Korean Patent Act: Patent Term Adjustment for Delays by Korean Intellectual Property Office
Under the Patent Term Adjustment (PTA) system of Article 92(2) of Korean Patent Act, the term of a patent may be extended to compensate for an unreasonable delay by the Korean Intellectual Property Office (KIPO) during the prosecution of a patent application.
Eligibility of Patents for PTA
- all patent applications filed to KIPO or intentionally filed (i.e. patent cooperation treaty (PCT) application) on or after March 15, 2012.
- patents that are issued more than four years after filing date.
* for PCT national phase applications, the filing date is the national filing date.
** for divisional applications, the filing date is the filing date of the divisional application.
- patents that are issued more than three years after the date requesting for examination.
Patent Term Extension
Extendable Patent Term = (period from the extension reference date to the patent issuance date) – delay by the applicant.
* extension reference date is the latter date of the date after four years of the filing date or the date after three years of the date requesting for examination.
** patent issuance date is the date the issuance fee is paid.
*** delay by the applicant includes the following periods:
- period designated by KIPO for responding to each official notice (including an office action and a final rejection)
* this period shall be excluded from delay by the applicant, if the official notice only needs to be addressed by a statement or an argument brief without an amendment
- period of extension of a due date that the applicant has obtained during prosecution.
- period from the date the notice of allowance is issued to the date the issuance fee is paid.
Example of PTA
| Date | Action |
| 2013.1.1 | filing of a patent application |
| 2015.1.1 | request for examination |
| 2016.10.1 | issuance of an office action |
| 2016.12.1 | request for a 2-month extension of time |
| 2017.2.1 | filing of an amendment and an argument brief |
| 2017.8.1 | receipt of a final rejection |
| 2017.9.1 | request for an extension of time |
| 2017.10.1 | request for continued examination (RCE) |
| 2017.11.1 | issuance of a final rejection (as a result of RCE) |
| 2017.12.1 | filing of a notice of appeal |
| 2018.8.1 | issuance of a decision to overturn the final rejection |
| 2018.10.1 | receipt of a notice of allowance |
| 2019.1.1 | payment of issuance fee (i.e., patent issuance date) |
Since the date that is three years after the request for examination (three years after January 1, 2015 is January 1, 2018) is later than the date that is four years from the filing of a patent application (four years after January 1, 2013 is January 1, 2017), the extension reference date will be January 1, 2018. Thus, the period from the extension reference date (January 1, 2018) to the patent issuance date (January 1, 2019) is 365 days.
Delays attributable to the applicant is 276 days, which is the sum of 123 days from the issuance of an office action (October 1, 2016) to the filing of an amendment and an argument brief (February 1, 2017); 61 days from the receipt of a final rejection (August 1, 2017) to the filing of a request for continued examination (RCE) (October 1, 2017); and 92 days from the receipt of a notice of allowance (October 1, 2018) to the payment of issuance fee (January 1, 2019).
Hence, the extendable patent term is 89 days (365 days minus 276 days).
Procedure of PTA
PTA can be granted only upon a request by the patentee, which must be made within three (3) months from the date the patent is issued.
KIPO does not notify patentees of the PTA eligibility of patents or of the PTA period that can be granted for patents.
Source of Information:
Korean Intellectual Property Office (KIPO)
http://www.kipo.go.kr/kpo/user.tdf?a=user.eng.main.BoardApp
Keywords: Korean Patent Act; KIPO; Delay; Patent Term Adjustment