insufficient Disclosure

When the Examiner considers that the disclosure of the invention is insufficient, namely, not detailed enough to enable anyone skilled in the art to work the invention, the application is rejected. Further, if the drawings are considered insufficient to enable the reader of the specification to understand or work the invention, the application is rejected.

Under the Korean Patent Law, the "description of the invention" in a specification is required to explain the purpose, features and advantageous effect(s) of the invention, so that a person skilled in the art to which the invention relates can easily practice the invention.

When the Examiner considers that the claim does not define all the necessary conditions or elements of the invention required to obtain the intended advantages, the claim is rejected.

In many cases, when the Examiner considers the claim to be too broad in view of the state of the art and believes it should be restricted to incorporate some additional features disclosed in the specification so as to define a patentable invention, he cites some prior art reference(s) to reject the claim and at the same time, issues a rejection based on insufficient disclosure.

When the Examiner considers that the application contains a patentable invention but the claim is too broad, he also points out that the purpose is not accomplished by the claimed invention by citing a prior art reference covered by the broad claim and rejects the application as being insufficient in disclosure, and implicitly requires that some additional features of the invention should be incorporated into the broadest claim.

e) Lack of Unity of Invention

Under Patent Law, various kinds of inventions or claims directed to different aspects of the invention can be filed in a single patent application. However, they must be linked as to form a single general inventive concept as prescribed in the Law. When the relationship between them is not defined in this concept, the Examiner rejects the application based on a lack of unity in the claimed inventions.

A reason for the lack of unity of invention cannot be used as a reason in an opposition or a trial for invalidation of a patent right. This is because the provision does not relate to the intrinsic patentability of inventions and was established solely for the purpose of reducing the work load on the Examiner in prior art searches.

f) The Use of Improper and Inconsistent Terminologies

These kinds of reasons for rejection are common in the early stages of examinations since most newly evolving technologies do not have corresponding standard Korean terms. Also, each presiding examiner has his own preference for particular technical terms. However, rejections based on these reasons can be easily overcome if the specification is amended using clear terms and expressions which meet the presiding examiner's preference.

g) Lack of Reference Numerals in the Claims

Most Korean examiners have a very strong preference for having the reference numerals of drawings in the claims since they have a misconception that the claims are not definite without the reference numerals set forth in the claims. Thus, we can say the official printed procedure only suggests inserting the reference numerals but, in practice, their insertion can be regarded as a requirement under the Korean patent practice.

2. Interpretation of Rejection Reasons

When a Notice of Preliminary Rejection Reasons or some other kind of Official Action is received, it is important to grasp the true intention of the Examiner. Patent Attorneys should be accustomed to the way the Examiner thinks and should be in a better position to understand the true intention of the Examiner.

The reason for rejection may be based on a lack of novelty or obviousness only, insufficient disclosure only, a combination of lack of novelty and insufficient disclosure, or any formal defects.

a) Lacking Novelty or Inventive Step

Whenever an application is rejected as lacking novelty or as being obvious, it can be considered thereafter to be free of the problem of insufficient disclosure, because it can be assumed that the Examiner conducted a prior art search after fully understanding the invention based on the disclosure of the application. It is therefore necessary to clearly specify in an argument any differences between the prior art and the invention of the application, and any technical superiority of the invention of the application derived from the differences.

b) Insufficient Disclosure or Formal Defects

Whenever an application is rejected for insufficient disclosure only or formal defects only, it can usually be assumed that the Examiner did not find any prior art against the invention of the application and is willing to grant a patent on the application if the partial insufficiency of the disclosure of the application or any formal defects are corrected. If the rejection for insufficient disclosure is reasonable, it is only necessary to amend the application as pointed out by the Examiner. If the application is very poorly drafted, the Examiner may be unable to fully understand the details of the invention and, therefore, be unable to conduct a prior art search. In this case, a rejection based on prior art may be made after the specification is amended to correct the insufficient disclosure.

c) Rejection of only Some of the Claims

When the Examiner rejects only some of the claims filed, the application will sometimes be allowed if the rejected claims are deleted. Under Korean patent practice, however, even if only one of a plurality of claims is rejected, the entire application can be rejected. The Examiner, therefore, may not refer to the other claims if there is reason for rejecting one claim, unlike the U.S. practice where the Examiner is required to refer to all the claims when issuing a Notice of Preliminary Rejection.

