Improvements to the Inventor Correction System

The inventor correction system in South Korea has recently undergone significant changes through the amendment of the Enforcement Rules of the Patent Act and Utility Model Act. The primary objectives of this reform are to prevent individuals without inventive capacity from being unjustly listed as inventors, to protect the true inventors who have genuinely contributed to an invention, and ultimately, to enhance the transparency and reliability of the patent system. The relative ease of the previous inventor correction process was exploited in ways that undermined the fairness of the patent system. In this column, we will conduct an in-depth analysis of the background and key details of these improvements, their positive impacts, opinions from the patent industry, a comparative analysis with major foreign systems, and future prospects and challenges.

Problems with the Pre-Amendment Inventor Correction System

Under the previous patent law practice, the inventor correction procedure was relatively simple, leaving it open to abuse. Notably, after the examination process had concluded—specifically, between the decision to grant a patent and its official registration—there were cases where individuals without inventive capacity were added as inventors to obtain fee reductions or to have a non-inventor's name appear in the official publication. This exploited a loophole that allowed inventor information to be changed without substantive review by an examiner.

Specific cases of abuse included adding minors with questionable inventive capacity to patents in highly advanced technology fields. This demonstrates how patents could be improperly used for personal prestige or to gain an advantage in university admissions. There were also instances where employers (companies) removed the actual employee-inventors and listed company executives or other unrelated third parties instead. This practice undermined the legitimate compensation system for employee inventions and demoralized inventors. There were even attempts to use this loophole to add non-inventors as a tactic to circumvent a rejection issued during the examination process.

The core problem of the previous system was the lack of a time limit for inventor corrections, which allowed inventors to be easily added even after the examiner's review was complete. Furthermore, the evidentiary documents required only after registration were not mandated during the examination phase, making it difficult to effectively prevent the listing of fraudulent inventors. Another significant issue was that once a decision to grant was made, it was difficult to reverse that decision even if a subsequent inventor correction altered substantive facts, as the examiner's substantive review had already concluded.

Key Details of the Amended Inventor Correction System

The cornerstone of the recent improvements is the imposition of time limits on inventor corrections and the mandatory submission of evidentiary documents for any corrections made during the examination process.

• Time Limits and Exceptions for Inventor Correction: Under the amended Enforcement Rules, the addition of an inventor is, in principle, not permitted during the period from the issuance of a decision to grant a patent until its official registration. This is to prevent the improper addition of inventors after the examination has concluded. However, exceptions are made for corrections that maintain the inventor's identity, such as name changes, correction of simple typographical errors, or address updates. Inventor corrections remain possible, as before, from the time of filing up until the decision to grant, as well as after the patent is officially registered.
• Evidentiary Documents Required for Correction During Examination: To correct inventor information while an application is undergoing examination, the following two documents must be submitted to the Korean Intellectual Property Office (KIPO): ① A detailed statement explaining the reason for the correction, and ② A confirmation document signed or sealed by the patent applicant and all inventors subject to the correction (this includes any existing inventors being removed and any new inventors being added). For example, if the listed inventors change from 'Jang Yeong-sil, Hong Daeyong' to 'Jang Yeong-sil, Ji Seokyeong,' the signatures or seals of the applicant, Hong Daeyong, and Ji Seokyeong are all required. This new regulation will apply to documents for inventor correction submitted on or after November 1, 2024.

Positive Impacts and Effects of the System Improvements

The amended inventor correction system is expected to have a positive impact across the entire patent ecosystem.

