A patent application is a core procedure for legally protecting the fruits of technological innovation. However, during the examination process, it is possible to receive a "Decision of Rejection" from an examiner at the Korean Intellectual Property Office (KIPO). This is the result of a determination that the filed invention does not meet the registration requirements stipulated by the Patent Act. However, this Decision of Rejection does not signify the end of the patent acquisition process. The applicant may appeal the examiner's decision and request a re-evaluation of its validity from the Intellectual Property Trial and Appeal Board (IPTAB). This procedure is the "Appeal against a Decision of Rejection."
*The revised Patent Act, effective April 20, 2022, extended the period for filing an appeal or a request for re-examination from the date of receiving the certified copy of the Decision of Rejection, from the previous 30 days to 3 months.
1. Legal Nature of a Decision of Rejection
A Decision of Rejection is an administrative disposition issued by a KIPO examiner based on Article 62 of the Patent Act. It is issued upon determining that the filed invention fails to satisfy one or more patentability requirements, such as Article 29 (Novelty, Inventive Step, etc.), Article 36 (First-to-file principle), or Article 42 (Specification requirements). The notice of the Decision of Rejection must specify the legal provisions and concrete reasons that form the basis for the rejection.
2. Significance and Purpose of the Appeal against a Decision of Rejection
The Appeal against a Decision of Rejection (Article 132-17 of the Patent Act) serves as a means of challenging the examiner's decision. It is a procedure wherein the IPTAB, an independent collegiate tribunal within KIPO, reviews and determines the legality and appropriateness of the said decision. This holds the following important significance:
- Remedy of Rights: It acknowledges the possibility of errors in the examination stage and provides the applicant with an opportunity for re-examination, preventing the unjust frustration of obtaining rights.
- Enhancing Examination Quality: It contributes to improving the consistency and objectivity of patent examinations by retrospectively reviewing the appropriateness of examination decisions through the appeal procedure.
- Re-evaluation of the Invention: During the appeal process, the applicant can, by submitting written arguments and amendments, more clearly define the technical features and effects of the invention that were not fully argued or were overlooked during the examination stage, and effectively highlight the distinctiveness from prior art.
3. The 2022 Revised Patent Act
It had been pointed out that the previous 30-day response period was physically very tight for conducting in-depth legal reviews, technical analyses, preparing amendments, and consulting with experts (patent attorneys), especially when the reasons for rejection were complex or foreign applicants were involved.
With the extension of the period to 3 months from the date of receiving the certified copy of the Decision of Rejection under the revised Act, applicants have secured the following practical advantages:
- Sufficient Review Time: Securing time to meticulously analyze the validity of the reasons for rejection, review relevant precedents and trial decisions, and develop an optimal response logic.
- Increased Strategic Amendment Opportunities: Gaining the leeway to seek optimal amendment strategies that can effectively overcome the reasons for rejection without substantially narrowing the scope of rights, and to supplement experimental data if necessary.
- Enhanced Use of Expert Assistance: Allowing sufficient time to consult with experts such as patent attorneys, and to receive a higher level of assistance in establishing appeal strategies and preparing related documents.
- Improved Convenience for International Applications: Significantly improving the procedural convenience for foreign applicants, considering the time required for appointing a domestic representative, translation, and communication with their home country.
4. Procedural Options after a Decision of Rejection
Within 3 months from the date of receiving the certified copy of the Decision of Rejection, the applicant can choose to proceed with one of the following two procedures.
(Option 1) Request for Re-examination (Article 67-2 of the Patent Act)
- Overview: A system to request re-examination from the original examiner based on an amended specification or drawings, submitted to resolve the reasons for rejection.
- Required Documents:
- Amendment: Revised specification and/or drawings to overcome the reasons for rejection.
- Written Opinion (Optional): Explaining how the reasons for rejection were resolved through the amendment.
- Request for Re-examination: Filed in the prescribed format.
- Suitable Cases:
- When the reasons for rejection cited by the examiner are clear and judged to be sufficiently addressable through amendment.
- When seeking a prompt re-examination by correcting relatively simple deficiencies.
- Advantages: Can proceed relatively faster than an appeal trial and allows for re-review by the original examiner.
- Disadvantages: Cannot be requested without an amendment. If a Decision of Rejection is issued again after re-examination, the appeal trial procedure must be initiated separately.
- Subsequent Procedure: If a Decision to Grant a Patent is issued as a result of the re-examination, the registration process proceeds. If the request for re-examination is dismissed or another Decision of Rejection is issued, an Appeal against the Decision of Rejection can be filed within 3 months from the date of receiving that decision's certified copy.
(Option 2) Filing an Appeal against a Decision of Rejection (Article 132-17 of the Patent Act)
- Overview: A procedure to seek the cancellation of the examiner's decision at the IPTAB when the decision itself is deemed unlawful or unjust. Amendments to the specification or drawings are also possible when filing the appeal.
- Required Documents:
- Written Request for Appeal (Appeal Petition): Details the reasons for the appeal (e.g., issues with the examiner's decision) in the prescribed format.
- [Optional] Amendment: Revisions to the specification/drawings to resolve the reasons for rejection at the appeal stage.
- [Optional] Supplementary Brief/Written Opinion: Detailed arguments and supporting evidence for the appeal.
- Suitable Cases:
- When there is a belief that there is a fundamental error in the examiner's legal interpretation or factual determination.
- When overcoming the reasons for rejection through amendment alone is difficult or undesired.
- When seeking a judgment from a higher body (a collegiate panel of administrative law judges) on complex issues, such as the interpretation of prior art.
- Advantages: An opportunity to receive a new judgment from a collegiate panel of 3 or 5 administrative law judges, who have a different perspective than the examiner, and a chance to correct errors from the examination stage.
- Disadvantages: The hearing period is generally longer and the procedure can be more complex compared to a request for re-examination.
- Hearing Process: Conducted based on written submissions (ex parte) in principle, but oral hearings may be held if necessary. The applicant (or representative) can actively present arguments through opinion submissions, amendments, etc.
- Subsequent Procedure: If the Decision of Rejection is canceled as a result of the appeal (decision in favor of the appellant), the case may be remanded back to the examination division or a Decision to Grant a Patent may be issued. If the appeal is dismissed (decision of dismissal), a lawsuit may be filed with the Patent Court to challenge this decision.
The choice of which procedure to follow must be strategically decided by comprehensively considering the nature of the reasons for rejection, the necessity and scope of amendments, and the anticipated hearing period and costs.
Conclusion
A Decision of Rejection for a patent may be a disappointing outcome, but it does not mean the final abandonment of the right. The 3-month response period secured by the revised Patent Act provides a crucial opportunity for the applicant to deeply review the examiner's decision and respond systematically with expert assistance.
The systems for Appeal against a Decision of Rejection and Request for Re-examination are more than simple appeal procedures; they are essential legal mechanisms for reassessing the true value of an invention and securing legitimate rights. Applicants must accurately understand the purpose and procedures of these systems and utilize the given time to its fullest to respond strategically, thereby effectively protecting their valuable technological assets.
It must be kept in mind that a meticulous analysis of the reasons for rejection and the formulation of an appropriate response strategy can be a critical turning point that determines the success or failure of obtaining a patent.