3. Response to be Filed

As for preparing the response to an Official Action, the applicant can file an Argument either alone or together with an Amendment. Unless the reason for rejection is clearly unreasonable, it is recommended that an Amendment be filed together with an Argument, so as to increase the application's chances of being allowed. Note that amendments on the application as well as claims are allowed only within the time limit for the response.

a) Argument

I) Analysis of the Examiner's Reasons for Rejection

The reasons set forth in the Preliminary Rejection in Korea are generally quite brief relative to the reasons set forth by the examiner in the United States, so it is often difficult to accurately determine the Examiner's intention. It is, however, extremely important to determine the Examiner's intention from the Examiner's brief statement and to submit an Argument directed to the problem the Examiner has in mind.

ii) Comparison of Claims with Citations

Under the Korean patent practice, it is very important to analyze the differences in structure between the cited references and the claimed invention, and to find differences in effect or advantages resulting from the structural differences. In order to contend that the claimed invention is not obvious from the prior art cited, it is very effective to show the advantages of the claimed invention over the invention in the cited references.

iii) Assertion of Unexpected effects
When two or more prior art references are cited in the preliminary rejection, it is very important to show that the advantages obtained by constitutional elements disclosed in the combination of elements are not merely an arithmetic sum of the advantages obtained by constitutional elements disclosed in the cited references. In other words, it is very effective to show the advantages obtained by the cited references and to show that the advantages obtained by the combination of these elements are not a mere arithmetic sum of the advantages obtained by these elements, but unexpected effects.

b) Amendments

I) Reducing the Scope of Claims

If it is not possible to assert that there are structural differences and differences in advantages between the claimed invention and the cited inventions, then it is desirable and effective to reduce the scope of the claims. In mechanical engineering cases, when a claim of an application partially overlaps into the prior art or the invention of an earlier application, it is effective to reduce the scope of the claim to exclude the overlapping part. Similarly, when a claim is rejected as being too broad, it is also effective to exclude the part which is not supported by the embodiments disclosed.

ii) Modifying or Deleting Claims

Claims can also be modified in response to the Official Action. In other words, all of the claims can be replaced with new claims, provided that the application has not yet been published for opposition purposes. When some of the claimed subject matter in the claims is identical to the prior art or to an invention of an earlier application, the claims which are identical to such prior art must be deleted.

iii) Explaining the differences over the Prior Art

Addition of a disclosure of the prior art to show the problems inherent in the prior art solved by the invention of the application is effective in arguing the existence of an inventive step. Where the prior art is not disclosed, an amendment to add the prior art will not generally be deemed as a change in the gist of the invention.

iv) New Matter

It is not possible to add new structural features which were not originally disclosed in the specification. If such features are added to the specification, the amendment is dismissed as adding new matter. However, if the new matter introduced in the specification is considered to be obvious or self-evident from the original disclosure, the amendment is not regarded as introducing new matter and is accepted.

In practice, it is very desirable and important to always draft the specification in a way consistent with the claimed invention. In other words, the object of the invention and the advantages obtained by the invention must be in line with the drawback inherent in the prior art. Therefore, if a prior art reference which was not considered when the specification was originally drafted is cited by the Examiner, the applicant must introduce a description of this prior art into the specification and draft the specification in such a way that the drawbacks inherent in the prior art disclosed in the cited reference are solved by the claimed invention. Therefore, in view of the object of the invention and the advantage of the invention, the structural features for accomplishing such an object and obtaining such advantages must be clearly defined in the claims. This requires careful amendment of the specification. Otherwise, the application will be rejected.

F. Decision for the Patent Grant
G. Options after Receiving Final Rejection
H. Registration Publication and Opposition
I. Types of Trials in Intellectual Tribunal of Korean Industrial Proprty Office
J. Re-examination before Trial
K. Appeal to the Patent Court
L. Duration
M. Registration
N. Appointment of Patent Administrator
O. Documents for transfer of ownership of patent application (or patent)
P. License grant