Evolution in patent legislation
1. SOUTH KOREA
The grace period granted between the disclosure by the inventor and the filing of the patent application, without the disclosure disproving the novelty of the invention, has increased from six months to one year.
On 1 January 2013, the following changes in the law on patents came into effect.
A transfer of the invention to the applicant signed by the inventor is no longer required.
If priority has unintentionally not been claimed at the time of the application, it can still be claimed within the 16 months that follow the oldest date of priority.
The application may be voluntarily amended at any time before the first official letter is issued. However, once the examiner has issued a "Final Notice", the changes can only consist in the suppression or reduction of the scope of certain claims, the correction of errors or a clarification of the text.
A divisional application may be filed up to 30 days after receipt of the registration notice but must be based on claims that are different from those granted.
A patent invalidation action can no longer be launched on the initiative of the Taiwanese Office, but only by a third party.
The deposit certificate for biological materials and the viability test report are grouped together in a single document to be filed within the four months that follows the deposit (no longer three months). It will no longer be necessary to provide information on the deposit of biological materials in the patent application form.
Third party observations may be filed after the publication of a patent application.
A patent that has lapsed for non-payment of annuities may be reinstated within the 12 months that follow the expiry of the six-month grace period, subject to payment of three times the annuity initially due.
Patent applications are now published 18 months after the date of filing or priority, and their examination files may be accessed on line (unless they are rejected or abandoned in the meantime). PCT applications entering the national Israeli phase are published within 45 days following said entry into the national phase.
Third party observations may be filed within two months (non-renewable period) following the applicant's provision at the Office's request of the prior art the applicant is aware of.
The law, effective 12 January 2013, introduces an opportunity for applicants to request an accelerated examination of their application if they have "good reasons" to make such a request. The issuance of a corresponding patent in a country that uses the "Patent Prosecution Highway" may constitute such a reason.
Subject to a substantiated claim, an accelerated examination of a patent application may also be requested by a third party within the 30 months that follow the application's priority date.
A fee that can reach the sum of $7,500 is due for the filing by a third party of an accelerated examination application.
Since 18 September 2012, the Colombian patent office can issue patents on the basis of patents obtained abroad or about to be obtained abroad if the applicant so requests at the time of the application for examination and if the invention is not one that is ineligible for patentability in Colombia. A translation into Spanish of the claims granted must be provided with documents on prior art that are studied during the examination, as well as a table of correspondence between the claims in the Colombian application and the claims allowed in the foreign application. These claims must be equal, similar or inferior in scope to those in the Colombian application. If such correspondence does not exist, a fee is due to amend the Colombian application claim accordingly.
5. NEW MEMBERS OF INTERNATIONAL TREATIES
PCT: Brunei Darussalam (24 July 2012), Panama (7 September 2012) and Saudi Arabia (3 August 2013) are now members of the PCT or about to become members thereof.
OAPI: Comoro Islands (25 May 2013)
We remain at your disposal for any further information you may require.
Contact: Daniel Neyret