The Scope of Amendments After a Final Office Action and During a Request for Re-examination In Korea

In the patent prosecution process, receiving a Final Office Action and subsequently filing a Request for Re-examination are stages that demand the most strategic judgment from applicants and their representatives. Amendments at this juncture are strictly limited by Article 47 of the Korean Patent Act. Without a profound understanding of the examination guidelines, one can easily face a dismissal of the amendment or a final decision of rejection—both critical outcomes.

This column provides an in-depth, type-based analysis of the examination guidelines concerning the scope of amendments after a Final Office Action and upon filing a Request for Re-examination. We will also present strategies for addressing complex cases that may arise in practice.

1. Governing Regulations for Amendments After a Final Rejection and During Re-examination

Before delving into specifics, it is essential to clarify the two foundational principles governing amendments at this stage.

Prohibition of New Matter (Article 47(2)): A prerequisite for any amendment is that it cannot add new matter that goes beyond the scope of what was disclosed in the specification or drawings as of the filing date. This is an absolute principle that applies equally to amendments filed in response to a Final Office Action and those filed with a Request for Re-examination.
Amendments for a Limited Purpose (Article 47(3)): Amendments to the claims, in particular, are strictly restricted to the following purposes, often summarized by the mnemonic "Gam-Jal-Bun" (Narrow, Correct, Clarify) in Korean practice:
1. Narrowing the scope of the claims (Article 47(3)1).
2. Correcting a clerical error (Article 47(3)2).
3. Clarifying an ambiguous description (Article 47(3)3).
4. Reverting to a version of the claims pre-amendment, or doing so while simultaneously satisfying one of the conditions above (1-3) (Article 47(3)4).

These stringent standards are intended to prevent delays in the examination process and reduce the burden of repeated examinations for the examiner. Let's now explore how these principles are applied in practice.

2. Analysis of Key Amendment Types During a Request for Re-examination

Case 1: Adding or Limiting an Element in a Single Independent Claim

This is the most common type of amendment. Amending independent Claim 1 from "A" to "A+a" by adding a new element 'a' clearly falls under the narrowing of the claim scope as stipulated in Article 47(3)1. When the scope of an independent claim is narrowed, the scope of all its dependent claims is naturally narrowed as well. Therefore, the entire set of claims is deemed to satisfy the amendment requirements. This is the most certain amendment strategy with virtually no disagreement in practice.

Case 2: Narrowing Only Some of Multiple Independent Claims

Consider a scenario with two independent claims, Claim 1 (A) and Claim 3 (C). If only Claim 1 is narrowed to "A+a" while Claim 3 is left unchanged, this amendment is permissible.

Article 47(3) of the Patent Act states, "an amendment to the claims may be made only in any of the following cases." A legal interpretation of this provision implies that the requirements (narrowing, correcting, clarifying) need only be assessed for the claims that were actually amended. The unamended claim (Claim 3) is not subject to this assessment. This interpretation has been confirmed by the Korean Intellectual Property Office (KIPO)'s Patent System Administration Division, allowing representatives to adopt a strategy of focusing amendments solely on the group of claims that triggered the rejection.

Case 3: Limiting Only a Dependent Claim while Leaving the Independent Claim Unchanged

Imagine independent Claim 1 (A) is left as is, but its dependent Claim 2 is amended, for example, to "The subject matter of Claim 1, further comprising B+b." The same legal principle as in Case 2 applies. The unamended Claim 1 is not subject to the amendment requirements analysis. Since the amended Claim 2 has been narrowed by the addition of an element, it meets the requirement of Article 47(3)1. The amendment is therefore considered proper.

Case 4: Adding a New Claim (Not Permitted in Principle)

Adding a new claim after a Final Office Action or during re-examination is, in principle, not allowed. This is because adding a claim does not correspond to narrowing, correcting, or clarifying the existing claims. However, the examination guidelines do allow for a very narrow exception for "unavoidable cases arising from re-arranging claims."

Example from Examination Guidelines 1
- Before Amendment:
  - Claim 1: A.
  - Claim 2: The subject matter of Claim 1, further comprising B.
- After Amendment:
  - Claim 1: A+a.
  - Claim 2: The subject matter of Claim 1, further comprising B.
  - Claim 3: A+B. (New)
Here, the newly added Claim 3 might seem reasonable as it merely rewrites the subject matter of the original Claim 2 ("A+B") in an independent format. However, under current Korean examination practice, such an amendment is not accepted.
Example from Examination Guidelines 2
- Before Amendment:
  - Claim 1: A.
  - Claim 2: The subject matter of Claim 1, further comprising B.
- After Amendment:
  - Claim 1: A+B.
  - Claim 2: The subject matter of Claim 1, further comprising C.
In this instance, the amended Claim 2 (covering A+B+C) could be interpreted as a narrowing of the original Claim 2 (A+B). Nevertheless, this type of amendment is also not permitted under Korean examination practice.

Case 5: Amending Only the Specification or Drawings, Not the Claims

This type of amendment is permissible. The requirement for filing a Request for Re-examination under Article 67-2 is to "amend the specification or drawings," while the restrictions of Article 47(3) (narrow, correct, clarify) apply only to "amendments to the claims." Therefore, amending only the description of the invention or the drawings without altering the claims is considered a proper amendment, provided it does not violate the prohibition of new matter under Article 47(2).

Case 6: Adding a New Claim Based on the Specification when the Original Ground for Rejection is Not Resolved

This is a highly complex scenario requiring careful strategic thought. For example, an office action is issued for Claim 1 due to a lack of inventive step. In response, the applicant files a Request for Re-examination, adding a new Claim 2 based on an embodiment that was only described in the specification. However, the ground for rejection for Claim 1 remains unresolved.

Past Practice: Examiners would typically accept the amendment itself but issue another decision of rejection for Claim 1 since the original issue was not overcome. A note would be made that the patentability of the new Claim 2 was not separately examined.
Current Position of the Patent System Administration Division: The Division's view is that adding a new claim in this manner is not an "unavoidable case arising from re-arranging claims" and should, in principle, be subject to a dismissal of amendment.

Adhering strictly to the Division's opinion could deprive applicants of the opportunity to explore new possibilities through a re-examination request. This is a point of conflict between the purpose of the dismissal of amendment system and the applicant's interest in having an amended invention examined.

As a representative, one must carefully weigh the risk of a dismissal of amendment against the potential of adding a new, patentable claim. If the proposed new claim has a very high likelihood of being allowed, pursuing it through a divisional application may be a safer and more reliable strategy.

3. Amendments in Response to a Final Office Action (Without Requesting Re-examination)

When submitting an amendment with written arguments after receiving a Final Office Action but without filing a Request for Re-examination, the same criteria discussed in Cases 1-6 apply.

There is one key difference: submitting only written arguments without any amendment. A Request for Re-examination requires an amendment as a prerequisite. However, responding to a Final Office Action does not legally require an accompanying amendment. In this case, since no amendment is made, its propriety is not in question. The examination will focus solely on whether the submitted arguments overcome the examiner's grounds for rejection.

Conclusion

Amendments made after a Final Office Action and during re-examination are not mere corrections of typos but highly strategic actions. The recent trend towards a stricter interpretation, especially regarding the addition of new claims, demands a higher level of expertise and prudence from patent attorneys.

At Pine IP Firm, we leverage our in-depth research into these complex and demanding patent regulations and examination guidelines to provide the highest quality legal services, ensuring our clients' valuable inventions are secured with optimal rights.