• Stronger Protection for True Inventors: By preventing the fraudulent listing of individuals without inventive capacity, the rights of true inventors who made substantial contributions are now more effectively protected. This plays a crucial role in securing an inventor's right to be named and in fostering motivation for innovation. This is especially important for employee inventions, where being listed as an inventor is directly linked to performance evaluations and compensation.
• Improved Patent Quality: Preventing the listing of false inventors and ensuring that only true inventors are recorded will enhance the credibility of patents, reduce the likelihood of invalid patents being issued, and contribute to overall patent quality. Accurate inventor information can serve as a vital resource during examination for prior art searches and for assessing the inventive step of an invention. It also reinforces the legitimacy of the rights holder when enforcing the patent.
• Prevention of Abuse: Restricting the addition of inventors after examination and mandating evidentiary documents will effectively deter abuse of the system. This will block attempts to list false inventors for the purpose of obtaining improper benefits like fee reductions and will reduce the potential for other misuses.

Opinions from the Patent Industry and Experts

Prior to implementing these changes, KIPO actively sought feedback from the field, including holding a meeting with the Korea Patent Attorneys Association (KPAA). Overall, the patent industry agrees with the intent behind the amendments and has expressed positive expectations regarding their effect on preventing abuse and protecting true inventors. Patent Attorney Ryu Min-oh stated that he expects this revision to be a critical turning point in enhancing the fairness and reliability of patents, protecting creators' rights from the application stage, and preventing the misuse of the patent system.

However, some concerns have been raised that the strengthened documentation requirements could make the process more complex. Difficulties may arise, particularly in cases of joint invention, when trying to obtain consent from all inventors. Additionally, some opinions have pointed to the U.S. system as a reference, noting that while it previously allowed corrections for errors made without "deceptive intention," this requirement was removed after the America Invents Act (AIA), suggesting potential directions for future improvements in Korea.

Comparative Analysis of Inventor Correction Rules in Major Foreign Patent Systems

The inventor correction systems of major jurisdictions have the following characteristics:

• United States: Requires the submission of an inventor's declaration at the time of filing and needs the consent of all inventors for a correction during prosecution. Post-grant correction is possible, and while it was previously limited to errors made without "deceptive intention," this requirement has been relaxed.
• Japan: Does not require an inventor's declaration at filing but demands the signatures of all inventors to add an inventor before registration. After a patent is registered, inventor changes are generally not permitted.
• European Patent Office (EPO): Requires the designation of an inventor at filing. The consent of existing inventors is not needed to add another inventor, but for a post-grant correction, the consent of the incorrectly designated person and the applicant/patentee is required.

Korea's recent amendments are similar to the Japanese system in restricting the addition of inventors during the pre-registration phase. The requirement for evidentiary documents during examination aligns with the U.S. and European systems, which emphasize the accuracy of inventor information. However, Korea has not yet adopted a mandatory inventor's declaration, and its rules on the possibility and requirements for post-grant corrections differ from those of other countries.

Future Outlook and Challenges for the Inventor Correction System

This reform is a significant step forward in protecting true inventors and improving patent quality. However, continuous attention and effort are needed to ensure the system becomes firmly established and effective. It will be necessary to closely monitor any issues that arise during implementation and consider further improvements by gathering feedback from the patent industry.

Furthermore, discussions on additional institutional reforms are needed to address more fundamental problems, such as the prevention of technology theft. Legal and institutional discussions must also prepare for new issues arising from the changing digital landscape, such as the question of AI inventorship. Efforts to improve the accuracy of patent information and utilize it effectively must continue. Finally, it is crucial to explore ways to create synergy by considering the relationship between the inventor correction system and efforts to enhance the quality of patent examination.

Conclusion

The recent improvements to the inventor correction system are expected to make a significant contribution to preventing the fraudulent listing of non-inventors, protecting true inventors, improving patent quality, and deterring system abuse. Restricting the addition of inventors between the grant decision and registration, and mandating evidentiary documents for corrections during examination, are crucial steps toward enhancing the overall fairness and reliability of the patent system. Patent applicants and industry professionals should accurately understand and actively utilize the amended system to participate in the sound development of the patent ecosystem. Through continued attention and efforts for improvement, we must work together to ensure that the patent system functions as a core engine supporting innovative growth.